A trademark in its simplest form is a word, phrase, logo.
Whether you realize it or not, you are interacting with trademarks in almost every single minute of your day.
Have you been on your iPhone lately? The name iPhone is a trademark registered by Apple, Inc.
Perhaps you logged into Instagram while on your iPhone? The name Instagram is a trademark registered by Facebook (now Meta, Inc.).
How about those Nikes you are rocking? The swoosh? The phrase JUST DO IT. Those are trademarks registered by Nike.
Just about every single product or service that you interact with on a daily basis has a name, logo and slogan. And every single one of those is likely registered with the United States Patent and Trademark Office (the “USPTO” for short).
That said, trademarks can also be things such as sounds.
You may feel excited or know your day is ending when the “taduuum” plays while opening up Netflix. That sound is a trademark that was registered by Netflix.
Legally speaking, a trademark is a “source identifier.” This means that a trademark is anything that consumers use to connect the products and/or services they are using with the source of those products and/or services. If you are opening or running a business, obtaining a trademark registrations around your branding can help ensure that you are unique in the marketplace and that consumers can find and recognize your products and/or services easily.
Trademarks are a form of intellectual property (commonly referred to as “IP”). This type of property is considering “intangible.” This means you can not actually hold it. But it is still property that you own. Intellectual property stems from your (protection of actual inventions) and copyrights (works of art). This particular guide covers just trademarks.
A trademark is a distinctive word, symbol, or device that represents a brand and the products or services it provides. Under U.S. trademark law, just about anything can be a trademark, from business names and logos to soundbites. Although trademarks can take a variety of forms, here are the 4 most common types of trademarks and what you should know about each one:
The most commonly used type of trademark is a name (or word) mark. This type of mark may be the name of a brand, or the name of a product or service that a brand provides. To be federally registered, a name trademark must be distinctive. To be distinctive means that when consumers encounter these names in the marketplace, they immediately know the source and quality of the relevant products or services.
A mark’s distinctiveness allows consumers to distinguish a brand from its competitors.
Some of the most well-known distinctive name marks include:
Many brand owners also utilize logos, which is why these are one of the most common types of trademarks. Like all trademarks, logos are a short-hand way that brands can communicate to consumers that they are the source/producer of a given commodity or convenience. For instance, when consumers encounter these widely displayed logos, they immediately know the service provider or maker of the good.
Design Mark: an image that utilizes stylized marks, designs, or color.
Examples of popular design marks include:
Taglines are another method that brands use to distinguish themselves from their competitors. You may not have realized it, but when we hear certain slogans, we inherently associate them with a specific brand.
For example, phrases like “Eat Fresh”, “I’m Loving It”, and “Finger Lickin’ Good” all probably make you think of food, although none of these phrases are inherently synonymous with food. Why is it then that we associate these slogans with food? Well, it’s because these slogans have been consistently used in commercials, radio ads, and billboards in connection with their respective fast-food brand.
Slogans are another commonly used type of trademark.
In fact, we regularly encounter these slogans:
Sounds, including, songs, jingles, and noises are among the most common types. Although sound marks are less commonplace than wordmarks, logos, or slogans, brands regularly use sounds to differentiate themselves from competitors. To register a sound mark, the USPTO requires proof that when consumers hear a certain distinctive sound, they associate it with a particular brand.
Some of the most recognizable sound marks are:
It is very important to know that not all trademarks are created equal. In fact, trademarks come on a sliding scale of protectability.
Here is how that scale works, from the most protectable to the least protectable:
Names that have virtually no meaning in relation to the goods and services they’re used in connection with. Arbitrary names are inherently distinctive and tend to offer brand owners the best chance of successfully registering their names.
These are the two strongest trademark types. Arbitrary marks are words or names that have no relation to the industry. For example, “Shell” for a gas station, or, “Dove” for a brand of soap
Fanciful marks are usually made-up words. “Rolex” is not a real word, but it is highly recognizable now because we associate it with watches. If not for strong advertising, these marks would have no consumer recognition.
Names that give consumers a hint about the nature of goods or services, but require consumers to use their imagination to reach a conclusion as to the nature of the goods/services.
These can make good trademarks because they are protectable but also relate to your industry. It takes a “mental leap” to get from the name to the goods or services. “Netflix” is a well-known example. The trademark itself is not “Movie Streaming App,” but it does allow the consumer to understand there are movies (i.e. “flix”) available via the internet (i..e “Net”).
Names that immediately convey the characteristics of the goods or services. To register a descriptive name the USPTO requires evidence that when consumers encounter the name, they are able to identify a single brand as the source of the product/service. These are slightly more unique than a generic mark, but generally not as strong as suggestive marks.
“Comfortable Clothing” might be a descriptive mark for apparel. However, most of these are not capable of receiving a trademark registration on the Principal Register unless you can prove that consumers recognize the mark as your own. “American Airlines” would be an example of a trademark that has achieved this level of recognition. This is not a recommended branding approach because it can be hard to achieve such popularity.
Names that are the popular term for describing a class of products or services. These names are so widely used in connection with a general class of items or services, that they are the only (or most common) term for describing a specific product or service. This would be trying to register a trademark for “T-shirts” for a brand of shirts or “Taxicab” for a car service. No one is able to register these types of trademarks.
Even if you have a strong mark, you need to make sure that your mark is unlike anything else in the market. “Rolex” and “Shell” are strong marks due to their unique nature, but if every gas station was named “Shell,” “Seashell,” and “Beach Shell,” then the point of having a fanciful or arbitrary name is null, and the scope of your protection is limited again.
Common law trademark rights go to the first company to use the mark. These rights are not federal and cannot be enforced nationwide. For example, a small town store can only enforce its rights in the small town in which it is based.
Common law trademarks are harder to enforce than federal trademarks because there is no “presumption of validity” of the trademark. You have to prove that consumers recognize your trademark sufficiently in order to have earned a trademark right. That said, for some small businesses who can’t afford federal registrations or have no plans of expanding to other areas, they can rely on common law protection in the event a local trademark infringement occurs.
The second type of trademark registration rights can be found at the individual state level. Each of the 50 states have their own state government trademark database. Registering your trademark with an individual state’s database, only affords your trademark protection within that particular state.
Federally registered trademarks are the most secure. A federally registered trademark provides the presumption of nationwide validity in a trademark. It is the most effective method to prevent other companies or individuals anywhere in the United States from using your name on similar goods or services.
While you don’t need a registration to begin using a brand (there is no legal requirement that you register a trademark to use a trademark), it is strongly advisable. Once you go through the federal registration process and are granted a trademark registration, it is less likely to be infringing on someone else’s trademark. Additionally, you are better protected in case you have a brand that goes viral or creates big business.
If you don’t go through the federal registration process when you start your business, you also run the risk of finding out that a competitor with a similar name does have a trademark registered. This would force you to change after you have already begun your marketing efforts. Therefore, while it isn’t required to obtain one, if you do plan on getting a federal registration, you should start as soon as possible.
Trademark applications filed with the USPTO only protect the trademark within the United States, even though many businesses operate internationally. If you intend to engage in international business or are worried about counterfeits emanating from another country, consider filing trademarks in other countries to ensure global brand protection.
While there is no universal international trademark protection, an international treaty called the “Madrid Protocol” attempts to streamline the process. Over 90 countries have signed on to the protocol, including the European Union, China, the United Kingdom, Canada, and Mexico.
To use the Madrid Protocol, you must first file a traditional application in the United States. As soon as that application has been filed, there’s no need to wait for approval before beginning the Madrid Protocol filing process. The process starts by completing one application in the native language, then selecting which countries you want to send their application to.
|Pros to using the Madrid Protocol||Cons to using the Madrid Protocol|
|• It can be cheaper than hiring local counsel in each country. To file under the Madrid Protocol, you will pay one application fee along with a registration fee in each country that you register your mark in. While it can become expensive, it will save individual legal fees and filing fees upfront.||• Madrid Protocol applications cannot vary or be more expansive than the original application. For example, if an application is filed for “shirts” with the USPTO, an applicant cannot file for “purses, hats and shoes” elsewhere since it is considered “outside the scope” of the original application. All of the intended goods and services must be outlined clearly in the original application to avoid limiting the application when filing with the Madrid Protocol.|
|• Navigating a single application in a trademark applicant’s native language is far simpler than attempting to complete applications in foreign languages. Mistakes that can arise from poor or automated translations of complicated forms can become costly if it results in refusals or office actions.||• Applicants have to hire local counsel if any issues arise in the registration process in the country, whether those are identification issues, a likelihood of confusion, disclaimers, or descriptiveness refusals. This can feel overwhelming if a tight deadline or a complicated/expensive response is required.|
|• All Madrid Protocol applications can be updated with one additional filing. For example, if the owner’s address changes, instead of filing 10 different address changes the Madrid Protocol facilitates the process and makes it more efficient to keep trademark portfolios current and accurate.||• A Madrid Protocol application is dependent on successful registration of the United States application. If the home application is unsuccessful because of an Office Action or missed deadline, then the Madrid Protocol application will not register either.|
Even though the Madrid Protocol can be a valuable tool for straightforward applications, there still are good reasons to consider hiring local counsel.
|Pros to Hiring Local Counsel||Cons to Hiring Local Counsel|
|• It can streamline the process in each individual country and be the fastest road to registration.||• If there are numerous countries, hiring local counsel in each country can cost much more than a Madrid Protocol application.|
|• The foreign application is not dependent on the United States application being approved.||• Locating reliable local counsel in each country can be difficult, since some attorneys may not have the necessary expertise.|
|• It can be less expensive if there are only a few countries in which you are seeking protection.||• Managing files on each individual foreign application can be an additional administrative strain on applicants and can result in missed deadlines or lapsed applications.|
|• A complicated or nuanced application can require someone fluent in the local language.|
|• Some countries have different rules than the United States and local counsel will understand how to best protect a trademark in a given country.|
When filing via the Madrid Protocol, many trademark owners located outside of the United States will ultimately have to engage a local U.S. trademark attorney to respond to an issue with an application. Often, the U.S. trademark attorney may suggest filing a new application to ensure compliance with USPTO requirements. This convoluted process can result in a loss of priority and additional costs.
International trademark registrations are becoming more necessary in an increasingly global world. You should seek the appropriate legal counsel to develop the best and most efficient plan for international trademark protection.
The USPTO holds two “registers,” which are lists where trademarks are stored and advertised.
The Principal Register is stronger, although the Supplemental Register has its own benefits. The Principal Register is reserved for “distinctive” marks. Distinctive marks are marks that have no relationship to their goods or services, such as Shell for gas stations, or made-up words, such as Verizon or Kodak. The Supplemental Register is for marks that are descriptive of the goods and services, or less unique, such as American Airlines for air transport of passengers.
|Trademarks on the Principal Register:||Trademarks on the Supplemental Register:|
|• Are presumed to be valid in a lawsuit and show presumed ownership.||• Require that owners prove that the trademark is “valid” and that ownership is valid.|
|• Give every infringer “notice” that the owner has rights in the mark, so they cannot claim a good faith defense.||• Do not give infringers constructive notice, so infringers can still claim they were unaware of your trademark rights.|
|• Can be filed as “Intent to Use” to give you an earlier priority date.||• Cannot be filed as “Intent to Use.”|
|• Can become “incontestable” where no one can argue the owner does not have rights if you file a Section 15 declaration.||• Cannot have an incontestable mark.|
|• Both Registers allow you to bring a trademark infringement suit in U.S. Federal Court, allow you to use ®, and are a roadblock to similar marks applying to be on the Registers.||• Both Registers allow you to bring a trademark infringement suit in U.S. Federal Court, allow you to use ®, and are a roadblock to similar marks applying to be on the Registers.|
A mark will end up on the Supplemental Register if the USPTO finds the mark descriptive during its examination. This determination will come in the form of an Office Action, and unless the mark is generic, the examining attorney will make a recommendation to amend to the Supplemental Register.
You can respond to a descriptiveness advisory with arguments of distinctiveness, or can accept the suggestion and amend to the Supplemental Register. One issue with these simple amendments is that Intent to Use applications are not eligible for the Supplemental, so you must immediately prove use if you want to proceed to registration that way.
The Supplemental Register is not necessarily permanent. Trademark owners can apply to be on the Principal Register after five consecutive years of use, since the mark will have “acquired distinctiveness.” Occasionally, if a mark is deemed highly descriptive by the USPTO, then the refiled application may also be denied based on the date of first use alone.
So how can you prove distinctiveness if the USPTO requires additional evidence? You can provide:
Some lesser-known evidence that helps establish distinctiveness, but doesn’t necessarily indicate distinctiveness alone, includes:
After an applicant’s refiling is considered, and if they make it onto the Principal Register, the applicant typically allows the Supplemental Registration to lapse, and the applicant now has a stronger registered mark.
|PRINCIPLE REGISTER||SUPPLEMENTAL REGISTER|
|Registrant may use the ® notice symbol with the trademark||
|Eligible for enrollment in Amazon's Brand Registry program||
|Eligible for recordal with U.S. Customs||
|Presumption of national validity of the trademark registration||
|Strong ability to enforce the trademark against infringers||
|Can receive incontestability status after 5 years of registration||
A trademark registration is paramount for trademark owners — it provides enhanced protection for a brand throughout the United States and shows an investment in the long-term quality and value of the brand. A registered trademark is an important asset for the reputational, developmental, and competitive schemes of every brand.
Trademark registration establishes ownership of a brand’s name, slogan, or logo and provides protections against infringement. While obtaining a trademark registration may seem overwhelming, it is an important asset for the overall development and continuity of any brand. If you are unsure of how to obtain a trademark registration or how to take advantage of the full scope of rights conferred by your existing trademark registration, please contact an experienced trademark attorney at Gerben IP.
If you are a U.S. citizen or company with a U.S. domicile, you can register a trademark without the assistance of an attorney. However, you should know that registration is a rewarding, yet complicated process that requires precision and accuracy every step of the way. Hiring an experienced attorney will give you the best chance of successfully registering your mark.
Many individuals and business owners believe that registering a trademark themselves is more cost-effective and efficient than hiring an attorney. However, this assumption doesn’t take into account the potential pitfalls and consequences of filing an application without professional assistance.
Trademark applications are complex documents, loaded with legal terminology and technicalities. The substantive requirements of these documents must be rigidly followed because just one mistake or omission in the initial application can cause the USPTO to refuse to register your mark.
Failure to adhere to these documents’ substantive requirements may also cause the USPTO to request additional documents and information before allowing your application to proceed to registration. This can significantly increase the costs of registration and prolong the process.
In the long run, clerical errors due to inexperience can be detrimental to your application and require the hiring of an attorney to fix errors or refile an application — both of which can end up costing more than hiring an attorney from the beginning.
Working with a specialized attorney who routinely deals with USPTO filings is more beneficial than doing it alone. There are four main reasons that an attorney adds value to the trademark registration process:
While you can register a trademark by yourself, utilizing an attorney will make a significant difference in the process and outcome. An attorney’s assistance can help you avoid drafting and filing mistakes, manage deadlines, respond to subsequent USPTO requests, and — most importantly — increase your trademark’s chances of registration.
Filing a trademark with the USPTO can seem like an expensive process when combined with legal fees charged by your attorney. However, it can save thousands in legal fees in the long run.
We also cover any non-substantive Office Actions that the USPTO may issue. For example, the USPTO might ask to clarify goods and services, provide a domicile address, or disclaim a word. We will follow the trademark application through these processes for no additional cost.
It may seem that a trademark application is costly, and even then, may not result in trademark registration. However, it is essential to understand the cost of not having a registration.
It typically takes a year or more to secure a federally registered trademark. Successful registration requires an investment of time and resources. When preparing to register a trademark, you should consider the approximate length of each step of the process so that a budget and strategy can be developed that spans the estimated duration.
On average, it takes 12-18 months for a trademark to complete the USPTO registration process. Given this wait time, it’s important to start the registration process as soon as possible. The process even rewards those who start early: Under U.S. trademark law, regardless of when your trademark is approved for registration, you will receive retroactive protection and rights in your mark dating back to your application’s filing date.
Here are the timeframes associated with each phase of the trademark registration process.
The registration process can be made significantly faster by consulting with an experienced trademark attorney. An attorney will prepare and file your application in accordance with the USPTO’s requirements, reducing the margin for error in the application phase and decreasing the chances that your mark will be refused registration in the examination phase.
An attorney will also conduct a comprehensive clearance search to assess the likelihood that your mark will be approved for registration and whether it conflicts with existing trademark registrations. This search will enable you select a unique trademark, reducing the likelihood that a third party will object to the registration of your mark in the publication phase.
Here are some things you should do before filing your trademark application that will make the process easier, and help avoid any potential obstacles.
Moreover, if Nike were to change this logo in the future, then the Registration would no longer be able to be renewed or enforced. As a result, Nike would still have common law trademark rights, but they would not have a trademark registration for this design and would need to reapply to register their revised logo. Ultimately, an application for just words can provide broader protection over the words in the mark – without diluting that protection by tying it to a logo.
After registration, you still have responsibilities. The USPTO will consider the registered trademarks when considering other trademark applications. However, you still have the responsibility of policing the marketplace and keeping your trademark current to retain your rights.
A trademark does not expire like a patent but is instead valid if it is still being used in commerce. However, there are “maintenance” documents that registrants must file to prove to the USPTO that they are still using their trademark properly.
The first maintenance document must be filed between the 5th and 6th year following the registration of the mark. This means if the mark registered on January 30, 2020, the earliest the Registrant can file a renewal is January 30, 2025, and has until January 25, 2026. The USPTO also allows “grace periods” of six months after the last date, but there are additional fees due to the delay.
The next maintenance document is filed between the 9th and 10th year, with the same grace period. After this second renewal, all maintenance documents are due ten years after the previous.
In addition to filing maintenance documents, a registrant must continue to ensure the correspondence information, attorney information, and ownership information are accurate. Keeping an accurate record with the USPTO will ensure that deadlines are not missed, and all correspondence will go to the correct parties.
Keeping the uniqueness of a registered trademark is important to keep it as a source identifier for your goods and services. Here are some ways to ensure that other marks do not get registered or stay registered with the USPTO that a registrant believes are fraudulent, are too similar to theirs, or do not have priority.
None of these filings are guaranteed to stop the infringing mark from registering. It is up to the USPTO examining attorneys, the TTAB, or the local courts to determine whether the marks can co-exist. However, it is a good way to make it known that the marks should not co-exist and that a registrant is actively policing the space.
Gerben IP can help you with your registered trademarks if you’re unsure about how best to keep your portfolio up to date.