Trademarks 101 — Frequently Asked Questions

Dec 6

As trademark practitioners we frequently receive a lot of the same questions. What is a trademark? Why is it important for my business? How do I protect my trademarks? Today, we will answer those and a few other frequently asked questions!

What is a Trademark?

A trademark is a business name, logo, or slogan that helps consumers identify the source of goods or services. This can be as simple as one word, or a combination of many words plus a design. At the most basic level, a trademark is a source identifier — this usually means your business or product name. Think the Nike swoosh, the McDonald’s “golden arches,” and Apple. All of these are great examples of strong trademarks. A trademark is arguably the most important part of your entire brand identity.

“When it comes to developing the mark, we generally tell clients to get as creative as they can! This is the fun part, so why not spend a little extra time finding something that is perfect for you and your business?”

Do I Need to Register My Trademark?

You almost certainly should! Trademarks are protected by common law the moment you begin using them in commerce (subject to a few minor things that can’t be described here without situational details). This means that you can stop others from using the same or similar business name if you’re the first to use that name in commerce.

The problem with relying on common law protection for your trademark is that it is geographically limited, and you have no incontestability in the mark. If you operate throughout the U.S, particularly if you’re online, then registering your mark is something we recommend you do. If you’re putting a lot of money into the business and brand before you even launch, we highly suggest having a trademark clearance search done. This is a process where we research whether your chosen trademark is available for use and registration. This will help prevent you from infringing on an existing trademark and having to rebrand.

What Kinds of Trademarks Are There?

There are four types of marks:

Arbitrary or Fanciful
Suggestive
Merely Descriptive
Generic

These are listed in order of strength. Arbitrary or fanciful marks typically garner the most amount of protection because they are unique, and no relationship exists between the mark and the business apart from the one that is created. Often these are completely new words like Kodak or Xerox. They can often be words with no inherent relation to the offering, such as Apple for a computer.

Suggestive marks are the next step down, and require a consumer to put some thought into identifying the source of the goods or services. The USPTO will grant registration to these kinds of marks if a consumer must use their imagination to make the connection between your brand and its name, but the mark itself still has some inherent relationship with the offering. A famous example of this is Coppertone for sun tanning lotion.

Merely descriptive marks rarely gain protection. These kinds of marks simply describe the product or service, so the law doesn’t think it is fair to allow someone to stop others from using it. For example, American Airlines simply describes an airline in America. Over time, however, the mark can become more well known, and with that public use can acquire the distinctiveness necessary for trademark registration.

And finally, generic marks just name the goods or services being sold. The USPTO is not going to register these names — no one can simply register WATER for bottled water.

What is the Difference Between ™ and ®?

The TM symbol (™) can be used by anyone that is asserting their rights in their trademark. You don’t have to have a registration with the USPTO, and you should be using this in association with your business or brand name.

® can only be used once you have obtained registration from the USPTO. This symbol shows consumers in the U.S that you have taken the time to register your mark and that you really mean business when it comes to protecting it.

These symbols are not interchangeable, and you can’t use ® if your mark is not registered. So please don’t.

Picking a Trademark

When it comes to developing the mark, we generally tell clients to get as creative as they can! This is the fun part, so why not spend a little extra time finding something that is perfect for you and your business?

Once you have decided on a few names, perform an initial search of your own to see if anyone else is using it. This helps narrow down your options. Take to the world wide web-,social media, online publications, and even the USPTO’s website — all of these will help you in your search. When searching, you can narrow your search to your field of products or services, but keep it broad if you can. For example, in the fitness industry some companies have marks for supplements, clothing, and workout accessories. If you’re getting into anything fitness-related you’ll need to search a wide variety of products and services. Don’t just stop at nutritional supplements.

If you’ve done a great search and you’re not sure if moving forward on your name is a good or bad idea, contact an attorney to help you decide. Spending the extra time to have an attorney do a true clearance search is worth it. You don’t want to pick a name you can’t use.

Miscellaneous Issues

Does getting a domain name mean I have the trademark? No — obtaining a domain name with your desired mark does not give you trademark protection. A domain name doesn’t give you common law protection because you aren’t using the mark correctly in commerce to gain that, and it certainly doesn’t give you registration because you haven’t done anything to gain that either. It is just one digital asset your business has among many.

Does my federal trademark registration let me stop anyone form using my mark anywhere? No — just because your mark is registered in one class, doesn’t mean it is protected in every type of good or service. There are 45 different classes of marks, ranging from instant coffee to radar systems to online yoga instruction! If you registered your mark in Class 25 (apparel), you can’t stop someone from using something similar for their coffee mug business. They’re not the same class of goods or services. Are there arguments to make as to why this may cause confusion? Sure. But that is for the USPTO and the court system to decide if you initiate opposition or infringement proceedings, and this requires the time and energy of a good legal analysis.

Can I apply for a trademark registration before I start using the mark? Yes — if you’re not using the mark in commerce but you want to file an application with the USPTO anyway and be first in line (get a “priority date”), you must file a 1b intent-to-use application and be ready to pay an additional filing fee when you later start actual use. Correctly identifying your filing status is extremely important when you apply.