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Trademarks – Top 10 Questions

Introduction

In this article, we’ll discuss 10 of the most common questions associated with trademarks. This article cannot possible touch all trademark questions, but it should expose you to some of the most common trademark questions.

Next, we’ll go over trademark questions 1 through 3.

Trademark Questions 1 – 3

Question 1 – What is a trademark?

A trademark is a legal concept that protects words, names, symbols, logos, and devices used in connection with goods or services to indicate the source of those goods and services (e.g. Nike checkmark for shoes, Coca-Cola mark for soda, Guinness mark for beer, Time Warner mark for cable, etc.).

In short, a trademark is a source identifier. This means a trademark is a "mark" used for consumers so they can easily identify and differentiate between different products and services in the marketplace.

Question 2 – What is the Difference Between a "Trademark" and a "Service Mark"?

A trademark and a service mark are identical – except that a trademark identifies a product while a service mark identifies a service.

The term "trademark" is often used by the public to refer to both trademarks and service marks (as indicated in the answer to Question 1). However, technically speaking, the term "trademark" means words, names, symbols, logos, and devices used in connection with goods to indicate the source of those goods. While a "service mark" means words, names, symbols, logos, and devices used in connection with services to indicate the source of those services.

All the other processes of creating, maintaining, and using a trademark or service mark is nearly identical. As such, we will use the term "trademark" in the sense that it applies to both trademarks and service marks (unless it just applies to service marks, in which we will highlight this distinction).

Question 3 – What are the differences between a trademark, copyright, and patent?

You’ll need to know the definitions of a trademark, copyright, and patent. See Question 1 for the definition of a trademark.

A copyright is a legal concept that protects works of authorship (e.g. such as short stories, books, music, plays, choreographies, architectures, movies, etc.) that are fixed in some kind of tangible medium of expression (e.g. on paper, on a recording device, in any kind of fixed material). But a copyright does not protect the actual ideas, procedures, processes, systems, or discoveries in the copyright. For example, if you write a song about love, you cannot copyright the idea of love. Rather, you can only copyright your expression of love in the song.

A patent is a legal concept that grants protections to individuals who create a new invention. Technically speaking, a government grants a patent to the individual holder of the patent with the right to exclude others from making, using, or selling the invention for a certain amount of time. In contrast to trademarks and copyrights, patents can only be obtained from the government – while trademarks and copyrights are created by common law (i.e. the use/creation of the trademark or copyright by the individual). Patents also come in three forms including (i) utility patents, (ii) design patents, and (iii) plant patents.

Trademarks, copyrights, and patents all have unique rules that govern their creation and use.

Next, we’ll go over trademark questions 4 – 6.

Trademark Questions 4 – 6

Question 4 – How Do You Create a Trademark?

In the United States, as soon as you take a good or service and enter the mark associated with the good or service (i.e. the trademark) into commerce – any channel for buying and/or selling goods or services – you’ve created a common law trademark. In other words, trademarks are created once the mark associated with the good or service enters commerce.

So, you do not need to file for state or federal registration to create a viable trademark. However, it behooves nearly all to gain federal registration on their trademarks to gain a significant amount of protections (Read Question 9 for more details on the benefits of federal trademark registration).

Question 5 – What Cannot Be Protected by a Trademark?

The general answer is that if something is protected by a copyright or a patent it is generally not protectable by trademark law. However, this is not always the case. Sometimes there is overlap between trademarks, copyrights, and patents. But, as a general rule, as mentioned in Question 1, trademarks are source identifiers that protect goods and services, while copyrights protect works of authorship and patents protect inventions.

Another way to look at this is from the definition of a trademark. As defined in Question 1, a trademark is a legal concept that protects names, symbols, logos, and devices used in connection with goods or services to indicate the source of those goods and services. So, anything other than the definition of a trademark is not protectable by trademark law.

For example, assume you want to set up a company to make fans. Here, a trademark could not protect the process to create a fan – but a patent could. Or a trademark could not protect a sleek brochure to sell the fan – but a copyright could. However, a trademark could protect the name of the fan company listed on the brochure.

Question 6 – How Do I Let Others Know About My Trademark?

You should put others on "notice." This means you should let everyone else know you’ve created the trademark. Once you enter that trademark into commerce the "notice" should include the symbol "™" after the mark. And if you file for and eventually receive registration for your trademark with the United States and Patent Trademark Office (USPTO), you should use the federal registration symbol ® after the mark. Let’s go over an example to illustrate this.

Assume Bradly Smith starts a new chewing gum business that he names Bradley’s Chewing Gum. He wants to trademark the name. As soon as Bradley enters his product into commerce he should put others on "notice" about his trademark. He could do this in the following way: "Bradley’s Chewing Gum ™". The "™" puts others on notice that Bradley is selling and using his gum in commerce – and he intends to maintain the mark for the gum exclusive of everyone else. Later, Bradley decides to file for federal registration with the USPTO. If and when the USPTO grants Bradley federal registration, Bradley should use the federal registration symbol ® after the mark.

Next, we’ll go over copyright questions 7 – 9.

Trademark Questions 7 - 9

Question 7 – How Long Does Trademark Protection Last?

A trademark can last in perpetuity – i.e. forever. However, in practice, this depends on how the mark is used, protected, and maintained through the life of the mark. As mentioned in Question 4, a trademark is created under common law at the moment the mark enters commerce in association with the goods or services it represents. At that point, the mark could last in perpetuity under common law, as long as the trademark owner takes all the proper actions to use, protect, and maintain the mark.

If you file for and receive federal registration, you must also renew your mark with the USPTO on a regular basis. If you fail to properly renew your mark, you could lose your federal registration. For example, in general, the USPTO requires you file for renewals between the 5th and 6th year of the date of federal registration, between the 9th and 10th year of federal registration, and within every 10 years thereafter.

Question 8 – Can I Transfer My Trademark to Others?

Yes. You can freely transfer your trademark (or service mark) ownership to others in any way you choose. A key concept to understand in trademark law – just like any area of intellectual property law (i.e. including copyrights and patents) – is that the trademark owner owns the trademark like any other piece of personal property (e.g. a car, golf clubs, sunglasses, baseball cards, etc.)

As a trademark owner, you have the right to sell your trademark to others. In fact, trademarks are often very valuable assets of a business. When business are bought and sold trademarks often can play a pivotal role in the valuation of the business. Think of Coca-Cola. How much do you think the trademark of Coca-Cola is worth? Exactly – a whole lot! That’s why it is often very important to protect your trademark like any other valuable asset. Which means owners should usually seek the greatest protection for their trademarks and file for federal registration.

Question 9 – What Are the Benefits of Trademark Registration?

In the United States, there are two types of registration (i.e. filing with a government entity to put others on notice and gain more protections in your trademark) which include (i) federal registration and (ii) state registration. Federal registration occurs when the owner files for federal, i.e. national, protection with the United States Patent and Trademark Office (USPTO) in Washington D.C. State registration occurs when the trademark owner files for state registration in a particular state.

Federal registration affords the trademark owner the most rights and protections and applies protections of the mark across the Unites States and its territories. State registration affords the trademark owner less protections and only applies in the state where the registration is granted. So, the vast majority of trademark owners file for federal registration in lieu of (or in addition to) state registration.

So, what are the benefits of federal trademark registration? The following are the benefits, as listed by the USPTO, for federal trademark registration on the Principal Register (which is the register that lists all federal trademarks):

Public notice of your claim of ownership of the mark;
A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
The ability to bring an action concerning the mark in federal court;
The use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol ®; and
Listing in the United States Patent and Trademark Office’s online databases.

Putting others on notice of your mark is one the strongest protections. Because you would likely be much more successful in protecting your mark down the road if someone else infringes upon your mark based on your federal registration.

In short, if you do not file for and receive federal registration of your trademark and someone else infringes on your mark (e.g. uses it improperly or uses a very similar mark that the public believes is your mark), you would have to prove – by law – when and how you actually used your mark in commerce. With federal registration you could more easily show the first date you used your mark, what it is used for, and many other attributes of your mark based on your federal trademark registration. Without federal trademark registration you would have to prove all of this through other means – which could become very costly and time consuming.

Next, we’ll go over trademark question 10.

Trademark Question 10

Question 10 – Do I Need an Attorney to File for Federal Trademark Registration?

No. Any owner of a trademark can file for federal trademark registration on his/her own. However, it generally behooves most trademark owners to hire a lawyer to file on their behalf. Why? In short, for the same reason you would hire a doctor to diagnose you illness, mechanic to fix your car, or CPA to file your taxes.

Trademark law – like nearly every other area of the law – is fraught with technicalities and nuances that trademark attorneys specialize in. For example, the proper way to file for a trademark begins with overall business and marketing analysis, an in-depth trademark search, review of the search, proper classifications of goods and services, correspondence to office actions with examining attorneys from the USPTO, proper use of the trademark in commerce, etc.

So, many individuals and business owners hire a trademark attorney to file on their behalf.

Finally, we’ll wrap up this article with some main considerations.

Conclusion

In this article, we covered some of the most common trademark questions.

You should now have a better understanding of the definition of a trademark, the difference between trademarks, copyrights, and patents, how to create a trademark, put others on notice of your trademark, and many of the benefits of federal trademark registration.

However, keep in mind that this article just covers some of the most common questions associated with trademark law. So, it is generally best to seek out professional advice for fact specific questions.