How to Get Trademark Rights: A Simple Guide to Establishing Trademark Rights

What is a Trademark?

Legal Purpose of Trademark Rights

In order to understand how trademark rights are acquired, you must first understand what a trademark is. Trademark rights came into existence to protect both businesses and consumers by fostering trust and clarity in the marketplace. These rights serve a dual purpose: ensuring that consumers can identify the source of goods or services, and protecting businesses from unfair competition resulting from the misuse of their branding.

A trademark is a source identifier that distinguishes a product, brand, or business name from others in the marketplace. The primary function of trademarks is to help consumers identify the origin of products and prevent confusion with similar marks. Trademark law protects (1) the trademark owner by providing the exclusive right to use a specific trademark in connection with their goods or services and (2) the consumer by enabling them to rely on a particular source of goods or services.

Trademark law grants legal protection to registered trademarks, but unregistered marks can still gain common law trademark rights through use of the mark in connection with goods or services ("actual use in commerce"). However, common law protection is limited compared to federal registration, which carries nationwide rights, a presumption of trademark rights, and a public record of the owner's trademark rights. We explore these distinctions in greater detail below.

Trademarks are Different than other Forms of Intellectual Property

Trademark rights are unique because they are created from the relationship of the trademark owner and the consumer. Unlike copyrights or patents, they are not the result of creative expression or innovation. A particular trademark can contain significant artistic expression, such as the famous Ferrari logo, the MGM logo, the Columbia Pictures logo, and the Starbucks logo. However, such artistry is not required to establish trademark rights. A trademark can be essentially devoid of creativity. To illustrate, consider the GAP name and logo, General Motors' name and logo, and American Airlines.

Another distinction between trademarks and other intellectual property is that term of trademark rights is based on continued use. Unlike patents or copyrights, which have a fixed term, trademarks can last indefinitely, provided they remain in use and maintain distinctiveness from other brands. If a trademark owner stops using the mark in connection with the sale of its goods or services, the rights can be lost due to abandonment. Because trademarks are source identifiers for goods and services, when the source of the goods and services is no longer using the mark, the mark no longer serves its lawful purpose and the trademark rights cease.

Form of Trademarks

Trademarks can include unique combinations of letters, sounds, symbols, or designs, often representing a brand's identity. When used for services, they are called service marks. Trademarks are a key element of intellectual property and differ from other intellectual property rights, such as patents or copyrights, because they protect branding rather than inventions or creative works.

How to get Trademark Rights

Trademark rights can be acquired through three main methods: common law use, state registration, and federal trademark registration, each providing varying levels of trademark protection. Common law rights arise automatically when a trademark name or service mark is used in connection with goods or services in commerce. These rights depend on active and continuous use and are geographically limited to the area of consumer recognition, though an online presence can expand this reach. State trademark registration provides localized protection within the state, offering exclusive rights within its borders. Finally, federal registration through the USPTO grants nationwide protection and enhanced protection under trademark law, with the federally registered mark benefiting from the legal presumption of validity. The specific process and requirements for each method vary, but all emphasize the importance of proper use, registration formalities, and alignment with the intended scope of the business.

Establishing Common Law Trademark Rights

Trademark rights can be established under common law without formal registration by using a mark in connection with goods or services in commerce. This process explains how to get trademark rights based on actual use rather than registration. A business entity or individual acquires exclusive rights to a trademark name or service mark when the mark is used publicly to identify the source of goods or services. The provision and sale of goods or services in commerce under a trademark or service mark generates trademark rights as long as it is a proper form of trademark and it is not confusingly similar to an existing third-party trademark. If the mark is generic (e.g., you are calling your barber shop "The Barber Shop) or if you are using a confusingly similar mark to an existing mark (e.g., you are trying to sell fresh fruit under the name "Sunkissed", which is almost identical to the famous Sunkist brand ), you will not establish trademark rights. Otherwise, the simple use of a trademark in commerce will result in the establishment of trademark rights, which will grow in strength with sustained use.

The geographic scope of a common law trademark is determined by the area where the mark is actively used and recognized by consumers. Historically, this was limited to the locations where a business had a physical presence. However, the internet has significantly expanded the geographic reach of a business name or service marks, enabling businesses to claim broader geographic trademark rights if their online presence creates recognition outside their immediate location. For example, the furniture and décor company Wayfair is exclusively on the internet, but has national reach with its products. Even if Wayfair never pursued a trademark registration, it would have nationwide common law trademark rights. Conversely, the geographic scope of the trademark rights of a local salon reach only as far as the local area in which consumers recognize its business name.

Common law trademarks can be enforced under both the Lanham Act and corresponding state laws, offering claims and remedies for trademark infringement even without federal registration. The Lanham Act provides a federal cause of action for the unauthorized use of a similar mark in a way that is likely to cause confusion, deception, or mistake in connection with goods or services. Remedies under the Lanham Act include injunctive relief, monetary damages, and, in some cases, recovery of the infringer's profits.

At the state level, common law claims, such as unfair competition or passing off, can also be pursued to stop the misuse of a mark. State laws vary but generally allow for remedies like injunctions and damages for harm caused by the unauthorized use of a trademark name or service mark.

Although common law trademarks lack the presumption of validity provided to registered marks, trademark attorneys can help trademark owners establish their rights by presenting evidence of active and continuous use in commerce. This may include showing consumer recognition in the relevant market or proving that the mark has acquired distinctiveness. These legal pathways enable private companies and individuals to protect their intellectual property rights and secure relief from unauthorized use.

State Trademark Registration

State trademark registration offers localized trademark protection and differs across states in terms of scope and rights. The state trademark registration process involves filing a trademark application with the relevant state agency, such as the California Secretary of State, and paying the required trademark registration fees. In California, registering a trademark grants the registered mark exclusive use within the state, providing legal grounds to prevent unauthorized use of the mark in connection with goods or services in California.

The application process is typically less complex and costly than federal registration, but the geographic scope of rights is limited to the state’s borders. In California, trademark law allows enforcement through state courts, providing remedies like injunctive relief and damages for infringement.

State registration is useful for businesses operating locally or regionally and that do not engage in interstate commerce. A trademark attorney can assist in navigating the trademark registration process to register a trademark and secure robust state-level protection.

Federal Trademark Registration

To establish trademark rights through a trademark application at the federal level, you must file with the United States Patent and Trademark Office (USPTO), the federal agency that registers trademarks. Federal trademark registration provides enhanced protection, including the exclusive right to use a registered mark in connection with the goods or services listed in the application throughout the U.S.

Filing Requirements and the Application Process

The trademark application process requires that the Applicant choose a filing basis, which can be:

Intent-to-Use (for marks not yet in use but with a bona fide intent to use in interstate commerce)

Use-in-Commerce (for marks already in use in interstate commerce).

For an intent-to-use application, applicants must have a bona fide intent to use the applied-for mark in interstate commerce. This means that the applicant has real and present plans to use the mark in commerce. An applicant cannot reserve marks for later use by filing an ITU application without a good faith intent to begin use of the mark. For example, if you come up with a clever name that you like for a clothing line, you need more concrete intent to use the mark than just a general desire to start a clothing brand under the imagined brand name. The intent to use the mark must be tied to a real plan of action.

A present-use application requires evidence of actual use during the initial filing. A present-use application requires proof that the mark is already in use in interstate commerce, meaning the goods or services are offered across state lines or at least impact trade between states. Applicants must include a declaration of use, affirming active use of the mark, and provide a specimen of use (e.g., product labels, website screenshots showing sales, or other evidence that the mark is being used in interstate commerce). The trademark application must also specify the date of first use in commerce and first use anywhere, demonstrating the mark's active and continuous use. Additional requirements include identifying the mark, its class of goods or services, and paying the required filing fees.

Application Components

The trademarking process begins with filing an initial application that includes a clear depiction of the mark (e.g., a standard character mark), a description of the goods or services, and the filing fee and any additional trademark registration fees. A key part of the initial application is designating the appropriate trademark classes. The USPTO organizes goods and services into 45 broad categories: 34 for products and 11 for services. For example, Class 25 covers clothing items like T-shirts and jackets, while Class 35 includes business services such as marketing and advertising. Each class designated in the application is treated as a separate application with its own separate application fee. Applicants must specify the class or classes relevant to their proposed mark.

The initial application must be filed electronically through the Trademark Electronic Application System (TEAS), an efficient platform offered by the USPTO. Applicants can choose between the TEAS Plus and TEAS Regular forms. The TEAS Plus option has lower required fees (currently $250 per class of goods or services) but requires strict adherence to specific descriptions of goods and services in a pre-approved list provided in the USPTO's Trademark ID Manual. The TEAS Regular form, while more flexible in allowing custom descriptions, has higher required fees (currently $350 per class).

Trademark Office Examination

The United States Patent and Trademark Office (USPTO) is responsible for processing trademark applications and maintaining the federal trademark registry. The USPTO provides resources and tools to help applicants navigate the trademark registration process. After submitting a pending trademark application to the trademark office, the examination process begins. An examining attorney, assigned by the USPTO, conducts a comprehensive trademark search in the USPTO database to identify potential conflicts with existing registered trademarks or pending applications. If the examining attorney raises concerns, such as similarity to an existing mark or issues with the stated filing basis, the applicant receives an office action detailing objections.

Applicants must respond to an office action within six months to maintain their application. If the examining attorney approves the application, the mark is published in the Official Gazette, allowing the public to challenge its registration on legal grounds within a 30-day window. If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark office issues a registration certificate, granting the mark the status of a registered mark on the federal trademark registry with enhanced protection under federal trademark law.

For intent-to-use applications, the process includes additional steps. Before the application can advance to a federal registration, the applicant must file a statement of use proving the mark’s use in commerce within six months of the notice of allowance of the pending application. If more time is needed, applicants may submit extension requests, allowing up to five additional six-month periods to meet this requirement.

Successful federal trademark registration provides the legal presumption of ownership and exclusive rights to the mark for specific goods or services, as listed in the official record. The process ensures the trademarking process maintains fairness and clarity in the market, while providing the registered mark enhanced protection and the ability to enforce rights in federal court.

How Long Will it Take to Register a Trademark?

The entire process typically takes between 12 and 18 months to complete, depending on factors such as application completeness and formalities, and whether the trademark examiner raised any issues. After submission, the trademark office reviews the application within 6 to 9 months. If no office action or opposition arises, registration proceeds smoothly. However, the timeline may extend due to examining attorney reviews or public opposition during publication in the Official Gazette. For faster processing, the USPTO offers expedited options under special petitions for urgent cases, which require additional filing fees and specific justifications, such as an existing trademark infringement issue.

International Trademark Registration Based on US Federal trademark registration

A U.S. trademark registration or pending trademark application can serve as a priority application for foreign registration under the Madrid Protocol or foreign national trademark systems. By filing a foreign trademark application within six months of the U.S. filing date, applicants can claim the U.S. filing date as their priority date in other jurisdictions. This priority claim provides an advantage by securing earlier rights in foreign markets, offering protection against later-filed conflicting marks. The Madrid Protocol simplifies international filings by allowing a single application to cover multiple countries, reducing costs and administrative burdens while ensuring a streamlined trademark registration process globally.

What Steps Should You Take to Establish Trademark Rights

Do an initial trademark search

Conducting a trademark search is a critical first step in the trademarking process to ensure your proposed mark does not conflict with existing registered trademarks or other protected marks. The USPTO’s Trademark Electronic Search System (TESS) allows you to search the trademark registry for direct matches with all or part of your proposed mark. This helps identify potential conflicts within the USPTO database, ensuring your application meets trademark law requirements.

Do a Broad Trademark Search Beyond the US Trademark Registration Database

Beyond a TESS search, state trademark and business registries, domain name databases, social media handles, and the internet should also be searched to determine whether there are existing state registrations and common law rights in the same or similar marks. State trademark registrations and unregistered marks might present potential trademark infringement risks. By performing a comprehensive search, you minimize the risk of application rejection or legal disputes, saving time and resources in the trademark registration process. Seeking the assistance of an experienced trademark attorney can ensure the accuracy and proper scope of the search.

The Difference Between ^TM, ^SM, and ^® Symbols

What do the symbols mean and when to use each

Trademark symbols indicate the status and type of trademark rights associated with a mark:

™ Symbol: The ™ symbol signifies that the mark is being claimed as a trademark, typically for goods, even if it is not registered. It provides notice of the claim but does not confer any specific legal protection beyond common law rights.

SM Symbol: The SM symbol is used for service marks, which identify the source of services rather than goods. Like ™, it indicates a claim of rights but does not require federal registration.

® Symbol: The ® symbol denotes a mark that is federally registered with the USPTO. Its use is legally reserved for registered trademarks and provides enhanced protection, including a legal presumption of ownership and validity. Improper use of the ® symbol for unregistered marks can lead to legal penalties.

Constructive Notice Using the ® Symbol

The use of the ® symbol provides constructive notice to the public of the trademark owner's rights. Constructive notice means that anyone who uses or attempts to register a mark identical or confusingly similar to the registered mark is deemed to be aware of the existing registration, even if they did not actually know about it. This legal doctrine prevents a defense of ignorance in cases of trademark infringement.

The significance of constructive notice lies in its role in strengthening trademark protection. It creates a legal presumption of the mark's validity, ownership, and exclusive use for the specified goods or services nationwide, regardless of the actual geographic scope of use. This presumption allows the trademark owner to enforce their rights in federal court more effectively, deterring potential infringers and simplifying the litigation process.

Proper use of the ® symbol is crucial to maintaining these benefits. Failure to use the symbol, while not invalidating the registration, may weaken claims of infringement, as it could limit the remedies available for damages arising from unintentional infringement. Consequently, displaying the ® symbol serves as a powerful tool in protecting and asserting the value of a registered trademark.

Conclusion

Establishing Trademark Rights

Private companies and individuals alike benefit from establishing trademark rights to distinguish their brand and acquire the legal right to protect it. A properly protected trademark strengthens a brand's market position while deterring unauthorized use of its identifying marks. Trademark rights can be established through use of the mark in commerce through common law rights. However, trademark registration provides enhanced trademark protection and rights on a nationwide basis.

Contact our firm for a free consultation regarding the trademark process.

© 2024 Sierra IP Law. The information provided herein is not intended to be legal advice, but merely conveys general information that may be beneficial to the public, and should not be viewed as a substitute for legal consultation in a particular case.