Qualifying for Trademark Protection FAQ

What makes a business or product name eligible for trademark protection.

Are Internet domain names covered by trademark law?

The short answer is yes. Most people are familiar with website names like www.yahoo.com or www.amazon.com. The words between "www." and the .com are typically used to identify the business that owns the website or a well-known product or service that is featured on the site. Frequently, this identifier is an abbreviation of the company or product name.

The U.S. Patent and Trademark Office allows these identifiers to be registered as trademarks as long as they are being used in connection with a site that sells goods or services. And the courts offer these domain names the same protection as other types of trademark.

Can a business's trade name be protected as a trademark?

The name that a business uses to identify itself is called a "trade name." This is the name the business uses on its invoices, letterhead, and signage. Technically, a trade name is not considered a trademark or entitled to protection under trademark laws unless it actually adorns a product or service.

If a business does use its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark and be entitled to protection (if it is distinctive enough). For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products.

A trade name that is not used on a product or service may be given some protection under state and local laws (through corporate, LLC, or fictitious business name registration) or be protected against a confusing use by a competing business under federal and state unfair competition laws.

For information on choosing a name for your business rather than product or service names, see the area of Nolo's website on Your Business Name.

Is state or federal law used to settle trademark disputes?

A number of legal principles used to protect owners against improper use of their trademarks derive from federal laws known collectively as the Lanham Act (Title 15 U.S.C. § §1051 to 1127).

In addition, all states have statutes that govern the use and protection of marks within the state's boundaries. In addition to laws that specifically protect trademark owners, states also have laws that protect one business against unfair competition by another business, including the use by one business of a name already used by another business in a context that's likely to confuse customers.

The basic rules for resolving disputes over who is entitled to use a trademark come from decisions by both federal and state courts (called "common law"). These rules usually favor the business that first used a trademark, if another company's use of the same trademark would be likely to cause customer confusion.

What types of trademarks or service marks are entitled to legal protection?

As a general rule, trademark law gives legal protection to names, logos, and other marketing devices that are distinctive. These distinctive trademarks are sometimes referred to as "strong" trademarks. Strong trademarks come in two forms: They may be "born strong" because they are creative or out of the ordinary, such as Yahoo, Exxon, or Kodak (also known as "inherently distinctive" marks). Trademarks may also become strong because they become well known to the public through their use over time or because of a marketing blitz.

Trademarks that merely describe some feature or quality of the goods or that are based on someone's name or a geographic term are usually considered to be "weak," and thus unprotectible under trademark law.

However, once the trademark owner can demonstrate substantial sales, advertising, or other public awareness of a weak trademark (known as "secondary meaning"), the trademark will be considered distinctive and can be registered with the United States Patent and Trademark Office (USPTO). Examples of weak marks that have acquired secondary meaning include Peet's Coffee, Newman's Own Salad Dressing, Bank of America, and Vision Center eyeglass stores.

For more information about qualifying for and applying for federal trademark registration, see Trademark: Legal Care for Your Business & Product Name, by Stephen Elias and Richard Stim (Nolo) or the Filing a Federal Trademark Application FAQ.

If you're ready to apply for trademark registration, Nolo can file a trademark application on your behalf. Nolo's online interactive program gathers all the information needed to create your trademark filing, with practical help at each step. When the filing is complete, Nolo will send you a summary and confirmation of the filing with the USPTO, along with three important contracts that will help you protect your trademark, and a guide to maintaining your trademark rights.

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