At Polaris Law Firm we understand how important it is to protect your brand. Generally the best way to protect your brand is by using a trademark. Trademarks can be quite confusing. In this post, we discuss everything you need to know about trademarks. This page details everything from definitions, how to file, and how to maintain your trademark.
1) What is a trademark?
A TRADE MARK is a word or set of words, symbol, or device or in combination, that identify a particular manufacturer or merchant’s goods from other goods manufactured or sold by others.
For example, Coca-Cola, has a highly visible identifier that this cola is different from any other and informs that stores bearing the name or symbol sells that particular soft drink.
Similarly a SERVICE MARK is used to identify a particular service rather than a product. For example, the name McDonald’s is actually a service mark. The name McDonald’s is a service mark because it is an identifier of the business for selling food. The distinctive golden arches, the yellow M, is a trade mark of the franchise.
Another example is when different companies have the same name but in different industries. Delta Air Lines and Delta Dental Insurance have nothing to do with each other but still need to distinguish themselves in symbols, colors, and signage to make it clear that they are not part of a conglomerate of companies.
For the purposes of this list of frequently asked questions, the word ‘trademark’ will be used to refer to both trade-marks and service marks.
2) Why do I need a trademark?
Trademarks are easily-recognizable symbols represent your company and identify that your products all come from the same source. This is important for branding, and even more vital to protect against infringement.
Customers are strongly influenced by recognizable trademarks for their purchasing decisions.
Having a trademark also lets consumers feel that a business is trustworthy and can deliver authentic products. When you have a distinctive trademark that allows them to easily identify your brand from all others in your industry, customers find you more easily and retain memory of their previous experiences with your brand. Over time, your reputation will build and you would develop a loyal customer base.
A trademark allows you to file suits on imitators that offer inferior products or services that dilute your brand’s value.
3) Isn’t my business name automatically trademarked?
No. Filing for an LLC does not mean your business name is trademarked. Unfortunately, this is one of the biggest misconceptions about trademark law. You can claim the use of your business name. However, unless the name is a registered trademark your ability to prevent others from using similar branding, naming, or designs is limited. You will at most have common law trademark protection, applicable only to a local area. Generally, you won’t have protections on the national level and can’t file suits in federal court to protect your trademark. Unfortunately, this means you can’t protect your reputation from others that leech off your brand recognition. Nor can you protect your brand against those offering inferior products or services under your brand.
4) What’s the difference between a patent, a copyright, and a trademark?
A PATENT grants the owner exclusive rights to manufacture and market a specific design, invention or process. It must be a new invention with some utility or usefulness. Design patents protect an item’s unique ornamental design. At Polaris, we do not file patents. However we do refer patent inquires to qualified patent attorneys.
A COPYRIGHT secures original “works of authorship” such as literary, musical, graphical, artistic and other creative works from imitation, performance or distribution without the author’s consent. Only the copyright holder may produce or make variations on the copyrighted content. We can certainly help you register your copyrights at our law firm.
A TRADEMARK grants exclusive rights to the use of a specific symbol, word, phrase, or design that distinguishes its products or services from others. Our firm regularly files federal trademarks and we’d be glad to help.
So, for example, take the familiar Coca-Cola bottle design. The Coke bottle with its iconic curves was first patented back in 1916, and as a physical item of novelty means that no one may imitate the shape to confuse their products with Coca-Cola. The name Coca-Cola in flowing handwriting, the ‘dynamic ribbon’ design, and its color combinations, are trademarks of product.
Coca-Cola also owns all Intellectual Properties related to its goods and businesses, such as all marketing assets, songs and jingles, arts, websites, and anything that can be considered as an original work requiring creative effort. Others may not infringe on Coca-Cola’s rights without permission (such are reproducing its logos or advertising material), unless it is for parodic or news reporting purposes.
5) What should I trademark?
You can trademark certain forms of intellectual properties like words, ideas, images, and sounds. Company names and logos are usually the first to be trademarked. You may also trademark certain phrases or slogans that are inherently associated with a product or service. It is important to trademark as many related things to your company identity as possible.
For example: ironically, Twitter doesn’t own the trademark to the word ‘tweet’, due to an earlier claim by a third-party developer, Twittad that trademarked the phrase “Let Your Ad Meet Tweets”.
Trademark applications may be rejected on grounds of being too general or too confusingly similar to other existing trademarks. More precise information on this can be found in the answers to Process Questions 9 and 10 below.
6) How can I get a trademark?
You can file for trade mark registration either at the state or federal level. The U.S. Patent and Trademark Office (USPTO) grants ownership of the trademark for use in all related goods or services in all states.
7) State vs Federal Trademarks, which one do I need?
Federal trademark registration has multiple advantages:
- First, it applies nationwide. If a federal registered trademark is in use before a state trade mark, the owner of the federal trademark may prevent the state trademark owner from using the mark. If the state trademark was registered first, the use may be limited to only the state in which it was registered.
- Second, it lists the trademark in the US PTO’s database. The searchable public record provides precedence that may prevent others from using elements too similar to your trademark at risk of the application being denied, thus preserving its uniqueness.
- Third, you can notify others that the trademark is registered in a national trademark office by using the ®. State registered trademarks may only use ™ or ℠.
- Fourth, you may file for a record with the US Customs and Border Protection Service to prevent products that infringe on your trademark rights from being imported.
- Fifth, it is a necessary step for obtaining foreign trademark registration.
However, filing for state registration also has its own benefits.
- First, it is significantly cheaper and faster. Federal registration can take from several months to several years to process.
- Second, you may find stronger and more immediate assistance when filing lawsuits for infringing companies and counterfeit products. Local prosecutors and law enforcement are more willing to tackle local counterfeiters than federal prosecutors who may already have a much larger workload to process. Someone who has registered the infringing trademark at the state level may be able to delay enforcement by laying appeals upon appeals, perhaps costing you years in legal fees and delays even if you win the challenge.
You can of course have both state and federal registration of your trademark.
8) What do I need to do before filing a trademark?
- The first thing to you must understand is that the trademark application process is a legal proceeding, and one in which you may be best served with the help of a practicing trademark attorney.
- Second, you must determine if the mark you want to register is registerable at all. You must also consider how difficult it would be to defend your trademark based on the strength of its distinctiveness and your willingness to enforce your ownership of the mark.
Remember, all that the US PTO does is to store a record of your trademark – finding infringing products and companies and seeking legal action against them is your own responsibility. The trademark provides the defensible basis for the lawsuit.
- Third, you must identify the mark you are attempting to register. Is it a logo, a standard character mark (word mark, consisting of an assembly of words and fonts), or a sound mark? Provide a written description of what you wish to trademark in addition to its graphical or multimedia representation.
- Fourth, you must identify that it does not conflict with any prior trade marks through searching the UPTO database.
- Fifth, you must identify the precise range of provided goods or services that the trademark will apply to.
- Sixth, you must clarify the basis under which you are applying for registration – under already “use in commerce” or with “intent to use”.
- Seventh, you must have prepared a clear drawing and specimen (a sample of how the trademark would look when in use with the intended product or signage) of your trade mark for application, preferably in JPG (less than 5 MB) or PDF format (less than 30 MB). Sound marks should be in a universally readable common audio format such as .wav or .mp3, and should not exceed 5 MB for audio files and 30 MB for video files.
- And eighth, if you have completed the preparations now you may fill up the forms to apply through the Trademark Electronic Application System (TEAS) of the US PTO.
- Lastly, you must be able to pay the initial application fee, from $255 to $400, plus a fee for each class of applicable goods or services in the application. The application fee is a processing fee and does not mean approval. It is non-refundable. Note that only one mark may be filed per application.
9) What sort of things can I trademark?
Word Marks are one or more words that identify your product or service. Usually similar but not necessarily the same as your business name. For example “Visa”, “FedEx”, “Amazon”. However, do note that work marks must be registered in a standard typeface, i.e., you are registering the words only and must apply for a figurative mark that includes the fonts and arrangements you wish to protect.
These are trademarks that consist of a figure or a figure combined with a word. If your logo is composed of typography, you will need to register this also in order to protect the use of your particular fonts and combinations. Note that this does not protect the meaning of the words and letters themselves, only how they appear.
Logos fall under this category, such as the check mark Nike logo or the Apple icon. They can also be mascots like the green Android droid.
You could specify the specific combination of colors for your trademark. For example, the distinctive blue and orange of FedEx can be protected to prevent confusion and competing attempts at deceptively reproducing their brand’s appeal to the public.
Colors in their entirety can also be trademarked to distinctively identify a product by its packaging, such as “Cadbury Purple”, or “Tiffany Turquoise”. Similarly, the three white stripes instantly allow people to recognize shoes that are designed and sold by the Adidas company. However, do note that the exclusivity of the trademark only applies to the products listed in the application and not to any products unrelated to the industry.
Three-dimensional trademarks are sometimes also known as “trade dress”. The distinctive Coca Cola bottle shape is one such example.
It also protects elements like atmosphere or décor in the place of business. However, they must be clear and unique in order to qualify for protected branding. Also, trade dress must be inherently non-functional or ornamental, and as such cannot qualify for a patent. An infringement case should be filed when it’s possible for a consumer to confuse a competitor’s product for your product. This is also true if another brand infringes on your brand’s memorable packaging.
Phrases and slogans
Trademarkable slogans must have a purpose related to selling a product or distinguishing your brand. For example, Wendy’s “Where’s the Beef?” or Nike’s “Just Do It”.
Taglines such as “Save More, Save Often” for a supermarket or “Think Green!” are generally not trademarkable due to not being distinctive enough or having an informational nature. Special care must be taken to make the consumer see the slogan as a source identifier distinctive to that brand.
Distinctive sounds and notes can be trademarked. Sounds like the Metro-Goldwyn-Mayer lion roar are synonymous with the brand. Likewise, so is the fanfare for 20th Century Fox pictures instantly recognizable. Other sounds include the “Intel Inside” jingle and the Playstation “Play-sta-tion” synthesized phrase.
There are stricter rules for registering a sound indicator that has a distinctive learning and recognition effect for the listener. Sometimes it may be easier to restrict usage and imitation via copyright instead.
Similar to the three-dimensional trademarks are the packaging of distinctive shapes for a product. The triangular shape of Toblerone bars identify the source of the product far more easily than just packaging and colors. The shape of Hershey’s Kisses chocolate drops is also protected.
10) What are the things I can’t trademark?
Generic words are the common, everyday words people use to refer to goods and services. Everyone has a right to use generic terms. For example: “Milk”, “Bicycles”, “Pizza”.
However, there are exceptions – if the generic word is used as a descriptive or suggestive term in an industry unrelated to everyday usage of the word. For example, “Apple” for computers. “Face(noun)” for social media.
Trademarking surnames is generally discouraged. This is discouraged to prevent restricting others with the same surname from using their own name with their own businesses.
McDonald’s is the most famous name that seems to be an exception, though there are limits, generally from how Mc(word) has already acquired a secondary meaning in the public consciousness. Other surname trademarks are allowed due to a similar “grandfather clause” and already having achieved specific attachment to the name for their products in the public consciousness. For example, Macy’s for department stores or DeBeers for diamonds.
Geographically descriptive names
Certain geographical names are used to exclusively describe a product. For example, champagne means sparkling wine produced in the Champagne region of France. Champagne is not a generic noun despite how it may sound in popular usage. Such terms are denied in order to prevent companies from misleading customers about the origin or perceived quality of their product.
For example, labeling juice “True Florida Orange” when it’s neither produced nor include oranges grown in Florida, won’t be allowed.
Scandalous or offensive terms and symbols
Generally denied as unpleasant to the public conscience.
Trademarks should not deceive the consumers. If a trademark communicates an idea that is false, or provokes confusion on part of the consumer about the characteristics, purpose, ingredients or quality of the goods or services, it will be denied as contrary to the purposes of trademark law.
For example, labeling an ice cream brand “VANILLA ICE BABY” for a pun on music will be deemed unintentionally deceptive when the containers contain chocolate ice cream. However, if “VANILLA ICE BABY” were the name and logo of a ski resort, there would be no potential for confusion and it would be acceptable.
“COOLET MINT HEALTH CANDIES” that are otherwise simply mint candies would be deliberately misleading at influencing consumer behavior, thinking there would be health benefits when there are none. However, simply “COOLET CANDIES” itself would have higher chance of approval.
Marks that only communications information or describes a function, quality, purpose or feature of the goods or service may be initially refused because they are weak trademarks that are harder to defend. They may also lack distinctiveness that will help the consumer identify your trademark apart from its competitors.
For example, “Sweet Honey Peanuts” for roasted peanuts glazed with caramel or “Cleanest Wash Car Wash” for a car wash service. While these may be allowed as business names, they have a low chance of succeeding as trademarks.
11) What sort of information is required for Federal Trademark Registration?
These information should be provided to set up the strong basis for your trademark against competing claims.
- The full name, contact address, and entity of the applicant. If an individual, the citizenship must be noted. However, one does not need to be an American citizen to file a trademark. For a partnership, all the names, addresses, and citizenships of the general partners must be listed. If a corporation, the state or country in which it was incorporated.
- A written description of the mark, specifying its notable elements. Shapes must be described, colors and arrangements noted.
- If the mark involves graphical or media elements, the “Drawing” that reproduces the mark must be included.
- The classes of goods or services that are involved with the mark.
- The date the mark was first used with these goods or services.
- Documentary samples showing how the mark will or has been used with the aforementioned goods, advertisements, publications, or promotional materials. These are required “Specimens” for registration.
12) What happens after filing the trademark application?
Once the USPTO has determined your application meets the filing requirements, you will be assigned an application serial number. After which, your application will be forwarded to an examining attorney.
After several months, you may receive a notice that your application has been accepted for publication in the “Official Gazette”, a weekly publication of the USPTO that displays newly registered trademarks. Any party that believes they may be damaged by your trademark will have 30 days from publication to file an opposition to the registration.
If your application was not accepted, you may instead receive a letter of Office Action that explains the reasons for refusal and/or deficiencies in the application. You should respond to the Office Action within six months with corrections to your application or else it will be declared abandoned and you have to try all over again from the start.
If you have filed your application under the basis of Use in Commerce, the USPTO will mark the trademark registered and send you a certificate of registration. You will then only have to periodically file maintenance documents to deep the trademark registration alive and valid.
If you filed under Intent to Use, you will receive a notice of allowance about two months after the publication. Upon receiving the notice, you will have six (6) months to either
- Use the mark in commerce and file a statement of use (SOU) proving so, or
- Request an extension of six (6) more months before you have to use the mark in commerce to finalize registration.
13) What should I do with my trademark?
You have to use your trademark properly. Remember that a trademark is proper adjective, it is not a noun. This is actually important to prevent it becoming invalidated by common use into generic terms. Interestingly enough, Aspirin, Escalator, and Thermos, were all once words that signified a particular brand name.
While its easier to say “I have a Walkman”, people started identifying Walkman as synonymous with any personal portable stereo. Walkman lost its ability as an identifier of a particular product from a certain manufacturer. Today many people do not know that Walkman was a particular brand at one point. A brand can easily become the victim of its own wild success.
Using the word “brand” may reduce such identification, such as Xerox brand copiers or AstroTurf artificial turf. Though “astroturfing” is used as a verb playing upon the word “grassroots” for a fake popular campaign, it remains a valid trademark.
Alternatively, properly distinguish it as from surrounding words. Capitalize it properly and/or use the Registration Mark (®) to remind users that it is a proper brand name. Using the Registration Mark helps people know that your brand is not a generic term. It would be frustrating to find a competitor, for example, marketing their toys as Kidsafe brand yo-yos instead Yo-yo brand string rollers.
A trademark’s purpose is to identify the source of the product, not to identify the product itself. You should always keep this in mind.
You should also maintain consistency of your mark across all your usage cases. Do not abbreviate, add or delete terms and elements, or change a design without cause. Remember that your trademark registration protects specifically the drawing you have submitted to the trademark office. Variations on your own trademark dilutes its own branding and weakens its legal protection.
14) How do I officially maintain my trademark?
You may file a Combined Declaration of Use and Incontestability under Sections 8 and 15 if you have continually used a Mark for five years in commerce after the date of registration. You must file the Combined Declaration with the specimen, fees, and dates, within the fifth and sixth years dating from the date of registration.
If you haven’t used the trademark in commerce, you must file a Section 8 Declaration of Use and/or Excusable Nonuse of a Mark. You need to file it in the year between your fifth and sixth anniversary of the date of registration.
You must file a Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9 on every tenth year of your registration. Failure to file will mean cancellation of the registration. However, for an extra fee, $100 per class, you may file within a six-month grace period after the expiration date.
15) How do I legally defend my trademark?
It is up to you to find infringements upon your trademark and contest it in court. If you have already taken preventative measures to police your trademark most of the time its a simple fix. Generally, all you will need to do is send a Cease and Desist Letter to those infringing on your marks. We can certainly send a Cease and Desist Letter on your behalf.
Lawsuits are expensive. Most infringers will stop as soon as they find that the lawful owner is asserting their trademark rights. However, if this fails and your trademark is registered at the federal level, and you can prove that the infringing mark is confusing customers and causing damage to your business, the court may order damages to be paid or order the infringer to give up their profits from the span of time they were infringing on your rights.
Remember Priority. The one who uses the trademark first in commerce is often the true owner of the trademark. If you have a federal trademark and the one you’re filing an injunction against is registered at the state level, but they have registered it first, you may have limited options to make them desist. However, you may still have use for trademarks outside the state.
Know the difference between proving usage of Trade Marks and Service Marks. Trademarks must be used directly on products or the container or packaging by which the goods are sold. The use of trademarks in advertising is not enough. For Service Marks, it is enough to use the service trademark in signs or advertising offering the services. Signs that show you advertising the services are generally enough to maintain proof of usage.
You should consult with trademark attorneys to periodically search for potential problematic or infringement uses of your trademark. Here at the Polaris Law Firm we regularly perform trademark searches. If you have properly filed and registered and you’re the first to use your trademark, you should not worry much. It’s a matter of use it or lose it. Diluting your trademark can be very dangerous to your business. The value of brands can increase over time. Damaged brands cost a lot in time, money and effort to repair your consumer’s trust.
Still Have Questions About Trademark Law?
Hopefully this page answers all of your questions. If you still have any questions about trademarking please contact us now for a free consultation. In the alternative, you can always call our office; 704-856-9502. We look forward to helping file all of your brand’s trademarks.