Key Takeaways

  • Trademark protection applies to words, phrases, logos, colors, sounds, and more that identify and distinguish a brand’s goods or services.
  • Trademark rights arise from both use (common law) and registration with the USPTO, with registration offering stronger legal advantages.
  • A trademark only protects against confusion within the same or similar industries.
  • Effective trademark protection requires consistent usage, active enforcement, and periodic maintenance.
  • Registering a trademark with the USPTO can expand protection to national and even international markets.
  • Not all elements are eligible for trademark protection—generic or merely descriptive terms generally cannot be protected.
  • Trademark enforcement can involve cease and desist letters, litigation, and international customs protections.

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:

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.

What Can and Cannot Be Protected by a Trademark

Trademark protection extends beyond just names and logos—it can include a wide range of brand identifiers that help consumers distinguish your product or service. This may include:

  • Words and Phrases: Unique brand names, taglines, and slogans.
  • Logos and Symbols: Graphic elements like icons or emblems.
  • Sounds: Distinctive sounds associated with a product, like a jingle.
  • Colors: Specific color schemes that have acquired distinctiveness (e.g., Tiffany blue).
  • Packaging (Trade Dress): Unique packaging or product design features that serve a brand-identifying function.

However, not everything is eligible for trademark protection. The following are generally not protectable:

  • Generic terms or common product names (e.g., “Milk” for dairy).
  • Descriptive terms without secondary meaning (e.g., “Cold and Creamy” for ice cream).
  • Geographic or surname-based terms unless they’ve acquired distinctiveness.
  • Ornamental features with no source-identifying function.

Each trademark must be tied to a specific class of goods or services and used in commerce to qualify for protection​.

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

Scope and Limitations of Trademark Protection

A common misconception is that trademark protection gives blanket ownership over a word or phrase. In reality, protection is limited to the class of goods or services for which the mark is registered or used. For example, “Delta” can be both an airline and a faucet company, as they operate in different industries.

Trademark protection focuses on preventing consumer confusion. You are typically protected from others using a mark in a way that could confuse consumers about the source of the goods or services.

Additionally, protection is territorial. Common law rights typically apply within a specific geographic region, while federal registration grants nationwide protection. Businesses expanding internationally may need to seek protection under the Madrid Protocol or in individual foreign jurisdictions.

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.

Benefits of Federal Trademark Registration

While common law rights offer some protection, federal registration with the USPTO provides more robust benefits, including:

  • Public notice of your ownership.
  • Nationwide exclusive rights to use the trademark in connection with your registered goods or services.
  • Legal presumptions of ownership and exclusive right to use.
  • The ability to bring an infringement lawsuit in federal court.
  • Eligibility to register the mark in foreign countries through treaties.
  • The ability to record your trademark with U.S. Customs and Border Protection to block imports of counterfeit goods.

Registered trademarks also act as powerful brand assets. They increase business value, attract investors, and signal professionalism and trustworthiness.

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.

When to Delay or Reconsider Trademark Registration

There are valid reasons to delay trademark registration or reconsider pursuing it altogether:

  • Unclear Business Direction: If your brand identity or product offering is likely to change, it may be wise to wait.
  • Budget Constraints: Registration costs start at $250–$300 per class of goods/services, not including legal fees.
  • Limited Use or Reach: If you're operating in a hyper-local market with no plans to expand, common law rights may suffice.

That said, be cautious. Delaying registration increases the risk that someone else may claim or register a similar mark. If you’re unsure, consult with a trademark attorney. You can find experienced legal professionals on UpCounsel to help guide your decision.

How to Maintain and Enforce Trademark Protection

Securing a trademark is just the beginning. To ensure your trademark protection remains effective, you must actively maintain and enforce it:

  1. Use the Mark Consistently
    Always use your trademark exactly as registered—including spelling, capitalization, design, and color (if applicable). Inconsistent use could weaken your rights.
  2. Monitor for Infringement
    Regularly search online platforms, marketplaces, and trademark databases to identify potential infringers. A monitoring service or attorney can assist with this.
  3. Send Cease and Desist Letters
    If someone uses a confusingly similar mark, a cease and desist letter may resolve the issue without litigation. If necessary, be prepared to take legal action.
  4. File Maintenance Documents
    To keep your federal registration active, you must file specific documents:
    • Between the 5th and 6th year after registration: Section 8 Declaration of Use
    • At 10 years: Section 8 and Section 9 (Renewal)
  5. Guard Against Genericide
    Avoid using your trademark as a generic noun or verb (e.g., saying “Google it” as a generic action), which can result in loss of trademark rights.
  6. Consider International Protection
    If you do business globally, seek trademark protection abroad through international treaties like the Madrid Protocol​​.

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

  1. What does trademark protection cover?
    Trademark protection covers distinctive names, logos, symbols, sounds, colors, or designs that identify your goods or services and distinguish them from others.
  2. Do I need to register a trademark to have rights?
    No. Common law rights arise from using a mark in commerce, but registration provides stronger legal benefits and broader protection.
  3. How long does trademark protection last?
    A federally registered trademark can last indefinitely if it is properly maintained and continuously used.
  4. Can I trademark a color or sound?
    Yes, if the color or sound is distinctive and serves as a source identifier for your goods or services (e.g., the NBC chimes).
  5. What happens if someone infringes on my trademark?
    You can send a cease and desist letter or pursue legal action. Federal registration strengthens your ability to enforce your rights in court. 

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