“The single largest source of intangible value in a company is its trademark.”
David Haigh, founder, Brand Finance
If you’ve invested time, money, and/or emotional energy in your branding, you want the peace of mind of knowing that it’s protected. We can help.
If you’re about to invest time, money, and/or emotional energy in your branding, you’ll want to avoid wasting all those resources by first confirming that using your chosen branding won’t infringe someone else’s rights. We can help.
Gretchen McCord assists clients with:
- determining whether the use of their intended marks is likely to infringe someone else’s rights
- registering marks at both state and federal levels
- enforcing the rights in their marks
- responding to allegations of infringement by others.
Contact Gretchen to discuss your needs, or read the following to learn more about trademarks.
How and why to protect your trademarks
A trademark is anything that, in the mind of consumers, distinguishes your product (“good” in trademark law parlance) or service from those offered by others. More specifically, a trademark serves to identify to consumers the source, or origin, of a good or service (marks used in conjunction with services are also called “service marks”), even if the consumer doesn’t know who the source is. The point is that any time consumers see a particular mark on or with a good or service, they can assume it was created or provided by the same entity as that creates or provides other goods and services bearing that mark.
A trademark can literally be anything that serves this purpose: a name, logo, tagline, package design (e.g., the shape of a Coca-Cola bottle), sound (e.g., the NBC three-tone chime), color (e.g., UPS brown) or even smell (e.g., pina-colada scent for ukeles).
A mark that consists only of words is called a “word mark,” whereas a mark that involves any design component–from stylized text to an image without text–is referred to as a “design mark.”
The purpose of trademark law is to protect consumers from being confused about the source of goods and services dues to the deceptive or misleading use of trademarks. That business owners benefit (sometimes tremendously) from trademark protection, although clearly a consequence of trademark protection, is not the primary purpose.
If Joe uses a mark in a way that is likely to cause consumers to mistakenly believe that some kind of connection exists between his products and those produced by Jane, Joe has infringed Jane’s trademark–even if he didn’t intend to or wasn’t aware of the infringement.
Determining whether a likelihood of consumer confusion exists takes into account not only similarity of the marks, but also similarity of the goods and services with which each is used. The same mark used on completely different products (e.g., DOVE chocolates and DOVE soap) is not likely to cause confusion and thus does not constitute infringement.
An inverse relationship exists between these factors: The more similar the goods or services at issue, the less similar the marks must be to find a likelihood of confusion, and vice versa.
“Availability” or “clearance” searches help to determine whether use of your proposed mark is likely to conflict with any trademarks currently in use (although they cannot guarantee availability). Naturally, the more thoroughly you search, the greater degree of confidence you can have in the availability of your mark. For words marks, you can begin with simple online searching, including searching the U.S. Patent & Trademark Office database and simply googling (since a mark doesn’t have to be registered to accrue rights).
Companies dedicated to trademark searching can conduct much more thorough searches using a combination of more sophisticated searching of the same sources you can access, such as the Trademark Office database, and searching a multitude of proprietary databases. These firms provide only a report of search results, not an analysis.
No, but there are benefits to doing so. Rights in trademarks accrue by virtue of using the mark in commerce (in the course of providing goods and services to others, whether or not a fee is charged). When a business uses a mark in a way that distinguishes its product or service from those of others, the business automatically begins to acquire trademark rights in the mark, regardless of whether it has registered the mark.
All trademark rights, whether registered or not, are limited to the goods and services with which a mark is actually used; in some cases, those rights may expand to closely related goods and services. Thus, the owner of the BROKEN SPOKE country-western dance hall would not be able to prevent a bicycle enthusiast from opening a bicycle repair shop named BROKEN SPOKE bike shop, even if they are in the same city, since it is unlikely that consumers would assume the two are related. It is possible, however, that it could prevent someone from opening a store named BROKEN SPOKE selling county-western clothing and boots in the same town, because, given the relationship between the services and goods provided, such a use could suggest to consumers that a relationship exists between the two entities.
Rights in unregistered trademarks, called “common law rights,” are also limited geographically to the area in which the mark is used and areas of logical expansion. Thus, a dance hall in Casper, Wyoming, may use the name BROKEN SPOKE for a dance hall, even though there is a BROKEN SPOKE dance hall in Austin, Texas. This makes sense, as the few consumers who would know about both are unlikely to assume that the two are related. In comparison, owners of the BROKEN SPOKE in Austin might be able to prevent someone from opening a BROKEN SPOKE dance hall in San Antonio, Texas, since it is only 70 miles away, and travel between the two cities is common, making it likely that consumers would encounter both dance halls and assume a connection between the two.
Registering your mark bestows rights across the geographic area of registration. You may register a mark at either the federal level, through the U.S. Patent & Trademark Office, or the state level, usually through a state’s Secretary of State. A federal registration grants rights across the U.S., and a state registration grants rights across that state. Federal registration provides additional legal benefits, including the ability to file an infringement suit in federal court and to obtain increased damages for infringement.
To obtain federal registration, a mark must first be used in interstate commerce, meaning commerce across state lines. If a mark is used only within one state, the only registration the owner may obtain is at the state level. (Some exceptions exist, such as marks used in the hospitality industries, where interstate travelers are likely to encounter the marks.)
At the federal level, you may file an application to register a mark already in use in commerce (a “use-based” application) or a mark that you have a bona fide intention of using but have not yet used (an “intent-to-use” application). In the application, you must describe the goods and/or services on which the mark will be used and group them by “International Class” (category). If your application is use-based, you must also submit a specimen of use for each International Class claimed in your application.
The Trademark Office will then “examine” your application to determine if it believes your application conflicts with any current registrations or prior-filed applications, and if the information provided in your application is acceptable (for example, an Examiner may require that you re-word your goods/services description). If the Examiner has any objections, you will be issued an Office Action explaining the objections and any required corrections; you must respond to the Office Action within six months.
Once the Trademark Office has approved your application, it will be “published” in the Trademark Official Gazette. Any third party who believes that their rights in their marks will be harmed by the issuance of a registration for your mark has thirty days to file an Opposition with the Trademark Office.
Assuming no Oppositions are filed, a use-based application will then proceed to registration. If you filed an intent-to-use application, you will be notified that you have six months to begin use and submit a declaration that you have done so, along with a specimen of use for each International Class. That deadline may be extended in six-month increments up to four times.
State registrations follow a similar process, but they are typically quicker and less formal. Most states do not allow filing intent-to-use applications.
Once registration issues, the official registration date will be the date you originally filed the application.
See the Trademark Office website for more details about the application and registration process.
Federal and state governments establish specific fees for each stage of the application and registration process. The final cost will vary, depending on, among other factors, how many International Classes you claim, whether you file as use-based or intent-to-use, and whether you engage an attorney to assist you. Learn more about costs here.
Common myths about trademark law
Reality Check: Trademark infringement occurs when you use a mark (usually the name of a product or service, a tagline, or a logo) that is similar enough to a previously existing mark that your use of it is likely to cause confusion between consumers as to whether your product or service is somehow connected with the owner of the other mark. The fact that your logo is original to your designer means that either the designer or your company owns the copyright in it; but you cannot know whether your use would infringe someone else’s trademark rights without conducting an appropriate investigation into the current use of already existing marks.
Reality Check: Although domain names often include trademarks, registration of a domain name does not convey any trademark rights in the name used. Federal or state registration of your trademarks provides a range of benefits, including the ability to prevent others from using similar marks in a way likely to cause consumer confusion, but the only right granted by a domain name registration is the right to use that domain for your website (and even doing that could potentially infringe on someone else’s trademark). If the goal is to obtain rights to use the name beyond in a domain name, registration as a trademark should be considered.
Reality Check: Actually, the opposite is true. This is challenging, because often, from a marketing perspective, a company often wants to choose a product name from which consumers can immediately know what the product is. Because the purpose of trademark law is to distinguish one good or service from another, the more “distinctive” the mark is, the “stronger” its protection. Indeed, generic names for goods or services cannot be protected as trademarks at all. Marks that describe the product, but not generic, can only be protected if they have “acquired disctintiveness,” meaning that despite the fact that the mark is descriptive of the product, consumers have come to associate it with your particular product. Read more about the spectrum of trademark strength categories here.
Reality Check: The purpose of trademark protection is to protect consumers from being confused by believing that the source of two trademarked products are the same or somehow related when they are not. If Joe’s use of Jane’s mark is not likely to confuse consumers, the use does not infringe. This could happen when the two use the same or similar marks on completely unrelated goods or services, for example, DOVE candy and DOVE soap or APPLE records and APPLE computers.
Reality Check: When you federally register a mark, you indicate whether it is a “word” mark or a “stylized/design” mark. The protection provided by the registration for that mark then corresponds to the type of mark you’ve registered. Registration for a design mark protects the design components of the mark, whereas registration for a word mark protects the words themselves, regardless of the style of presentation. A design mark that also has words could be infringed by someone who copies the design but replaces the words with entirely different ones. A word mark that has a design component could be infringed by someone who copies the words but presents them in an entirely different design.