FAQs about Trademark Protection

October 17, 2019

New business owners often approach us with questions about how to protect their trademarks. In this post, we have compiled answers to some of the most common questions we receive. We hope these FAQs will help business owners better understand the federal trademark registration process as well as the general purpose and uses of trademark protection.

FAQs about Trademark Protection

Do I need to register my trademark?

This is often the first question put to us when a client wants to talk with us about trademark protection. The short answer is no. You do not need to register your trademark with the U.S. Patent and Trademark Office (USPTO) in order to use it or prevent others from using it. You acquire certain rights (known as “common law” rights) in a mark simply by using the mark in commerce (that is, by affixing it to goods or using it to market services). However, these rights are geographically limited and can be difficult to enforce. Accordingly, most companies do not rely on use alone to secure their marks. Instead, they file applications for federal or state trademark registration.

Benefits of Registering a Trademark

Registering a trademark gives you much more extensive rights and protection. When you obtain a federal trademark registration, you gain the right to exclusive use of the trademark throughout the United States. This means you can stop other people anywhere in the country from using a trademark that is the same as or confusingly similar to your mark in connection with the goods or services covered by your registration. Moreover, having your trademark on the USPTO’s Principal Register puts others on notice that you own the mark and can deter competitors from ever adopting an identical or similar mark. Most businesses that are acting in good faith will take the time to conduct a trademark search before using a mark and will refrain from using a mark that is already registered.

 

What can be trademarked?

Most trademarks consist of a combination of letters, words, symbols, and/or designs that distinguishes one company’s goods and services from those of its competitors and functions as a unique identifier of the source of a product. Trademark law in the U.S. also protects other less-traditional indicators of product origin such as color and sound (e.g., Tiffany’s aqua blue, NBC’s three-tone chimes).

Not all marks are registrable. For instance, common names for goods or services such as “coffee” or “tax planning” are not registrable because limiting use of the word to a single person or organization would unduly restrict competition. Other bars to registration include when the mark is geographically descriptive, deceptive, disparaging or offensive, a foreign word that translates into a descriptive or generic term, an individual’s name or likeness that is being registered without their consent, a title of a book or movie, and matter that is purely decorative or ornamental. When a mark is a personal name or surname, it also is not registrable unless the name has acquired secondary meaning to the public (e.g., McDonald’s).

 

When should I begin thinking about registering my trademark?

Ideally, you should begin thinking about trademark issues as soon as you conceive of your business. Too often companies adopt a name and logo without first taking the time to determine whether that name and logo is federally registrable and legally protectable. Then after investing significant time and money developing the mark and associated brand goodwill they learn that the mark they have committed to is not protectable or worse, they are infringing on someone else’s trademark rights. At a minimum, the company is forced to re-brand and try to re-establish the consumer recognition that it spent so long cultivating. At worse, the company may face a costly infringement lawsuit.

Thus, even if you do not plan on registering your trademark soon, it is a good idea to conduct a search to make sure that your trademark is not the same as or confusingly similar to any existing marks. Since many companies use their names (usually omitting the corporate ending) as a trademark (e.g., Apple), if possible, it is ideal to search the USPTO trademark database for your company name even before incorporating.

 

What makes a good trademark?

Some trademarks are more likely to be registrable and protectable than others. In general, strong trademarks are those which include arbitrary and/or fanciful terms and are capable of identifying one applicant’s goods or services without any likelihood of causing confusion to the public. In contrast, a weak trademark is not distinctive, descriptive of the goods and services it is associated with, makes use of words or symbols common in the channel of trade, and/or is confusingly similar with other trademarks.

 

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Should I register my business name, my logo, or both?

For many businesses, their name is the core feature of their brand and should be registered. Whether the name they choose to register is the name they are legally incorporated as or another name they have chosen to trade under, however, is entirely up to the company. It is important to note that registering a company name only protects the name (the “word mark”)– it doesn’t extend to the company’s logo, even if the logo is used together with the company name. If a company would like the same protection to extend to its logo, it must register the logo (the “design mark”) as well as the company name.

Whether a company should register its business name, its logo, or both is ultimately a cost-benefit decision for the company. There are advantages to registering both word and design marks. For instance, word marks offer broader protection than design marks because each time someone uses the registered word(s) regardless of what font, color, size, or other elements they choose to display the word, it is considered use of the mark. In contrast, to infringe a design mark a person must use substantially the same or similar design elements as the registered mark. However, while design marks offer a more limited scope of protection, it can be easier to obtain a federal registration for a design mark. This is because design marks often have more elements of distinctiveness than word marks.

Marks containing a design element may also be automatically protected by copyright law, irrespective of trademark registration, while word marks are generally not protected by copyright. This means that marks that contain a design element often enjoy additional protection.

 

I am thinking about updating my logo – Should I wait to register?

It depends. If you apply for federal trademark registration for your logo and subsequently you make non-material, minor changes to your logo then you need not file a new application. However, if you make substantial changes you would need to either (1) file a new application (if you plan to continue using the old logo for any purposes) or (2) amend your initial application (if you plan to discontinue using your old logo). What constitutes a substantial change can include things that may seem minor, including changing colors/fonts/etc. If you are planning to engage a graphic designer quite soon, it may make sense to finalize your logo before conducting a search. That said, there is some risk that you could pay for this design work only to later learn that the design is confusingly similar to another mark already in use.

 

What are the steps involved in registering a trademark?

Applying for federal trademark registration is generally a two-step process.

Step One: Search & Clearance

Trademark search and clearance is the process of searching for common law (unregistered) trademarks, pending and abandoned trademark applications, and existing and expired trademarks to identify third parties whose existing marks might get in your way or who might object to registration of your mark on the grounds that it is too similar to their own. The goal is to identify potential roadblocks and assess the risk of going forward with the application.

Step Two: Filing

If your mark “clears,” the next step is to prepare the trademark application. In general, it is best to apply for registration on the USPTO’s Principal Register. The Principal Register provides the greatest protection including a presumption that the trademark is valid, that the registrant owns the mark and that the registrant has the exclusive right to use the mark. Goods and services are broken down into 45 classes and the cost of filing your application will depend on the number of classes you designate.

Once the USPTO receives your application, it will assign it to an examining attorney who will then review your application for completeness and legal protectability and conduct its own search for conflicting marks. If the examining attorney has any concerns with your application he or she will issue an “office action” denying registration or seeking further information. You then have an opportunity to respond and provide additional information in support of your application. If your application is approved by the examining attorney, it will then be published in the USPTO’s Official Gazette, an online publication, for 30 days, during which time any person or organization may oppose registration of the mark. If no objection is filed, then the USPTO will register the mark and issue you a certificate of registration (if you are already using the mark in commerce) or a Notice of Allowance, which requires that you provided evidence of use at some future date (if you have not yet begun using the mark in commerce and submitted an Intent-to-Use application).

 

Is a trademark search necessary?

Sometimes clients wonder whether they can safely skip conducting a trademark search since the USPTO will conduct a search as part of its examination. However, doing so is risky. If another person or organization has superior rights, it is better to know this as soon as possible. The longer you continue to use a mark that infringes on another’s trademark rights, the greater the risk that you may be subject to an infringement suit. In fact, because clearance identifies potential infringement risks, you should conduct clearance on all marks that you plan to use, even if you choose not to apply for federal registration.

Moreover, when you conduct your own search before filing you have the opportunity to assess which marks already exist and tailor your application to avoid conflict with similar marks.

 

What if another business is already using a name similar to mine?

The fact that another company is using or has registered a trademark that is similar to your own is unquestionably a challenge. However, this is not an insurmountable hurdle if the goods and/or services you provide are different from those provided by the other company. For example, if the company with the existing mark sells educational children’s toys while your company provides lifestyle coaching, there is minimal risk that consumers would be confused by the similarity between your respective marks.

 

What is an “Intent-To-Use” trademark application?

An Intent-To-Use (ITU) trademark application allows you to apply for a trademark though you have not yet begun using the mark in commerce. By filing an ITU application, you get an earlier filing or “priority” date which can be a critical advantage when someone begins using an identical or confusingly similar trademark after your ITU filing date but before your actual use in commerce. In this case, your priority date will supersede your competitor’s date of actual use and block any attempt by your competitor to register or assert rights in the mark. The disadvantage of filing an ITU application is that proceeding in this fashion necessarily involves more filings and associated costs because you will eventually need to demonstrate that you have commenced use of the mark in commerce.

 

How long does a trademark last?

Trademark registration lasts for 10 years. Thereafter, you must renew your registration every 10 years or your registration will expire. You must also file a statement every six years with the USPTO confirming that your mark is still in use.

Although trademark registration lasts only 10 years, you retain rights in a trademark so long as you continue to use the trademark and the mark does not become generic. Thus, even if your trademark registration expires, you do not lose your common law rights to your mark, you merely lose the specific benefits attendant to registration. Conversely, even if your trademark is registered, if you stop using the trademark, you will lose your rights to it.

 

Should I use the “TM” symbol or the “R” symbol?

The “R” symbol signifies a trademark that has been federal registered. Thus, if your trademark has been granted registration by the USPTO, you should be sure to include this symbol beside your mark. In fact, failing to use this symbol can limit your ability to collect damages for trademark infringement.

If your trademark is unregistered but you would like to signal your rights in the mark, you may use the “TM” symbol beside your mark. Although common law rights to a mark attach once you begin using the mark in commerce and do not require the use of any symbol, using the “TM” symbol can nevertheless put others on notice of your rights.

Disclaimer

The materials available at this website are for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Use of and access to this website or any of the e-mail links contained within the site do not create an attorney-client relationship between CGL and the user or browser. The opinions expressed at or through this site are the opinions of the individual author and may not reflect the opinions of the firm or any individual attorney.

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