What is a Trademark?

Introduction

When it comes to your products or services, it is important to make them unique and distinguishable so they can be easily identified. Trademarks are considered intellectual property and help companies protect and differentiate their brands from those of others within their market. Intellectual property are recognized by the US and are governed by federal and state law. The other types of intellectual property are patents, copyrights, and trade secrets. Marks registered within the US may be registered with the United States Patent and Trademark Office (USPTO) at https://www.uspto.gov/trademarks.

Your trademark can be a word, name, phrase, slogan, symbol, or expression. Specific coloring and packaging may also be eligible for trademark protection if customers associate it with your business alone. One main element that trademark law does not protect is functional advantages, or any other performance aspect that can’t presently be protected under trademark law.

What makes trademarks different from copyrights and patents?

Trademarks are the commercial symbols of a company. They are registered to indicate ownership of the company’s goods and services. Patents and copyrights protect inventions, original works, and creative expressions respectively.

A trademark is a type of intellectual property that ensures that the items in question are not confused with those from other companies. It also helps in protecting against infringement by another company or individual who would like to use the trademarked item as their own. A patent is an exclusive right granted by a government to an inventor for an invention or discovery for a limited period of time, usually 20 years. A copyright is a form of intellectual property law which grants authors exclusive rights over their creations for a limited time period (usually 70 years after death).

Trademark Prerequisites

To qualify for a trademark, the mark needs to be distinctive and identifiable with just one source for products/services. There are four categories of marks, each with its own degree of distinctiveness: generic, descriptive, suggestive and arbitrary or fanciful. Distinctive marks are granted stronger protection.

Arbitrary or Fanciful

Arbitrary marks are usually descriptive terms that have a dictionary meaning but don’t seem to make sense for the company they represent. Examples of arbitrary trademarks include Apple, Dove, and Sun.

Fanciful trademarks are different from more common, arbitrary ones in that they have no inherent meaning before they’re adopted. Examples of fanciful marks include Clorox, Pepsi and Exxon.

Suggestive

Suggestive trademarks use hints and allusions to evoke a sense of what the product is about without explicitly saying so. Netflix, for example, alludes to movies and Coppertone hints at an iconic sunscreen product.

Descriptive

Descriptive marks that delineate the features, qualities, or purpose of a product. They’re fairly open to anyone and the law doesn’t favour one party in using the mark. A trademark is not automatically distinctive and can’t be protected unless the mark has acquired a secondary meaning.

Trademarks can also develop secondary meaning as consumers start viewing them as a type of brand. A company owning the trademark may get it due to heavy advertising or consistent use over a long period of time. Whenever a company wants to trademark its logo or slogan, they have to consider whether the mark will retain its secondary meaning. This is measured by:

• Sales volume
• Consumer survey results
• Amount and type of advertising
• Length and manner of term’s use

If the trademark has second meaning, it is more likely to be registered as long as there are no conflicting trademarks.

Generic

In general, trademarks describe a type of product or service that a company offers. For example “computer”, “oven”, and “sweater” are all generic trademarks. They can not be protected under trademark law because it would prevent other companies from using these words. In addition, some trademarks can become genericized without proper enforcement. This can make the trademark less distinctive, and the owner may lose protection.

Every state has different trademark laws. To ensure your rights are fully protected, you may need to apply for both a state and federal trademark.

Applying for a Trademark with USPTO.gov

The following are some steps you must follow before you can register your trademark with the USPTO:

Ensure trademark availability

Search the USPTO database before you file for trademark registration. If your mark is already registered, you can avoid having it rejected because it isn’t available for use.

Establish filing basis​

Your filing basis can be listed as “use in commerce” on your application if you have already used the trademark on goods or services. If not, you’ll file under “intent to use” until you’re ready to implement the brand.

Fill out and file trademark application with USPTO

You can apply for a trademark directly on the USPTO website at https://www.uspto.gov/trademarks. If you would like to apply for multiple trademarks, you can do so by submitting a separate application for each one.

The USPTO offers two main filing options: TEAS Plus and TEAS Standard. TEAS Plus is referred to as a complete application and is suitable if you have everything ready at the time of filing. Note, you must be able to accurately find a good or service class from the Trademark ID Manual. However, in some cases, the Trademark ID Manual may not have an accurate classification for what it is you are selling. In this case, you will need to apply via TEAS Standard and create your own ID.

Registering a Trademark

The USPTO charges an application fee for each trademark application submitted. Fees start at $225 and can reach up to $1900, depending on the number of categories your product falls under. On top of that, there is an additional $125 fee for a time extension, if you are needing more time to prove your use of the mark.

Registration with the USPTO isn’t mandatory, but is advantageous. Advantages include:

• The exclusive right to use the trademark on your goods or services
• Public recognition of your ownership of the mark
• Legal nationwide presumption of ownership

Registering your trademark can help to protect you from legal problems if someone ever accuses you of infringing their trademark. Providing an accurate and legible certificate of registration will ensure your mark is recognizable and legal for you to use. The content of this certificate will speak for your mark. Any accusations of a false mark must be backed up by evidence. If you fail to register your trademark, the burden of proving your right to use it will be on you.

Acquiring rights through First Use Doctrine

If you’re the first person to use a trademark, then you can acquire rights for it via the “first use” doctrine. The USPTO considers when the trademark was first used in commerce and also when it was first used for your brand. The date of first use in commerce pertains to the date when:

• Goods using the mark were first transported or sold; or
• Services using the mark were first rendered under a type of commerce that can be legally regulated by U.S. Congress.

The first use doctrine is helpful in the event another business tries to infringe on your mark. Grounds for contesting applications can be found on the USPTO website. Otherwise, you can file for the trademark yourself and make note of the date that the mark was first used. However, registering the mark before a legal dispute occurs can prevent such legal issues from arising.

Protecting your rights

It is important to note that the US Patent and Trademark Office does not proactively search for trademark violations. but rather serves as a reflection of the public’s input on what is considered to be infringed. It is your responsibility to pursue legal action if you feel that someone has violated your trademarks.