Most Frequently Asked Questions about Trademarks

Trademarks are a critical intellectual property component of business and brand identity. Here are answers some of the most frequently asked questions about trademarks:

1. What are trademarks?

Trademarks are symbols, words, phrases, designs, or combinations thereof that identify and distinguish a source of goods or services of one party from those of others. Trademarks benefit and protect consumers by signaling the origin of goods and services. When consumers see a trademark, such as a logo or brand name, they associate it with a specific level of quality and reputation. This helps prevent confusion between goods and services in the marketplace, ensuring that consumers can reliably identify and choose products or services from a trusted source. Trademark law (e.g., the federal Lanham Act and state trademark laws) provide the trademark owner with exclusive rights to use a trademark to facilitate the protection of consumers and deter counterfeit and deceptive practices and unauthorized use (infringement). Trademarks are a unique form of intellectual property that is generated by the use of the mark in the marketplace, whereas rights in other forms of intellectual property (e.g., patents and copyrights) are awarded to their creators. You cannot establish trademark rights by simply conceiving a clever name, phrase, or logo. You have to sell or provide goods and services in connection with the mark in order to establish trademark rights. Both trademarks and service marks must be distinctive and used in commerce to qualify for protection.

2. Why are trademarks important?

Trademarks protect brand identity, helping consumers distinguish between different products and services. They also provide legal protection against unauthorized use and help build brand loyalty. A trademark registration offers significant benefits, such as nationwide recognition and a presumption of ownership, which simplifies enforcement actions against infringers. It enhances value in brand names and can be a crucial asset in business transactions, such as mergers and acquisitions. Furthermore, a registered trademark enables the owner to leverage licensing opportunities, expanding market reach. Overall, trademark registration secures a competitive edge, fostering consumer trust and long-term brand growth.

3. What can be trademarked?

Almost anything that serves as a source identifier can be trademarked, including names, logos, slogans, colors, sounds, and even scents. For example, company names like "Coca-Cola" are trademarks, as are logos such as Apple Inc.'s apple symbol. Slogans like Nike's "Just Do It" are also protectable through trademark registration. Unique colors, like Tiffany & Co.'s distinctive blue, and sounds, such as NBC's chimes, can be trademarks. Even scents, such as the distinctive smell of Play-Doh, can be registered. These trademarks help consumers distinguish products and services from one another in the marketplace, ensuring brand recognition and protecting intellectual property.

4. How do I choose strong trademarks?

Strong trademarks must be distinctive, easily recognizable, and unique, making it readily identifiable in the marketplace. Fanciful, arbitrary, and suggestive marks are distinctive and strong, while descriptive marks (marks that describe a feature, quality, or aspect of the goods or services - "SAVORY SLICES" for a pizza parlor business) are weak, and generic terms cannot function as trademarks (e.g., "PIZZA CO." for a pizza parlor business). Strong trademarks often include invented words (like "Kodak"), arbitrary terms unrelated to the goods or services (like "Apple" for computers), or suggestive marks that hint at a product's nature without describing it directly (like "Netflix"). Strong trademarks avoid generic or descriptive terms that merely describe the product or service. A strong mark should be distinctive enough to stand out and create a clear association with the brand, ensuring robust legal protection and reducing the risk of confusion with other businesses and brands.

5. What is the difference between a trademark and a service mark?

A trademark identifies goods, while a service mark identifies services. A trademark might protect a logo or brand name associated with products like clothing or electronics, whereas a service mark safeguards identifiers linked to services such as legal advice or cleaning services. Despite this distinction, both serve to distinguish the source of goods or services and prevent consumer confusion, ensuring that businesses can maintain their unique market identities. The term "trademark" is often used to refer to both trademarks and service marks.

6. Why should I pursue a trademark registration?

Federal registration provides strong legal protection, including the exclusive right to use the mark, the ability to sue for infringement when a third party uses an identical or similar mark, and the presumption of ownership nationwide. By securing a registration, a business ensures its brand is legally safeguarded against unauthorized use, enhancing its competitive edge and market presence. Registration reinforces the connection between a company's goods and services and its brand identity, fostering consumer trust and loyalty.

7. How do I register a trademark?

To procure a registration, you must file an application with the USPTO along with the required filing fees. The application includes information about the mark, its use, and the goods/services it represents. The trademark owner may file an application to register a standard character mark (just the words, numbers, or other characters in the mark) and/or a stylized mark, which may specify the font, color, graphics, or other design elements. The goods or services with which the mark is used must be specified in the trademark application.

8. What is the USPTO?

The United States Patent and Trademark Office (USPTO) is the federal agency that has the responsibility and authority to grant patents and trademark registrations in the US. You can also pursue a trademark registration issued from Secretary of State in your state. However, a state registration is limited to the boundaries of the state, whereas a federal registration certificate carries nationwide rights and much broader and comprehensive rights than any state registration certificate.

9. What happens in the trademark registration process?

The application process involves several examination steps to ensure that the mark meets all legal requirements for federal registration. It begins with filing the application with the United States Patent and Trademark Office (USPTO) wit the required fees. Once the application is submitted, it enters the examination process. During this process, an examining attorney reviews the application to ensure it complies with all statutory requirements. This includes verifying that the mark is distinctive and checking for any likelihood of confusion with existing applications, registrations, and unregistered use. The examining attorney also assesses whether the trademark is being used in a way that constitutes proper use in commerce.

If issues arise during the examination, the examining attorney will issue an office action, detailing the reasons for refusal or any required amendments. The applicant must respond to the office action by a specified date to address these concerns. If the applicant fails to overcome the objections, the trademark may be refused registration.

Assuming the application passes the examination process, it is then published in the Official Gazette, an official journal of the USPTO. This publication initiates an opposition period, during which third parties can file oppositions to the registration of the applied-for mark if they believe it would unlawfully cause damage to their own marks or business interests. If no oppositions are filed, or if any filed oppositions are resolved in the applicant's favor, the trademark proceeds to registration. The applicant will receive a registration certificate.

10. How long does the trademark application process take?

The federal registration process typically takes 8-12 months, but it can take longer if there are any significant issues to address in the application, such as objections or oppositions.

11. How long does a trademark last?

A trademark registration can last indefinitely, as long as the mark is used in commerce continuously without significant gaps in use or abandonment. A registration must be renewed periodically with the USPTO. Between the fifth and sixth year after registration, the registrant must submit evidence of use of the mark in commerce and a declaration of use in commerce to USPTO. In the U.S., trademarks must be subsequently renewed every ten years.

12. Can I use a trademark without registering it?

Yes, you can use an unregistered mark, known as a common law mark, which provides some protection based on actual use in commerce. These rights are established by the continuous and bona fide use of the mark in connection with specific goods or services. While they offer some level of protection, common law rights are generally limited to the geographic area where the mark is used and recognized. Owners of unregistered marks can enforce their rights against infringers within this area, but they lack the broader legal advantages and presumptions of validity that come with federal registration.

13. What is trademark infringement?

Trademark infringement occurs when someone uses a mark that is confusingly similar to a registered trademark without permission, potentially causing consumer confusion. There are several factors considered in determining whether a mark is confusingly similar to a registered mark or other prior marks, including the following most important factors: the similarity of the marks in appearance, sound, and meaning, the similarity of the goods or services, the strength of the registered mark, and any evidence of actual confusion. Other considerations are the channels of trade, the conditions under which sales are made, and the number and nature of similar marks in use. These factors collectively help determine if consumers are likely to be confused about the source of the goods or services due to the marks' similarities. Business owners and managers should familiarize themselves with the concept of likelihood of confusion in order to enable themselves to avoid future infringement.

14. How can I enforce my trademark rights?

If a trademark owner becomes aware of infringement of its mark, they can enforce their rights through cease-and-desist letters, negotiations with cooperative infringing parties to facilitate their transition away from an infringing mark, and filing lawsuits in federal court seeking remedies such as injunctions, monetary damages, and attorney's fees. Trademark owners can also file oppositions and cancellation proceedings with the Trademark Trial and Appeal Board to prevent registration of confusingly similar marks. Additionally, trademark owners can work with customs authorities to prevent counterfeit goods from entering the country. Regularly renewing the registration and maintaining its use in commerce are also essential steps in ensuring ongoing protection and enforcement of rights.

15. What is a cease-and-desist letter?

A cease-and-desist letter is a formal request to stop infringing activities, such as using a trademark without permission. It outlines the trademark owner's rights and the actions required to avoid legal consequences.

16. What is a trademark opposition?

A trademark opposition is a proceeding in which a third party challenges the registration of a mark during a 30-day publication period, arguing that the mark should not be registered. The opposition is usually based on the opposer's prior use of a confusingly similar mark, but can be based on other legal theories, such as genericness of the mark, a fraudulent application, abandonment, and other bases.

17. Can I trademark a domain name?

Yes, if the domain name functions as a source identifier for goods or services, you can register it with the USPTO. However, merely registering a domain name with a domain registrar does not grant trademark rights. The domain must be used as a mark to establish any rights or support a trademark registration.

18. What is the difference between a trademark and a copyright?

A trademark protects brand identifiers used in connection with goods and services, while a copyright protects original works of authorship, such as books, music, and art. They serve different purposes and protect different types of intellectual property.

19. Can I use a similar trademark if my business is in a different industry?

It depends on the likelihood of consumer confusion. If the industries are sufficiently unrelated, it may be possible for two businesses to use similar marks. For example, Delta airlines and Delta faucets co-exist in the marketplace without consumer confusion. However, consulting with a trademark attorney is advisable.

20. What is a trademark search?

A trademark search involves checking existing marks to ensure that the proposed mark does not conflict with any registered or pending marks. It helps avoid going through the application process with the USPTO only to find that your mark is confusingly similar to a prior trademark filing. Searches can also ascertain potential infringement issues for a proposed mark.

21. How do I conduct a trademark search?

A comprehensive trademark search includes checking the USPTO database, state trademark databases, common law sources, and the internet for similar marks. Hiring a professional may yield more thorough and effective results.

22. What is a trademark renewal?

Renewal is the process of maintaining a trademark registration by filing the required maintenance documents (the owner's declaration of use) and filing fees with the USPTO. In the U.S., renewals are due between the fifth and sixth years, and every ten years thereafter.

23. What happens if I don’t renew my trademark?

Failure to renew a trademark results in the cancellation of the registration, and the owner loses many of the exclusive rights associated with the mark, including the benefits of the (R) symbol, constructive notice, and presumption of rights in the mark.

24. Can I sell or license my trademark?

Yes, trademarks are valuable assets that can be sold, transferred, or licensed to others. Proper documentation and recording with the trademark office are necessary for such transactions.

25. What is a trademark assignment?

A trademark assignment is the transfer of ownership of a mark from one party to another. It must be documented and recorded with the USPTO.

26. What is a trademark license?

A trademark license is an agreement that allows another party to use the mark under specified conditions. The trademark owner retains ownership and must ensure quality control over the use of the mark.

27. What is trademark dilution?

Dilution occurs when the distinctiveness of a famous mark is weakened by unauthorized use, even if there is no consumer confusion. The mark must be famous, such as the Apple Inc. logo, Lululemon logo in order for a dilution claim to arise. Dilution can happen through blurring or tarnishment. Blurring occurs when a mark's distinctiveness is weakened by association with dissimilar products, while tarnishment happens when a mark's reputation is harmed through unsavory or poor-quality associations. Both forms of dilution diminish the mark's value and uniqueness.

28. What is the difference between trademark infringement and dilution?

Infringement involves unauthorized use causing consumer confusion, while dilution involves harm to the distinctiveness or reputation of a famous mark, regardless of confusion.

29. Can I trademark a personal name?

Yes, if the name functions as a source identifier and has acquired distinctiveness in the eyes of the relevant consumer through sustained use. Famous names may have an easier time obtaining registration.

30. What is an intent-to-use trademark application?

An intent-to-use (ITU) application can be filed by an applicant that has a bona fide intent to use a mark in commerce on particular goods and services, but has not yet used the trademark. A registration will not be granted until the applicant established use of the mark on the intended goods and services.

31.  What is trade dress?

Trade dress refers to the visual appearance of a product or its packaging that signifies the source of the product to consumers. An example of trade dress is the distinctive coca-cola bottle, with its unique hour glass and swirling design. This includes the product's shape, color, design, and overall appearance. Like trademarks, trade dress is a form of intellectual property that identifies and distinguishes a company's goods or services from those of others. It plays a crucial role in a brand's identity and can significantly influence consumer perception and purchasing decisions.

Trade dress must be distinctive and non-functional to qualify for protection under trademark law. Non-functional means that the design elements are not essential to the product's use or affect its cost or quality.

32. How can a trademark attorney help?

A trademark attorney can assist with trademark searches, applications, enforcement, and defense against oppositions or infringement claims. They provide expert guidance to ensure robust trademark protection.

Trademarks are vital for protecting brand identity and ensuring legal rights in the marketplace. Understanding these common issues can help businesses navigate the complexities of trademark law and safeguard their valuable assets.