US Trademarks

US trademarks are mechanisms that represent a brand or product in the public market. They can include features ranging from names to logos to how they are designed. It allows a consumer to match the identifying mark with a clear brand or creator.

Trademarks vary significantly, and beyond words and logos, can even include sounds and smells. Almost any uniquely identifiable and representative name can be trademarked nowadays, which makes it important for companies to trademark their business's distinguishing features.

A principle known as the doctrine of functionality is a major determinant of a trademark's potential approval. Essentially, it means that a trademark needs to be distinctive as well as used for business purposes.

The requirement that the trademark is used in business is because the Constitution permits federal regulation when the product is used in interstate commerce. The trademark will either need to be already in business use or with real intent to soon be used for commercial purposes.

If the trademark is not currently in commercial use, the application still may be approved and the trademark registered if real intent is demonstrated to soon use the trademark for commerce.

The person who first uses a trademark in business gains rights to it under both common law as well as under USPTO registration, called registering through the Lanham Act.

Distinct Trademarks

The trademark will also need to be distinctive. This means that the trademark has to be unique enough to be clearly recognized by consumers as connected to a brand or person.

There are four categories of distinct trademarks:

  • Arbitrary
  • Descriptive
  • General
  • Suggestive

Arbitrary trademarks will be deemed to be automatically unique enough. Whoever uses the trademark first gets the right to use it.

If the trademark is considered descriptive, it can only be trademarked if it has also accumulated an additional public association or connection when seen. For example, wording that uses personal names or geography will require an additional association.

If a term is considered general, then it will not be able to get trademark protection.

Trademarks might be general initially, or over time they may become general and thus lose trademark protection.

Trademark Registration

Federal trademark registration and rights originate from the Lanham Act. By registering a trademark, the owner gets the right to file lawsuits against those who infringe on the trademark.

While it is not necessary to register the trademark to get protection, by registering a trademark, the owner gets what's considered nationwide "notice" that they own the trademark. Furthermore, if they hold the trademark for five years straight, they might also get incontestable use privileges for the trademark that further protects their right to use it.

There also are state-level registration and protection procedures for trademarks. Many states have enacted a common set of trademark rules, with the two main forms varying in whether they have formal registration.

On the federal level, the Lanham Act, as well as the CFR 37-2, determine the governing rules for federal trademarks. The USPTO is designated with the responsibility of examining trademarks that are registered and keeping them maintained properly.

The USPTO retains the right to deny trademark registrations. If the registration is refused, then the applicant has half a year to fix their registration and re-apply. If the trademark is officially approved, then the USPTO will publish it in its newsletter to get public comment.

Those who believe the trademark may infringe on their rights and assets are allowed to file formal opposition to the trademark after it is published in the USPTO newsletter. To succeed in opposing a trademark registration, the person must demonstrate both that they personally will be hurt by the trademark and show why the person applying for the trademark is not legally permitted to receive it.

If no opposition proceeding succeeds, then the trademark will become officially registered, and its registration will be published in the USPTO newsletter too. Yet, even after official registration, others can still challenge the trademark under similar grounds by filing a petition. This must be done in the next five years after registration.

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