A trademark allows customers to identify your brand and goods with ease. Recognizable branding can help your product stand out on store shelves in a crowded and competitive marketplace. Therefore, registering a trademark is imperative.
Trademarks are one of the three main intellectual property categories recognized by the U.S. government, with the others being patents and copyrights. By definition, a trademark is used to identify and distinguish your business’s products or services from those of others. Both federal and state laws govern trademarks. Marks may be registered with the United States Patent and Trademark Office (USPTO).
Your trademark can be a word, name, phrase, slogan, symbol, expression, or any combination of these. Specific coloring and packaging,sometimes referred to as “trade dress,” may also be eligible for trademark protection if customers associate it specifically with your brand. However, elements that provide competitive or functional advantages won’t qualify for trademark protection.
Are trademarks the same as patents and copyrights?
Trademarks, patents, and copyrights are all different types of intellectual property (IP) rights, but they’re used in different ways and convey different rights and obligations. Sometimes a product should be protected with more than one of these IP rights.
Unlike trademarks, which distinguish the source of goods and services in the marketplace, copyrights are used to protect original works of authorship. A work of authorship can be literary, musical, artistic, or dramatic. Some works covered by copyright include:
- Books and poetry
- Computer software
In some cases, elements such as an artistic logo or advertising copy may be covered by both trademark and copyright law.
Copyrights are inherent with the work, but can be registered with the U.S. Copyright Office. Individual works are protected for the life of the author, plus 70 years. Works created anonymously or for hire are protected for 95 years post-publication, or 125 years post-creation, whichever is shorter. Trademarks, on the other hand, may last forever as long as the mark remains in use in commerce and is renewed in a timely manner.
Patents protect new inventions by preventing others from using those inventions without the inventor’s permission. While trademarks prevent another party from using your mark, a patent prevents another party from making, using, selling, or offering the patented invention.
There are three main types of patent: design, plant, and utility. Design patents protect an invention’s unique ornamental characteristics and distinct visual configuration. Plant patents cover new and distinct plants. However, the most common type is the utility patent, which protects new or improved processes, products, or machines.
Design patents last 15 years from issuance (14 years for those filed before May 15, 2013). In most cases, utility patents and plant patents last for 20 years from the first filing date of application.
As with copyrights, there are some circumstances where trademark and patent protection can overlap. For example, trade dress, which includes a product’s appearance, graphics, texture, and color combinations, may sometimes be protected with both a trademark and a design patent.
To serve as a trademark, the mark needs to be distinctive and capable of identifying the specific source of a product or service. Legal courts group marks into four categories, each with a different level of distinctiveness. Marks that fall under the most distinctive categories wind up with stronger protection.
Arbitrary or Fanciful
Arbitrary marks include common terms that have a dictionary meaning, but don’t have any logical connection to the brand they represent. Apple, Dove, and Sun are examples of this kind of trademark.
Fanciful trademarks differ from arbitrary ones in that the mark had no inherent meaning before adopted. Some examples include Clorox, Pepsi, and Exxon.
Distinctive, arbitrary, and fanciful marks qualify for a high level of trademark protection.
Suggestive trademarks, as the name implies, suggest or hint at a product’s nature or attributes without saying this information outright. A few well-known examples are Netflix, which alludes to movies, and Coppertone, which suggests that the product is a type of suntan oil.
This type of mark describes a product’s qualities, functions, purpose, or features. Because descriptive marks literally describe the product, the law doesn’t favor giving one party the right to exclude others from using it. Descriptive marks aren’t inherently distinctive, so they may not be eligible for trademark protection unless they develop something called secondary meaning.
A mark can develop secondary meaning when consumers begin associating the term with your specific product or service. This can happen due to heavy advertising or using that mark over a long period of time. Examples include Holiday Inn for hotels and Xerox for copiers. In determining whether a mark has acquired secondary meaning, courts will consider:
- Sales volume
- Amount and type of advertising
- Length and manner of term’s use
- Consumer survey results
If the mark develops secondary meaning, then it’s more likely to achieve a successful registration as long as there are no conflicting marks.
Generic marks describe the type of category to which a product or service belongs. “Computer,” “oven,” “sweater,” and “mug” can all be considered generic marks. This type of mark can’t receive protection under trademark law because it would prevent too many other businesses from using that term. In addition, some trademarks that start out distinctive can become generic over time if the mark isn’t properly enforced. This can cause the mark to lose its trademark protection.
Every state has different trademark laws. You may need to apply for both a state and federal trademark to ensure that you fully protect your rights.
Applying for a Trademark with the USPTO
There are several steps to registering a trademark with the USPTO:
Ensure trademark availability
Before you begin the trademark registration process, search the USPTO database to ensure the availability of your mark.
Establish filing basis
Your filing basis can be listed as “use in commerce” if you’ve already used the mark for all goods and services in your application. You’ll file under “intent to use” basis if you haven’t yet done this, but plan to do so in the near future.
Fill out and file trademark application with USPTO
You can apply for a trademark online on the USPTO website. If you want to apply for multiple trademarks, you’ll need to submit a separate application for each one.
The USPTO offers two main types of filing options: Trademark Electronic Application System (TEAS) Plus and TEAS Standard. You can use TEAS Plus if you’re able to include all requested information at the time of filing (referred to as a complete application). You must also be able to choose an accurate goods or services class from the Trademark ID Manual. In some cases, the ID Manual may not have an accurate class for your goods or services. You’ll need to apply via TEAS Standard and create your own ID if this applies to you.
Registering a Trademark
The USPTO charges fees to apply for a trademark. Fees vary depending on filing basis, initial application form used, and the number of classes that a product or service falls under. There’s an additional $125 fee for requesting an extension of time needed to prove your use of the mark.
Registration with the USPTO isn’t mandatory, but doing so has several advantages. These include:
- The exclusive right to use the mark on your goods or services
- A notice to the public of your ownership of the mark
- Legal presumption of ownership nationwide
Registering your trademark can spare you from legal headaches down the road if you’re ever accused of infringement. A certificate of registration proves the validity of your mark, so it falls to the accuser to provide evidence to the contrary. If you haven’t registered your mark, the burden of proving your right to use it will fall to you.
Acquiring Rights through First Use Doctrine
If you’re the first one to use a mark, then you can acquire trademark rights via the first use doctrine. The USPTO considers when the mark was first used in commerce. It also considers the first date that it was used anywhere in connection with your goods or services. The date of first use in commerce is the date when:
- Goods were first transported or sold; or
- Services were first rendered under a type of commerce that can be legally regulated by U.S. Congress.
The first use doctrine can be helpful if another business tries to use your mark without permission. In this case, you can contest their application or apply for registration with the USPTO yourself, noting the date that your mark was first used. Registering the mark before there’s a dispute can prevent legal headaches in the future.
Protecting Your Rights
The USPTO doesn’t seek out trademark violations. If you feel that someone has violated your trademark rights, it’s your responsibility to pursue legal action for infringement.
Your business’s name is its identity, and registering for a trademark is one of the best ways for you to protect it. By filing for a trademark, you’ll safeguard your rights and have peace of mind for years to come.
Do I need an attorney to file for a trademark?
Residents of the United States and its territories don’t need to have an attorney in order to file for a trademark. If you live in a different country and wish to apply for a trademark with the USPTO, you’ll need an attorney to represent you. This attorney must be licensed to practice law in the United States. The USPTO encourages you to consult an attorney who specializes in trademark law even if you’re not required to have one. An attorney can guide you through the application process and answer any questions you may have.
What might constitute trademark infringement?
Someone may use your mark without permission, which can cause confusion in consumers over the source of your goods or services. If this happens, it may be considered trademark infringement. This can also happen if another business has a mark that’s similar to yours. To determine infringement, the court will consider factors such as:
* The likelihood of consumer confusion
* Similarity between marks
* Ownership of a federal trademark registration on the Principal Register
Trademark infringement is complicated. You should consult an attorney if you believe infringement of your trademark has occurred.
What remedies are available for trademark infringement?
In the event of proven infringement, remedies include any of the following:
* A court order preventing the infringing party from using the mark
* An injunction that requires the forfeiture or destruction of infringing goods
* A court order for the defendant to pay the plaintiff’s legal fees
* Monetary relief for damages, including profits the defendant earned while using the mark
Can someone lose trademark rights?
Trademark rights may be lost through:
* Abandonment. A trademark can be considered abandoned if it hasn’t been used for three consecutive years.
* Generic. A trademark that was originally distinctive can become generic over time, which can result in the mark losing legal protection. This happens if a substantial majority of the public uses the term to denote a broad type of product rather than a specific brand. Some popular examples include cellophane, aspirin, trampoline, and escalator.
* Improper licensing or assignment. When a trademark is licensed or assigned to another party, such as a franchisee, it can be lost in some circumstances. This can happen if the mark is not properly supervised by the owner. It’s also possible if the trademark is assigned without the corresponding sale of assets.
How much does it cost to file for a trademark?
The cost to file for a trademark depends on how many marks you’re applying for and how many classes each mark falls into. If your mark falls into multiple classes, there’s a separate fee for each one. In general, if you’re filing via the TEAS Plus option, the fee is $250 per class of goods or services. If you file TEAS Standard, the fee is $350. The USPTO publishes a full fee schedule on its website.