Trademarks: Everything You Need to KnowStartup Law ResourcesIntellectual Property
A trademark is a word, phrase, logo, or symbol that represents a company or its products. A trademark protects a company's intellectual property.11 min read
2. Trademarks: What Do They Do?
3. Why Are Trademarks Important?
4. Reasons to Consider Using a Trademark
5. Reasons to Consider Not Using a Trademark
6. Common Mistakes
8. Frequently Asked Questions
9. Steps to File a Trademark Application
Updated November 19, 2020:
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.
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.
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 Löwenbraü 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.
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.
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.
- 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.
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.
Frequently Asked Questions
- Can I trademark more than one product or service at once? A trademark application allows you to register only one product or service. File separate applications for logos, business names, and slogans unless you have combined them into one entity.
- Can more than one company use the same trademark? Yes, companies can use the same mark in business as long as the products or services are not similar enough to cause confusion among customers. Companies can also use the same mark if they do business in different parts of the country, as long as they have only common law trademark protection.
How much compensation can I get if someone infringes my trademark? The amount depends on the case. Courts usually award one of the following:
- Profits related to trademark infringement
- Damages related to your brand
- Attorney costs and court fees
- Can I register a trademark in my state? If you do business only within your state, then filing a trademark application with your state's secretary of state may give you enough protection. Some states also have a law of unfair competition to protect marks used in business. These laws may have a basis in the Model Trademark Bill or the Uniform Deceptive Trade Practices Act.
Can I register an international trademark? An international trademark doesn't exist, but you can register a trademark in separate countries. The World Intellectual Property Organization (WIPO) administers several trademark treaties:
- Paris Convention: This 1883 agreement protects industrial property.
- Madrid System: This arrangement allows international trademark registration is up to 98 territories with one application. The Madrid Agreement governs the Madrid System and the Madrid Protocol.
- Vienna Agreement: This arrangement creates a standard international classification for marks with figurative elements.
- Trademark Law Treaty: This treaty aims to standardize national and regional trademark registration.
- Singapore Treaty: This treaty adds to the Trademark Law Treaty and addresses trademarks for communication technologies.
- Nice Agreement: This agreement creates a standard international classification for products and services known as the Nice Classification.
- Nairobi Treaty: This treaty protects the Olympic symbol from commercial misuse.
- Lisbon System: This system governs products made in specific geographic regions.
- What is the Tariff Act of 1930? This law protects U.S. trademarks and prevents companies from importing products that have a trademark owned by a U.S. citizen.
- What is a service mark? A service mark protects a business's services instead of its products and offers protection similar to a trademark.
- What is a collective mark? An organization or association can use this mark to identify itself.
- What is a certification mark? Regulatory groups can use this mark to certify products. These marks show that a product meets the required manufacturing standards.
- What is a trade name? A trade name identifies a company for purposes other than marketing. Uses can include invoices, contracts, letterhead, bank accounts, or stock certificates.
- What is trade dress? This term refers to a product or packaging material's visual appearance and can serve as a signal of the product's source to consumers.
- What is the functionality doctrine? This doctrine prohibits manufacturers from registering a trademark for a certain product feature.
- What is a counterfeit? A counterfeit is a replica of a product from another company, which may include a copy of a trademark and other features.
- Can I prevent another party from posting trademarked content online? Social media sites such as Facebook have a Statement of Rights and Responsibilities and Community Standards that prevent users from posting content that violates intellectual property laws. You can report a violation through the platform, and if a user has claimed your trademarked username, you must contact the user directly.
- Do I need an attorney to register a trademark? You don't have to hire a lawyer, but doing so can help your case. Experienced attorneys know what makes a strong trademark and can help you file the right paperwork to protect your intellectual property. You'll have a higher rate of success if you get help from an attorney, and the process may be much faster.
Steps to File a Trademark Application
- Use the USPTO's Trademark Electronic Search System (TESS) to search for similar, pre-existing marks.
- Use the USPTO's Trademark Electronic Application System (TEAS) to file an application online.
- Submit an example of how your mark will appear in commerce.
Choose the correct trademark class that describes your product or service.
Paints, Coatings, and Pigments
Cleaning Products, Bleaching and Abrasives, Cosmetics
Fuels, Industrial Oils and Greases, Illuminates
Pharmaceutical, Veterinary Products, Dietetic
Metals, Metal Castings, Locks, Safes, Hardware
Machines and Machine Tools, Parts
Hand Tools and Implements, Cutlery
Computers, Software, Electronic Instruments, and Scientific Appliances
Medical, Dental Instruments and Apparatus
Appliances, Lighting, Heating, Sanitary Installations
Firearms, Explosives, and Projectiles
Precious Metal Ware, Jewelry
Musical Instruments and Supplies
Paper, Items Made of Paper, Stationery items
Rubber, Asbestos, Plastic Items
Leather and Substitute Goods
Construction Materials (Building, Nonmetallic)
Furniture and Mirrors
Crockery, Containers, Utensils, Brushes, Cleaning Implements
Cordage, Ropes, Nets, Awnings, Sacks, Padding
Fabrics, Blankets, Covers, Textile
Clothing, Footwear, and Headgear
Sewing Notions, Fancy Goods, Lace, and Embroidery
Carpets, Linoleum, Wall and Floor Coverings (Non-Textile)
Games, Toys, Sports Equipment
Foods: Dairy, Meat, Fish, Processed and Preserved Foods
Foods: Spices, Bakery Goods, Ice, Confectionery
Fresh Fruits and Vegetables, Live Animals
Beer, Ales, Soft Drinks, Carbonated Waters
Wines, Spirits, Liqueurs
Tobacco, Smokers Requisites, and Matches
Advertising and Business Consulting
Construction, Repair, Cleaning
Transport, Utilities, Storage, and Warehousing
Materials Treatment, Working
Education, Amusement, Entertainment, Reproduction
Scientific and Technological Services and Related Research and Design
Services for Providing Food, Drink, and Temporary Accommodations
Medical, Veterinary, Hygienic, and Beauty Care for Humans or Animals
Personal and Social Services
- 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.
- 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).
- Receive your trademark registration after defending your mark or receiving no opposition.
- Use the trademark in commerce.
- Maintain the trademark. You must renew it after the first five years and between the ninth and 10th years.
- Defend the trademark against infringement.
If you need help with registering a trademark, you can post your job on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies such as Google, Menlo Ventures, and Airbnb.