Trademarks are signs, designs, or expressions that are recognizable and distinguish a product or service from a particular source from others. A trademark is a phrase, logo, word, or symbol that a business can use to protect their brand identity.
A trademark protects a brand logo or name that is used on a product or good. Trademarks provide their owners with the exclusive right to use the mark to identify their goods or service. These protections allow business owners to gain commercial recognition for the goods and services as well as to reap the financial gains that are associated with a distinctive present and established reputation.
The federal Lanham Act protects trademarks in the United States. The United States Patent and Trademark Office (USPTO) is the agency that administers trademark registration.
There may also be state laws which complement federal laws that provide trademark rights. It is important for an individual to understand product-specific trademark usage because:
- It helps consumers differentiate between products and services
- It may indicate quality, origin, and consistency
This can assist consumers with making informed purchasing decisions as well as build trust in the brand. This process will help contribute to the success of the business.
What Are Some Strategies for Using Trademarks on Different Products?
Conduct a trademark search
Prior to registering a trademark, it is very important to conduct a trademark search. This will ensure that the mark an individual wants to register is not already being used and is not too similar to one that already exists.
In addition, conducting a trademark search helps avoid future trademark infringement issues. An individual can conduct their own trademark search but they should also have a lawyer do one as well to ensure it was thorough.
It is likely that an individual’s first choice will already be in use. However, spending some time before trying to register a trademark can save a lot of money and time later on.
It is important to note, however, that these types of searches are best done by a professional, as there are nuances and tips that a non-experienced individual will not know. It is also important to note that common law trademarks may not be registered with the USPTO. Common law trademarks are created by using a logo or service in commerce but have limited protections.
Other ways to search for trademarks that may be in use include:
- Conducting a Google search for the possible names being considered
- For web-based businesses, an individual can search for domain registrar names at Internet Corporation for Assigned Names and Numbers (ICANN)
- Checking the state trademarks through the Secretary of State Office
Seek legal advice
Trademark lawyers can help an individual with any issue they have related to their trademark, including helping them choose and register their trademark. An attorney can also conduct a thorough trademark search that will likely be more in-depth to ensure that it will not have to be changed in the future.
It would be a waste of resources to create a business name, run advertisements, create items or brochures and be forced to change it all at a later time because a thorough search was not conducted. In addition to this, if an individual does use a trademark that is similar to or the same as one in existence, they may be held liable for damages and the owner’s attorney’s fees.
A court will assume that a non-registered user of a trademark was aware that the registered trademark was already being used, even if that is not factually the case. Having a lawyer provide assistance with a trademark will help ensure the success of an individual’s business as well as protect their mark and profits they earn.
How Can LegalMatch Help?
LegalMatch is an excellent resource for information and legal assistance no matter the stage an individual is at with their trademark. It is important to obtain professional assistance with trademark usage for different products.
A trademark lawyer can help with product-specific trademark use. Every type of trademark has unique requirements and protections.
An attorney can help an individual choose the correct type of trademark for their business needs. A trademark can be many different things other than works or two-dimensional designs.
Examples of non-traditional trademarks include, but are not limited to:
- Video clips
- Colors
- Sounds
- Scents
- Motions
An experienced trademark lawyer can help an individual choose the correct type of trademark for their needs and may be able to help them create something unique they were not aware they could use. For more information on how LegalMatch has helped millions of clients with their legal needs, see the customer testimonials.
What Is Product Specific Trademark Usage?
Trademark classes
Trademark classes are used to organize goods and services in trademark applications, assess fees on those, and help when searching the database of pending and registered trademarks. All goods and services are organized, or classified, into broad categories that are determined by international agreement.
The categories are numbered from 1 to 45, which is also called international class. Although there are numerous items in each class, goods and services are never included in the same class.
The Nice Classification (NCL) was established by the 1957 Nice Agreement. This agreement is an international classification of goods and services that is applied to the registration of trademarks.
This system is recognized in many different countries, making international trademark applications a more streamlined process. This system is specified by the World Intellectual Property Organization (WIPO), with a new edition published every five years.
Using trademarks for different products within the same class
A trademark may be registered in as many classes as desired, as long as the mark is used when selling the goods and services. It is important to note that the trademark will only have national protections in the classes it is registered under.
In addition, there can be identical trademarks across different classes as long as there is not a likelihood of confusion among consumers. If a product does fall into multiple classes, an owner can apply for a trademark in each of those classes.
For example, if a company sells a device that relieves back pain by massaging the user’s back, it can be registered in Class 10 as a medical supply and Class 11 as an appliance.
What Are the Permissible Uses of Trademarked Names for Different Products?
In some situations, trademarked names may be used for different products. For example, a trademarked name can be used for a different product if the second product is in a different class than the registered one.
In general, a trademark is not considered to infringe on another if the underlying product or service does not compete and is not distributed in the same locations or trade channels.
What Are Prohibited Uses and Potential Trademark Infringements?
Trademark laws are intended to prevent consumer confusion as well as trademark infringement. Trademark infringement arises when one party uses a mark that is confusingly similar or identical to an already registered trademark, which may lead to consumer confusion.
To determine the likelihood of confusion, it must be determined whether a reasonably prudent consumer would be confused by the use of similar marks on competing products or services. If consumers would believe that the two marks are affiliated, there is evidence of potential confusion.
The distinctiveness of a trademark is how it distinguishes itself from other marks or signs. This factor can impact anything from the trademark’s registrable, its scope of protection, and its enforceability and continued validity once it is registered.
The 1961 case Polaroid Corp. v. Polarad Elecs. Corp., provides factors, called Polaroid factors, that are examined by federal courts to determine the likelihood of confusion, including:
- The strength of the senior user’s mark
- The more distinctive or stronger it is, the more likely there will be confusion
- The similarity of the marks
- How similar the product or services are
- The likelihood that the senior user will expand into the junior user’s product area
- The intent of the junior user when adopting the mark
- If there is any evidence of actual confusion
- The sophistication level of the purchasers
- The quality of the products or services of the junior user
Another form of trademark infringement, called trademark dilution can occur in cases where there is no consumer confusion. Instead, dilution occurs when the use of a trademark blurs or tarnishes the distinctiveness of a famous trademark.
Examples of ways dilution may occur is when a well-known logo, such as the Apple apple is placed on a different type of product, such as a kitchen appliance. It may also occur when a similar name is used, such as Nikei, where consumers have difficulty determining if the product is associated with the famous brand, Nike.
The remedies for both confusion and dilution, as subcategories of trademark infringement, are typically monetary damages that are paid by a defendant to a plaintiff. These monetary amounts are meant to compensate plaintiffs for their losses, including:
- Lost profits
- Lost clientele
- Reputational damage
Punitive damages may also be awarded in certain trademark infringement cases. These damages are often limited to double or treble damages, which is two or three times the amount of the economic damages award.
These damages may be awarded if intellectual property protections and laws were intentionally violated. In certain cases, trademark infringement may result in federal charges, which can lead to prison time or additional penalties.
Do I Need Legal Assistance?
If you are considering registering a trademark or even if you have already started the trademark process for your business, it is very important to have the assistance of a trademark lawyer throughout the process who can help ensure you register a unique and protected trademark. Your lawyer will help ensure that you take the proactive steps necessary so that you are not liable for any type of trademark infringement.
LegalMatch is a great and convenient place to find a trademark lawyer near you who can start helping your business succeed. You can submit your trademark question on the website at no charge and you will get responses from licensed and pre-screened member trademark lawyers in your area who are ready to help ensure the success of your business.
