Introduction
A trademark is a word, phrase, symbol, design, or combination thereof that identifies and distinguishes the source of goods or services of one party from those of others. Trademark law protects brand identity — it is what prevents a competitor from using your company name, logo, or slogan to confuse consumers. Understanding the basics of trademark law is essential for any business owner, entrepreneur, or creative professional who wants to protect their brand.
What Can Be Trademarked?
A wide variety of identifiers can function as trademarks:
- Words and phrases — brand names, slogans, and taglines
- Logos and symbols — graphic designs and stylized text
- Colors — in certain contexts, such as the specific shade of brown associated with UPS
- Sounds — such as a distinctive jingle or tone
- Product packaging and trade dress — the overall look and feel of a product or its packaging
- Scents — in very limited circumstances
What Cannot Be Trademarked?
- Generic terms — the word “apple” cannot be trademarked for selling apples
- Purely descriptive terms — “cold and creamy” for ice cream is too descriptive
- Deceptive marks — marks that falsely describe the goods or services
- Government symbols — flags, seals, and insignia
- Names and likenesses of living people without their consent
- Immoral or scandalous content in some circumstances
Trademark vs. Copyright vs. Patent
| Trademark | Copyright | Patent | |
|---|---|---|---|
| Protects | Brand identifiers | Creative works | Inventions |
| Examples | Logos, slogans, brand names | Books, music, art, software | Products, processes, designs |
| Duration | Indefinite if renewed | Life + 70 years | 20 years (utility) |
| Registration required? | No but recommended | No but recommended | Yes |
| Governing body | USPTO | U.S. Copyright Office | USPTO |
Common Law Trademark Rights
In the United States trademark rights can arise through use alone — without registration. These are called common law trademark rights. If you use a mark in commerce to identify your goods or services you automatically acquire some trademark rights in the geographic area where you use the mark. However common law rights are limited in scope and geographic reach. Federal registration provides significantly stronger protection.
Federal Trademark Registration
Federal trademark registration with the United States Patent and Trademark Office (USPTO) provides important advantages:
- Nationwide constructive notice of your ownership of the mark
- A legal presumption that you own the mark and have the exclusive right to use it nationwide
- The ability to use the ® symbol
- The ability to bring a lawsuit in federal court
- The ability to record the registration with U.S. Customs to prevent importation of infringing goods
- The ability to use the USPTO registration as a basis for obtaining trademark registration in foreign countries
The Trademark Registration Process
Step 1: Conduct a Trademark Search
Before filing an application conduct a thorough search to ensure your mark does not conflict with existing registered marks. Search the USPTO’s Trademark Electronic Search System (TESS) at uspto.gov. Also search common law sources — business directories, social media, and the internet. A trademark attorney can conduct a comprehensive clearance search.
Step 2: Determine the Basis for Filing
You can file based on actual use of the mark in commerce or based on a bona fide intent to use the mark in commerce. Intent-to-use applications allow you to reserve rights in a mark before you actually begin using it.
Step 3: File the Application
File your application through the USPTO’s Trademark Electronic Application System (TEAS) at uspto.gov. You will need to provide a clear representation of the mark, identify the goods and services the mark will be used with using the USPTO’s classification system, and pay the filing fee — currently $250 to $350 per class of goods or services depending on the application form used.
Step 4: USPTO Examination
A USPTO examining attorney will review your application — typically within 3 to 4 months of filing. They may issue an Office Action raising objections that you must respond to. Common objections include likelihood of confusion with an existing mark and merely descriptive refusals.
Step 5: Publication for Opposition
If the examining attorney approves the mark it is published in the Official Gazette — a weekly USPTO publication. Third parties have 30 days to oppose the registration if they believe the mark would harm them.
Step 6: Registration
If no opposition is filed — or if opposition proceedings are resolved in your favor — the USPTO will register the mark. For use-based applications registration typically occurs 8 to 12 months after filing. For intent-to-use applications you must submit proof of use before registration is granted.
Maintaining a Trademark Registration
A registered trademark does not last forever automatically. You must file maintenance documents and pay fees to keep your registration alive:
- Between the 5th and 6th year after registration — file a Declaration of Use (Section 8)
- Between the 9th and 10th year — file a combined Declaration of Use and Application for Renewal (Sections 8 and 9)
- Every 10 years thereafter — file renewal documents
Failure to file these documents will result in cancellation of your registration.
Trademark Infringement
Trademark infringement occurs when someone uses a mark that is identical or confusingly similar to your registered mark in connection with goods or services in a way that is likely to cause consumer confusion. To prove infringement you must show that you have a valid trademark and that the defendant’s use of a similar mark is likely to cause confusion among consumers.
The ™ vs. ® Symbol
- ™ (TM) — can be used by anyone claiming trademark rights in a mark, whether or not it is registered. Using ™ puts others on notice of your claim.
- ® (R in a circle) — can only be used with marks that are federally registered with the USPTO. Using ® on an unregistered mark is illegal and can result in penalties.
Do I Need a Trademark Attorney?
While it is possible to file a trademark application without an attorney, working with an experienced trademark attorney is strongly advisable. Trademark law is complex, the classification system is technical, and mistakes in the application process can be costly and difficult to correct. A trademark attorney can conduct a thorough clearance search, prepare a strong application, respond to USPTO Office Actions, and advise you on protecting and enforcing your rights.
The information on LegalConsultants.com is provided for general informational purposes only and does not constitute legal advice. Always consult a qualified intellectual property attorney for advice specific to your situation.