Trademark Basics

What is a trademark?

A “trademark” is a word, phrase, symbol, design, or any combination of those things, that identifies the source of particular goods. A “service mark” identifies the source of particular services rather than goods. The terms “trademark” and “mark” are often used for both trademarks and service marks.

Examples of trademarks:

  • Words (RED BULL, GOOGLE)
  • Initials and Acronyms (GE, 3M)
  • Symbols (NIKE “swoosh”)
  • Devices (LEVIS pocket tab)
  • Characters (The ENERGIZER Bunny)
  • Sounds (NBC chimes)
  • Colors (pink for OWENS-CORNING insulation)
  • Trade Dress (the shape of COCA-COLA bottles, the building design of McDONALDS restaurants)

In the United States, trademark rights are created through the bona fide use of a mark in connection with the sale of goods or services in interstate commerce. Registration of a mark is optional in the U.S., but registration can strengthen and enhance trademark rights (see Registration below).

What are the differences among trademarks, patents, and copyrights?

A trademark is a brand name, logo, symbol, or design that identifies the source of goods or services. Trademark rights may exist whether or not a trademark is registered with the U.S. Patent and Trademark Office (USPTO).

Copyright protects original works of authorship, such as text, graphical or musical works, or computer software, that has been fixed in a tangible medium of expression. Copyrights may be registered with the U.S. Copyright Office.

Utility patents protect useful processes, machines, and other useful inventions. Unlike trademark rights or copyrights, patent rights are acquired only through the issuance of letters patents by the USPTO.

Design patents protect non-functional, ornamental features of useful objects. Like utility patents, design patent rights are available only when granted by the USPTO.

What does a trademark do?

A trademark:

  • Distinguishes your goods/services from those of your competition
  • Tells your customers who you are rather than what you sell
  • Provides your customers with an assurance of consistent quality, building brand loyalty
  • Prevents consumer confusion as to the source of the goods or services
  • Provides a focal point for corporate advertising and promotion
  • Is a valuable corporate asset that can be sold or licensed to a third party

What makes a strong trademark?

The strength of a trademark and the scope of protection granted to the mark are based on the degree of distinctiveness of the mark. Generic and descriptive marks are generally the weakest type of marks (for example, COMPUTER TRAINING CENTER for computer training centers, or EASY-WIPES for disposable washcloths), and arbitrary or fanciful marks are generally the strongest (APPLE for computers, HAAGEN DAZS for ice cream, OREO for cookies).

How do I know if anyone else is infringing my trademark rights?

Trademark infringement exists when someone adopts a trademark that creates a “likelihood of confusion” among consumers as to the source of its goods or services and those of another, senior trademark user, due to similarities between the parties’ marks. Factors considered include:

  • The strength of the mark infringed
  • The similarity in appearance, sound, and meaning of the parties’ marks
  • The similarity of the parties’ respective goods and services
  • The similarity of the channels of trade through which the parties’ goods are sold
  • The degree of care exercised by the purchaser of the parties’ goods
  • The intent of the alleged infringer

What can I do to preserve and strengthen my trademark rights?

In addition to registering your trademark, other ways to preserve and strengthen your trademark rights include:

  • Using the mark continuously and extensively
  • Controlling the quality of the goods or services sold under the mark
  • Controlling the use (and minimizing the misuse) of the mark
  • Using the mark as an adjective (with the generic name of the product or service), not as a noun. For example, “make a copy on the XEROX copier,” not “make a Xerox”
  • Distinguishing the mark from surrounding text by CAPITALIZING THE LETTERS, using special typeface, or “setting off in quotation marks”
  • Using the mark consistently, without modifications
  • Using the proper trademark notice (® or ™ or SM)
  • Educating employees and dealers on using the mark properly
  • Policing improper use or infringement of the mark by others

Why should I register my trademark?

The benefits of registration in the USPTO include:

  • Nationwide priority of use (subject to any preexisting rights of others)
  • Nationwide constructive notice of trademark rights
  • Use of the “®” designation
  • Over time, the registration may be deemed “incontestable,” which grants enhanced rights to the owner
  • Prerequisite to foreign registration
  • Prerequisite to policing infringing imported goods through the U.S. Customs Service

What happens during the trademark registration process?

The USPTO accepts applications for trademark registration based on either the trademark owner’s existing use of the mark (a “use based” application) or on the applicant’s bona fide intent to use the mark in commerce (an “intent to use” or ITU application). Trademark applications in the USPTO are examined by the USPTO’s trained trademark examiners to ensure that the mark is entitled to registration. The application process can be lengthy: up to a year or more for a use-based application, and at least a year for an ITU application.

Use based applications

Use-based applications require the following steps:

  • The application is submitted to USPTO for examination: the application includes a depiction of the mark, a description of the goods and services in connection with which the mark will be used, a declaration from the applicant that the mark is in use, a specimen showing the mark in use with the goods or services, and a filing fee.
    • A USPTO examiner reviews the application for proper format and compliance with other filing requirements. The examiner will further conduct a search of existing USPTO registrations and prior pending applications to determine whether the mark under consideration is confusingly similar to any of them; in making that assessment, the examiner will consider the similarity of the marks and the relatedness of the respective goods or services. A trademark examiner may issue an Office Action in which the application is preliminarily refused registration on any of a number of grounds. The applicant must respond to the Office Action within six months, or the application will be considered abandoned. If the applicant’s response does not overcome the examiner’s objections, the examiner will issue a final refusal. The applicant may appeal a final refusal to the Trademark Trial and Appeal Board (TTAB).
  • The application is published for opposition: the mark is published in the Official Gazette, a weekly publication of the USPTO. Following publication, third parties have 30 days in which to oppose registration of the mark or request an extension of time to oppose it. Oppositions are heard before the TTAB.
  • USPTO issues a Certificate of Registration

Intent-to-use application

An ITU application does not require that the mark has been used before the application is filed, but is based on the applicant’s good faith intention to use the mark in commerce at a future date. The initial ITU application does not require a specimen, or sworn statement that the mark is in use; rather, it requires the applicant’s sworn statement that he or she has a bona fide intention to use the mark in the future. The ITU application process is otherwise similar to a use-based application, up to the point of publication for opposition. Following publication, an ITU application follows these additional steps:

  • USPTO issues a Notice of Allowance (NOA)
  • Statement of Use filed: within six months after the NOA is issued, the applicant must begin using the mark on all of the goods or services listed in the NOA and notify the USPTO of its use in a Statement of Use. If the applicant is unable to demonstrate use within six months after the NOA is issued, it may seek repeated extensions of the deadline.
    • Office Action issued: the examining attorney reviews the Statement of Use and may issue an Office Action setting forth any grounds for refusing the Statement of Use. The applicant must then respond to the office action within six months.
  • USPTO issues a Certificate of Registration

How do I maintain a U.S. trademark registration?

Trademark rights can last perpetually if properly maintained. In the United States, a trademark owner may maintain a registration by filing a Declaration of Continued Use (a sworn statement confirming use of the mark in commerce) or, in some cases, a Declaration of Excusable Nonuse in the sixth year after registration. A trademark owner must continue to file a Declaration of Continued Use (or Excusable Nonuse) on the ten-year anniversary of the initial registration, and every ten years thereafter. A trademark owner must also file an Application for Renewal on the ten-year anniversary of registration and every ten years thereafter, and must pay the required fee. The failure to timely maintain or renew a trademark registration will result in the expiration or cancellation of the registration, but will not affect common law trademark rights.

Should I register my trademark in other countries?

Different countries have different laws relating to the protection of trademark rights, and many require registration in order to enforce your trademark rights. Unlike the U.S., where priority of trademark rights is based on use of a mark, in many other countries priority of trademark rights is determined by the first to register the mark. The procedure for registering a trademark does not vary a great deal from country to country: it nearly always consists of an application and examination process, an opportunity for objection by third parties, and the issuance of a registration certificate. Sometimes, a separate application must be filed in each country where you seek to protect it; in recent years, however, international trademark treaties and conventions have resulted in much more efficient means of registering in multiple countries, such as the countries of the EU.

Please contact a Gray Plant Mooty trademark attorney to request information about registering your mark in specific countries.