These answers to frequently asked questions are general guidelines only and do not constitute legal advice. Please consult directly with an attorney for advice that applies to you.
Trademarks brand all of your products and services as yours and no one else’s. They assure the quality of your product or service, protect against consumer confusion and can also safeguard your brand against counterfeit products. Trademarks provide market protection for businesses, making them an important part of running a successful company. Below are answers to frequently asked questions about trademarks. For further information please reach out to Lutzker & Lutzker. We are here to help with all your trademark issues.
A. A trademark is any word, phrase, symbol, sound, smell, color or marking used by a business to distinguish itself from the competition and tell the consumer the source of the goods. The trademark is the shorthand expression that defines the goodwill a company has built over time.
A. The Nike swoosh, the Coca-Cola signature logo, the pink color of Owens Corning’s insulation and the roar of the MGM lion before a movie starts are all famous trademarks.
A. A service mark is any word, phrase, symbol, sound, smell, color or marking used by a business to distinguish itself from the competition and tell the consumer the source of a service, such as an educational, entertainment, advertising or transportation service. Many practitioners use the term “trademark” to refer to both trademarks and service marks.
A. The United Airlines logo, the McDonald’s M and the Google logo are all famous service marks.
A. Trade dress is a sub-category of trademark. Trade dress is the total image, or “look and feel” of a product, which may include the product’s design, configuration or packaging. Trade dress protection can extend to a product’s size, shape, color or color combinations, texture, graphics or even particular sales techniques, including the layout and look of a restaurant.
A. A certification mark is any word, name, symbol or marking used to certify the regional origins, material, manufacturing methods or other characteristics of goods. For example, the Energy Star logo is a certification mark of the EPA to signify that an appliance meets rigorous green energy standards.
A. A collective mark is used to denote membership in a group, such as a union, association or other membership organization. For example, “CPA” is a collective mark used to denote membership in the Society of Certified Public Accountants. In general, collective marks are treated similarly to trademarks.
A. A trademark must be distinctive, meaning it distinguishes your goods or services from others in the mind of the consumer. A trademark must clearly identify the source of your product or service. The strongest type of trademark is an arbitrary or fanciful word or symbol. Neutrogena and Kodak are examples of fanciful (made-up) marks. Apple for computers is a good example of an arbitrary mark, or a dictionary word that is applied “arbitrarily” to an unrelated good or service. Suggestive terms can also function as strong trademarks. These are terms that hint at an attribute of the product or service. For example, Greyhound is a suggestive mark for bus services because the name suggests or implies the service is fast like a greyhound dog.
At the other end of the spectrum are descriptive and generic terms. Descriptive terms are weak trademarks and may not even be entitled to trademark protection if they do not also have “secondary meaning,” that is, evidence that shows that consumers recognize the mark as identifying one specific company. The trademark Bran-nut for bread is an example of a descriptive mark, as it literally describes what is in the product. It often takes a lot of time and expense to turn a descriptive term into a successful trademark. Generic words can never function as trademarks. This is because generic terms are words that are understood by the public as the common term for a product or service and are therefore incapable of indicating a specific source of a good or service. For example, a brand of shoes called “shoes” would not be protectable because anyone selling shoes would have the right to use the generic word, shoes, to describe the product or service they are selling. However, if one combines a generic term with a distinctive term or protectable trademark, then the combination can form a registerable phrase, subject to the trademark applicant disclaiming exclusive right to the generic element. For example, if Nike were to apply to register “Nike Running Shoes,” the combination of words would be registerable, provided that Nike disclaims exclusive rights to the generic phrase “running shoes,” which New Balance, Adidas or any other shoe company could use as well with their own branded product.
A. There are two ways to protect your rights in a trademark: use and registration. In order to have rights in a trademark, the owner must actually use the mark on or in connection with the sale of a product or service in commerce. Once the owner has used the mark in commerce, it has common law trademark rights. Common law trademark rights are often restricted to a certain geographic area, including where the marked products are sold or purchased; any geographic area in which the mark’s reputation has been established, even if the product is not sold there; and any geographic area to which the trademark owner is expected to reach as part of the normal expansion of the business.
Common law trademark protections are robust and are discussed further below. However, it is also strongly recommended that a business owner register its trademark at the federal level with the United States Patent and Trademark Office (“USPTO”). A federally registered trademark is entitled to much greater protection than a common law mark. These benefits include, but are not limited to, presumption of ownership and validity of the mark, nationwide priority from the date the application was filed, the right to use the ® symbol as notice to the world of a claim to a registered trademark and the right to enforce your rights in federal court.
A. The first step is to check its availability. Before adopting or using a trademark, you should always conduct a trademark search to make sure that no one is already using it for the same or similar goods or services. Conducting a search before you invest time and money in a brand name is a wise business practice and often essential to confirming your rights. If can be very disappointing and costly to discover a third party has already adopted and used the same mark that you have started to spend money to develop. In addition, you could be challenged by a cease-and-desist letter or even an infringement lawsuit, and in the end be forced to change your mark, losing all the time and investment in a trademark that another owns. So, we recommend clearing title before you leap into investing in a trademark. Lutzker & Lutzker offers a variety of trademark search options and can provide an analysis of your proposed mark’s availability before you use it or apply for federal registration.
The second step is to use your trademark in connection with the sale of your product or services. As explained above, trademark rights are established through actual use of a mark.
A. The ® symbol can only be used with a trademark or service mark that is registered with the USPTO. The TM and SM symbols can be used with unregistered (common law) trademarks or to indicate that a trademark has a pending application with the USPTO. Use of either symbol is not mandatory but encouraged to put the public on notice of your trademark rights; indeed, since ® is formal notice, if you are registered and don’t use the registration notice, your remedies in an infringement case against a third party misusing your brand may be reduced.
A. No. Although it is tempting to think that the Internet’s global reach means putting an unregistered trademark on a website gives the owner global protection, this is not the case. The geographic zone of protection is the same as it would be for a common law mark, encompassing where the product is sold or purchased.
A. An unregistered mark owner has exclusive use of the mark in the business’s geographic area. An unregistered mark owner may also prevent anyone from intentionally trading on the mark’s goodwill. If two or more entities use the same unregistered mark in the same geographic area, a court will resolve the conflict in favor of the first, or senior, user. If two or more entities use the same unregistered mark in different geographic areas, each party is entitled to exclusive use of the mark in the geographic area in which it has established goodwill.
A. Yes. Although not necessary to gain trademark rights, registration provides a trademark owner with many advantages in maintaining and enforcing its rights. Registration automatically confers nationwide protection and applies even if an applicant has not actually used the mark nationwide. Registration also provides prima facie evidence of validity and ownership. If an owner of a registered mark sues for trademark infringement, the registration shifts the burden of proof to an alleged infringer to show that the registered mark is invalid. Registration also gives the owner special rights to control the mark in connection with domain names issued by Internet registries.
A. In general, an application to register a mark with the USPTO includes identifying the proposed mark, a description of the goods or services on which the mark has or will be used and the required filing fee. The USPTO also requires a date of first use and copies of specimens showing use of the mark on or in connection with the goods or services listed in the application.
Alternatively, you can also apply for trademark protection with the USPTO before you start using a mark. The USPTO allows applicants to reserve rights in a trademark by filing an “intent to use” (“ITU”) based application. This means you can apply for trademark protection of a word, slogan, logo or design before you start using it. This is another great benefit of federal registration. The USPTO allows up to 36 months before you must prove actual use of the mark. In the meantime, the USPTO will block any third party from applying to register the same or similar term for the same or related goods or services. However, you must prove actual use of the mark within the time allowed before the USPTO will grant a certificate of registration. There are also additional fees associated with an ITU application. If you are thinking about applying for trademark protection (either use or intent-to-use) Lutzker & Lutzker can provide a free consultation to discuss your trademark needs.
A. The time between filing an application and registration can vary, but typically the process takes about a year. A mark is not considered registered until the USPTO issues a certificate of registration.
A. There are several reasons the USPTO may deny a trademark registration. A party may not register a mark that resembles another registered or unregistered mark so closely that it is likely to cause confusion. Likelihood of confusion is the most common ground for refusing to register a mark.
Deceptive marks are also banned. For example, a trademark including the word “Titanium” in a product that contains 0% titanium could be rejected.
The Lanham Act bans registration of any flags, coats of arms or other national insignia of the United States or any states or municipalities or any foreign country. The Act also bans registration of marks that falsely suggest a connection with a person, living or dead, a living person’s or deceased president’s name without written consent and marks that are primarily surnames.
A. Once a mark is registered, it is important to monitor the marketplace to identify any third party uses that may create confusion. Failure to monitor a trademark and to act on infringements can create cracks in a company’s IP claims and open the brand to a claim of abandonment. Trademark “watch services” help monitor USPTO records and provide the opportunity to intervene early to protect a mark. Lutzker & Lutzker offers such a service and is happy to consult with you on your specific trademark needs.
A. Immediately consult with a law firm that specializes in IP, like Lutzker & Lutzker. Third parties who believe their trademark rights are harmed by your registration can bring a cancellation petition before the Trademark Trial and Appeal Board (TTAB).
A. When a company wants to change a brand name, but not its corporate name, it must complete Doing Business As (DBA) filings in each state where it does business. For example, if Best Books LLC wishes to change the name on its website and storefronts to Reliable Reads but keep the corporate name as Best Books LLC, it would need to file a DBA. Each state has slightly different requirements for DBAs. The company should also apply to register the new brand name with the USPTO.
A. Yes and no. If a trademark becomes so widely popular that it describes an entire category of products, the trademark can lose all protection. This is known as genericide, a very rare but commercially meaningful event. Famous examples of this include aspirin, trampoline and escalator.
A. Yes. Advertising that educates the media and customers as to the difference between your product and that of your competitors, while emphasizing your trademark, can help slow genericide. Frisbee has successfully fought genericide, and so has Xerox. Both companies had to educate consumers through the media that their trademarks only described the company’s unique product. Thus, not all flying discs are Frisbees, and not all photocopiers are Xerox.
A. No. Registration of a domain name does not create any trademark rights. Trademark rights are only established from actual use of a mark to identify the source of products or services. In contrast, a domain name is simply an address of a website. Trademarks are federally registered through the USPTO, whereas domain names are registered through a domain name registrar service. Registration of a domain through a registrar does not give you trademark rights.
In addition, if you register a domain name that includes someone else’s trademark, you may be subject to an infringement action under the Anticybersquatting Consumer Protection Act which makes it an infringement to register and sit on someone’s trademark in bad faith; i.e., “cybersquatting.”
However, a domain name can function as a trademark if the domain name is used in a way that also identifies the source of a particular good or service. For example, the Supreme Court recently held that BOOKING.COM is entitled to federal trademark protection. In that case, adding the .COM to the otherwise generic term BOOKING was sufficient to create a protectable mark because consumers associated the mark with a particular company and service. In this case BOOKING.COM is used as a web address, and as a trademark.
A. No. Functional design pieces, like the headrest on a chair, are not eligible for trademark protection. A product feature is functional and not trademarkable if it is essential to the use or purpose of the product or affects the cost or quality of the article. If granting exclusive use of a trademark to one entity would place competitors at a significant, non-reputation-related disadvantage, the mark may be functional. In the headrest example, it would put competitors at a non-reputation-related disadvantage if one corporation obtained an exclusive trademark for the concept of a headrest on a chair, as it is an essential element of a chair’s design. Functional marks are better suited to design patent protections, if at all.