Trademark FAQ: What is a Trademark?

Trademarking Questions and Answers

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Helpful Information on Trademarks 

 

What is a Trademark?

The purpose of a trademark is to indicate the origin of goods or services. Historically, trademarks have been used by merchants and manufacturers as a symbol to communicate to the community where a product came from and who made it. Today, that is still largely what trademarks do, though typically we think of them more in terms of modern concepts like branding, but it's still true that anything which marks your good or products as being distinct from those of competitors in the market qualifies as a trademark. 

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Trademarks, Collective Marks, and Service Marks... What's the Difference?

  •  Service Marks are trademarks which cover services rather than goods.
  • Collective Marks are very much like trademarks but are used to identify membership in an organization or collective. Unlike service marks, collective marks are owned by the organization rather than by individual members.
  • Certification Marks are symbols used to communicate to consumers that another firm or company's product meets the requirements on a certification board. These certifying bodies often serve as third-party confirmation about ethical practices to consumers.

Each of these different sorts of marks operate almost in the same way, though there are slight differences when it comes to actually establish them. For example, a chain of bakeries called Cad Bake might have a Cad Bake donut covered by a trademark, while the bakery service is covered by a service mark. 

Because these marks are functionally very similar, we will continue referring for the rest of the article to trademarks, even though the information below will apply generally to service, certification and collective marks as well. 

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What Can Be Used as a Trademark?

  • Words and names
  • Phrases and slogans
  • Symbols or logos
  • Distinctive shapes
  • Uniquely stylized representations of a word
  • Characters, cartoons, etc. 
  • Characteristic building designs
  • "Trade Dress", ie. characteristic packaging details

In addition to these common types of trademarks, the following are things which can be trademarked in rare occasion:

  • Sounds, sequences of notes, spoken phrases
  • Pieces of music
  • Specific colors in certain applications
  • Smells 
  • Light displays

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What Makes a Good Trademark?

For more in-depth information, see our How to Trademark page.

The primary purpose of a trademark is to create an association with your company or brand with the consumers of your product. So, the most important thing to consider when coming up with a trademark is to think of something which will stand out as both distinctive and memorable. You want your trademark to be appealing to customers and to convey the mood of your brand. 

It is not necessary to make your trademark descriptive. Plenty of world-famous brands use trademarks that are meaningless outside of the context that brand has created. In fact, it is often better not to use descriptive trademarks. A coined term (a new word that you've invented) can often be the catchiest and most memorable sort of trademark. 

Arbitrary terms, where the word is chosen with no meaningful connection to the product, are often so successful that they overtake the original meaning of the term. Think, for example, of Toyota Corollas. Did you know that a corolla is a word to describe the flowering parts of a plant?

Suggestive trademarks are often better than descriptive ones. Suggestive trademarks communicate the nature of your product in creative, funny, or interesting ways. 

The worst thing to do is to choose a generic trademark that will get lost in the noise. 

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How to Tell if A Trademark is Available

 It is very important to ensure that you aren't infringing upon an existing trademark before you start using it yourself. Luckily, it is now quite easy and inexpensive to perform a trademark search online. We recommend that you perform a preliminary search on the USPTO trademark website before initiating a professional search.

You want to avoid any "likelihood of confusion". If your prospective trademark is similar enough to an existing trademarks that it could cause reasonable confusion about the source of the product. If in doubt about the possibility of confusion, it is best to contact the prior trademark holder or to choose a more distinctive trademark. 

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Does State Approval of a Corporation's Name Imply the Right to Trademark?

No. A state corporation bureau may approve the registration of a corporation, LLC, LLP, etc., but that is an entirely separate issue from trademark registration. The corporation bureau will only check to see if your company's name is already in use in the state, and any small difference is sufficient. However, the requirements for trademarks are stricter, since they must be distinct enough to avoid any "likelihood of confusion". Plus, trademarks are federally recognized, whereas corporate names are generally state-wide.

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How Do You Establish a Trademark or Trademark a Product Name?

The trademark is established the moment you begin using the trademark in the course of your business, provided you are doing so correctly and are not infringing upon another company's trademark. Your trademark rights will continue for as long as you continue using the trademark. The more you use the mark, and the longer your history of using it becomes, the stronger your trademark claim is. 

Once your trademark rights are established, you have the right to prevent anyone else from using a mark that is similar enough to yours to be potentially confusing to buyers and consumers of your product or service. Assuming, of course, that your claim to the trademark is stronger than theirs. 

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How Do You Protect Your Trademark Rights?

The best way to protect your trademark is to announce as widely as possible your claim to the mark. If someone is not aware of your claim to the trademark, they may innocently begin to use a similar trademark and establish their own claim without having committed any infringement against you. 

Registering your trademark is one of the most effective strategies for protecting your rights. Registered trademarks become part of the USPTO register of trademarks, and are therefore easily available for anyone doing due-diligence in checking for the availability of their trademark. This "constructive notice" makes it impossible for anyone to claim they were ignorant of your claim to the trademark. You may register your trademark with the Patent and Trademark Office as soon as you have begun using the mark in commerce. 

Even if you do not register your trademark, you can communicate your claim to it by providing proper notice. Much like copyright, you can include the trademark symbol ("tm" or "®") next to the trademark. Note: the ® symbol is only applicable to registered trademarks. 

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Enforcing Trademark Rights

Once your trademark has been registered or established, it is important that you enforce those rights in order to maintain the strength of your claim. If and when you become aware of someone else using your trademark or a sufficiently similar one, it is up to you to notify them of your claim and to demand that they stop. If you allow others to use your trademark or a similar mark, they will gradually establish their own rights to use the mark, and the strength of your own claim will be weakened. 

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Benefits of Trademark Registration

  • Constructive Notice: registration of trademark constitutes 'constructive notice', meaning that anyone who attempts to use the mark after the date of registration will be unable to claim that they did so in ignorance of your trademark claim. Without federal registration, it can be difficult to prevent someone in another state from using your trademark.
  • Registration allows you to use the ® mark as a form of notice.
  • You may sue infringers in Federal Court.
  • Statutory damages can be pursued for trademark infringement.
  • Trademark registration can be used in disputes over domain names. If you have a registered trademark and your opponent does not, your claim will take precedent.
  • Trademarks can be declared "incontestable" after 5 years of trademark registration. This would prevent anyone else from preventing you from continuing to use the trademark, even if they can establish that their use of it precedes yours. 
  • US Customs and Border Services can intercept importation of infringing goods. 

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Trademarking Colored Text

Remember that the critical point is whether any trademark could be confused with a previously established one. When you trademark a word, you can either specifically make a claim to the coloring of the text, or not. In case you do not register or make a claim over the color, a competitor would not be able to circumvent your trademark claim by merely changing the color of some of the letters, as this would not satisfy the requirements of avoiding likely confusion.

It is more complex if you do decide to make a claim for the color of the text. By claiming the color of the text, you are claiming that the color is essential to the trademark. This could cover other words with the same color scheme, but,  by the same token, it may not cover the same word with different coloring. 

Unless the coloring is essential to your trademark, it is best not to claim it. 

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Registering a Trademark in a Specific Font

The same concerns listed above for claiming specific colors apply for stylized fonts. 

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How Long is a Trademark Valid?

Trademark rights persist for as long as you continue to use the trademark. Unlike patents, trademarks do not expire after a specified number of years.

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How Long is a Trademark Registered For?

A federally registered trademark is valid for a period of 10 years. They may be renewed by the end of that 10 year period any number of times, however, meaning that theoretically there is no upper limit on the extent of a trademark registration. Be sure to note the relevant dates so that your registration doesn't lapse. To renew your registration, you will need to fill out a "section 8 affidavit", which you must also fill out on the fifth year of your first registration period. 

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How Much Does it Cost to Register a Trademark?

For more detailed information on the cost of trademarks, see our Trademark Costs page.

The cost of registering a trademark varies depending upon the type of goods/services the mark is being registered to cover. The cost will also depend upon whether the USPTO has any issues with your registration application.

You can expect to pay at least $1000 to register a single trademark in a single class of goods or services. There is an added fee for each additional class of goods and services. Multiple classes of goods require a separate filing fee, and this applies to renewals as well. 

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What Information is Needed to Register a Trademark?

The following is a list of the materials you will need to provide if you would like one of our trademark and patent attorneys to file a trademark registration for you.

Information on the Trademark Itself
  • The mark you want to register (obviously!)
  • If you have previous registrations with the USPTO for the same or similar marks, you should provide us with those registration numbers. 
  • If your trademark is an image or character or is stylized in such a way that it cannot be reproduced in regular font, then you will have to provide us with an image (PNG, JPG, or GIF) of the mark. This image will end up being the mark which appears on the trademark registration, so it is important that it be exactly as you intend to use it in commerce, and that it be as clear as possible. 
    • Color: For drawings in color, it is important to note whether or not you intend to register the colors themselves. As mentioned above, it is generally better not to register specific colors unless it is somehow essential to the mark. If the color is essential and you wish to register it, then you must provide a verbal description of the colors and how they are used in the image. 
    • Translations: If the mark contains language other than English, or characters which are not part of the Latin alphabet, then a translation is required. In the case of non-Latin alphabets, a transliteration is required, which explains how the words used in the mark are pronounced. 
  • For marks which are not representable in images (such as sounds, songs, a color, etc.) than a written description of what the mark is, as well as the appropriate representation (sound recording, for example).  
Information on the Registrant (You)
  • Name of the trademark owner. For registrant's whose name follows different naming conventions than the U.S regarding first and names, please indicate which name is the family name by capitalizing it. For example, LIU Wang, or Wang LIU for an individual whose family name is Liu. Otherwise, please specify which name is the family name by some other means. 
  • Explain the type of trademark owner. Will it be a citizen of the United States, a California corporation, etc. 
  • The trademark owner's address
    • If the trademark owner resides in a country that uses different addressing standards than the United States, please be sure to make it explicitly clear which part of the address is the street name, building name, postal code, etc. Don't assume that the United States uses the same conventions as your country!
Information Pertaining to the Use of the Trademark
  •  A description of the goods or services upon which the trademark will be used. The USPTO requires that you be very specific. It is not sufficient merely to list 'clothing' or 'kitchenware'. You must explicitly describe the merchandise that are to be marked: socks, ties, forks, butter knives, etc. 
  • For intent to use applications, you can list anything which you plan to use the mark on, regardless of whether you currently are using it that way in commerce. However, for applications based on actual use in commerce, you must have used the trademark on every item which you have listed. Otherwise, it is grounds to have your application denied. 
  • It is up to you to ensure that your descriptions are accurate. That said, the USPTO does provide a list of acceptable descriptions on the USPTO website. Please note though that you are not restricted to using terms on that list. The primary thing is that you provided the most accurate description of your merchandise or services as possible. 
    • For services, be sure to describe your services as services in the application. If you are a knife sharpening business, make sure that you describe your services as knife sharpening, and not as knives.
  • For the purpose of trademarks, services must be services which you provide to others. You cannot trademark logos that you print on t-shirts for your own office. Similarly, advertising services you provide to your own company cannot be trademarked.

You will also need to provide information to the USPTO about the date you first used the trademark in connection with the relevant goods/services

For Applications Based on Actual Use: 

  • You must provide the date of the first time the mark was used in interstate/international commerce
  • You will need to provide a "specimen" of the mark. Unlike a drawing, a specimen must show the mark in use on goods/services. This can be either the actual label itself, or images of the goods showing the mark actually applied to a product. 
  • Advertisements are acceptable for services, but not for goods/merchandise. 

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International Trademarks: the Madrid Protocol

For more information on international trademarks, see our page on the Madrid Protocol.

The U.S. registered trademark does not provide any protection over its use in other countries. However, there are various treaties to which the U.S. is a member, which allow for a U.S. registration to be used as a basis for filing in some foreign countries. The regulations vary from one country to the next and can be pretty complicated. Contact an attorney for more information on foreign filings. 

The Madrid Protocol

The Madrid Protocol is a project of the World Intellectual Property Organization (WIPO) established in 1996, which the U.S signed onto in 2002. The Madrid Protocol allows a trademark owner to protect a mark in several countries with just a single application, based on the application to register the trademark in the owner's country. The application is filed in one office in one language and saves the owner the burden of separate filings in several countries. The application fees depend on which countries you wish to file in and are charged in Swiss Franks. 

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What Are the Online Filing Discounts (TEAS RF and TEAS-Plus)?

The regular electronic filing fee through the USPTO Trademark Electronic Application System (TEAS) is $325. That fee can be discounted $50 per class (TEAS reduced fee, TEAS RF) or by $100 (TEAS-Plus) if the application meets certain criteria.

To Qualify for the TEAS Reduced Fee (TEAS RF):

Typically, our clients are able to file for TEAS RF. We generally follow the criteria below when we file applications for our clients. 

  • The application must be filed electronically.
  • The applicant must have an email addressed which the USPTO has been authorized to use for correspondence regarding the application as of the time of filing. This email must be kept valid at all times during the application period.
  • The following must be filed electronically through TEAS while the application is pending (if they are required for your application):
    • Any responses to office actions.
    • Any requests to change or update contact information or addresses.
    • Amendments to allege use.
    • Any voluntary amendments.
    • Any changes to the power of attorney or domestic representation.
    • Statements of use.
    • Requests for extensions to file statements of use.
    • Requests to delete a section 1(b) (Intent to Use) basis.
  • If TEAS Reduced Fee status is lost, you will be charged a $50 fee. 
To Qualify for TEAS-Plus:
  • The application must be filed electronically through TEAS
  • The goods/services covered by the application must adhere to the USPTO's list of acceptable identifications of goods and services.
  • The following must be included at the time of filing. Also, you must maintain the TEAS-Plus status throughout the duration of your application process. 
    • Name and address of the applicant(s).
    • Legal entity status of the applicant.
    • If the applicant is an individual: the applicant's citizenship. 
    • For juristic applicants: the country or state of incorporation.
    • If the applicant is a partnership: the names and citizenship for each of the applicant's general partners.
    • A contact name and address (for any correspondence pertaining to application).
    • A valid email address, and an authorization for the USPTO to send correspondence pertaining to the application to that email address. Email address must be kept valid for the duration of the application process. 
    • Must satisfy the requirements for one or more bases for filing. ( ie.1(a) actual use, 1(b) intent to use, or 44(e) foreign registration)
    • Identification of goods and services must adhere to the Acceptable Identifications of Goods and Services Manual. All goods and services must be correctly classified.
    • For applications based on foreign applications/registrations: any goods/services covered by the section 44 basis cannot exceed the scope of those goods int he foreign application/registration on which it is based. 
    • A clear drawing of the mark to be registered. As mentioned above, digital images must be included for texts (special or stylized characters, etc) that are not representable in a standard font. 
    • For marks containing color: The drawing must show any colors that are being registered. Additionally, you must include a written description of the colors used. Be precise.
    • Marks written in special or stylized characters must include a written description of those characters. 
    • Translations must be included for any non-English words, as well as transliterations for any characters outside of the Latin alphabet. 
    • If the mark includes the name or likeness of an actual individual: you must provide evidence of having obtained that individual's permission to use their likeness, else provide a statement that the mark does not portray any living individual. 
    • Identify and claim ownership of any existing registrations of the same mark that you already own, identified by their registration number.
  • If TEAS-Plus status is lost, you will be charged a fee of $50.
The following are not eligible for TEAS-Plus status:
  • Applications for certification marks.
  • Applications for collective marks/collective membership marks.
  • Applications for the Supplemental Register
  • Any applications which cannot be made through the TEAS system

TEAS-Plus is really only valuable for applications with a limited number of goods/services which have been chosen from the USPTOs list of acceptable identifications. For more complex applications with a larger number of goods, the modest savings obtained by TEAS-Plus status end up being outweighed by the additional cost of performing the necessary USPTO search required for TEAS-Plus. 

Do not try to force your description to fit with the USPTO acceptable identifications manual merely to try to save yourself $100. It is always more important that your application be accurate than that it be "acceptable". Your specimen of use must show the actual goods/services you are registering, and if you have inaccurately described them, your application will be rejected. That will cost you a lot more than $100, as you will have to file a whole new application.

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How to Avoid Fraudulent and Fake Solicitations (WARNING!)

Unfortunately, there is no shortage of dishonest companies out there that make a business out of sending deceptive and often downright fraudulent notices imitating official USPTO documents. Invariably, these notices will tell you that you need to immediately send in some sum of money to prevent your registration from lapsing or to make up for some sort of missed fee. Often, they ask for a payment to ensure that your trademark will be listed in some database or catalog. You do not need to send these companies anything. 

These deceptive companies will give themselves official looking names, such as the United States Trademark and Registration Office or the U.S Trademark Compliance Office. The only government agency that deals with trademark applications is the United States Patent and Trademark Office.  If you are filing through an attorney, the USPTO will never contact you directly. If you filed yourself, the USPTO will only contact you at the email address you specified in the application and always from the uspto.gov domain, or by postal mail if you did not authorize electronic communication. 

The USPTO will never request any additional fees to list your trademark in any catalog or database. 

Here is a list of fraudulent (or borderline fraudulent) notices sent out by companies attempting to trick applicants into sending them money:

Always think twice before responding to any request for additional money! Always read the fine print!

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