Your trademarks, the names and logos that you assign to your goods and services, are valuable business assets. Federal registration offers numerous benefits to trademark owners. In this article, we address the following questions about registration:
To register a trademark with the USPTO, the trademark's owner first must use it in "interstate commerce." This means the mark must be used on a product or service that crosses state, national, or territorial lines, or that affects commerce crossing such lines, for example, an Internet business or a restaurant or motel that caters to interstate or international customers.
The trademark owner must also be able to answer "no" to all of the following questions:
Below, we discuss types of marks that are not eligible for registration.
You file your trademark application online with the U.S. Patent and Trademark Office (USPTO or PTO) using the Trademark Electronic Application System (TEAS). Within TEAS, you have two options: TEAS Plus or TEAS Standard. Despite the confusing terminology, TEAS Plus is likely your first option. You would use TEAS Standard only if 1) you’re applying for goods or services not listed in the PTO’s Trademark ID Manual (most goods and services are listed in the manual), or 2) you don’t have the information needed to complete a TEAS Plus application.
The TEAS Plus application fee is $250 per trademark class. The TEAS Standard application fee is $350 per class. Fees do change, but you can check the PTO’s trademark fee schedule
For most trademark applicants, registration is a relatively straightforward process. Your application includes:
In a TEAS Plus application, the system will assign the trademark class(es) based on your description of the products or services. In a TEAS Standard application, you use the Trademark ID Manual to determine the class(es) of your good or service.
Certain types of marks are not eligible for trademark registration. The PTO will not register marks that contain:
In the past, the PTO refused to register marks that it deemed immoral, scandalous, or disparaging of a living or deceased person. The Supreme Court did away with those limitations in the cases of Matal v. Tam 582 U.S. 218 (2017) and Iancu v. Brunetti, 139 S. Ct. 2294 (2019). Matal involved a disparaging mark and Brunetti an immoral or scandalous mark. In both cases, the Court ruled that the PTO’s refusal to register the mark was an unconstitutional restriction of free speech.
If your trademark examiner at the PTO determines that your mark qualifies for registration, the mark will be published online in the PTO’s Official Gazette . Publication in the Gazette is known as “publishing for opposition” because the public has 30 days from publication to oppose the registration of the mark.
If a member of the public believes that they would be harmed by the registration of your mark, they can file a notice of opposition within the 30-day period. You then have 30 days to respond to the notice of opposition. If you and the opposer are unable to reach a settlement, the PTO will schedule a hearing on the dispute at the office’s Trademark Trial and Appeals Board (TTAB).
If no one opposes your registration, you should receive official notice from the PTO that your mark has been registered within 3-4 months of the time the mark was published.
The USPTO maintains two trademark registers: the Principal Register and the Supplemental Register. The Supplemental Register is a secondary register for marks that don’t qualify for registration on the Principal Register (usually because they’re not distinctive enough). Registration on either register allows you to use the ® on your goods or services, but registration on the Principal Register conveys certain benefits that registration on the Supplemental Register doesn’t, including:
Learn more about registering your trademark on the Supplemental Register.
Unlike patents and copyrights, which have fixed terms, a trademark registration lasts as long as you continue to use the mark in commerce and comply with certain maintenance and renewal requirements. Examples of old trademarks that are still active include COCA-COLA (registered 1893) and LEVI’S Jeans (registered in 1928)
Once your trademark or service mark is registered on the Principal Register, the registration good for an initial term of ten years.
The registration may lapse before the ten-year period expires, however, unless the owner files a statement within six years of the registration date (called a Section 8 Declaration) stating that the mark is still in use in commerce.
The original registration may be renewed indefinitely for additional ten-year periods by filing the required renewal applications (called a Section 9 Declaration).
If you fail to renew a trademark, the PTO declares the mark to be dead and you lose all the rights you gained through registration, including the right to use the ® symbol on the mark.
You can file a trademark application yourself, without an attorney. The TEAS application system is pretty straightforward to use if you know what you’re doing (see below). You can learn how to use it through tutorials and other resources on the PTO website. For a comprehensive look at trademarks, including the application process, read Nolo’s book Trademark: Legal Care for Your Business & Product Name, by Stephen Fishman.
The complexity of the trademark application process isn’t so much in the mechanics of the TEAS system (although you need to pay attention to technical requirements, such as the types and sizes of your uploaded files), but rather in knowing how to present your mark to give it the best chance of being accepted. By “present the mark” we mean describing your goods and services to best fit your classification, determining what sample or samples best demonstrate use of the mark in commerce, and other decisions that help or hurt the chances of an application being accepted.
Your application might not be accepted on the first try. In fact, it’s more likely that you’ll need to respond to questions and objections from your PTO examiner. These questions and objections come in the form of “office actions” and can raise such issues as similarity to an existing registered mark, inadequate description of goods or services, failure to demonstrate use in commerce, and lack of distinctiveness. You’ll need to learn how to respond to office actions to address your examiner’s concerns and make the case that the mark should be registered.
An experienced trademark attorney can navigate the application process for you, from an initial trademark search for similar marks to the application to responses to office actions. They know how to describe a mark, what makes for a good sample to show use in commerce, and how to make an argument that your mark is sufficiently distinctive. We recommend at least consulting with a trademark attorney, after which you can decide whether to handle the application yourself or turn the job over to the attorney.
]]>Many brands incorporate color as part of their central identity. Consider Tiffany's shade of light blue, or Starbucks' shade of green. These colors or directly associated with the companies by consumers, so much so that they can recognize your storefront or packaging without even reading your name.
If you are preparing to file a federal trademark application with the PTO, you may decide that you want to protect your mark in a particular color. For example, your logo may be burgundy on all of your advertising and marketing, and thus you may want to specifically reserve that color as part of your mark. How do you describe these colors to guarantee adequate protection?
The first question is whether you should claim a color at all. Sometimes, more flexibility is gained by filing the trademark in black and white, which is the default for marks registered with the PTO. If you submit your mark in black and white, you can modify your color scheme later if you wish, and not have to register the newer incarnations of the mark.
However, you will not be protecting the colors in that case, only the underlying words and design. Consider, for example, "Google," which frequently changes the color and format of its logo on its website. If, however, you are absolutely sure that you want to include colors in your application, it might be wise to describe the specific color on your trademark application.
Note that you cannot "own" a color for all purposes. Federal courts ordinarily hold that a brand can trademark a color only for a discrete use. For example, in 2012, the famous shoemaker Christian Louboutin won a lawsuit over competitor Yves Saint Laurent over the use of red soles on women's shoes. Louboutin has long used red-lacquered soles as part of its distinctive appearance, and when Yves Saint Laurent tried to release a shoe with the same type of sole, the U.S. Court of Appeals for the Second Circuit agreed that Louboutin's color trademark was valid.
However, the court was careful to note that the trademark was limited to the use of the color in that specific context. That is, Louboutin does not "own" the shade of red for clothing, packaging, or anything else. What does this mean for you? Your color trademark will apply only to a specific function, whether on a logo or a box or a product, and only within the specific trademark class associated with your product or service.
If you wish to proceed with registration of a trademark that includes colors, the drawing submitted with the trademark application must show the mark in color. In addition, the application must include:
When describing the color, you can use the generic name and if you wish, claim a reference to a commercial color identification system such as Pantone Matching System (PMS). PMS is a color system that organizes different shades of colors by different codes. Of course, the examining attorney has the discretion to require that the applicant indicate shades of a color, if necessary to accurately describe the mark. You can read more about this description in the PTO's Basic Facts About Trademarks.
What about stippling and lining? You may have viewed trademarks in the PTO database in which colors in a trademark application are indicated by special lines or dots referred to a “stippling and lining.” Not to worry about this language. Stippling and lining are not required for trademark applications filed after November 2, 2003, so references to this language are somewhat antiquated, even though you will occasionally see the phrase in PTO literature.
In short, if you are preparing to file a trademark, consider whether color will be central to your mark, or whether you will want the flexibility to alter your shades down the road. If you decide to move ahead with a color application, make sure you are prepared to describe your particular color usage in detail to satisfy the PTO examiners.
]]>For a product, trade dress might be the packaging, the attendant displays, and even the configuration of the product itself. For a service, it might be the decor or environment in which a service is provided—for example, the distinctive decor of the Hard Rock Cafe restaurant chain.
In more recent years, courts have categorized the particular "look and feel" of a website or mobile application's design and layout as trade dress.
As with other types of trademarks, trade dress can be registered with the U.S. Patent and Trademark Office (USPTO) and receive protection from the federal courts.
To receive protection, both of the following must be true:
For trade dress to be considered inherently distinctive, one court has required that it “must be unusual and memorable, conceptually separable from the product, and likely to serve primarily as a designator of origin of the product.” (Duraco Products Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431 (3d Cir. 1994).)
The U.S. Supreme Court found that a Mexican restaurant chain’s decor could be considered inherently distinctive because, in addition to murals and bright colored pottery, the chain also uses a specific indoor and outdoor decor based upon neon colored border stripes (primarily pink), distinctive outdoor umbrellas, and a novel buffet style of service. (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).)
However, the Supreme Court ruled that product designs such as the appearance of a line of children’s clothing are not inherently distinctive and can only be protected if they acquire distinctiveness through sales or advertising. (Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000).) Similarly, the “Cuffs & Collar” design mark used by Chippendale’s exotic male dancers was found not to be inherently distinctive. (In re Chippendales USA, Inc., 90 U.S.P.Q.2d 1535 (TTAB 2009), affirmed by the Federal Circuit in 2010).
Find out if your product qualifies for trademark protection.
Functional aspects of trade dress can't be protected under trademark law. For example, a company that claimed trade dress on a round beach table lost their rights when the Seventh Circuit determined that the towel design was primarily functional (despite the fact that the trade dress had been registered and had achieved incontestable status). (Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855 (7th Cir. 2010)).
Only designs, shapes, or other aspects of the product that were created strictly to promote the product or service are protectable trade dress.
EXAMPLE: Many liqueur bottles have a unique shape designed for advertising rather than for any particular function. The tall, tapered shape of the bottle used for Galliano is not necessary to hold the product but helps to identify it and is therefore protectable as trade dress.
There are many examples of trade dress. More commonly, it can include the shape of a product or design of a box. But it can also include the design of a mobile application or the flavor of a product. Below are two common examples of trade dress.
In the physical world, trade dress can refer to the packaging of products—literally the way they're "dressed." Think of the famous light blue Tiffany's box or the design of a Coca Cola can. These are instantly recognizable to an average consumer and protectable as intellectual property under the Lanham Act.
You can protect product packaging as trade dress if you can show that the average consumer would likely be confused as to product origin if another product is allowed to appear in similar dress.
Trade dress is different from separate and discrete elements of your site—for instance, a long essay or photograph that can be protected under copyright. Instead, trade dress describes the overall look and feel—the colors, the format, and the overall qualities.
Imagine that your website for your flower business had doodles of lilacs in the background, was mostly orange with blue navigation bars on the left and included animations of dancing flowers on the bottom. Now imagine that one of your flower competitors launched a website with almost the same general design. Even if the competitor's website used slightly different doodles, images, and text, your overall "look and feel" is still being copied. Because this could lead to consumer confusion, you might be able to sue for trade dress infringement.
If you have a protectable trade dress, it's important that you protect it from infringement and dilution. Infringement is when another company uses your trade dress or a trade dress that's very similar to yours for their own product or service. To qualify as infringement, the company's use of a similar trade dress would need to cause a "likelihood of confusion" in consumers' minds.
Dilution is when another company weakens the distinguishability of your trade dress. Another company can dilute your trade dress either by harming (or "tarnishing") your trade dress' reputation or by "blurring" your distinctive trade dress with the other company's trade dress.
While you have many rights and protections if your mark is registered, you can also assert a claim of dilution for an unregistered trade dress. To do so under federal law the trade dress owner must prove:
To learn more, see Patent, Copyright, and Trademarks.
]]>If there’s a unique slogan that you’ve used or are thinking about using, you can trademark it. Here’s what you need to know.
Let’s break down what a trademarked slogan is.
First, what’s a trademark? A trademark is any word, phrase, design, or combination of these features that identifies the provider of goods or services. Trademarks distinguish your goods or services from the goods or services of someone else.
A trademark has two important parts:
For example, both “McDonald’s” and McDonald’s golden arches are trademarks for restaurant services. When people see golden arches from the interstate, they expect to find a restaurant serving up Happy Meals.
Second, what is a slogan? A slogan is a phrase that is tied to a specific business, product, or service. The phrase “finger lickin’ good” for KFC is a slogan and is used in the fast food restaurant’s advertising.
When you register your slogan with the USPTO, you gain access to a list of benefits. Here are six advantages of federal trademark registration.
1. You are the assumed rightful owner. You will have a legal presumption that you are the true owner of your trademark and have the right to use it. If you ever have to go to court to defend your trademark rights, you just have to present your registration certificate as proof of ownership. If you don’t have a federally registered trademark, then you’ll have to find another way to prove that you’re the rightful owner of the trademark and that only you are allowed to use it.
2. You can use the federal registration symbol ® beside your slogan. You can use the symbol to show others that your slogan is registered. If someone uses your mark without your permission, they can’t claim they didn’t know you registered the mark because you put them “on notice” by using the registration symbol.
3. Your slogan will be included in the federal database. Your slogan will be listed in a federal database hosted by the USPTO that shows a list of all registered and applied-for trademarks. If someone tries to apply for your slogan or a slogan that is very similar to yours, the USPTO will probably refuse their application because it already has a record of your mark.
4. You can file a lawsuit in federal court. You can still file a lawsuit without registering your slogan with the USPTO. But you will be limited to state courts.
5. You can apply for trademark registration in other countries. You can use your U.S. application or registration to apply for protection in another country. You’ll save some time registering your mark with foreign governments if you’ve already started or finished the registration process in the U.S.
6. You can record your trademark registration with U.S. Customs and Border Protection. This agency can help you prevent any goods from entering the U.S. that violate your trademark rights. For instance, if you’ve registered the slogan “Born to Bun” for hair clips, then U.S. Customs can stop a company selling hair ties under the slogan “Born to Buns” from shipping their hair ties to the U.S.
So maybe you have a slogan that you’ve already started using with your business. The good news is you already have what’s known as a common law trademark. You can enjoy some of the general protections that the courts have given unregistered trademarks. But these protections are limited.
When you hear someone say they have “trademarked” their business name or slogan, they usually mean they have registered their trademark with the United States Patent and Trademark Office (USPTO).
The USPTO is a federal agency that grants trademarks on a national level. When you register a trademark with the USPTO, your trademark rights extend across all 50 states. Without this federal registration, you only have a few basic protections that are limited to the geographic area where you use your mark.
For example, if you use the slogan “a shine and a smile” for your car washing business and you have only two locations in western Massachusetts, then your slogan trademark will only be recognized in western Massachusetts. But if you register your slogan with the USPTO, then your trademark will be recognized and protected in every state regardless of your car wash’s location.
To officially register your trademark, you’ll need to file an application with the USPTO for trademark registration. You can file online and the USPTO will keep you up to date on your application’s progress.
For the application, you’ll need to know:
Look over the application before you file and do a little research beforehand so you know what to expect.
You can register a slogan at any time after you’ve started using it. But you can also begin the application process before you’ve started using your slogan. If you have a real, good faith (or “bona fide”) intention to use the slogan, you can apply for registration now and finish the registration process once you’ve started using the slogan.
To register your slogan, you must first use it “in commerce.” What “in commerce” means depends on whether you’re selling goods or services.
For goods, the slogan must appear on the goods themselves, on packaging for the goods, or on a point-of-sale display. The goods must also currently be sold or transported.
For services, the slogan must appear in the sale, advertising, or completion of the services. The services must actually be performed.
(15 U.S.C. §1127 (2022).)
If you want to register your slogan with the USPTO, you have to use it in a type of commerce that’s controlled (or “regulated”) by the federal government. That means that you need to sell or transport your goods or provide your services either between:
(15 U.S.C. §1127 (2022).)
You might not be able to trademark a slogan for various reasons. The problem might be with the registrability of the slogan itself or it might be that another slogan takes priority.
A trademark’s purpose is to let buyers know who the provider of the goods or services is. When someone looks at your slogan, they have to immediately think of your company. If they don’t, the USPTO will see the slogan as “decorative” or “ornamental.”
For example, assume you sell stationery and one of your items is a journal that has the phrase “Know Thyself” printed in big letters on the front cover. That phrase doesn’t function as a trademark in this context because of its placement. Buyers are accustomed to seeing different random phrases on the fronts of journals just like they’re used to seeing drawings of dolphins or flowers. Because the common purpose for a journal’s front cover is to display a design, a buyer looking at a phrase on the front cover won’t know if the phrase is actually a slogan or just a fun phrase to give the journal personality.
You usually can’t register a slogan that simply delivers information or consists of a very common phrase. The theory is that the public probably won’t consider a common or informational phrase as identifying a brand or provider.
A slogan is informational and not registrable if it falls into one of these three categories:
You can’t have a slogan that’s the same as or too similar to a slogan that already exists unless yours is in a completely different industry. If a buyer would confuse your slogan with another, then you’ll likely not be allowed to register yours. The USPTO calls consumer confusion from two similar marks a “likelihood of confusion.”
The USPTO weighs several factors when deciding whether two marks are too similar. But the two most important factors the USPTO considers are:
If two slogans are the same but are connected to completely different goods, then both slogans can be registrable.
For example, an airline and a birdwatching store could both use the slogan “Soaring Above the Atmosphere.” Because the companies’ services are so different from each other, buyers wouldn’t think the two companies are related. Instead, buyers would believe the shared slogan is a coincidence.
You’ll need to invest at least some money in registering a trademark. There are two general kinds of costs to consider: filing fees and attorneys’ fees.
The USPTO charges certain filing fees for your trademark application, and a full list of fees can be found on the USPTO website. The filing fees range and depend on how many categories of goods and services you plan on registering your slogan with.
If you’ve already started using your slogan, then you’ll likely only need to pay one filing fee upfront. But if you file an application for a slogan that you haven’t started using yet, then you’ll have to pay multiple sets of filing fees at different stages of the application process. As of 2023, the filing fees start at $250.
You can certainly prepare and file a trademark application on your own. If you do so, you’ll only need to worry about the filing fees. But trademark applications can be confusing, and asking an attorney for help might end up saving you time and money down the line.
Attorney’s fees typically range from a few hundred to a few thousand dollars depending on how involved the attorney is with your application.
There are other, online services that prepare and file a trademark application for you. These services can be as inexpensive as $49 and generally aren’t more than a few hundred dollars. Do your research when considering these services, and make sure you know what they do and don’t include.
When a slogan is used to identify the source or provider of certain goods or services, then the slogan is a trademark.
A slogan can never be copyrighted. A copyright legally protects creative works. Because a slogan is short and usually not very original, it wouldn’t meet the requirements of copyright protection.
Let’s say you want to trademark a slogan for a t-shirt. You’ll want to start by making sure that your slogan can be registered in the first place.
First, your slogan needs to function like a trademark. Similar to the earlier journal example, a phrase written across the front of a t-shirt doesn’t function as a trademark. Buyers are used to seeing designs across the front center of a shirt, so any phrase they see there will be viewed as a design and not as a slogan. The slogan will need to either appear on the upper breast of the t-shirt, on the tag in the back of the shirt, on a tag attached to the shirt (for instance, above the size of the shirt) or on the packaging for the shirt. These are all locations where buyers would expect to see a trademark.
Second, you’ll need to make sure that your slogan isn’t informational and doesn’t consist of a common phrase.
Third, you should check to make sure that there are no other slogans out there already that are the same or too similar to yours. You can perform a trademark search yourself, use a trademark search service, or have an attorney look into it for you.
Fourth, make sure you are using your slogan in federal commerce. If you’re selling goods, then you’ll need to sell or transport your goods to another state or U.S. territory. If you’re providing services, you’ll need to perform those services in more than one state or U.S. territory. If you’re outside the U.S., then your goods should be sold or transported or your services performed in the U.S. and in a foreign country.
If you’ve determined that you can register your slogan, then you’ll need to apply to register it with the USPTO. The USPTO has several requirements in the application process. Importantly, before your mark registers, you’ll need to prove that you’re using the slogan to sell your t-shirts.
If your mark registers, then you’ve done it. But don’t forget that you’ll need to renew your registration every so often. If you’re still using your slogan with your t-shirts 25 years from now and you’ve filed for all your renewals, then you’ll still have your trademark.
If you have experience performing trademark searches and registering trademarks, you can likely trademark your slogan yourself. But if you're unsure about the trademark risks associated with your registering your slogan or have legal questions about the application process, you should talk to a trademark lawyer. They can file advise you on your trademark rights and apply for trademark registration for you.
]]>When filing for a trademark registration, the primary difference between an actual-use and an intent-to-use application is that when answering the first question (What is Your Basis for Filing?), choose “Yes” under Intent to Use. You do not need to supply specimens with an intent-to-use application, but you’ll have to include one with your Allegation of Use. In addition to the information in this chapter, the USPTO’s help system should easily get you through this form.
If you are not yet using your mark, you can wait until you put it into use before filing a trademark application, or you can file an application on the grounds that you intend to use it within six months of the date the mark is approved for registration by the USPTO. If you are unable to put the mark into use within that period, you can purchase additional six-month extensions, one at a time until three years have passed, if you are able to convince the USPTO that the reasons for the delays are legitimate.
The advantage of filing an intent-to-use (ITU) application is that your filing date will serve as the date of your first use of the mark— assuming you go on to put the mark in actual use and take the other steps necessary to get the mark placed on the federal trademark register. This first-use date can be very important in the event a conflict develops with another mark—in the USPTO or in the marketplace.
Once you decide to file on this basis, you should do so as quickly as possible, to obtain the earliest possible date of first use. As mentioned, the intent-to-use approach is more expensive than filing an actual use application—at least $100 more expensive, plus $150 for each additional six-month extension that is needed. Therefore, it is most appropriate to use the intent-to-use application when you have come up with a truly distinctive mark or you plan to spend big bucks “tooling up” to use the mark and you don’t want to lay out the cash until you know that the mark will be yours. If your mark is legally weak—for instance, it uses common words in a common way or is descriptive of the products or services—you will have little choice but to wait until you have put the mark into use and can demonstrate that the public associates the mark with your product or service.
Learn more about trademark standards.
If you file on an intent-to-use basis, your mark will not be placed on the Principal Register until you file an additional document with the USPTO when you put it into actual use. This form is called “Statement of Use/Amendment to Allege Use for Intent-to-Use Application.” It tells the USPTO the date you started using the mark and completes the registration process. You must also provide a specimen at that time, showing how you are using the mark. Keep in mind that the USPTO will only issue a Notice of Allowance – permitting registration of the mark -- for marks that are distinctive, either inherently or under the secondary meaning rule.
Also, if you filed an intent-to-use application, abandonment of the application may affect your ownership of the mark. For example, assume a business starts using the same or similar mark after you file your intent-to-use application but before you put your mark into actual use. If you follow through with your registration, then you can claim the original filing date as the date of first use and be considered the owner of the mark. If, on the other hand, you abandon the application, the other user will be considered the owner— because you will no longer be entitled to the filing date as your date of first use.
As explained above, to actually get your mark registered, you will use a form called Allegation of Use for Intent-to-Use Application. This form may be filed at any time prior to the date the USPTO authorizes the publication of your proposed mark, and any time after the USPTO issues a Notice of Allowance. It may not be filed between those two dates, which has come to be known as the “blackout” period. The Allegation of Use can be prepared and filed online using TEAS.
]]>All of these words and images are trademarks for particular brands. But words and images are not the only ways to obtain a trademark. You might be surprised to learn that sounds can also function as a trademark. How?
What exactly is a trademark? The Lanham Act—the legislation that controls federal trademark law—defines it as "any word, name, symbol, or device, or any combination thereof... used by a person... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." (See 15 U.S. Code § 1127).
In other words, a trademark can be virtually anything that can "indicate the source of the goods" in question.
Trademark law has several public policy purposes, but perhaps the most important is to avoid consumer confusion. The goal is to ensure that a consumer in the relevant market would see (or hear) the trademark and immediately know the source of the goods or services in question.
This emphasis on "secondary meaning"—that is, consumer recognition—has several benefits. First, it makes the purchasing experience more efficient, since consumers can quickly identify the goods that they recognize and seek. Second, it allows brands to reap the rewards of their own investments into product quality, since consumers will gravitate towards the products bearing the trademarks that they recognize as being from their favorite brands. And third, trademarks allow products to be quickly distinguished from otherwise close competitors.
Trademarks are not required to be registered. You can simply use your mark in commerce. However, unless you apply for, and obtain, federal registration through the United States Patent and Trademark Office (USPTO), you will not be able to secure nationwide enforcement of your mark.
By the definition above, you can perhaps imagine some sounds that are heavily associated with brands. Imagine the static sound over music that plays at the beginning of an HBO program. Imagine the opening credits to every 20th Century Fox Movie. Or the well-known Tums melody. The USPTO offers examples of dozens of current sound trademarks, and allows you to listen to them on its website.
Broadly speaking, a sound trademark must meet the same requirements as any other sort of trademark. According to Section 1202.15 of the USPTO’s Trademark Manual of Examining Procedure: “A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they assume a definitive shape or arrangement and create in the hearer’s mind an association of the sound with a good or service.”
The USPTO cautions that a difference exists between "unique, different, or distinctive sounds and those that resemble or imitate 'commonplace' sounds or those to which listeners have been exposed under different circumstances" and which lack distinctiveness or brand association.
For example, the sound of an alarm, a bird chirping, or a whistle are all sounds that are relatively generic and thus not readily trademarked.
As you might guess, obtaining a sound mark is not quite as easy as obtaining a word or image mark. You will need to submit an application through the USPTO's website, which will then be reviewed to determine whether the mark meets the various qualifications for distinctiveness.
You will also need to submit an audio file containing the precise sound mark that you wish to register and protect.
In many cases, copyright law is a better vehicle for protecting intellectual property than trademark. Audio, after all, can be registered with the U.S. Copyright Office, and one can sue infringers in a similar matter as trademark infringement. With copyright, you would not need to establish that your audio has secondary meaning.
]]>Importantly, it is not required for a trademark to be registered. You can acquire what are known as "common law" trademark rights simply by using your mark, whether a name or a logo, in commerce within your community. In other words, you can simply open a bakery called "Thelma's Tasty Treats" and put that name on signs and boxes; that name will be "yours" within that immediate geographic region without formal registration.
However, you can also register your mark federally. The U.S. Patent and Trademark Office (USPTO) is the federal agency charged with oversight over issuing and maintaining trademarks. It is true that registration is a somewhat bureaucratic process with some minor fees, paperwork, and annoyance. But there are many benefits to federal registration.
First, registration allows your business to scare away competitors. Your mark will be listed on the USPTO's register of trademarks, which will come up when others attempt to search for available marks. It will also allow you to use the ® symbol. Between the registration listing and the ®, you are likely to ward off businesses that might try to infringe on your mark, since they will see that you are invested in your legal rights.
Second, it will give your mark the presumption of validity nationwide, rather than just in your local geographic area. This is particularly helpful for businesses that seek to expand, or businesses that sell their goods or services online. It also provides some legal protection if you face a situation of international counterfeit importations, allowing a court to order certain border protections.
Third, registration can make a trademark infringement lawsuit more likely to succeed. Not only does your mark have the presumption of validity (shifting the burden of proof to the defendant), but you are also entitled to certain damages if you prevail against the defendant in court.
The USPTO makes trademark registration fairly self explanatory in most instances. Indeed, the agency's comprehensive roadmap to registration will help guide you. While there are several "sub-steps" to the process, the following are the basic and most significant ones when applying for a trademark application:
You will probably hear from the USPTO around three months after your application is submitted. The examining attorney will write to you to inform you whether your application meets certain legal requirements or whether you need to submit corrections. For example, the attorney will inform you whether your preferred mark as already been chosen, or whether your application omitted required information.
Registration can become far more complicated, however, if someone challenges your mark. For example, if you attempt to register your mark but another business objects, claiming that it will confuse consumers due to similarity to its mark, you will face a legal proceeding (sometimes known as trademark prosecution). In most instances, however, you can avoid these battles by doing careful research before trying to register a mark.
Like with any federal agency, the USPTO may feel impersonal and slow-moving to those attempting to obtain answers from it. Fortunately, you can monitor the progress of your application on the Trademark Status & Document Retrieval (TSDR) page of the USPTO's application website.
]]>An unregistered trademark is a mark that has not been registered at the U.S. Patent and Trademark Office (or at any of the state trademark offices). Owners of unregistered trademarks nevertheless have legal rights within the geographic areas in which they operate. These are sometimes referred to as "common law" trademarks, as they are protected by state-based laws concerning unfair competition.
An unregistered mark can sometimes stop a subsequent federal user in the same geographic area. Or alternatively, a larger company moving into an area may not be able to prevent a smaller competitor (whose use preceded the big company) from using a similar name. (Hence, Norman McDonald was able to continue to use his name on his hamburger stand in Philpot, Kentucky, although he had to remove his copycat arches.)
Laws concerning unregistered marks are derived from a common law English business principle: If someone attracts customers (known as "consumer goodwill"), then it is unfair for someone else to falsely pass off products or services with a similar name. Not only would such action harm the first business, but it would confuse consumers about the origin of the goods.
For example, imagine that there was a jewelry store in a small town called "Precious" that made earrings and bracelets. The store attracted customers from the town itself, and also from tourists and others from around the state. The store never bothered to register "Precious," but it operated with that name for decades.
Now, imagine that a new store opens down the street, also calling itself "Precious." Surely, the first Precious would lose customers who mistakenly assumed that the second store was the original, or related thereto. Moreover, the customers themselves would be harmed, particularly if they purchased jewelry that was inferior in quality to the goods they assumed they would get based on the original store's excellent reputation. Everyone would lose, except the new store, which would benefit from the good will created by the original.
Fortunately, even though the first store does not have a registered trademark, state common law as well as state statutes would likely still offer some degree of protection. Sometimes these state laws are referred to as unfair competition laws, or unfair business practices. Famous unregistered trademarks can be protected under dilution laws. (Note, some functioning regional trademarks may not qualify for registration because they are not used in commerce regulated by the federal government, typically, interstate commerce.) These protections exist even in the absence of trademark registration.
As noted, an unregistered first user of a trademark can often claim trademark rights within the relevant geographic area. This means that even though the first "Precious" store might be able to stop a second "Precious" from opening in its town, it cannot stop another "Precious" from opening in Hawaii or New York or Florida. It also cannot stop a second Precious from registering an Internet domain or selling goods online using the "Precious" name.
So, while unregistered trademarks enjoy certain limited rights, the best approach for most businesses is to register your trademark if possible. This advice is particularly true if there is any possibility that you might expand, opening additional locations or doing business outside of your specific town or municipality.
This advice also important given the rise of the Internet, which has created situations where many previously local or regional companies are competing against national businesses. In addition, registration is now a common practice by startups, whose equity investors perceive it as adding value. Registration allows for stricter brand enforcement both domestically and internationally.
Clearly, there are advantages to registering with the U.S. Patent and Trademark Office. Importantly, though, before you register, you will need to establish that the trademark is actually in use. Once your examiner is satisfied that you have a working trademark being used in the marketplace, registration is granted and enhances your already-existing trademark rights. Registration gives the owner a presumption of ownership, provides constructive notice to other companies in the U.S., and offers the hope of incontestability (after a few years). Registration may also increase your payment in case of a willful infringement.
Learn more about the trademark registration process in Nolo's guide to Registering Trademarks.
]]>Needless to say, trademarks are helpful in establishing control of one's brand across the United States. But as markets become increasingly globalized, businesses need to protect their trademarks not just within the borders of the United States, but also around the world. After all, iMacs are sold not only in the U.S., but also in India, Japan, South Africa, and countless other countries. How can Apple ensure that their trademarks are not being infringed globally?
Large companies like Apple, of course, have teams of lawyers around the world to police their intellectual property. But as the owner of a smaller business, how should you react if your company's trademark is being infringed in another country?
Before delving into international protection and remedies, we must first understand some trademark basics. A trademark is any word, name, or symbol intended to identify and distinguish the goods or services of one seller from those of another. The holder of a trademark can exclude others from using the same mark in the relevant market. When lawyers speak about trademarks, they are typically referring to marks that are formally registered with the U.S. Patent and Trademark Office (USPTO).
Importantly, however, not all trademarks are federally registered. For example, a brewery in Poughkeepsie can call itself "Matthew's Mug," and use an illustration of a man in a top hat as its logo. It can print that name and logo on signage, business cards, and beer bottles, and does not need anyone's permission to do so. Indeed, it can establish so-called "common law" trademark rights. These rights for unregistered marks are generally local in nature. This means that the original Matthew's Mug could file a lawsuit in state court to prevent a competing business from operating within a reasonable distance. A court could enforce these rights as a matter of common law unfair competition without the need for a formal USPTO registration.
Despite the availability of these common law trademark rights, many businesses, especially larger companies that do business across multiple cities, states, or countries, prefer the comfort of a federally registered mark. Marks are typically registered within a specific class of goods. There are many benefits to federal registration.
First, registration allows your business to scare away competitors. Your mark will be listed on the USPTO's register of trademarks, which will come up when others attempt to search for available marks. It will also allow you to use the ® symbol. Between the registration listing and the ®, you are likely to ward off businesses that might try to infringe on your mark, since they will see that you are invested in your legal rights.
Second, it will give your mark the presumption of validity nationwide, rather than just in your local geographic area. This is particularly helpful for businesses that seek to expand, or businesses that sell their goods or services online. It also provides some legal protection if you face a situation of international counterfeit importations, allowing a court to order certain border protections.
Third, registration can make a trademark infringement lawsuit more likely to succeed. Not only does your mark have the presumption of validity (shifting the burden of proof to the defendant in a lawsuit), but you are also entitled to certain damages if you prevail in court.
Fourth, your registered mark can be cross-registered with U.S. Customs and Border Protection, a federal agency that works to prevent the importation of counterfeit goods into the United States.
Unfortunately, merely registering your trademark with the USPTO will not help you to stop infringement in a foreign country. Trademarks are a fundamentally domestic right, created by domestic statutes and enforced by domestic courts. Thus, the fact that you have an American trademark will not entitle you to sue a French company in a French court for using your company's logo in France.
That said, owners of U.S. trademarks can seek to register their marks abroad. One of the most common ways of doing this is through registration with the countries that have joined the Madrid Protocol, one of the largest treaty schemes governing trademark rights worldwide. There are currently 117 member countries who have agreed to enforce trademark rights across borders.
How does the registration process work? After receiving your domestic trademark through the USPTO, you can file a unified trademark application, known as the "international application," with the International Bureau of the World Property Intellectual Organization (WIPO). Your application will be subject to various fees determined by WIPO. The resulting registration serves as a mechanism for seeking protection in member countries, each of which apply their own domestic laws to determine whether a mark may be protected in their country.
What can you do if you hear reports that your trademark is being used by a business in a foreign country? You have a few options. First, you should consult with a domestic trademark attorney in your own area. In this day and age, many if not most trademark attorneys will have some level of experience with international trademark enforcement. Before you retain the lawyer, be sure to ask about his or her experience dealing with international infringement (along with client references).
Your American lawyer may suggest a variety of steps, ranging from writing a cease-and-desist letter to the infringing company abroad, to suggesting that you retain a law firm that practices in the country where the infringement is taking place. (Many American law firms, of course, have offices or affiliates abroad that handle precisely these sorts of issues.) Those local lawyers are likely to have a better sense of the local courts and practices.
Before you rush into domestic or foreign litigation, however, use common sense. Infringement of your hard-earned trademark never feels good. But in many cases, the infringement in a foreign country may not actually affect your bottom line in any measurable way. The fact that some entity is using your name or logo halfway around the world might be somewhat irrelevant to your business' success. This is particularly true if the bulk of your customers are local. Do not let ego get in the way of sound business judgment. Litigation, particularly international litigation, is both time-consuming and expensive. Your business might be better served by investing in your products and services rather than trying to squash competitors and pay legal fees.
International trademark protection means more than suing infringers for infringing in foreign countries. It also means stopping counterfeit products from entering the United States. For many businesses, importation of counterfeits is actually a much more significant threat to their bottom line than the production and sale of goods abroad.
U.S. Customs and Border Protection (CBP), a division of the U.S. Department of Homeland Security, plays a role in monitoring importation into the United States. Holders of valid trademarks can register their marks with the CBP on the Intellectual Property Rights e-Recordation Website. This registration will trigger certain basic enforcement measures by the CBP with the goal of stopping the importation of infringing merchandise using the registered mark. CBP will seize any obviously infringing imports and notify you of the seizure.
There are small registration fees when you register your mark with the CPB. However, the value can be tremendous, particularly if your products are being frequently counterfeited and imported.
That said, CBP registration is hardly a silver bullet for stopping international counterfeiting and importation. First of all, CBP does not check each and every shipment container entering into the country. Second, to state the obvious, CBP will not help you if your trademark relates to a service (rather than a physical imported product). Nevertheless, CBP registration can be a valuable tool in your kit.
]]>Imagine that you have a trademark on the name of your business. The purpose of trademark law is to prevent consumer confusion, so as to ensure that consumers can recognize the true source of particular good or services. The trademark prevents, for example, a competing business from opening up across the street using the same name.
In the 21st century, the name of your website URL is just as important as the name on the front of your store. Fortunately, trademark protection also applies in the digital world. If another business attempts to register a domain name (that is, a Web address or URL) that is the same as your business name, you can seek relief in court to stop them.
Interestingly, you do not need a federally registered trademark to prevent a competing business from using your business name in its website address. So why bother registering it as a trademark with the U.S. Patent and Trademark Office (PTO) at all?
Federally registering your trademark makes it easier for you to enforce your rights as a trademark owner because you will automatically be presumed to own the mark. Anyone who uses it after your registration is presumed to know about it because the mark is publicly listed on the federal government's register of trademarks.
This makes it a bit easier to convince a judge that the later user is intentionally infringing on your mark. If you are able to prove the infringement was intentional, it can increase the likelihood that a court will award you money damages. The possibility of suing for enhanced damages will also make it easier to find a lawyer to take your case if someone infringes on your trademark.
Put simply, it makes sense in most cases to register your company's business name as a trademark, particularly if you intend to conduct business online or across multiple states.
Not all domain names can be registered as trademarks. The PTO is particular about what can be registered as a domain name.
For example, you will have a problem registering a generic name like "drugs.com" as a trademark. And you would face an uphill battle to register a domain name that you use solely as an address and not a signifier of services.
So the law firm of "Smith & Jones" would have a hard time registering "smith&jones.com" as a trademark. It would have to prove that the domain is being used for some other purpose than for people to find and contact the law firm. (Note that you can still use these domain names when you buy your website address; it's just that the domain names themselves cannot be registered with the PTO as independent trademarks.)
It is relatively easy to file your trademark application online at the PTO website. Often, you do not even need a lawyer, though it can be helpful to have a lawyer handle this paperwork.
The typical filing fee for a domain name mark is $325 per class (2018 figure) if you file electronically using the PTO’s Trademark Electronic Application System (TEAS ). It can cost more, however, if you will be offering a number of different services on your website.
To complete the registration process, you have to actually be using the domain name on a website. But you can start the process if you intend to use name soon (an intent-to-use application). When you do start using the name and complete the registration process, the application date will be treated as the date you first used the mark. This will give you a priority claim over later users.
When you file an intent-to-use application and then complete the process after you begin using the domain name, you pay an additional fee ($150 in 2018). Note that the precise fees may change from year to year.
The PTO may take a year or more to process your application before issuing a formal trademark. However, once you file it, your domain name will appear as a pending trademark in the PTO database. If you file a “use” application (one based on your actual use of the name), you will probably hear from the PTO in three to six months.
If there is a problem with your chosen name, such as a conflict with someone else's trademark, you will receive a letter from your trademark examiner explaining it. In many cases, you’ll be able to solve the problem with a phone call, although in more complex cases, you may need to retain a trademark lawyer to advocate on your behalf.
Within three months, you should receive a "Notice of Publication." The PTO will then publish your mark in its Official Gazette, thus allowing others to oppose your registration. Assuming there is no opposition, you will receive a Certificate of Registration or in the case of an intent-to-use mark that has not been placed in commerce, a "Notice of Allowance."
While all of this might sound like a speedy process, be aware that it can take a year or more to complete. The timing will depend partly on the complexity of your mark and whether it conflicts with another registered mark.
Later on, there will be some housekeeping needed to keep your registration in force. For example, between five and six years after registering your mark, you will need to inform to the PTO that you are still using it. You must renew your registration every ten years and between the fifth and sixth year following registration, you must file an affidavit declaring the continued use. This is known as a Section 8 declaration.
]]>The most common place to register your trademark is the Principal Register. As explained below, the Principal Register should always be your first choice.
But if your trademark doesn’t meet the requirements for the Principal Register, there's another, lesser-known register available: the Supplemental Register. It’s a secondary list—with a smaller but important set of protections—that the USPTO maintains for trademark owners.
A trademark is any word, phrase, design, or combination of these features that
To be registrable (or recognized by the USPTO), a trademark must be used in commerce.
“Use in commerce” means that the trademark is used in connection with goods that are sold or transported or services that are performed between:
(15 U.S.C. §1127 (2022).)
You can apply to register your mark with the USPTO either on the Principal or Supplemental Register. The Principal Register is the preferred register for trademark owners because it offers more benefits and protections.
Specifically, the Principal Register has the following benefits that the Supplemental Register doesn’t:
Even though it plays second fiddle, the Supplemental Register does have benefits. (It’s just that the Principal Register has more.) If you register your trademark on the Supplemental Register, you can enjoy:
But, to be fair, it’s often difficult to prove infringement of a mark listed on the Supplemental Register. Registration on the Supplemental Register is an admission by the owner that their trademark isn’t distinctive enough to be placed on the Principal Register.
The USPTO decides what register a trademark should be listed on based on one factor: distinctiveness. If the USPTO considers a trademark to be distinctive, then it's allowed on the Principal Register. All other trademarks, with few exceptions, are placed on the Supplemental Register.
In determining whether a trademark is distinctive, the USPTO determines where on the distinctiveness spectrum the trademark falls. There are five levels of trademark distinctiveness.
A generic trademark is made up of only words or designs that generally describe the goods or services associated with the trademark. For instance, "gas station" refers to a place where you get gas rather than a specific provider’s service station.
Generic trademarks don't qualify for either register because, by definition, a generic term calls to mind a type of product rather than a specific product. Generic trademarks have no distinctiveness and can only be registered on the Supplemental Register if the trademark also contains descriptive wording that isn’t generic.
A descriptive trademark is made up of words that describe a particular quality, ingredient, or aspect of the associated goods or services. For instance, “American Airlines” for a U.S.-based airline is an example of a descriptive trademark.
Surnames (like “Johnson” or “Williams”) and geographically descriptive trademarks (like “Midwest” or “New England”) are a couple kinds of trademarks that can only go on the Supplemental Register.
But descriptive trademarks can be considered distinctive enough for the Principal Register if they gain secondary meaning (or “acquired distinctiveness”).
Acquired distinctiveness is when a trademark becomes more than its literal meaning. If buyers see a trademark as associated with providing a set of goods or services rather than as merely a description of those goods or services, then the trademark has acquired distinctiveness and gained secondary meaning.
Going back to our example, "American Airlines" has acquired secondary meaning. When buyers hear the airline name, they don’t think of the name as a description of the travel services. Instead, they immediately think of the company providing the services.
Descriptive trademarks can gain secondary meaning or acquire distinctiveness by the owner:
If an owner believes their mark has acquired distinctiveness, they can submit their evidence to the USPTO for review. The owner will either provide their evidence in the initial application or later on in the application process in response to an office action.
Suggestive trademarks are similar to descriptive trademarks but require more thought. Suggestive trademarks imply rather than outright state some aspect of the connected goods and services.
For example, “Jaguar” for cars is suggestive. Jaguars are fast and the car brand is known for making fast cars. Because the brand name is not “fast cars,” which would be descriptive and instead describes something that gives the impression of speed, the trademark would be considered suggestive.
Suggestive trademarks are distinctive but are the weakest of the distinctive trademarks. Suggestive trademarks are registrable on the Principal Register.
In the middle of the pack of distinctive trademarks are arbitrary trademarks. Arbitrary trademarks are made up of words or designs that are unrelated to the associated goods or services.
For instance, “Amazon” for an online retail store is arbitrary. “Amazon” is a real word, but it has nothing to do with online retail store services. Arbitrary trademarks are registrable on the Principal Register.
Fanciful trademarks are the most distinctive trademarks and are registrable on the Principal Register. Fanciful trademarks consist of made-up words. For instance, “Kodak” for cameras is fanciful because it’s not a real word.
You might wonder what happens when your trademark consists of more than one type of distinctive trademark.
For example, assume you use the name “Cotton Candy Balloon Company” to sell party balloons. “Cotton Candy” would be arbitrary. But “Balloon Company” would be generic. You could still register your entire trademark “Cotton Candy Balloon Company” on the Principal Register because part of it is arbitrary.
That’s the rule: As long as your trademark has one portion that is distinctive—whether a word or image—it'll be considered distinctive and registrable on the Principal Register. But be aware that you’ll be required to “disclaim” any unregistrable words. Disclaiming a word doesn’t mean that your word is removed from your registration. It just means that someone else can use that word in their trademark.
Going back to our example, you would need to disclaim “Balloon Company” because these words aren’t distinctive. Your trademark would still be “Cotton Candy Balloon Company.” But someone else can use the words “balloon” or “company” as long as their trademark isn’t too similar to yours.
If you’ve determined your trademark would be registrable on the Supplemental Register, you’ll need to submit an application to the USPTO to register it there.
Your trademark will go through the same process as trademarks applied for on the Principal Register. But while trademarks in an application for the Principal Register don’t have to be in use yet, trademarks in applications for the Supplemental Register do.
The USPTO will review your application to make sure your trademark isn't too similar to one that has already been registered or applied for. Before you apply, do a trademark search to make sure your trademark is available to register.
You'll want to be especially careful you're not using someone else's trademark if yours is descriptive. Many trademark owners will be tempted to use descriptive words to describe their goods or services because doing so clearly communicates their business to customers. These kinds of descriptive trademarks can often be repeated or overlap too much, so you’ll just want to make sure yours is one of a kind.
Alternatively, you can apply for your trademark on the Principal Register. If, during the review process, the trademark examiner requires you to move over to the Supplemental Register, you can make the change within your existing application.
If you have a descriptive trademark, you can even register it on the Supplemental Register and then reapply for the Principal Register once your trademark has gained secondary meaning.
It can be hard to make the call on whether your trademark should be placed on the Principal or Supplemental Register. Because switching to the Supplemental Register is free, it’s normally a good idea to start with the Principal Register.
If a trademark examiner doesn’t accept your trademark on the Principal Register, then it could be a good time to seek help from a trademark attorney. An attorney can let you know if switching to the Supplemental Register is the best option or if it’s worth fighting to get your trademark on the Principal Register.
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