A trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods. See 15 U.S.C. § 1127.
See also service mark, collective mark, certification mark, trade name.
Overview
Trademarks are generally words, phrases, logos and symbols used by producers to identify their goods. However, shapes, sounds, fragrances and colors may also be registered as trademarks. See Qualitex v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995). In recent years, trademark law has expanded to include trade dress and antidilution protection. Almost any word, name, symbol, or device capable of distinguishing the source of goods may be used as a trademark subject to few limitations. However, a mark's eligibility for trademark protection may be limited by application of the functionality doctrine, and a mark may be denied registration if it falls within any of the categories listed under 15 U.S.C. § 1052.
Use in Commerce and Distinctiveness
Two basic requirements must be met for a mark to be eligible for trademark protection: it must be in use in commerce and it must be distinctive.
The first requirement, that a mark be used in commerce, arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce. See Commerce Clause. The Lanham Act defines a trademark as a mark used in commerce, or registered with a bona fide intent to use it in commerce. See 15 U.S.C. § 1127. If a mark is not in use in commerce at the time the application for registration is filed, registration may still be permitted if the applicant establishes, in writing, a good faith intent to use the mark in commerce at a future date. See 15 U.S.C. § 1051. Both at common law and under traditional Lanham Act registration procedures, exclusive rights to a trademark are awarded to the first to use it in commerce.
The second requirement, that a mark be distinctive, addresses a trademark's capacity for identifying and distinguishing particular goods as emanating from one producer or source and not another. Trademarks are traditionally divided into four categories of distinctiveness: arbitrary/fanciful, suggestive, descriptive, and generic. See Zatarain's, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir. 1983). If a mark is categorized as either arbitrary/fanciful or suggestive, it is considered to be inherently distinctive and exclusive rights to the mark are determined solely by priority of use. A trademark that is categorized as descriptive is only protectable as a trademark if it has acquired a secondary meaning in the minds of the consuming public. Secondary meaning is also necessary to establish trademark protection for a personal name or a geographic term. Generic terms are never eligible for trademark protection because they refer to a general class of products rather than indicating a unique source. A mark may be generic ab initio and refused registration, or it may become generic over time through use.
Trademark Registration
The Lanham Act provides federal protection for distinctive marks that are used in commerce. See 15 U.S.C. §§ 1051 et seq. Federal protection for unregistered marks is generally available under 15 U.S.C. § 1125(a), which creates a civil cause of action for claims of false designation of origin and false advertising. Although registration is not a prerequisite to federal trademark protection, registered marks enjoy significant advantages over unregistered marks including: registration serves as nationwide constructive notice of ownership and use of the mark under 15 U.S.C. § 1072; and a registered mark may achieve incontestable status after five years of continuous use under 15 U.S.C. § 1065, which enhances the owner's rights by eliminating a number of defenses to claims of infringement.
Unregistered trademarks may also be protected at the state level by statute and/or common law. Under state common law, trademarks are protected as part of the law of unfair competition. State statutes vary, but most states have either adopted a version of the Model Trademark Bill (MTB), which provides for trademark registration, or the Uniform Deceptive Trade Practices Act (UDTPA), which does not.
The rules of practice governing applications for federal trademark registration are codified by the Lanham Act and under Title 37, Part 2 of the Code of Federal Regulations (CFR). The United States Patent and Trademark Office (PTO) actively examines applications for trademark registration and, with the help of the courts, polices the trademark registers. If an application for registration is denied by an examiner, the applicant has six months in which to reply or amend the application, which will then be reexamined. This procedure may be repeated until either: (1) the examiner issues a final refusal of registration, or (2) the applicant fails to reply, amend or appeal for a period of six months. See, e.g., 15 U.S.C. § 1062; 37 C.F.R. §§ 2.61 - 2.69.
Once an application for registration is approved by an examiner it is published in the Official Gazette of the PTO for opposition. See, e.g., 15 U.S.C. § 1062; 37 C.F.R. § 2.80. An opposition may be filed by any person who believes that he or she would be damaged by the registration of a mark, including damage caused by dilution. See, e.g., 15 U.S.C. § 1063; 37 C.F.R. §§ 2.101 - 2.106. An opposer must plead and prove that: (1) he or she is likely to be damaged by registration of the applicant's mark; and (2) that there are valid legal grounds why the applicant is not entitled to register the claimed mark. Unless registration is successfully opposed, a mark entitled to registration shall be registered in the PTO, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the PTO. See 15 U.S.C. § 1063.
Within five years after a trademark has been registered in the PTO, any person who believes that he or she is or will be harmed by the registration may file a petition for cancellation of registration. See, e.g., 15 U.S.C. § 1064; 37 C.F.R. §§ 111 - 114.
The Tariff Act of 1930 makes it unlawful to import into the United States any merchandise of foreign manufacture if such merchandise or its packaging bears a trademark owned by a U.S. citizen, corporation or other association and the trademark is registered in the PTO. See 19 U.S.C. § 1526.
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When picturing your favorite brands, odds are excellent that your first thoughts will include signature logo images or slogans, such as the arrow from A to Z that Amazon uses. The reason you instantly think of these identifiers is because companies created a distinct trademark (or just “mark”), and then used it consistently across all their marketing. Formalizing a product or service with a registered mark not only offers necessary legal protection, but it also provides businesses with a surefire visual tool to connect with consumers. Here’s what you need to know about trademarks and how they can help your business.
What is a Trademark?
According to the U.S. Patent and Trademark Office, a trademark is “a word, phrase, symbol or design that identifies your goods and services” and distinguishes your brand from competitors. A trademark is used for goods, while a service mark is used for services. A trademark gives you the exclusive right to use your mark and helps prevent competitors from using a mark that’s the same as or very similar to yours.
Simply using a name, logo or slogan in your business gives it some level of trademark protection, though these “common law” trademarks are hard to enforce and apply only in your immediate locality. You can get statewide trademark protection by registering your trademark with your state. But the strongest and most far-reaching trademark protection comes from registering your mark with the USPTO.
Federal trademark registration:
- Creates a public record of your trademark ownership
- Prevents other people from registering trademarks that are deceptively similar to yours
- Gives you the right to sue in federal court if someone infringes your mark
- Makes it easier to register your mark in other countries
- Can be used to stop the importation of goods that infringe your mark
- Gives you the right to use the registered trademark symbol, ®.
While copyrights protect original authored works, such as a song, novel, work of art or database, upon their creation, trademarks offer protection for items of intellectual property that help define a brand.
What can be trademarked?
- Product names and nicknames (for example, both Coca-Cola and Coke are marked)
- Logos
- Sounds (like the distinct NBC chimes)
- Business names
- Slogans (like Nike’s “Just Do It”)
- Color combinations or schemes (like the brown of a UPS truck)
- Smells (yes, smells. Hasbro received a Play-Doh scent trademark in 2018)
What can’t be trademarked?
- Any mark that is already in use, or is too similar to a mark already in use
- Generic descriptive words
- Commonly used phrases or messages
- Direct religious quotes and passages
To get federal trademark protection, your mark must be distinctive and not likely to be confused with an existing trademark. When considering a trademark, focus on what you are offering, why it’s different and what makes it stand out. Avoid generic descriptions of your product or service–the more distinct your proposed mark is, the better odds that the application will be approved. Plan to spend a good deal of time searching the USPTO website for any trademarks in use that may be considered similar to yours.
Trademarks are extremely specific–your mark will only apply to the type, or “class” of goods or services for which you seek protection. Other companies can still use your mark for other types of goods or services. For example, “Delta” is a name brand for both an airline and a faucet.
How to Get a Trademark
While obtaining a trademark used to be a paper-filled undertaking, the U.S Patent and Trademark Office has thankfully streamlined the process by taking it online. Be prepared for a lengthy wait for approval. A series of stages are involved, and the USPTO tells applicants to be prepared to wait 12 to 18 months for a decision.
Getting a trademark is broken down into several steps:
Step 1: Identify Your Trademark
Once you’ve chosen a potential trademark, you’ll need to do some research and decide how you want your mark to be protected. Here’s how:
- Search the USPTO database to determine if similar words, designs, goods or services you are seeking to trademark are already in use.
- Choose your mark format, which is either a standard character mark, a design mark or a sound mark.
- Specify the exact goods and services that the trademark will apply to and the corresponding trademark class using the list available on the ID Master List.
- Select what your filing basis will be.
Step 2: Submit Your Application
Create a USPTO account, then prepare and submit your application online. Note that the initial trademark fees will be either $250 or $350 per class of goods or services, depending on whether you choose TEAS Plus or TEAS Standard.
Step 3: Wait for Approval
The USPTO will determine if your application meets the filing requirements, then assign it a serial number and send it to an examining attorney for review. If the attorney finds issues with your application, you’ll receive a letter which you must respond to if you want to keep your application active.
You will receive a letter of either approval or denial of your trademark application. If approved, your mark will be published in the “Official Gazette,” the weekly newsletter of the USPTO. After publication, any party who believes they may be damaged by the mark has 30 days to file an opposition. If there’s no opposition, or if opposition is resolved in your favor, your mark will be registered.
Step 4: Complete the Final Paperwork
A USPTO trademark registration will need to be maintained for as long as you wish to hold the mark. Specific documents must be completed, along with an annual check of the Trademark Status and Document Retrieval (TSDR) system, to ensure that your registration does not expire.
Different Trademark Symbols Explained
There are three different symbols that can be used to indicate a trademark:
- ™: This is the most popular trademark symbol, and anyone can use it, regardless of registration status. Adding this symbol lets other businesses know you have claimed a name, logo or slogan as your own.
- ®: Only trademarks that have USPTO approval can use this symbol, which stands for registered trademark.
- ℠: This symbol is a “service mark.” As its name suggests, it’s used for services only, not products. Just like the ™, you can use this symbol without registering.
Frequently Asked Questions
There are three types of trademarks: Arbitrary and Fanciful Trademarks, Suggestive Trademarks, and Descriptive Trademarks. Arbitrary and Fanciful Trademarks are the strongest, and they protect coined terms and marks or words out of their normal context, respectively. Suggestive Trademarks are the next strongest, and they are meant to invoke the consumer’s imagination. Finally, Descriptive Trademarks, the least powerful of the three, describe the goods and services.
It’s important to protect your business name. You may also want to trademark your logo and any phrases or slogans that you will use frequently to identify your brand.
No, you’re not technically required to have an attorney when applying for a trademark unless you’re applying from outside the U.S.. That being said, it is highly recommended that you opt to retain one. Having an experienced attorney will help with legal guidance, the application process and they can represent you in all dealings with the USPTO.
If you own a trademark, it’s up to you to enforce your mark and stop infringement. The USPTO does not enforce trademarks. If you find a business using your trademark, the best approach is to reach out to a trademark attorney to discuss your rights and what the next appropriate steps are.
A dead trademark is one that no longer has any federal trademark registration rights. This can occur if the original owner did not file renewals, or if there was a petition to cancel the mark. Note that just because a trademark is listed as “dead,” this does not mean that it is free to use.