What Does a Trademark Protect: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
A trademark protects a good or service offered by a company from infringement or damage of reputation by another company, and provides the owner legal recourse.6 min read
2. Trademark Protection By Use vs. Trademark Protection by Registration
3. Why Is a Trademark Important?
4. Why You Should Consider a Trademark
5. Why You Shouldn't Register Your Trademark
6. Frequently Asked Questions
7. Steps to File for a Trademark
Updated October 28, 2020:
What Does a Trademark Protect?
A trademark protects a good or service offered by a company from infringement or damage of reputation by another company. With a trademark, you have legal recourse to sue another company that uses your likeness to further their own business ventures. This includes both registered and unregistered trademarks.
In short, a trademark is a word, phrase, symbol, design, or combination that helps consumers identify a particular product. A service mark is the same but pertains to a service instead of goods. Both marks are protected once they are used. This includes both registered and unregistered trademarks.
In 1995, the landmark case of Qualitex Co. v. Jacobsen Products Co. affirmed that trademarks aid in a customer's shopping habits. By using a sole trademark, the producer reaps the sole benefit of sales, while the consumer is satisfied.
Trademarks also protect four categories including:
- Generic trademarks
- Descriptive trademarks
- Suggestive trademarks
- Arbitrary trademarks or fanciful trademarks
Once you've decided on a name or symbol, it's important to see if any other brand is using your planned trademark nationally, regionally, or locally.
Trademark Protection By Use vs. Trademark Protection by Registration
Even if you haven't trademarked your symbol through the U.S. Patent and Trademark Office, it's still protected. This is referred to as a "common law" trademark. For small geographic locations, this works well. It doesn't work as well in a national setting, as companies far and wide may have similar names or logos. If you haven't registered a trademark, you can still use the TM logo to show you have a stake in the trademark.
Disputes can arise based on the TM logo. However, it's a good starting point until you have time to register your trademark with the U.S. Patent and Trademark Office.
Although trademark protection by use gives you protection via common law, trademark by registration offers more protection. This includes:
- Notice to the public about the trademark
- The exclusive right to use the trademark nationwide to distribute goods and services
- The ability to bring legal action in federal court for infringement
- The ability to obtain a trademark in foreign countries
- The ability to file with U.S. Customs to prevent mock goods from coming into the country
Why Is a Trademark Important?
Before tackling the issue of protecting a trademark, it's important to separate trademark from trade name. Although used interchangeably under false pretenses, a trade name is simply a business name. A trademark goes beyond that to identify a particular company's brand name. However, a company such as McDonald's is both a trade name and a trademark.
Because a trademark offers infringement protection, it's important to have a mark that's easily identified. Not only does it define your business, but it also provides long-term value and builds brand recognizance. The more specific and iconic your trademark, the better it is. Not only is a vague name or logo a poor marketing tool, but it may not be eligible for a trademark.
Why You Should Consider a Trademark
For the sake of safeguarding your business, you should consider filing a registration with the U.S. Patent and Trademark Office. This protects your business and gives you an edge in legal situations. Filing as soon as possible also gives you a legitimate claim to the trademark before anyone else. Remember that TM is the trademark used for goods, while SM is the trademark for services.
You should also take care to protect your trademark by following these steps:
- Be on the lookout for other companies using your trademark.
- Don't turn your company name or trademark into a verb.
- When in doubt, register your trademark.
- Use TM or SM to show others you have a claim to the name.
- Distinguish your logo from others through bold styles or fonts.
Always use a descriptive word for your trademark rather than a generic one. This makes your business more identifiable. Here are some steps to trademark a descriptive word or words:
- Stylize the trademark and never stray from its style.
- If others use your trademark, require them to follow it by stating it is a partnership, LLC, or corporation.
- Send cease and desist letters to companies trying to steal your trademark.
Another interesting part of trademarks is that they help the hiring process. Brands inspire positive feelings and a sense of belonging to employees, making the job more attractive. This makes it easier to find loyal workers for your business. Employee retention is also positively impacted.
As far as running a business, trademarks are cheap ways to help your business. A trademark costs only $275. After five years and 10 years, you have to renew for only a few hundred dollars each time. At the five-year mark, you can also apply to have your trademark defined as uncontestable. Once your trademark is incontestable, it makes it hard for other companies to defend themselves against you in court.
Why You Shouldn't Register Your Trademark
For small businesses that don't plan to expand regionally or nationally, there's little reason to register your trademark. If you add the TM to your business name, you're protected by law, and unless a competitor starts to use the same name, you typically won't have a problem.
However, if you do business online throughout the states or overseas, a trademark is worth the effort. This is especially true if you find international businesses in the same industry.
Frequently Asked Questions
- Can two businesses use the same trademark?
Yes and no. If one business has a trademark, and another business in the same industry uses it, that's a trademark infringement. However, two separate businesses in different industries can use the same trademark since it's not confusing to the consumer.
- What laws protect my trademark?
As soon as you start using an identifiable trademark, you are protected under common, state, and federal law.
- Is my U.S. trademark good overseas?
Federal law cannot protect your name in other countries. To get a trademark, you must apply in each country where you do business. Puerto Rico, Guam, and other U.S. protectorates are covered by U.S. trademark laws. Foreigners can apply for a U.S. trademark but need a representative to handle correspondence if they are not present.
- Once I apply for a trademark, how long does it take?
Once you file for trademark registration, it takes 10 to 16 months to secure a final registration. During that time, continue to use the TM mark to avoid matters with competitors.
- Is there a difference between state and federal trademarks?
You can file for a state or federal trademark at any time, but a state trademark provides protection only in that state. A federal trademark protects you nationally, provided you are engaged in interstate commerce. Websites do not fall under this jurisdiction.
- What if I'm not using the trademark currently?
Even if you aren't currently using a trademark, you can still file for registration. File an actual use application and note the first day of use. You can also file an intent to use application if you haven't started to conduct business, but have a trademark drafted.
- Who can apply for a trademark?
Any business, person, partnership, or corporation can file for a trademark.
- What if someone else has my logo, symbol, or idea?
In the eyes of the law, it's all about who came first. If you have an idea, but find it to be taken in your state, you have no legal recourse.
- Can I always prevent others from using my trademark?
You can keep others from using the trademark in the same industry, but not in different industries. If you sell flooring under a name and a company sells T-shirts under the same name, there is no legal action available.
- Can I trademark a domain name?
You can trademark a domain name, but only if it distinguishes you from other competitors.
- Are there any annual fees?
No. Once you've paid the fee for the registration, there are no more costs. However, you must file for a trademark every 10 years.
- What's the difference between a trademark and a copyright?
Copyrights protect creative works, while trademarks protect names, logos, and slogans.
Steps to File for a Trademark
Even if you have a trademark by use, the best way to avoid legal issues is through trademark registration. With UpCounsel, you have the ability to trademark your company's image at a low-cost and without the hassle of doing it solo. Make sure to contact UpCounsel for all your trademark needs, questions, and concerns.