Top 16 Myths About Trademarks

By Josh Gerben, Esq.

In my 15+ years of practicing law, I’ve run into a myriad of common client misconceptions regarding trademarks and trademark law. This is understandable, as trademark law can be incredibly nuanced and complicated.

In this article, I will break down the 16 most common trademark misconceptions I’ve heard and offer some insight into each myth.

1. A trademark registration means you own that word for “everything.”

When submitting a trademark application to the USPTO, you will be required to specify the goods/services (i.e., “clothing” or “streaming services”) that you wish to offer under the trademark. This is a critical decision because it will define the scope of your trademark protection.

The United States Patent and Trademark Office has categorized goods and services into 45 different “International Classes.”

As such, it is possible that another entity could own the same/a similar trademark to yours if it is in an entirely different class.

Though both trademarks are technically the same, they can both be registered due to the fact that each mark protects different goods/services in unique classes. The likelihood of consumers confusing the two companies in a way that is harmful to either company is little to none.

For example, Delta Airlines owns its trademark in an entirely different class of goods/services than Delta Faucets.

2. A trademark search can be completed online in just a few minutes.

With the prevalence of AI, more people than ever believe they can complete a thorough trademark clearance search through a simple Google search. However, this is far from the case.

Is it possible to perform a general clearance search on your own? Yes.

Could you even find a glaring problem with a similar trademark? Yes.

However, when the USPTO reviews a trademark application, the examining attorney doesn’t just look for exact matches for a trademark. They also look for:

• Phonetic Equivalents
• Foreign Language Equivalents
• Same Overall Commercial Impression

A proper clearance search should look through the federal trademark register, all 50 state government registers, and a common law search.

When clearing a trademark for our clients, Gerben IP uses two professional search software and spends about 2-3 hours on each search to ensure that no pre-existing trademark could cause a refusal of the application.

For redundancy and accuracy, each clearance search is completed by two highly-trained paralegals and one trademark attorney. The client is then presented with an opinion letter from the attorney explaining the results of the search and any potential conflicts with their mark.

3. Once a trademark is registered, it will stay registered forever.

While it’s true that a trademark has no firm expiration date, a trademark registration does. The USPTO requires the trademark owner to file maintenance/renewal filings in order to maintain a strong trademark.

Renewal filings occur at the following intervals:

• Between the 5th and 6th years after registration
• Between the 9th and 10th years after registration
• Every 10 years after that

When you file your renewals, you’ll also be required to file proof of continued use for the goods and services on your original application.

It’s easy to forget when these renewal dates are, especially because the USPTO doesn’t send you reminders. It’s worth setting up reminders for yourself to file these renewals on time.

The last thing you want to deal with is an expired trademark registration, leading to you having to start the whole registration process over again (and subsequently losing your original priority filing date).

4. Common words cannot be registered as a trademark.

This is a common misconception, as many trademarks are rejected by the USPTO on the basis of being “merely descriptive” or generic. However, these may actually be some of the strongest trademarks.

If you choose a common word that has nothing to do with your industry, that is actually a very strong trademark.

A great example of a common word serving as a strong trademark is “Apple.” If you wanted to use “Apple” as a trademark for your brand of apples, then that would be a very weak trademark.

However, “Apple” as a descriptor for a line of phones, computers, and other technology serves as a very strong trademark due to the fact that it’s completely unrelated to the industry.

5. I formed a corporation or LLC; therefore, my name is available and protected.

If you’ve filed to register your corporation name in your state, you may think that means the name is a registered trademark that you can enforce in the marketplace. However, that’s actually not the case.

Registering your corporation name with the state is an entirely different legal process than filing for a trademark with the USPTO.

When you register a trademark with the USPTO, you receive exclusive usage rights to the mark, federal protection against infringement, and the ability to enforce your trademark against competitors.

While it’s possible to register your corporation name as a trademark, simply filing your business name in one of the states does not afford you the same protection as a registered trademark.

6. A trademark registered in the U.S. is enforceable all over the world.

Many U.S. trademark owners think that just because their trademark is registered in the U.S., nobody in any other country should be able to file for that same mark. However, trademark rights, like most laws, are jurisdictional in nature.

A trademark registration in the U.S. can only be enforced in the United States.

If you’d like to protect your trademark in other countries, there are a number of ways you can go about doing that.

For example, if you file an application in the U.S., under the Paris Convention you then have a 6 month period when you can file the same trademark in other countries. If you do this, the foreign applications will then receive the benefit of the U.S. filing date. This is applicable to all countries participating in the Paris Convention.

7. In the U.S., trademark rights are acquired through registration (as opposed to use).

I see this one all the time, and often, trademark applications don’t become registered as the applicant fails to prove use in commerce.

In the U.S., trademark registrations are entirely dependent on whether or not the mark is currently being used in the marketplace.

One alternative solution you can pursue is to file an intent-to-use trademark application. This essentially states that you’re not currently using your trademark in commerce but that you intend to do so in the near future.

This is one way to get in line early at the USPTO, but you’ll still need to prove use in commerce prior to registration.

8. I should wait until my business gets larger before registering my trademark.

This is a common myth for small business owners, and understandably so, as small business owners have plenty of other expenses to worry about. However, the trademark registration process is one that takes an increasingly long time as of late, and it’s better to start earlier than later.

If you start thinking about filing for a trademark early when you’re starting your business, you can find out sooner whether or not the name you’ve chosen would even be able to become a registered trademark.

While other assets (logos, slogans, etc.) may not be as essential in the beginning, the name you base your business on is absolutely crucial, and it’s a wise investment to file a trademark for it early on.

9. I’m not currently using the trademark, so I should wait to file.

As I mentioned earlier in this article, proof of use in commerce is required in order to obtain a trademark registration with the USPTO. One way to kickstart the trademark registration process is by filing an intent-to-use trademark application.

One benefit of filing an intent-to-use trademark application is that your filing date becomes what’s called your constructive priority date. This essentially means that when your trademark becomes registered, regardless of when you begin using it, it dates back to that application date.

10. A trademark must be copied exactly for a good infringement case to exist.

The scope of infringement varies from trademark to trademark, so it’s important to know that a trademark does not need to be copied exactly for it to be considered infringement.

This is why it’s so crucial for you to monitor the marketplace for any potentially troublesome trademarks. If you fail to monitor the marketplace for infringement, your trademark rights will continue to erode over time.

We understand that as a business owner, you have a multitude of items that you need to take care of on a daily basis. Because of this, monitoring the marketplace can be a difficult task to accomplish.

At Gerben IP, we offer trademark monitoring services to assist busy business owners. Our attorneys will regularly monitor the marketplace and provide you with infringement reports, notifying you of any action you may need to take.

11. Registration provides absolute protection from infringement.

This is not true, as once your trademark is registered, there is a five-year period where others can still challenge your trademark. After these five years, no one can claim prior use of the mark and try to challenge it.

At the USPTO, they will review incoming applications against your mark and determine whether or not it infringes on your mark.

However, the USPTO does not have the ability to enforce trademarks; that is entirely up to you.

Additionally, the USPTO is not an end-all-be-all for infringement; sometimes marks slip through that you may consider infringement, and it’s up to you to make that judgment call.

12. A design on the front of a shirt is a trademark.

Someone may come up with a slogan, logo, or phrase and want to slap it on a shirt and file for it as a trademark. However, that’s not really how trademarks function.

If you create a drawing, put it on a shirt, and try to register it as a trademark, your application will likely get rejected by the USPTO for being considered “ornamental use.”

Trademarks are what’s considered a “source identifier,” meaning a consumer can identify the company behind the good/service just by seeing the trademark.

Typically, trademarks will appear on tags, labels, or packaging for a product. One way around this would be to include the proposed trademark on the tag/label of the shirt.

13. I can use the ® symbol as soon as I submit a trademark application.

This is another very common misconception, as there are a few different symbols you can use to denote the protection of your trademark.

The ® symbol can only legally be used after your trademark has received registration with the USPTO.

If you’re looking to use a symbol as soon as you file your application with the USPTO, you may use either the ™ or ℠ symbols (depending on whether or not your product is a good or a service).

The ™ and ℠ symbols will only afford you common law rights while your application is pending at the USPTO, but that can still be valuable protection for your brand assets.

14. I don’t need to monitor my trademark because the USPTO won’t register anything similar to it.

It’s true that the USPTO will review incoming applications against yours to determine if it infringes on your mark.

However, there are still times when trademarks that you feel are infringing will be approved by the USPTO and obtain registration. This is why it’s absolutely essential for you to monitor the marketplace upon receiving trademark registration.

When a trademark is in its registration process, there’s a 30-day period where the mark is published for opposition, and other parties may challenge the mark.

If the mark obtains registration, there is still a five-year period after registration during which parties may oppose the mark.

If a trademark obtains registration at the USPTO that you later discover infringes on one of your trademarks, you may be out of time to do anything about it.

15. Trademarks and copyrights are the same thing.

This is another very common misconception, but trademarks and copyrights are entirely different legal registrations.

A trademark is a source identifier for a brand, something that identifies a company. Business names, logos, and slogans are the most common trademarks, though trademarks can extend to non-conventional things like sounds or even smells.

A copyright is a protection of one’s creative work. While you don’t necessarily need to file a copyright for your work to claim copyright protection, enforcing your copyright is difficult if you don’t own a registration.

Additionally, trademarks are generally concerned with brand identification and whether or not a mark would confuse consumers. Copyrights are more about protecting someone’s creative work and preventing others from copying or stealing their work.

16. A good trademark describes exactly what I’m selling.

While you may think you’re making it easier for consumers to recognize your brand if you describe exactly what you’re selling, you’re actually undermining your brand by doing so. In fact, your trademark application will likely get rejected by the USPTO if you do this.

Trademarks exist on a sliding scale of protectability. If you simply describe the trademark, it’s considered a weaker trademark that is much more difficult to protect.

For example, “Comfy Shoes” as the name of a footwear brand would likely be rejected by the USPTO on the basis of it being “merely descriptive.”

The more unique a trademark is, the stronger it is and the higher the likelihood it will become registered.

Think of Kodak for a camera brand. The word is unique and unrelated to the industry, leading to a strong trademark.

• SHARE THIS ARTICLE ON:

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.