Trademark law grants exclusive rights to use marks that differentiate one provider’s goods or services from those of others. Typically, a trademark encompasses a brand name, logo, or slogan, but it can also include any distinctive device, such as sounds, packaging designs, scents, musical phrases, non-functional design elements, colors, and more.

Importance of a Trademark for Your Business:

  1. Brand Protection: A registered trademark can legally protect your brand from being used by competitors, ensuring customers can identify your products or services easily.
  2. Consumer Trust: Trademarks build consumer trust and loyalty by associating your brand with the quality and reputation of your business. They make it worth your while to invest in the quality of goods and services.
  3. Exclusive Rights: Registering a trademark grants you exclusive rights to use the mark for the goods or services listed.
  4. Legal Recourse: If someone infringes on your trademark, you can take legal action to stop unauthorized use.
  5. Business Asset: Trademarks are valuable business assets that can appreciate over time and be sold or licensed. Often the trademarks are highly valued assets in corporate transactions.
  6. Market Presence: They help establish a strong market presence and differentiate your business.
  7. Expansion: Trademarks facilitate business expansion by providing a consistent brand identity.

The differences between what can and can’t serve as a trademark depends more upon the uniqueness and use case of said “item”, rather than what it is. It is important to seek the guidance of legal counsel in determining if what you want to trademark can be in the first place. However, what can and can’t serve as a trademark typically falls along these lines.

Can serve as trademarks–three most common:

  1. Brand Names: Names of products or services.
  2. Logos: Unique symbols or designs.
  3. Slogans: Catchy phrases associated with your brand.

Can’t serve as trademarks:

  1. Generic Terms: Common words that describe an entire category of goods or services.
  2. Deceptive Marks: Marks that mislead consumers about the nature or origin of the goods/services.
  3. Surnames: Generally, unless they have acquired distinctiveness.
  4. Functional Features: Elements essential to the use or purpose of the product.
  5. Descriptive marks cannot be protected on the principal register but can offer some protection on the supplemental register.
  1. Knowledgeable Guidance: Attorneys provide experienced and knowledgeable advice on the best strategies for registering and protecting your trademark. Their experience will also allow them to provide you with guidance on potential pitfalls you may face in seeking out your trademark.
  2. Better Odds of Success: According to one study that analyzed over 5,000,000 federal trademark applications “trademark applicants were 37% more likely to succeed in the first stage of the process and obtain USPTO approval of their marks when represented by counsel.” Deborah R. Gerhardt and Jon P. McClanahan, Do Trademark Lawyers Matter?, 16 Stan. Tech. L. Rev. 583, 607 (2013).  That is before one even discusses the quality of the ones that get through without an attorney.
  3. Legal Representation: If your application is opposed or rejected, a lawyer can represent you and argue your case.
  4. Enforcement: They assist in enforcing your trademark rights and dealing with infringement issues. And even if the same attorney who filed your trademark doesn’t help you enforce it, using an attorney typically helps the enforceability of it in the long run.
  1. TM Symbol: Indicates that you are claiming rights to a trademark under common law, regardless of whether an application has been filed for federal registration.
  2. ® Symbol: You may only use the ® symbol after the mark is officially registered at the United States Patent and Trademark Office (USPTO) on either the Principal or Supplemental Register.

There are various levels of searching than may be done.  Here are some of the reasons why a search may important. 

  1. Avoid Infringement: Minimizes risk that your mark infringes on existing trademarks.
  2. Assess Registrability: Helps determine if your mark is likely to be approved for registration.
  3. Cost Savings: Prevents wasted time and money on branding efforts for a mark that cannot be legally protected. It also may avoid the expense, delay, and burden of re-brandng.
  4. Business Strategy: A search may inform your branding strategy by identifying potential conflicts early as well as competitors at times.

A mark may be used if it does not cause a likelihood of confusion with another valid, enforceable trademark.  Courts typically use as many as 13 factors to decide if there is a likelihood of confusion, with the two most important being how close are the marks and how close are the goods or services.   A trademark attorney can help assess the risks and advise whether pursuing registration is feasible. It’s generally advisable to choose a name that avoids legal complications.

  1. Likelihood of Confusion: The mark is too similar to an existing registered trademark given the goods or services in involved.
  2. Descriptive or Generic: The mark describes the goods/services or is a common term.
  3. Deceptive Marks: The mark misleads consumers about the nature or quality of the goods/services.
  4. Failure to Function as a Trademark: The mark does not function as a source identifier.
  5. Improper Specimen: The provided specimen does not show the mark being used in commerce properly.

Trademarks in the United States can last indefinitely so long as they are properly maintained and renewed.  It’s important to note that the registration and renewal process requires meeting specific requirements and deadlines, as well as paying all necessary fees. Failure to meet these requirements or nonpayment of fees can result in the cancellation or abandonment of the trademark registration. Johnston IP Law routinely helps clients maintain their trademark rights.  

DISCLAIMER: Nothing presented here is meant to be legal advice, and no attorney-client relationship is established.  The information provided is for education or entertainment purposes only.  Moreover, the information is introductory and does not include all the relevant information.  If you have specific legal needs, you should consult with an attorney.



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