Almost everyone has heard about trademarks. But when asked what is a trademark, most people draw a blank. Even savvy business owners understand that they likely have a trademark, but they’re not sure how to protect it.
Let’s start by learning what is a trademark.
A trademark is a distinctive symbol, word or phrase used to identify a seller’s product or products. The trademark helps distinguish the seller’s product from the products of another seller. For example, the trademark for “Nike” is the Nike “swoosh”. This symbol identifies this type of shoe. Marks can also be used to identify a company’s services rather than products. These are called service marks. For example, the service mark for a housecleaning company might be “Merry Maids” with or without a company logo.
Want to learn more about trademarks? Call a trademark attorney.
Are trademarks protected by state or federal law?
Both state and federal laws govern trademarks. State common law originally provided the main source of protection for trademarks. The U.S. Congress enacted the first federal trademark law in the late 1800s. But, since then federal trademark law has taken this over. Federal law provides the main and most extensive source of trademark protection today. State common law actions are still available.
How do I protect my trademark?
A trademark can be registered in any state. However, this only provides limited protection. A better option is to seek a federal trademark registration.
A trademark can be registered at the United States Trademark Office website. A trademark application requires information, such as the date of first use in commerce and a category of goods and services for which the mark is used. The online form may seem simple, but it is easy to make mistakes. Some mistakes cannot be corrected after the application is submitted, and you may lose important legal rights. Therefore, you should always work with a trademark attorney when applying for a trademark registration.
Do I have to register my trademark to be protected?
Registration is not required for the trademark to be protected. But there are many benefits to registering your trademark with the US Trademark Office. Some benefits include:
(1) registration gives notice to other parties that the trademark is already owned by someone;
(2) registration enables an infringement lawsuit, if necessary; and
(3) a trademark can become “incontestable” after five years and, at this point, the party has the exclusive right to use the trademark.
Of course, registration could be denied or rejected by the US Trademark Office. For example, the trademark examiner may reject marks that have not attained secondary meaning. A descriptive mark acquires a secondary meaning when the public primarily associates that mark with a particular producer, rather than the underlying product.
The trademark examiner may also reject a certain geographic marks, “scandalous” marks, marks that are primarily surnames, and marks that can cause confusion with marks that are already existing. If a mark is initially rejected, this does not mean your mark cannot be registered. You have the opportunity to present arguments in favor of registration. This is where working with a good trademark attorney is important.
Do I have to hire a trademark attorney to register my mark?
You are not required to hire an attorney to register a trademark – but it is strongly recommended. Working with an attorney decreases the possibility of mistakes. A good trademark attorney does more than simply file the application for you. Your attorney will also help you through the entire process, from choosing a name all the way through to final approval. This can help with approval and registration of your trademark.