A trademark is a mark a company uses to distinguish its goods or services from others. Businesses also use trademarks so customers can differentiate between competitors (for example, two bakeries in the same area).
Any of the following can be a trademark:
- Word,
- Phrase,
- Symbol,
- Image, and
- A combination of the above.
An identifiable trademark also helps companies build brand awareness and reputation among customers. Companies can have multiple types of trademarks, for example, a logo, a slogan, and a company name.
What Are the Common Types of Trademarks?
There are multiple types or categories of trademarks, such as:
- Service marks, which companies use to identify services;
- Collective marks, which are trademarks used to identify an organization and what they provide or who they are (e.g., employee-owned);
- Trade dresses, which is unique packaging or “dress” of the goods; and
- Certification marks inform customers that a company or product meets specific standards (e.g., cruelty-free).
The United States Patent and Trademark Organization (USPTO) further classifies trademarks based on their strength. A strong trademark is unique and offers more protection than a weak or generic trademark.
The USPTO’s classification for the strength of trademarks includes the following:
- Generic. These typically consist of the same word people use to refer to that service or good. An example is using “bicycle” to refer to a bicycle or bike shop. The USPTO office does not consider this to be a trademark.
- Descriptive. These “trademarks” describe someone’s goods or services or the quality of the goods or services but do not necessarily distinguish them from those belonging to others. For example, using “delicious” to refer to a French silk pie is descriptive. The USPTO usually does not allow people to register descriptive trademarks.
- Suggestive. Suggestive marks suggest something about the goods or service (such as quality). The USPTO cites “Coppertone” as an example of a suggestive mark.
- Arbitrary. Arbitrary marks are words that do not connect with the underlying good or service. Dell is an example of an arbitrary trademark because “dell” is a common word, but using it to refer to a computer company is random and unique.
- Fanciful. Fanciful marks are made-up words or phrases that refer to a good or service. Lenovo is an example of a fanciful mark because it is an entirely made-up word.
Developing a strong trademark can take considerable time and research, but doing so can allow the user to register. Having a registered mark provides the holder with enhanced intellectual property protection.
What Is a Registered Trademark?
Registered trademarks are visual images or arrangements of words that have been approved as official trademarks by the state trademark office or the USPTO. Registered trademarks can be used in connection with specific products or lines of products, for example, a t-shirt line.
People can also use registered trademarks in connection with various professional services. It is important to note that the application process is typically different for product trademarks than for service trademarks.
Both application processes typically require a background search to ensure that another entity is not already using the mark. This process also involves submitting various documents and descriptions to identify how the applicant will use the mark in commerce.
What Is a Trademark Search?
Before someone can register a trademark, they must ensure it is not already in use. To accomplish this, they perform a trademark search to determine if someone has rights to the mark they want to use or some version of it.
Individuals can complete official trademark searches at the federal and state level.
At the federal level, they search the USPTO’s online database. If done correctly, the USPTO search will show people the status of marks that are an exact match or similar to the one for which the user searched.
When searching, note that people may use similar marks if their goods or services are distinct from one another or in different industries. For example, let’s say someone is searching for a potential trademark for a candle company, and the same or a similar name appears for a bakery. Because the businesses are different, registering and using the new mark may not be an issue.
People can also search at the state level to determine if someone has rights to the trademark in their state.
People should also perform a general internet search (e.g., a Google search) to find out if people are already using that trademark concerning goods or services.
Performing a trademark search using multiple modalities can help individuals ensure maximum protection when using and registering their marks.
How (and Where) Do You Register a Trademark?
Individuals only have trademark protection where they register and use their trademark. Further, they only have the right to tell others how to use their trademark concerning their goods or services. In other words, having a trademark does not mean someone can forbid others from outright using that word or phrase.
If someone registers for a trademark in Colorado but does not register at the federal level, they may only have protection regarding how people use their trademark within Colorado.
Individuals would benefit from registering with the USPTO at the federal level for maximum trademark protection. Because this can be costly and time-consuming, individuals need to weigh their options and talk to a trademark attorney to determine the best situation.
What Rights Does Having a Registered Trademark Protect?
Registering a trademark grants the owner certain legal and commercial rights for the holder of that trademark, including:
- The right to display the mark in connection with the corresponding products or services;
- The right to charge other entities fees for the use of the logo or mark; and
- The right to exclude other parties from using the trademark.
The registered trademark belongs to the company that registered it. Other companies cannot use a registered trademark without permission from the owner.
If someone tries to register a trademark already used in that industry, they are unlikely to succeed. The test for this issue is whether the trademark would cause consumer confusion about another company’s mark in that area or industry.
This test requires a detailed legal analysis that typically requires the assistance of an attorney to determine how close the trademarks are in comparison to one another.
When displayed on a product, a register usually appears with the letters “™” in, on, or near the mark.
What Happens if Someone Violates Registered Trademark Laws?
A violation of registered trademark law may lead to various civil and criminal legal consequences. This typically includes a lawsuit for infringement where the court awards monetary damages to the non-violating party.
The court may award damages and other remedies to compensate the plaintiff for the improper use of the trademarked material. One of the most common examples of this issue arises when a company sews a trademark on a counterfeit piece of clothing to pass it off as an authentic product.
In these cases, the defendant or the violating party may be required to reimburse the original company for any losses caused by their counterfeiting activity. The court may also force the defendant to forfeit their unauthorized products to law enforcement.
The defendant may also be subject to state criminal laws in some instances.
What Is Trademark Infringement or Dilution?
Federal laws offer trademark protections if an unauthorized individual uses the trademark without permission. Registering a mark protects it from trademark infringement and dilution.
Trademark infringement is when someone illegally or improperly uses someone else’s trademark, such as by creating counterfeit versions of their goods.
Trademark dilution is where a trademark takes away from or “dilutes” the uniqueness of an existing mark.
Do I Need a Lawyer for Assistance With Registered Trademark Laws?
The laws governing registered trademarks contain specific details and requirements for obtaining a registered trademark. If you want to apply for a trademark, consider consulting a trademark lawyer.
Your lawyer can help you navigate through the entire application process, including conducting a trademark search. If you are required to file a lawsuit over a trademark dispute, your lawyer can represent you in court.
