Trademark FAQ: What is a Trademark?

Trademarking Questions and Answers

Clients:
Tupperware
Yale University School of Medicine
Tiffany & Co.
CNOOC Limited
The Boston Consulting Group

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?

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?

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

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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

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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
Information on the Registrant (You)
Information Pertaining to the Use of the Trademark

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: 

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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. 

To Qualify for TEAS-Plus:
The following are not eligible for TEAS-Plus status:

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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