Key Takeaways

  • Trademarks protect brand identity by distinguishing a company’s products or services from competitors.
  • Federal registration provides stronger legal protection, but common law rights exist through use in commerce.
  • Trademarks can include names, slogans, logos, sounds, colors, and even packaging.
  • Not all marks qualify—generic terms, descriptive words without secondary meaning, and certain symbols may be ineligible.
  • The registration process involves multiple steps, including searching for conflicts, applying with the USPTO, and maintaining the mark.
  • International trademarks are managed through treaties like the Madrid Protocol, but a single global trademark does not exist.
  • Trademark protection is not automatic—owners must enforce their rights to prevent dilution or genericization.

What Is a Trademark?

A trademark is a word, phrase, logo, or symbol that represents a company or its products. A trademark protects a company's intellectual property. To qualify for a federal trademark registered with the United States Patent and Trademark Office (USPTO):

  • You must use or intend to use the mark in commerce.
  • The mark must be distinctive to your business.

Types of Trademarks and Their Legal Strength

Trademarks vary in distinctiveness, which affects their strength and legal protection. The five categories of trademarks are:

  1. Fanciful Marks – Completely invented words with no prior meaning (e.g., Xerox, Kodak). These offer the strongest protection.
  2. Arbitrary Marks – Existing words unrelated to the product (e.g., Apple for computers).
  3. Suggestive Marks – Indirectly hint at the product's characteristics (e.g., Netflix for streaming services).
  4. Descriptive Marks – Directly describe the product and require secondary meaning for protection (e.g., Best Buy).
  5. Generic Terms – Common names for products (e.g., “Computer” for computers) that cannot be trademarked.

Choosing a strong trademark from the start enhances brand protection and reduces legal challenges.

Trademarks: What Do They Do?

A trademark protects certain aspects of your business and distinguishes your company and products from those of other businesses. You can trademark the following, as long as they relate to commerce:

  • Names of companies or products
  • Words or slogans that relate to brands or marketing campaigns
  • Logos or symbols that identify your brand
  • Sounds, colors, and scents specific to your brand

Four general types of marks exist:

  • Fanciful: These marks are inherently original terms or logos. Kodak, for example, is a fanciful mark.
  • Arbitrary: These marks are terms that don't directly suggest the company or its goods. Apple is an arbitrary mark.
  • Suggestive: These marks describe the goods or suggest the company. The first company to use a suggestive mark can claim trademark rights. Coppertone is a suggestive mark.
  • Descriptive: A company can trademark this type of mark only if it has a secondary meaning in the minds of consumers. Holiday Inn is an example of a descriptive mark.

The Lanham Act governs trademarks in the United States. This law states that a trademark has to be used in commerce, or that you must intend to use it in commerce, and that the trademark must be distinctive.

When you register a trademark, you gain legal protection for that mark. No other business can use your mark without penalty, but this protection is not automatic. You have to monitor usage and look for people and companies either using or infringing your mark.

Common Law vs. Federal Trademark Protection

Trademarks can be protected under common law or federal registration:

  • Common Law Trademarks – Automatically arise when a business uses a mark in commerce but provide limited, local protection.
  • State Registration – Some businesses opt for state-level trademark registration, which helps in local disputes.
  • Federal Registration with USPTO – Provides nationwide rights, public record status, and legal advantages in infringement cases.

While common law protection is free, federal registration offers stronger legal standing and exclusive rights.

Why Are Trademarks Important?

A trademark allows a business to distinguish its name or products from others and prevents unfair competition. This distinguishing process lets a company define its brand and set itself apart from its competitors.

A trademark also helps consumers identify a product or a brand with a certain company to prevent confusion. This identification can give consumers confidence that they can rely on a standard of quality when purchasing products or requesting services from a certain company.

Trademarks define the source of products:

  • The manufacturer
  • The seller
  • The sponsor

Trademarks last for 10 years, but owners can renew them. After five years of continuous use, a company can apply for incontestable status, in other words, the trademark holder has a stronger defense against infringers and a better claim to ownership.

Trademarks have a long history and date back to 1266. King Henry III of England required bakers to create distinctive marks for the breads they produced. The German brewery Löwenbräu claims to have one of the oldest trademarks, which dates back to 1383.

Modern trademarks started in France in 1857; England passed the Merchandise Marks Act in 1862, which protected manufacturers' marks. The United States Congress first proposed trademark law in 1870 and used its Commerce Clause powers to pass an intellectual property law in 1881. Congress passed the Trademark Act in 1905, and in 1946, the Lanham Act became the primary law protecting trademarks. The most recent amendment to this act was in 1996.

How Trademarks Benefit Businesses

A trademark’s value extends beyond legal protection. It enhances brand identity, consumer trust, and market competitiveness. Key benefits include:

  • Exclusive Rights – Prevents others from using similar marks that could confuse consumers.
  • Market Recognition – Builds reputation and brand loyalty.
  • Legal Recourse – Enables enforcement against counterfeiters or infringers.
  • Asset Value – A strong trademark can increase company valuation and attract investors.
  • Expansion Opportunities – Allows brand licensing, franchising, and global expansion.

Businesses investing in trademarks benefit from long-term brand security and consumer confidence.

Reasons to Consider Using a Trademark

  • A trademark gives you the exclusive right to use the mark in commerce. Trademark owners can build their brands and grow their businesses around their distinct trademarks. They are responsible for keeping the trademark strong and not causing consumer confusion. Owners can also create a stronger level of protection by developing a family of marks with like elements.
  • A trademark lets you use the registered trademark (®) symbol. Companies can use the trademark (TM) symbol to show that they claim rights to a trademark or the SM (service mark) symbol to claim rights to a service mark. They cannot use the ® symbol, which notifies the public of a federally registered trademark, until they register the trademark with the USPTO.
  • A trademark enables you to license your intellectual property. Trademark owners can license the use of the mark to other parties; however, the original owner must take responsibility for the quality and nature of the goods made under license.
  • A trademark allows you to defend your mark from dilution. Trademark holders can pursue legal action against infringers who use the mark in commerce. Owners can claim dilution, which means an infringer's use makes the original mark less distinctive. You can only claim dilution if the mark is a well-known mark. Courts consider the following:
    • Degree of the mark's distinctiveness
    • Extent and length of time used
    • Level of advertising and marketing
    • Geographic limits of the market
    • Trade channels
    • Degree of recognition
    • Other uses of the mark by third parties
    • Current trademark registration
  • A trademark allows you to protect your mark from consumer confusion. A trademark helps prevent confusion in the marketplace. To prove consumer confusion, courts consider the following:
    • Strength of the trademark
    • Similarity of the products or services
    • Similarity of the trademark
    • Similarity of marketing methods
    • Evidence of consumer confusion
    • Degree of caution for the average consumer
    • Intent of the defendant
  • A trademark allows you to defend your mark from other cases of unfair competition. These cases include:
    • Passing Off: This action happens when another company tries to pass off its products or services as your own.
    • Contributory Passing-Off: This activity happens when another company convinces a retailer to pass off its products or services as your own.
    • Reverse Passing Off: This action happens when another company passes off your products as its own.
    • Misappropriation: This term refers to the unauthorized use of a trademark.

Trademark Licensing and Monetization

Trademark owners can monetize their intellectual property through licensing. This involves:

  • Franchising – Allowing others to operate under a brand name (e.g., McDonald’s).
  • Merchandising – Selling branded products (e.g., Disney characters on toys).
  • Co-Branding Agreements – Collaborating with another brand for mutual benefit.

When licensing a trademark, it's crucial to enforce quality control to prevent brand dilution.

Reasons to Consider Not Using a Trademark

  • The mark is too generic. You can't register a trademark for words, slogans, or symbols that are generic or suggest a category of products. A trademark can also become generic over time if the holder does not protect it from overuse.
  • You don't plan to use the mark in commerce. If you haven't and won't use the mark in commerce, you have no basis for registering a trademark.
  • You don't plan to defend the mark. When you hold a trademark, you must protect it from infringement. If you do not defend it, the mark loses its significance, and over time, you may lose the ability to claim ownership. You can also lose your trademark rights to your intellectual property in the following ways:
    • Abandonment: This act happens when you stop using a trademark and have no intention to continue using it. After three years of nonuse, you have technically abandoned your trademark. Abandonment prevents companies from claiming rights to trademarks they don't use.
    • Improper Licensing or Assignment: This situation happens when you license or assign trademark rights without ensuring quality and, as a result, the trademark no longer identifies products of a certain quality.
    • Genericity: This activity happens when the public identifies a trademark as a broad group of products or services instead of a specific product or service from a single company. A business cannot hold trademark rights for a generic type of products or services.
  • A trademark doesn't prevent every type of unauthorized use. Third parties can claim select reasons for using your trademark:
    • Fair Use: This term means that the company intends to use the mark for its primary meaning, so consumer confusion is not likely to result.
    • Nominative Use: This phrase means that the mark must be used to define and distinguish products and services from one another.
    • Parody: Under parody, a company states that it intends to use the mark in a comical manner and a noncommercial setting so that consumer confusion is not likely to result.

Trademark Abandonment and Loss of Rights

Trademarks can lose protection if not actively maintained. Key reasons for losing trademark rights include:

  • Non-Use (Abandonment) – A trademark is considered abandoned if not used for three consecutive years.
  • Failure to Renew – Federal trademarks require periodic renewals; missing deadlines results in cancellation.
  • Genericization – Overuse of a mark in everyday language (e.g., escalator, zipper) causes it to lose distinctiveness.

To maintain a trademark, companies should consistently use it in commerce and enforce proper usage.

Common Mistakes

  • Assuming that using a mark first protects your rights to a trademark. The Lanham Act gives companies some protection when they first use a mark in business. However, this action may not be enough to protect your intellectual property or prevent another party from using your mark. Only registering a trademark gives you this protection.
  • Trying to trademark a creative work. Only a copyright, which lasts for 50, 75, or 100 years, can protect a creative work of expressions such as a book, movie, song, or visual art. However, a copyright doesn't prevent others from developing similar or identical creative works if they have no knowledge of or contact with the original. Copyright holders don't have to use or announce their rights to retain them.
  • Applying for a trademark instead of a patent. The USPTO handles trademarks and patents, but these types of protections differ from one another greatly. Patents cover inventions, devices, business methods, and industrial processes.
  • Attempting to trademark an idea. You can't register a trademark for an idea. Once you have turned the idea into an invention, you may be able to patent it. If you turn the idea into a work of art, you may be able to copyright it.
  • Confusing a trademark with a business registration. You should register your business with your state's secretary of state. This registration protects your business name in your state only.

Misconceptions About Trademarks

Many businesses misunderstand trademark law. Common misconceptions include:

  • Trademarking an idea – Only tangible brand elements (logos, slogans) can be trademarked, not ideas.
  • Automatic rights upon registration – Trademark owners must actively monitor and enforce rights.
  • All business names are trademarks – Business name registration does not grant exclusive branding rights.
  • Similar marks can’t coexist – Similar trademarks can exist in different industries if no confusion occurs.

Understanding these misconceptions helps businesses avoid costly legal errors.

Deadline

Getting a trademark has no firm deadline. However, you should apply for a trademark as soon as possible. Applying gives you a better chance of protecting your intellectual property, sets a precedent for your ownership, and gives you provisional protection.

Trademarking Multiple Products or Services

A single trademark application allows registration for only one product or service. If you need to protect multiple brand elements—such as logos, business names, and slogans—you must file separate applications unless they are combined into one entity.

Using the Same Trademark as Another Company

Multiple companies can use the same trademark if their products or services are different enough to avoid consumer confusion. Additionally, businesses operating in separate geographic regions may use identical marks if they rely solely on common law trademark protection rather than federal registration.

Compensation for Trademark Infringement

If someone infringes on your trademark, the compensation you can receive depends on the specifics of your case. Courts typically award one or more of the following:

  • Profits gained through the infringing use
  • Financial damages related to brand harm
  • Attorney fees and court costs

Registering a Trademark at the State Level

For businesses operating solely within a single state, filing a trademark application with the state’s secretary of state may provide adequate protection. Some states also enforce unfair competition laws, based on the Model Trademark Bill or the Uniform Deceptive Trade Practices Act, to protect local businesses.

International Trademark Registration

There is no such thing as a single "international trademark," but businesses can register trademarks in multiple countries through various treaties administered by the World Intellectual Property Organization (WIPO):

  • Paris Convention (1883) – Protects industrial property internationally.
  • Madrid System – Allows registration in up to 98 territories through one application.
  • Vienna Agreement – Standardizes classification for marks with figurative elements.
  • Trademark Law Treaty – Aims to unify national and regional trademark registration.
  • Singapore Treaty – Addresses trademarks related to communication technologies.
  • Nice Agreement – Establishes an international classification system for goods and services.
  • Nairobi Treaty – Protects the Olympic symbol from unauthorized commercial use.
  • Lisbon System – Governs the protection of geographical indications.

The Tariff Act of 1930

This U.S. law helps protect domestic trademarks by preventing the importation of products that infringe on a trademark owned by a U.S. citizen.

Service Marks, Collective Marks, and Certification Marks

  • Service Mark – Identifies and protects services rather than physical goods, offering similar legal protections as trademarks.
  • Collective Mark – Used by organizations or associations to represent group membership or certification.
  • Certification Mark – Applied by regulatory bodies to signify that products meet certain quality or industry standards.

Trade Names and Trade Dress

  • Trade Name – Identifies a company for business purposes, such as invoices, contracts, or bank accounts, but does not necessarily provide brand protection.
  • Trade Dress – Refers to the overall visual appearance of a product or packaging, helping consumers recognize its origin.

Functionality Doctrine in Trademark Law

The functionality doctrine prevents businesses from trademarking product features that serve a functional purpose. This ensures that competitors can continue using practical and essential design elements.

Understanding Counterfeits

A counterfeit is an unauthorized imitation of a genuine product, often including illegally copied trademarks and branding elements. Counterfeit goods can severely damage a brand’s reputation and financial standing.

Protecting Trademarked Content Online

Social media platforms, such as Facebook, enforce policies against unauthorized use of trademarks through their Statement of Rights and Responsibilities and Community Standards. If someone misuses your trademark online, you can report the violation directly through the platform. If a third party has claimed your trademarked username, you must contact them directly to resolve the issue.

Hiring an Attorney for Trademark Registration

While it is not mandatory to hire an attorney for trademark registration, doing so can significantly improve your chances of success. Experienced trademark attorneys understand the nuances of the application process and can help you avoid costly mistakes, ensuring stronger protection for your intellectual property.

Steps to File a Trademark Application

  1. Use the USPTO's Trademark Electronic Search System (TESS) to search for similar, pre-existing marks.
  2. Use the USPTO's Trademark Electronic Application System (TEAS) to file an application online.
  3. Submit an example of how your mark will appear in commerce.

  4. Choose the correct trademark class that describes your product or service.

    Class 01 Product Chemicals
    Class 02 Product Paints, Coatings, and Pigments
    Class 03 Product Cleaning Products, Bleaching and Abrasives, Cosmetics
    Class 04 Product Fuels, Industrial Oils and Greases, Illuminates
    Class 05 Product Pharmaceutical, Veterinary Products, Dietetic
    Class 06 Product Metals, Metal Castings, Locks, Safes, Hardware
    Class 07 Product Machines and Machine Tools, Parts
    Class 08 Product Hand Tools and Implements, Cutlery
    Class 09 Product Computers, Software, Electronic Instruments, and Scientific Appliances
    Class 10 Product Medical, Dental Instruments and Apparatus
    Class 11 Product Appliances, Lighting, Heating, Sanitary Installations
    Class 12 Product Vehicles
    Class 13 Product Firearms, Explosives, and Projectiles
    Class 14 Product Precious Metal Ware, Jewelry
    Class 15 Product Musical Instruments and Supplies
    Class 16 Product Paper, Items Made of Paper, Stationery items
    Class 17 Product Rubber, Asbestos, Plastic Items
    Class 18 Product Leather and Substitute Goods
    Class 19 Product Construction Materials (Building, Nonmetallic)
    Class 20 Product Furniture and Mirrors
    Class 21 Product Crockery, Containers, Utensils, Brushes, Cleaning Implements
    Class 22 Product Cordage, Ropes, Nets, Awnings, Sacks, Padding
    Class 23 Product Yarns, Threads
    Class 24 Product Fabrics, Blankets, Covers, Textile
    Class 25 Product Clothing, Footwear, and Headgear
    Class 26 Product Sewing Notions, Fancy Goods, Lace, and Embroidery
    Class 27 Product Carpets, Linoleum, Wall and Floor Coverings (Non-Textile)
    Class 28 Product Games, Toys, Sports Equipment
    Class 29 Product Foods: Dairy, Meat, Fish, Processed and Preserved Foods
    Class 30 Product Foods: Spices, Bakery Goods, Ice, Confectionery
    Class 31 Product Fresh Fruits and Vegetables, Live Animals
    Class 32 Product Beer, Ales, Soft Drinks, Carbonated Waters
    Class 33 Product Wines, Spirits, Liqueurs
    Class 34 Product Tobacco, Smokers Requisites, and Matches
    Class 35 Service Advertising and Business Consulting
    Class 36 Service Insurance, Financial
    Class 37 Service Construction, Repair, Cleaning
    Class 38 Service Communications
    Class 39 Service Transport, Utilities, Storage, and Warehousing
    Class 40 Service Materials Treatment, Working
    Class 41 Service Education, Amusement, Entertainment, Reproduction
    Class 42 Service Scientific and Technological Services and Related Research and Design
    Class 43 Service Services for Providing Food, Drink, and Temporary Accommodations
    Class 44 Service Medical, Veterinary, Hygienic, and Beauty Care for Humans or Animals
    Class 45 Service Personal and Social Services
  5. Monitor your application status. Respond to any Office Actions from the patent examiner and amend your application if necessary. Complete any required re-examinations. Appeal for more time if necessary, usually up to six months.
  6. Await publication of your mark in the USPTO's Official Gazette. Those who believe your mark will infringe or dilute their marks have 30 days to file oppositions with the Trademark Trial and Appeal Board (TTAB).
  7. Receive your trademark registration after defending your mark or receiving no opposition.
  8. Use the trademark in commerce.
  9. Maintain the trademark. You must renew it after the first five years and between the ninth and 10th years.
  10. Defend the trademark against infringement.

Frequently Asked Questions

  1. Can I trademark a slogan?
    Yes, slogans can be trademarked if they are distinctive and directly associated with your brand (e.g., “Just Do It” by Nike).
  2. How long does it take to register a trademark?
    The USPTO trademark process typically takes 12–18 months, depending on any objections or required revisions.
  3. What happens if someone else registers my trademark first?
    If another party registers your trademark, you may need to challenge it through a trademark opposition or cancellation proceedings.
  4. Do trademarks expire?
    Yes, but trademarks can be renewed indefinitely every 10 years, provided they remain in use and proper maintenance filings are submitted.
  5. How much does it cost to register a trademark?
    The USPTO filing fee ranges from $250 to $350 per class of goods or services, with additional legal fees if using an attorney.

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