What is a trademark?
A trademark is a distinctive word, phrase, or logo that is used to identify the source of a product or service and to distinguish it from competitors
Why do businesses get trademarks?
A few reasons:
- Registering for a national trademark comes with added benefits and protections. Here are some of the benefits listed on USPTO:
benefits of a trademark - A trademark recognizes and distinguishes a company from its competitors. For instance, trademarked brand names help distinguish brands like Pepsi and Coca-Cola.
- The added protection of a trademark can be very helpful when a competitor copies your company or brand name (this is surprisingly common). If someone tries to steal or use your brand name or slogan without permission, you’re better-positioned legally if you have trademarks in place. Your stress level will be considerably lower in that situation as well.
How do I get a trademark?
For free (basic): by using a unique and distinctive word, phrase, or logo in connection with a company or a product that is actually doing business (or being sold/marketed, in the case of a product-specific trademark).
For money (advanced): by applying to the government for trademark protection.
There are pros and cons to both, as discussed below. A qualified trademark attorney can go into even greater detail. Conversely, if you want less detail, check out our Trademark Cheat Sheet Infographic.
What are the differences between the TM , SM, and ® symbols?
TM, SM, and ® are all symbols for different types trademarks, however, their use varies based on the type of company, good, or service they represent.
TM – TM stands for “trademark” and is utilized primarily for goods and services. Some examples of goods are computers, cameras, bags, etc. TM recognizes the company’s logo, phrase, and brand names as unregistered. TM represents what’s known as a “common law” trademark and can be used by businesses without bothering with legal filings. Small businesses often use these types of trademarks.
SM – SM stands for “service mark” and is utilized primarily for services. It is less commonly used; TM has a broader use and is more recognizable. “Services” are defined as an act for which consumers are willing to pay. SM recognizes the company’s logo, phrase, and brand names as an unregistered service mark and is used in “common law.”
® – ® is the symbol for a nationally recognized, “registered trademark”, specifically recognized by the United States Patent and Trademark Office. ® can be used both for goods and services. If you use the symbol without being officially registered, this can cause negative legal consequences. You can also lose consumer trust in the product, and the ability to register the trademark through USPTO.
How much does it cost to get a registered trademark?
It depends on how many trademarks one registers for in the application process. Most companies will pay around $250-$750. If a business applies only for one registered trademark, the estimated fee is $250-$350.
Do you need an attorney to get a registered trademark?
Not in all cases, and it depends on whether the business is foreign-domiciled or U.S.-domiciled. If the business is foreign-domiciled, they are required to have a trademark attorney, however if they are U.S.-domiciled, they are allowed to decide. In either case, it is highly recommended to obtain the services of an attorney.
When should a business apply for a trademark?
In short, a business should apply for a trademark based on the success of their company or product (or anticipated success). If a business is reasonably sure it or one of its products or services will be successful, the safest approach is to apply for a registered trademark pre-launch. Failing that, as soon as a significant amount of revenue is being generated, that’s a good time to start thinking about registering a trademark in order to avoid a would-be competitor stealing your branding ideas.
Do I have to have a logo to protect my brand?
Technically, you do not need to have a logo to protect your brand; plenty of companies rely solely on stylized words for their branding. Some examples include Venmo, Crate & Barrel, and Volvo. Another example is when a company only uses a slogan for branding. Take the California Milk Processor Board. While you may not have heard of the group, they are most known for their billboards and advertising for “Got Milk?” Recognize the slogan?
Though you may not necessarily need to have a logo for a brand, to acquire a trademark for a brand’s name, a logo can be very helpful for the application process. Demonstrating that a business uses a logo in marketing materials can make the trademark application easier and smoother for the party.
What is the process of getting a registered trademark for a brand?
The process of trademarking a brand has four major steps:
- Application
- Examination
- Publication
- Registration
Application process: The application process includes understanding if the mark one wants to register is registrable and the overall strength of the mark. Some important characteristics to consider are the mark format, the good/service identification, the similarities of marks already registered in the USPTO database, and the filing basis. It is also important to decide whether one should obtain a trademark attorney.
Examination process: USPTO will approve a company’s trademark if it meets the minimum filing requirements, and an application serial number is assigned to the mark application. The USPTO will then task an examination attorney to review the application and determine whether it applies to all rules, statutes, and conflicting marks. This process will vary depending on if the application will approve or dismiss the application.
Publication process: If the application is approved, the mark will be published in the USPTO’s weekly “Official Gazette.” The mark has a 30-day period in which another party can request an opposition to registration or extended time to oppose the application. The registered mark will go through the Trademark Trial and Appeal Board (TTAB) if an opposition occurs.
Registration: If no one dismisses the mark or the opposition to the mark is appealed, the mark will be approved, and the primary party will be sent a certificate of registration. However, this process can vary based on the filing basis. If a party applied for bona fide intention to use the mark, they will be given a notice of allowance to either use the mark in commerce and submit a statement of use or request a six-month extension of time to file a statement of use.
How long does trademarking a brand take?
The duration of trademarking a brand depends on the filing basis the company registers to the USPTO.
The two most typical filing bases are:
- Section 1(a): business is already using a trademark in commerce with your goods or services.
- Section 1(b): a bona fide intention to use a trademark in commerce with your goods or services in the future (e., you haven’t started selling the good or service quite yet).
In both cases, if you face no objections, the registration and publication process can take roughly 4-5 months.
However, even though these are timelines, these are rough estimates that do not discuss objections like USPTO examining attorney dismissals of trademark applications, public objections to trademark applications, or TTAB appeals, which could prolong the trademark process to up to a year or longer.
The USPTO provides rough timelines of the two processes as follows:
The main difference between the two filing bases is that if you have a bona fide intention to use your trademark in commerce, the USPTO will issue a notice of allowance for six months in which you can either file a statement of use or request a six-month extension to file a statement of use.
Besides the two most popular filing bases, there are also filing bases depending on international and foreign trade affecting a trademark.
What are some common reasons the USPTO might reject a trademark application?
Likelihood of Confusion: If a trademark application is similar to an existing trademark and in similar markets, this can be seen as a “conflicting mark” which would most likely lead to a rejection. For example, if a company that sells apples was called “Big Apple” and an apple production company wanted to trademark the name “Manzana Grande,” this would be rejected as the two phrases hold the same meaning and are in similar markets.
Merely Descriptive and Deceptively Misdescriptive: If a trademark misdescribes the product like ingredients, characteristics, or functions and the mark plausibly confuses consumers, the USPTO will likely reject the trademark application.
For example, if a store was named “Boba Lounge” but did not sell boba, this would be seen as a misdescription. This also holds true if a party is misleading about the geographic location. If the store was named “Chicago’s Boba Lounge,” but the shop is actually in Wisconsin, the USPTO will reject the trademark.
Ornation: A mark will be rejected if the trademark is seen as merely part of the “dressing” of a good.
For example, the clothing brand, UNIQLO, commonly has many different designs on their shirts. Due to the size of these designs, these are considered more as an “ornation” of the shirt rather than a design mark. However, in other cases like a small design or phrase, these symbols can be seen as trademarkable. For example, the Lacoste clothing brand has a small crocodile design on the front which is trademarkable as it relates to the logo of the brand.
What’s the difference between a word mark, a design mark, a logo, and a standard character mark?
A “word mark” and a “standard character mark” are synonyms: they describe a type of trademark that protects words, phrases, or slogans (as opposed to images). For example, some famous phrases that are wordmarks are “Just Do it” by Nike and “Impossible is Nothing” by Adidas.
A “design mark”: A design mark is different from a word mark as the trademark protects a logo, design, symbol, or stylized text. Some examples are shown below, including the Nike swoosh and McDonald’s arches.
Do uppercase or lowercase letters matter in a word mark application?
Now after learning about the difference between word marks and design marks, it does not matter if you decide to capitalize in uppercase or lowercase in the case of a word mark. The main purpose of a word mark is to legally protect the brand’s phrase or slogan and does not include the significance of uppercase or lowercase writing of the words. However, in the case of the design mark, uppercase or lowercase letters will have significance in the trademark as it is trademarking the overall design of the logo which includes the incorporation of lowercase or uppercase letters.
What words or phrases are trademarkable?
Distinctive marking devices: There are two types of marks which include inherently distinctive marks and descriptive marks that have acquired distinctiveness.
Inherently distinctive mark are distinctive based on:
- Creative logos or symbols like previous examples mentioned such as the Nike Swoosh and McDonald’s Arches.
- “Fanciful marks” that are created specifically to be a trademark. For example, new words or words that haven’t existed prior like “Pepsi,” “Ebay,” and “Kodak.”
- “Arbitrary marks” are common words that are used in a new and unexpected way. One example is the juice company “Naked.” Naked is used as the brand name of a juice company, however the word, naked, has a completely different meaning.
- “Suggestive marks” are words that describe qualities about the good or service without actually connoting these qualities. For example, many protein shakes have names demonstrating the positives of drinking these products to become healthier and stronger like “LeanBody,” “CorePower, and “Muscle Milk.”
Descriptive Marks that have Acquired Distinctiveness can be distinctive but are rather descriptive based on:
- Lots of sales and advertising
- Long period of time
- Achieve significant public recognition through exposure in the market place.
Some examples include:
- Names that describe the actual purpose of the store. One example is “Vision Center” which is an optics store.
- Surnames/ names like many clothing stores such as “Macy’s,” “Sears,” “Prada,” and “Lacoste.”
- Geographic terms. Some examples are airline companies like “American Airlines,” “Hawaiian Airlines, and “Alaska Airlines.”
Descriptive marks have acquired uniqueness and distinctiveness through “secondary meaning” and overall prevalence in the market.
Which words or phrases are not trademarkable?
Words and phrases are not trademarkable depending on:
Descriptiveness: If a trademark lacks any distinctiveness such as basic words like “Fever,” “Vegetable,” or “Animal,” these will often be rejected by the USPTO as it doesn’t provide enough information about the particular commercial good or service provided by the party.
Likelihood of confusion: If a trademark is relatively similar to another party’s trademarked phrase, slogan, or logo and in shared markets, it will most likely be rejected. However, if an unregistered trademark is similar in name but reaches different markets, it may not be rejected, however could be seen as negative in an examining attorney’s viewpoint. For example, parody trademarks such as dog toys like a fake Fiji Water stuffy, which is spelled “Furji Water” are still allowed.
Deceptiveness: If a brand’s name or title holds little truth or creates an inaccurate depiction of the company. For example, if a restaurant’s name was “Korean Fried Chicken Restaurant,” yet they did not sell Korean fried chicken dishes. The restaurant is creating a false image for restaurantgoers who believe the restaurant’s menu includes Korean fried chicken.
What’s a trademark “class?”
A trademark class is an element of what’s known as the Madrid Protocol. The WIPO organizes different types of goods and services through trademark “classes.” Out of the 45 classes, 34 classes are for goods and 11 are for services. The registration fees for classes depend on the country, and goods and services can be listed based on multiple, different classes. One example is Amazon as it provides goods through selling products on their websites while also offering Amazon Prime. Amazon would register for multiple classes in goods such as classes 8, 9, 10, 11, 15, etc., and class 38 for their Amazon Prime Video Service.
Why and how does trademarking involve the public?
Trademarking involves the public in both the application process and in actual commercial use.
For the application process, the third step, publishing the trademark in the Official Gazette, offers the public the opportunity to discuss and analyze the trademark. Another outside party from the public can object to the trademark registration and bring the trademark to the TTAB for a trial.
In other uses, the trademark symbols are typically used in advertising and commercial use to demonstrate consumer trust and brand identification. For example, many companies will face other brands trying to dupe a product or their actual branding such as luxury brands or technology products. To demonstrate the actual product is real, they can use trademarks as a way to not deceive audiences and gain public trust.
How long do trademarks last (duration)?
Trademarks can last forever if continually renewed throughout the years. A registered trademark through the USPTO will last for 10 years until the party has to renew it 10 years from the date of registration. Trademarks can continue to be utilized as long as the brand’s products are still in commerce.
How does a trademark get “abandoned”?
A trademark is “abandoned” if the owner of the trademark purposely does not use the trademark for three years or longer, and has no intent to use the trademark in the future. This essentially means that the owner cannot claim rights of the trademark, and therefore if an outside party would like to use the trademark, they can use it without recourse from the original owner.
Are trademarks global? If not, what is a trademark’s geographic scope?
No, not necessarily. There is no single trademark registration process that confers legal protection globally. A registered trademark through the USPTO is only recognized on a national level. However, outside of the scope of registered trademarks, companies can use the Madrid Protocol to register trademarks in multiple countries. Through the Madrid Protocol, a party can register their trademark in over 120 countries.
Do you have to use a trademark symbol every time you use a trademark?
There is no strict legal requirement to use a trademark symbol every time you present a logo, slogan, or phrase that is trademarked. Using the symbol never, of course, can result in trademark abandonment. The frequency of trademark symbol use varies by the medium of the content and the context. The most common approach is to use a trademark symbol in the first instance of a given trademark’s appearance in a given piece of content, along with in any titles, headings, or subheadings.
Why doesn’t Apple use trademark symbols?
Apple often does not place trademark symbols on its trademarked logos and wordmarks as it is technically not legally required to do so in every instance of use (nor is any company that holds trademarks). As mentioned above, absent a strict legal requirement, marketing departments in different companies take different approaches.
Furthermore, there is a difference between a regular trademark and a “famous mark.” A famous mark is when the public can immediately recognize the brand due to its distinctiveness and familiarity. In the case of Apple, they are world-renowned for their products, therefore the public can instantly recognize the apple symbol as Apple’s logo.
In the context of web sites specifically, many companies have “trademark notices” on their websites that cover the whole site with a list of trademarks the company owns; therefore they don’t need to continuously use the symbols on their website.
In terms of marketing, many professionals find the usage of trademarks distracting and unsightly. Apple is known for very clean and pristine packaging so if they were constantly using a registered trademark symbol, it might not conform to the standards of their brand and image, as determined by the branding team within their marketing department.
What rules should brands follow when mentioning their competitors in marketing materials?
One of the fundamental features of a trademark is providing legal protection for a brand, which in turn affects the marketing and advertising of a company. Therefore, because trademarks are so commonly used in the marketing field, there are certain rules in which companies must follow:
Nominative Fair Use: A party can use a trademark of another company to identify their goods and services in speech and writing. For example, a sponge company like Scrub Daddy can mention other companies such as “Scotch Brite Heavy Duty” or “O-Cedar” in writing or speech, which includes advertisements. This also includes the incorporation of logo use in advertisements.
However, there are limitations to the use of these trademarked brand names as the brand cannot deceive the public by suggesting that it is sponsored or endorsed by the trademarked company and cannot use the brand name in an actual logo or design mark. Note that “Fair Use” is also a concept that pops up in copyright – can learn more about copyright here.
Comparative & Referential Advertising: A party can utilize their competitor’s goods and services protected by a trademark in the context of a comparison. However, they are not allowed to misrepresent or deceive the public over the competitor’s services and goods. For example, Pepsi and Coca-Cola are rival drinks and both will tease the competitor in subtle ways not including the trademarked named brands.
Referencing Ownership: If a competitor’s or other party’s trademark is used in an advertisement, in addition to following the other guidelines described, it’s a good idea to properly acknowledge the origin of the trademark in the advertisement itself. For example, TV or podcast ads often have a phrase at the end of the ad with “[Trademark] is a registered trademark of [Company].”
Do I have to place a trademark symbol on someone else’s trademark when I use it?
In short, no. Many larger companies typically have trademark usage guidelines available on their websites. Some companies may require the trademark symbol and others may not. But these guidelines do not carry the force of law; they are meant to be included in that companies’ contracts and are likely referred to from certain contracts. They are also present for the benefit of the Press; journalists can refer to them if they wish to.
Can I legally bid on trademarked keywords on Google search (Google AdWords)?
Yes, anyone can bid on trademarked keywords as long as (i) the bidder and the trademark owner aren’t direct competitors and (ii) the ad copy (or image) itself is not infringing the trademark in question by, for example, creating a likelihood of confusion in the mind of the viewer. You can read more about Google’s rules on trademarks in keywords on their website.
What is the importance of a trademark?
Overall, a trademark is key when considering one’s brand and company. Not only does a trademark provide legal protection to a brand’s identity, but it demonstrates a company’s reputation. The company is providing consumer trust that their products and goods are coming from their business.
Trademarks also connote a certain level of sophistication by virtue of the simple fact that many small businesses do have the resources or business acumen to use trademarks, period.
What should I do if someone stole the name of my product?
If someone stole the name of your product, you should seek qualified legal counsel to explore your options. How a business handles such a situation is dependent on the facts and circumstances.