1. What Is a Trademark?
2. What Do Trademarks Do?
3. Registering a Trademark
4. Getting Legal Help
5. How Do You Protect a Trademark?
6. How Long Does a Trademark Last?
7. How Is a Trademark Different Than a Copyright or a Patent?
8. What Sources of the Law Govern Trademarks?

What Is a Trademark?

“What is a trademark” is a common question amongst those interested in getting something protected. A trademark is a piece of intellectual property that gives the owner the right to sell goods and services using:

  • A registered name
  • Logo
  • Symbol
  • Color scheme
  • Word
  • Phrase

A trademark can be used to protect a name, symbol, device, or a work that’s used in association with a business that sells goods and services. Trademarks that are connected to services are officially referred to as a “service mark.” However, the term trademark is often used to describe protections for both goods and services. It’s not usually necessary to distinguish between service marks and trademarks. Trademarks give business owners the right to use a certain symbol, word, symbol or name. It also means that no one else can use that trademark unless they have permission from the owner of the trademark.

Trademarks can also refer to elements of graphic design including certain colors, images, and even a product’s packaging. It can relate to every aspect of a company’s brand, such as the Nike swoosh, the orange-black packaging, and, of course, the name “Nike.” These additional features of a brand are referred to as “trade dress.” If these trade features relate to an invention or structural design, they are not protected by the trademark, and would, instead, fall under the protections of a patent.

Trademarks help consumers recognize and establish a relationship with brands. If a consumer buys a pair of sneakers from Nike, they will recognize the symbol, name, and colors of the Nike logo. If they need more sports gear in the future, they will see the Nike symbol and factor their previous experiences with Nike into their decision-making process. This gives companies some incentive to establish an easily-recognizable brand, as opposed to a bland image that can easily get lost in the shuffle.

In order to register for a trademark:

  • A company needs to make sure that they are using the term “trademark” properly.
  • The trademark must be something distinctive and not a general description.
  • It must also be related to the good or service being sold.
  • The trademark must also be registered with the correct administrative office in order for the company to obtain full rights and legal ownership.

A trademark usually lasts for 7 to 20 years, depending on the type of trademark issued. Trademarks can be renewed an infinite number of times. The rights of the trademark owner extend beyond national borders and may be enforced in any country. If the trademark is being used inappropriately, such as not applying to goods or services, it can be revoked or watered down, depending on the situation.

There are 42 different international classes of trademarks. Each class represents a different industry or a different group of goods and services. A business can register a trademark in several classes, but it can only be enforced as it relates to company’s specific industry.

Some companies and trademark owners will put a “TM” at the end of their symbol, name, or phrase. While this isn’t absolutely necessary, it prevents another person from claiming ignorance as to the existence of the trademark. If these disputes were to go to court, the person or company that’s infringing on the trademark might claim that they had no idea that the word, symbol, or name was associated with a trademark. That does not mean that the infringing party is free to use the trademark, but it might diminish the rights of the party in possession of the trademark.

If a company is forced to spend a great deal of money registering and defending a trademark in court, they will usually recoup these losses if they have a successful product or brand. For most companies, the ownership of a trademark is more valuable than tangible assets such as real estate or financial investments.

What Do Trademarks Do?

A trademark gives a company or an individual full ownership of a brand name, symbol, logo, word, or phrase. It allows them to sell goods and services using that trademark. It also prevents other companies from using the same name, symbol, logo, word or phrase. However, another company is free to sell the same goods and services using a different brand name, logo, word, symbol or phrase.

The trademark should be registered with the U.S. Patent and Trademark Office, otherwise known as USPTO. This isn’t necessary, but the company should register with the USPTO if they plan on using the trademark indefinitely. The office will provide additional legal protections. If the individual or company does not have enough resources to register with the USPTO, they may do so at a later date.

While some companies or individuals use the “TM” symbol after their trademark, other will use the ® symbol if they have registered with the USPTO. The ® symbol cannot be used with a trademark that’s pending or one that hasn’t been registered with the USPTO.

Registering a Trademark

While it’s possible to own a trademark without registering with the USPTO, using the federal office does give the trademark owner some additional benefits. Registering with the USPTO gives the owners legal presumption that that the registrant is the owner of the trademark. The owner also gains the right to file a lawsuit about a trademark dispute in federal court.

Registering with the USPTO doesn’t take a lot of effort. If a company or individual needs to register with the USPTO, they can do so online using the office’s online application. When applying for registration, they need to include:

  • Their name
  • Contact information including address
  • Description of the trademark
  • An image of the symbol if one is being used
  • A list of the goods and services being sold in connection with the trademark
  • The applicant also needs to pay a fee for filing the application with the USPTO

Depending on the nature of the application, some companies or individuals may need to include what’s known as a “specimen of use,” which is an example of the trademark being used in the real-world. If the application is denied, all materials will be returned to the applicant. The company or individual that originally applied will also receive a full refund on the filing fee.

If an applicant, company or individual is confused in terms of whether a trademark is necessary or what legal protections a trademark may provide, they should reach out to a trademark attorney. The interested party can also consult a legal database such as UpCounsel.com for more information. It’s important that the company or individual understand the basic legal structure for applying for a trademark before submitting an application to the USPTO.

How Do You Protect a Trademark?

Registering with the USPTO does not automatically guarantee trademark protection for the individual or the company. This comes from using the trademark in the real-world. If a legal dispute were to arise, the defending party would need to prove in court that they have been using the trademark in connection with their business, particularly with the goods and services that the company provides.

A company or an individual can apply for several different types of trademarks, including a common law trademark, state trademark, or a federal trademark. These trademarks come with different purveys, such as protecting a trademark within a particular region such as a state or the country as a whole.

The company may still have ownership of the trademark for legal purposes if it has been using the name, logo, or symbol in connection with its goods and services for some time. This is still true even if the company has not filed with the state or the USPTO. If another company is looking to steal aspects of one company’s trademark, the original company will have to show that they started using the trademark to sell goods and services before the second company. Rights to the trademark will usually be awarded to the company that first started using the trademark for commercial purposes.

How Long Does a Trademark Last?

A common law trademark is a type of trademark that can be enforced across different regions. An official common law trademark will last indefinitely, but if the owner stops using the trademark or declines to enforce their rights as the owner of the trademark, their ownership rights may lapse overtime. If a company owns a common law trademark, they need to make sure that they are enforcing their rights across the globe to prevent a lapse in ownership.

A federal trademark, a trademark that applies to the entire United States, will last for 10 years. It can be renewed every 10 years for as long as the owner chooses. A state trademark, a trademark that only applies to the state, will last for as long as the state’s trademark laws allow. The owner of the trademark should check their state’s trademark laws for more information. Every state allows the owner to renew their trademark if certain conditions are still being met.

There is a great deal of overlap between a copyright, patent and a trademark. Each one represents a different kind of intellectual property. A copyright protects a piece of creative material, such as a song, story, play, drawing, or some other kind of artistic creation. This usually applies to the creative arts industry, including theater, movies, TV, music, and literature. All creative works are protected in theory as soon as the author or creator has finished creating the material. However, if this work never sees the light of day, it may be difficult for the owner to prove in court that they were the ones who originally came up with the idea. If a person is interested in copyrighting a piece of material, they should register with the U.S. Copyright Office.

A patent protects an invention, such as a new piece of equipment or a consumer good. A patent gives the owner the right to manufacture, sell or lease the invention. The owner must register with the USPTO in order to obtain an official copyright. This process requires the owner to hand their materials including specifications and blueprints over to the USPTO, thus making such information public.

Unlike a copyright and a patent, a trademark is strictly limited to selling goods and services to the public. A trademark only covers a few creations such as a logo, word, phrase, name, or symbol. It does not cover longer pieces of text such as a short story, jingle, description, or a memorandum. It may be helpful to think of a trademark as a part of a company’s advertising strategy, while copyrights and patents refer to products and creations themselves.

What Sources of the Law Govern Trademarks?

The source of the law that governs trademarks depends on what type of trademark the owner has registered for. A state trademark will be controlled by the state, while a federal trademark is controlled by the federal government in the form of the USPTO. The idea of a trademark has been around since the beginning of the country. The first type of trademark issued was a state trademark, thus giving individual states the license to decide what kinds of trademarks could be issued.

Things changed in the late 1800s when Congress passed the first federal trademark. Since then, the federal trademark has become the preferred method for businesses and corporations. This has led to a concentration of trademark law on the federal level. Before federal trademark law, many businesses found their competitors offering similar products and services using the same trademark in other states, thus leading to brand confusion and a lack of brand loyalty. As consumers began traveling longer distances, federal trademark law finally became the new standard, ensuring trademark protection in all areas of the country.

While state trademarks are still available to businesses and individuals, it makes the most sense to register at the federal level. This is especially true for e-commerce companies and online businesses that sell their products overseas and across state lines.

If you need help understanding what a trademark is, you can post your legal 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 like Google, Menlo Ventures, and Airbnb.