Trademark FAQs

What is a Trademark?

A trademark is a word or a stylized design or symbol that is used in connection with the sale of goods to indicate the source of the goods. A service mark is the same as a trademark except that a service mark is used to indicate the source of the services. Although technically different, it is not uncommon to hear the term trademark used to refer to both trademarks and service marks.

A trademark is a form of personal property that can be sold and transferred between parties. Therefore, a trademark has value not only in its ability to distinguish one source of goods from another but also as a tangible asset.

What is a Trade Name?

A trade name is the name under which a corporation, company, or partnership performs its business. A trade name does not provide any protection or exclusive rights to the name or to stop others from using the same name in business. A trade name may function as a trademark or service mark if it sufficiently identifies the business as a source of particular goods or services.

What rights does a trademark provide?

The owner of a trademark is allowed to prevent others from using the same or a confusingly similar designation to offer the same or similar goods or services to consumers. This helps prevent competitors from gaining an unfair advantage by confusing consumers as to the actual source of a good or service.

Trademark rights are established by using the trademark in commerce in association with a particular set of goods or services. Under certain conditions, rights in a trademark are established automatically through use and are known as “common law rights.” Common law rights are somewhat limited, most often by a geographic area where the trademark is used.

More extensive trademark rights may be established by filing a federal trademark application with the U.S. Patent and Trademark Office (USPTO). Unlike common law rights, a federal trademark registration provides nationwide rights if it can be shown that the trademark is being used in interstate commerce.

Does a federal registration provide more protection?

A federal trademark registration provides several advantages over simply using a trademark in commerce and relying on common law rights. A federal registration creates a legal presumption of the validity of the trademark and who has the exclusive right to use the trademark in connection with the goods or services listed in the registration. A federal trademark registration may also be recorded with the U.S. Customs and Border Protection (CBP) Service to prevent the unauthorized importation of foreign or counterfeit goods.

What is the difference between the ®, SM, and TM symbols?

The “™” symbol means trademark and indicates that the entity using the symbol considers the designation to be a trademark owned by them when used in connection with the goods offered by that entity. In the U.S., the ™ symbol commonly means that the trademark is not federally registered and the owner is likely relying on common law rights.

The “℠”symbol means service mark and indicates that the entity using the symbol considers the designation to be a service mark owned by them when used in connection with the services offered by that entity. Similar to the ™ symbol, the ℠ symbol commonly means that the service mark is not federally registered and the owner is likely relying on common law rights.

The ® symbol is used to indicate that a trademark or service mark has a federal registration issued by the U.S. Patent and Trademark Office (USPTO). Only marks that are registered by the USPTO are allowed to use the ® symbol. Improperly using the ® symbol without a federal registration is unlawful and may prevent the allowance of a federal registration if the improper use is determined to have been intentional.

Should I register my trademark with the state?

The rules governing state trademark registrations vary from state to state and the protection given to a state trademark registration may be no more than what is available through common law rights gained simply by using the trademark in commerce. Some states do not examine trademark applications and simply issue a registration certificate if there are no exact matches. In these situations, a state registration may not provide any real protection or benefit other than to act as evidence of when the trademark first started being used within the state. Whether or not to file a state trademark application is a decision that should be made after a close review of a particular state’s laws and an analysis of what benefit to the trademark owner may be gained.

Are all trademarks registrable?

No. For a trademark to be registered by the U.S. Patent and Trademark Office (USPTO) the trademark must be capable of informing the public as to the source of the goods or services and be distinguishable from designations used by others who sell the same goods or offer the same services. Therefore, a trademark should be distinctive and should not simply describe the characteristics or qualities of the goods or services. Trademarks are commonly analyzed along a spectrum to determine whether a given trademark is distinctive or not. At one end of the spectrum are strong trademarks that are inherently distinctive and at the other end are weak trademarks that are merely descriptive and may be refused registration. The spectrum includes:

• Fanciful marks – are trademarks that comprise made up words or symbols, such as PEPSI, KODAK, and EXXON;
• Arbitrary marks – are trademarks that use words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services, such as APPLE for computers; and
• Suggestive marks – are trademarks that when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services.
• Descriptive – are trademarks that use words that describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.
• Generic – are trademarks that are nothing more than a generic name relating to the goods or services such as ASPIRIN, NYLON and ELEVATOR

Fanciful trademarks are considered inherently distinctive due to their uniqueness and as a result are given the greatest amount of protection. Arbitrary marks are also considered inherently distinctive but to a lesser degree than fanciful marks. Suggestive marks rank next in order of strength. Descriptive marks are typically considered to be a weak mark and may be given little or no protection. Descriptive marks are not registrable on the Principal Register absent a showing that the mark has extensive use in commerce and acquired distinctiveness. In some cases, descriptive marks may be allowed to register on the Supplemental Register.

The Supplemental Register is a secondary register established by the USPTO. Registration on the Supplemental Register does not provide all of the rights that come with a registration on the Principal Register, but registration on the Supplemental Register does permit use of the ® symbol and will preclude similar marks from being registered on the Principal or Supplemental Register. After five years of continuous use, a descriptive mark may acquire “secondary meaning” and acquire distinctiveness allowing an otherwise descriptive mark to be registered on the Principal Register.

Generic marks are not distinctive and the USPTO will not issue a registration for a generic mark. Registered marks that are distinctive may become generic and have their registration cancelled if the owner doesn’t actively police the mark and seek to stop unauthorized use of the mark. It is therefore important for trademark owners to take action when they learn that their mark is being used as a generic term for a particular type of good or service.

What is the process for obtaining a federal registration for a trademark?

To obtain a federal registration it is necessary to file a trademark application with the U.S. Patent and Trademark Office (USPTO). This process starts by selecting mark and then generating a list of the goods and services offered in connection with that mark. Once complete, the application can be filed with the USPTO. The USPTO then reviews the application to determine if there are any existing registration or previously filed trademark applications that may be the same as or similar to the applied-for mark in the application. If a determination is made that a conflict exists, a trademark attorney will refuse the application for procedural or substantive issues and issue an office action. The applicant is permitted to respond to the office action and attempt to overcome the refusal by submitting amendments, arguments, or evidence to overcome the rejection. The examining attorney then reconsiders the application and may choose to allow the application or maintain the refusal. If the refusal is maintained, the applicant may then respond again or file an appeal.

Once the application is allowed but before the application proceeds to register, the applied-for mark will be published in the Official Trademark Gazette for a thirty day public inspection. During this time any third party who believes they may be affected by registration of the mark may oppose the registration. If the thirty day opposition period passes without the filing of an opposition, the mark may register if the applicant is using the mark in commerce and submitted proper evidence. If the evidence of use was submitted with the application, then the mark will register, otherwise the applicant will be required to file a Statement of Use prior to registration. The Statement of Use must be filed within six months of allowance unless an extension request is requested and granted which provides an additional six month period to file a Statement of Use. Up to five extensions may be requested. This typically provides sufficient time for most applicants to begin using their mark in commerce.

How should a trademark be used?

Always use a trademark in a consistent and distinctive manner. It is best practice to use capital letters, bold or larger fonts as compared to nearby text, stylized lettering, contrasting colors as compared to nearby text, and the mark should be set apart from other text so as not to appear as part of a larger commercial idea. A trademark should be not used as a noun or a verb when describing the goods or services. Instead, a trademark should be used as an adjective to describe the goods or services. This helps prevent a valid trademark from becoming generic.

I received a federal registration for my mark, now what?

Trademark rights can last in perpetuity for as long as the trademark is used continuously in commerce and does not become generic. It is extremely important that the mark be used with the goods and services listed in the registration. Failure to do this may result in the cancellation of the registration.

It is also important to maintain the registration by timely filing the appropriate declarations of use and renewals over the lifetime of the trademark registration. In general, a trademark registration lasts for ten years and may be renewed indefinitely every ten years by filing a Declaration of Use and Renewal along with a specimen of use with the U.S. Patent and Trademark Office (USPTO) between the ninth and tenth year following the date of registration. Before the first renewal is due, a Declaration of Use along with a specimen of use must be filed with the USPTO the fifth and sixth year following the initial registration date.

A trademark owner must also be diligent about policing their trademarks and preventing others from using confusingly similar marks. Protecting a trademark registration often includes having sending cease and desist letters to third parties that attempt to use the same or a confusingly similar mark to market like goods. Policing a mark can be a very time consuming task given the number of marketing channels in today’s world. Therefore, many trademark owners take advantage of watch services to stay up to speed regarding potential conflicting marks that are being used. Watch services provide regular reports whenever a trademark application is filed or allowed for the same or a similar mark. This provides trademark owners with an opportunity to challenge a mark before it becomes registered such as by providing notice to the trademark owner during the thirty day public inspection period after a mark has initially been allowed.