What Are Trademarks?
Trademarks are words, slogans, logos, designs, or different combinations of those that help to set apart goods of one party from other competitors. Service marks are similar, they just pertain to the provider of services rather than goods. The primary function of each is to serve as a “source identifier” for the particular good or service that the mark is associated with. You’ll often hear trademarks used interchangeably for both trademarks and service marks.
Companies spend a lot of time and resources on creating the perfect name for themselves and their products or services. Obtaining a federal trademark registration generally means that a company can exclusively claim the word, phrase, or logo used to identify their business, product(s), or service(s).
A trademark provides several benefits for your service or product, some of which include:
- Distinguishing your goods and services from competitors.
- Providing legal grounds for enforcing your trademark on a federal basis.
- Providing public notice of your completed registration.
- Securing the option to acquire statutory damages against an infringing party.
- Adding strength and validity to your specific mark.
Although a trademark can be a word or phrase, the words or phrases only provide legal protection in the sphere of a business’s specific business or industry and must be used in commerce. For example, a trademark for your beverage company’s name likely couldn’t be used to prevent others from using a similar name in an entirely different field such as landscaping. While there are exceptions for “famous” marks, such as Pepsi® or Coca-Cola®, the breadth of protection typically does not overlap into unrelated industries.
What Do Trademarks Protect?
A trademark is tied to a very specific category of goods or services that are offered for sale. This means that in order to receive a registered trademark for a word, phrase, symbol, or design you must be specific about which goods or services the mark is being used in connection with. An advantage of trademarks is that they aren’t necessarily limited to a single good or service and can be used to cover a range of different goods and/or services.
When you work with a trademark attorney, he or she will help you identify the goods and services your trademark is intended to represent. While it may seem like a simple task, properly identifying and describing the goods and/or services in the trademark application can be pivotal to whether or not the application is granted, as well as the breadth of protection you will be afforded. A trademark provides the legal protection to prevent other companies from using the same, or a confusingly similar, trademark for a related category of goods or services without the trademark owner’s express permission. In other words, securing a trademark registration will assist in preventing the likelihood of confusion in the marketplace.
When applying for trademark protection, the USPTO works to identify whether the goods or services selected accurately cover what you’re selling. If you’re too broad in your approach, the application may be denied. This is where an experienced trademark attorney can help you improve your chances of getting your trademark registered.
Trademark Frequently Asked Questions
What is a trademark or service mark?
A trademark is a form of intellectual property such as a company name, product name, logo, or other design that identifies products or services as coming from a particular source. A registered trademark is granted by the USPTO after filing a trademark and meeting the requirements set by U.S. statutes.
Do trademarks and patents protect the same thing?While trademarks and patents are both forms of intellectual property, they do not protect the same thing. Trademarks protect words, phrases, and designs (i.e. logos) that serve to identify goods or services as coming from a specific source over that of a competitor. An example would be Coca-Cola® having a registered trademark for their brand name as a producer of soft drinks. A patent protects inventions and processes from another party copying, selling, or otherwise capitalizing on the original idea. Patents apply to things like the chemical compounds in a new vaccine or an innovative design for an electric car battery.
What is the difference between trademark ownership and registered trademark?
While it may seem straightforward, trademark ownership can be quite complex especially when the entity is a business owned by different individuals. When a company changes hands, its assets are part of the exchange and a trademark is considered an asset. This change would necessitate a trademark assignment to be signed and executed by the entity transferring ownership.
If a trademark is filed or renewed with the wrong owner, it can delay a trademark registration or lead to other unintended consequences. If another party files a trademark for a similar product or service in the meantime, the first company may have to wait through the new application’s review process and/or have to spend time and money opposing the new application or cancelling the new registration.
Another issue could be a third party filing a trademark cancellation petition. Trademark registrations provide its owner the advantages of having exclusive rights to the registered mark. However, if the owner of the registered mark fails to enforce the exclusive rights it once secured, such rights may be lost. Consequently, it is critical that trademark registration be maintained and enforced regularly to provide the best protection possible.
Why register a trademark?
While the U.S. grants certain “common law” rights to marks based on their first use in commerce, federal trademark registration is your best protection for a brand name, logo, or other identifying design. A federal registered trademark provides a constructive notice of ownership and an exclusive right to use the mark as it pertains to your particular industry throughout the U.S. It also provides the ability to bring an action to prevent infringement in federal court.
Do you need an attorney to register your trademark?
If you don’t live in the U.S. or its territories, yes, you will be required to have a U.S.-licensed attorney represent you during the registration process. Although it’s not required if you are domiciled in the U.S. to have an attorney, it is often quite advantageous to do so. The trademark application process is a legal proceeding that requires compliance with U.S. trademark laws and regulations. An attorney who specializes in trademark law is your best bet for navigating what can be a complex legal process—saving both time and money. Our attorneys provide guidance before, during, and even after a trademark is registered to help protect your intellectual property.
By conducting comprehensive trademark searches, we’ll help provide the best framework moving forward for registering your unique mark. Once your mark is registered, we’ll help you understand how best to enforce your rights and maintain your trademark.
How long does it take to register a trademark?
Finalizing and submitting a trademark application is usually relatively quick with an experienced attorney guiding you through the process. However, the complete registration process can take up to a year or more in some cases.
How much does a trademark cost?The costs of registering a trademark vary considerably based on factors such as the complexity of the application, the number of trademarks being sought, the number of classes of goods and services, as well as whether or not the mark is opposed by a third party. For the most up-to-date listing of the USPTO’s filing fees, see their Trademark fee information page.
How do you submit a trademark application?The first step is to select a mark that you wish to register with the USPTO. This sounds easy but requires a lot of steps beforehand as not all trademarks are registrable or they may offer limited protection if they’re too weak to enforce properly. In short, to submit a trademark application you’ll need to identify your mark format, the precise category of goods and/or services to which they apply, search the USPTO’s database for similar trademarks, and prepare and submit your application.
What is trademark infringement?Trademark infringement is a violation of the rights of the trademark owner. This often occurs when another company uses a similar logo, design, or another aspect of your trademark in the same industry such that customers would likely be confused as to whose products or services are the “real deal”.
What do you do after trademark infringement occurs?Trademark protection requires active enforcement. Working with an experienced trademark attorney can help you navigate your options for seeking specific remedies, which may require filing a federal complaint before a federal court or a Petition for Cancellation or Notice of Opposition before the TTAB.
If you have further questions beyond what is listed with these trademark resources, please request a consultation here: Request a Consultation | Marks Gray