- Trademark Law:
What can be trademarked?
- Why Apply to Register a Federal Trademark:
Advantages of filing a trademark application.
- Trademark Symbols:
How to display your mark?
- Trademark Searching:
Should I have a search done?
- How long does a trademark last?
- Can foreign applicants register a trademark?
- Are there any additional costs?
- What is trademark infringement?
1. Trademark Law: What can be trademarked?
What is a Trademark?
A trademark is a word, phrase or design that identifies and distinguishes a product from goods or services developed by other companies. A product need not even exist before a trademark can be protected. Trademarks may be applied for before a product is introduced.
Requirements for a Trademark
A. It must be distinctive
The more distinctive a trademark, the stronger its legal protection will usually be. Trademark distinctiveness is divided into four categories, in descending order of strength:
- Arbitrary or Fanciful
- Arbitrary or Fanciful Trademarks are those that have no relationship to the underlying product or service. For example, the words "Lexus," "Kodak," and "Apple" have no direct relationship to their underlying products (respectively, automobiles, cameras, or computers). These are the strongest marks, which are given the highest degree of protection. They often also require significant advertising and promotion to develop their association with their product or service.
- Suggestive Trademarks indirectly describe a characteristic of the underlying product/service. For example, the word "Coppertone" is suggestive of suntan lotion, but this does not directly describe the product. Like arbitrary or fanciful marks, suggestive marks are distinctive and will be given a high degree of protection. The majority of trademarks fall within this category.
- Descriptive Trademarks directly describe a characteristic or quality of the underlying product. For example, "Holiday Inn" is the trademark of a hotel company catering to vacationers. "Holiday Inn," in itself, could not be a trademark. However, since "Holiday Inn" is recognizable from years of advertisement and use, it is now a legally strong trademark. Certain descriptive trademarks can be registered if they have been used. Others may only be registered after a sufficient amount of use and consumer recognition has been achieved.
- Generic Trademarks are the weakest trademarks and will often fail to be allowed for registration. You cannot trademark "Bicycle, Inc." as the name for a bicycle manufacturer. To get your trademark allowed, you should aim for a more distinctive name. This will also increase its value.
B. It should be confusingly similar to existing marks
Your trademark should not infringe on any existing trademarks. Courts use two theories to determine infringement:
Generally, the stronger and more famous a brand is, the greater scope of protection or exclusivity it will be given, even in unrelated industries.
- Confusion means that your trademark will create consumer confusion relating to your product and an existing product. A major factor in confusion is how similar the industries, products or services are. "Apple Tech" would not be an acceptable name for a computer manufacturer, but might be acceptable for an unrelated industry, such as automobiles.
- Dilution is diminishing or damaging the value of a famous trademark. For example, using "Macy's" as the name of a flea market company could potentially encounter problems on the ground that it devalues an existing company's brand.
Send your potential trademark name through our Trademark Services Form for a search and application.
2. Why Apply to Register a Federal Trademark: Advantages of filing a trademark application
Registering your mark allows you to stop anyone who attempts to use or register a similar mark. A Federally-registered trademark holder has priority nationwide when there are any conflicts between businesses with the same or similar names. Five years after registration a trademark automatically becomes incontestable, eliminating nearly all trademark infringement defenses.
When you apply for a Federal trademark registration, all companies in the United States are considered to be on notice of your rights in your trademark. They cannot claim ignorance once the registration issues. In addition, obtaining a Federal registration allows you to use the ® trademark symbol for your name and logo.
Increased Value for Your Company
Trademarks are "intangible" assets that build the value of your company. If you decide to sell your business or to take it public, registered trademarks will add to your company's value. Investors and partners often want to know that Federal applications for a company’s trademarks or logo have been filed.
Domain Name Protection
If someone tries to register a domain name that infringes on your trademark, you may be able to shut down the website based on your trademark registration. This benefit makes trademarks important for Internet businesses where confusing names could direct traffic away from your website.
3. Trademark Symbols: How to display your mark
Use of the "TM", "SM" and "®" Trademark Symbols
If you want to claim the rights of a name or logo, use the TM (for trademark) or SM (for service mark) designation to give notice to the public about your claim. This use of the TM or SM Trademark Symbol does not indicate a legally enforceable trademark.
The registration symbol, ®, however, does carry legal weight. It may only be used when the mark is registered in the U.S. Patent and Trademark Office.
4. Trademark Searching: Should I have a search done?
If you are using a trademark over a broad market (such as the Internet) or are concerned about competitors, it is advisable to perform a trademark search. The "perfect" business name for your company may be too perfect - it may already be taken. If you are going to invest time and money in creating a brand name and developing the marketing materials to promote your product or service, the costs of a name change could be staggering - much more than the cost of a trademark search. It is therefore important to perform a trademark search prior to any promotional activities. It is a relatively inexpensive form of insurance against future trademark problems.
Order a Trademark Search
5. How long does a trademark last?
Trademark rights can last indefinitely, so long as the owner continues to use and renew the mark. Federal trademark law requires that between the fifth and sixth year after the date of initial registration, the trademark registrant must file further documents in order to maintain the registration. A renewal must then be filed every ten years.
6. Can foreign applicants register a trademark?
Applicants not living in the United States may file for U.S. trademark registration. They must designate in writing the name and address of a representative within the United States. A U.S. registration provides protection only in the United States and its territories. If the owner of a mark wants protection in other countries, the owner must seek protection in each country separately. TrademarkMyName.com can assist you in filing such foreign trademark applications.
7. Are there any additional costs?
There is a government filing fee of $325 per class of goods or services for every trademark application. This is in addition to the attorney costs to prepare the application. Depending upon the type of application filed (whether based on actual use or an intent to use), there may be some additional government fees required prior to registration. There are also additional government fees required for maintaining and renewing a registration.
8. What is trademark infringement?
Trademark infringement occurs when someone uses a same or similar name in commerce in a way that may lead to confusion with the trademark owner's service or product. In general, infringement does not require the infringer to be a competitor, but infringement does require a similar or related product. What constitutes a trademark infringement is highly fact-specific. Please contact us to discuss any actions you believe to be infringement or if anyone has claimed infringement by you.