What is a Trademark

What is a Trademark

A trademark is generally a phrase or design that identifies and distinguishes the source of goods or services.  Trademark law is meant to protect not just the company that owns a trademark but also the general public.  On the company’s side, possessing a registered trademark can prevent the misuse of a brand’s good name and reputation from unscrupulous companies intent on exploiting the trademark for their own gain. On the general public side, it helps consumers to identify the source of the products or services they are purchasing. For consumers, this can be a safety issue as well as a financial concern. Before using a ride sharing service, for example, you really don’t want to be in any doubt as to which company’s car you are getting into.

A trademark is one of the three primary types of intellectual property, with the other two being patents and copyrights.  Many people use the terms interchangeably, but there are notable differences which have to do with the type of property being protected.

Patents refer to the legal protections afforded to novel inventions and designs, while copyright refers to the protections given to original works of authorship.  Another notable difference is that unlike patents and copyrights, trademarks don’t expire after a set period of years.  However, you are still required to file renewals at regular intervals to maintain your trademark. Typically, you are required to renew your trademark registration between the fifth and sixth year after registration and then again at every ten years after registration.

Types of Trademarks

When selecting your trademark, you want to make sure that you are choosing a distinct, original trademark. You don’t want to spend money advertising a trademark that you will ultimately end up scrapping in the future.  So it is best to handle trademark protection during the drawing board stage of your business.

Even if your desired trademark isn’t federally registered by another company, your trademark application could be rejected if your proposed trademark is found to be too generic or descriptive. Generally, these three types of trademarks are considered to be the strongest types of trademarks.

  • Fanciful Trademark: A fanciful trademark is a word or phrase that is made up by the trademark owner that previously did not exist in the English language. Think Exxon or Xerox.
  • Arbitrary Trademark: An arbitrary trademark uses an existing word that doesn’t have a relationship to the product or service being sold. For example, Camel for a cigarette company or Shell for a gas company.
  • Suggestive Trademark: A suggestive trademark uses words that require a mental pause from the consumer to figure out the connection between the trademark and the product or service being sold. For instance, the trademark Greyhound is suggestive of a mode of transportation, but it is by no means obvious from the trademark that the company in question is a bus company.

If you are uncertain about the strength of your desired trademark, it is a good idea to consult a trademark attorney before you invest in the cost of an application and the other expenses related to promoting your desired trademark.

The Benefits of Registering Your Trademark

Contrary to popular belief, it is not a legal requirement to register your trademark in order to receive any kind of protection. If you use a trademark in commerce without registering it, you are still afforded common law protection under unfair competition laws. Typically, these laws give you protection in a specific geographic area. For example, if you owned Smiley’s Sandwich Shoppe, another Smiley’s Sandwich Shoppe couldn’t open right down the street from your business, even if you aren’t federally trademarked.

But federally registering your trademark provides numerous legal advantages. Doing so gives you the presumption of ownership nationwide, and the exclusive right to use the trademark in conjunction with your goods and services. Once you have successfully registered, there will also be a public notice about your claim of ownership, which deters other companies from copying your brand. Registering your trademark sends a powerful message to potential infringing parties that you take the protection of your business seriously and are prepared to take legal action against any misuse of your trademark.

How to Register a Trademark

Your first step in registering your trademark will be to conduct a trademark search on the USPTO’s website. That will alert you about any preexisting trademarks before you begin the registration process. You should have a trademark attorney perform this search for you since it can be easy to miss potential issues.  For example, another registered trademark that is spelled differently could sound similar to your trademark when spoken out loud.  A heavily stylized trademark that resembles your own could be difficult to spot in a simple trademark search. A trademark attorney can ensure you don’t miss anything.

Your next step will be to file an application on the USPTO site. To do this, you will need to submit an application fee and provide proof that the trademark is currently in use. You can do this by providing samples, such as a screenshot of your website showing the trademark being used (with a timestamp) or a copy of a brochure advertising your services with the trademark.  If the trademark is not yet in use, you can file on an intent to use basis.  Again, this process is made simpler by using a trademark attorney, who will be able to spot any red flags that could slow down your application. Typically, after submitting your application, you will hear from the USPTO withing about five months. At that point, the examining attorney will either alert you about problems with the application or will approve your trademark for publication. During the opposition period, other businesses can come forward and challenge your trademark if they believe it is an infringement of their own.

After 30 days are up, and nobody has challenged your trademark, your trademark will proceed toward registration.

Trademark Symbols

There are three distinct types of trademark symbols, each denoting different levels of protection.

  • ™ – General Trademark Symbol – The is a general symbol used to identify a trademark. This demonstrates that the trademark owner considers their brand name to be a trademark, but that the trademark in question is not federally registered. You should use this symbol if your trademark is not registered, or if the registration is pending.
  • ℠ – Service Mark Symbol – This symbol is similar to the trademark symbol, only it is used to denote a trademark for services, as opposed to products. The symbol is often used for both goods and services.
  • ® – Registered Trademark Symbol – This symbol is only to be used to denote registered trademarks. Using the registered symbol prior to registration should not be done and could be viewed an attempt to mislead the consumer.  Using the proper trademark symbol is advised and has several advantages. The use of the symbol could prevent infringing parties from invoking an ignorance defense should the case go to court. Additionally, using the symbol sends the message that you take the protection of your brand seriously.

Trademark Infringement

Trademark infringement is the unauthorized use of another business’s trademark. The main question in a trademark infringement case is whether or not the use is likely to cause confusion among consumers.

Let’s say you are making a truthful comparison about your company’s lip gloss to another brand, Smackers, in an online advertisement and mention the Smackers trademark (e.g. “Unlike Smackers, we only use natural ingredients”). This comparison isn’t likely to confuse the consumer, as it is obvious to the buyer the products are not being manufactured by the same source. Therefore, the courts would be unlikely to rule in favor of infringement.  If, on the other hand, you use the Smackers trademark in conjunction with your products, you’re likely to mislead the consumer about the source of your products.

It is largely the responsibility of the trademark owner to monitor the use of their trademark and act swiftly against any unauthorized use. If you are not diligent about enforcing your trademark rights, your company’s brand could be irreparably damaged, and the costs to your business could be catastrophic. If you do notice any infringement, notify a trademark attorney immediately and have them send a trademark cease and desist letter. This letter will serve to tell the infringing party to stop all infringing activity immediately and will warn them that failure to comply will result in further legal action.

If the infringing use has caused significant damages or the infringer is refusing to cease use, the next step might be to file a lawsuit.  Often the primary goal of a trademark infringement lawsuit is to obtain an injunction, but a plaintiff could also be eligible for damages including any profits gained through the unauthorized use of the trademark.  If you think you may need to file a trademark lawsuit, you should consult a trademark lawyer as soon as possible.

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