Trademark Basics 101: What You Need to Know About Protecting Your Brand

What is a Trademark?

A trademark is a design, slogan, catch-phrase, word, or symbol that distinguishes your brand and makes it unique. It is how consumers identify and recognize your goods in commerce — and know they can rely on the quality of them. A trademark is also often used interchangeably with the phrase "service mark," which is used to identify services, rather than products. The trademark process is a multi-step proceeding designed to protect your brand.

Types of Intellectual Property

Ideas are the most valuable assets a business has, and they must be legally protected. Trademarks are only one category of intellectual property. Patents and copyrights can also legally protect your creations.

While a trademark safeguards your brand, a patent protects your rights to an invention. Patents are issued by the United States Patent and Trademark Office (“USPTO”), along with trademarks. Unlike trademark protection, which can potentially last indefinitely, the property rights of a patent are limited in duration.

The third type of intellectual property is covered by copyright. A copyright protects original works of art, including literature, dramatic works, movies, songs, art, computer software, and architecture and is filed with the United States Copyright Office. The length of protection generally lasts for the creator's lifetime plus 70 years.

Why are Trademarks Important?

Trademarks are essential for any thriving business. Your brand is what defines your company and makes it successful. Without registering your trademark with the USPTO, you're potentially leaving your designs, slogans, product names, and symbols open to misuse by competitors.

Whether another business has used your unique marks intentionally or unknowingly, consumers may purchase these goods or services, believing that your company produced them. Not only can this hurt your bottom line, but it can also harm your company's reputation — especially if the mistaken products or services were inferior in quality.

What is Trademark Distinctiveness?

When you're considering your brand's identity, it's crucial to choose a strong trademark. Trademark distinctiveness refers to the mark's ability to be distinguished from other goods or services. It also determines the level of legal protection the mark may have.

  • Generic Terms — A generic mark is one that uses words or a phrase that itself identifies the products or services. These terms cannot be registered with the USPTO or be protected with a trademark. An example of this is trying to register “Fast Food Restaurant” for restaurant services.
  • Descriptive Marks — A descriptive mark describes the characteristics or function of the goods or services. These marks are often difficult to register. However, they can sometimes acquire secondary meaning through time and use, acquiring distinctiveness. An example of this is Bookings.com.
  • Suggestive Marks — These kinds of marks usually use words that suggest the nature or characteristics of the product or services without describing it outrightly. Suggestive marks are eligible for federal trademark protection. An example of this is Airbus for aircrafts.
  • Arbitrary Marks — Words that aren't related to the goods or services are called arbitrary marks. They have a high level of trademark protection. An example of this is Apple for computer products.
  • Fanciful Marks — Fanciful marks are the easiest to register and afforded the most protection. These marks have no meaning other than that which is given to them by being associated with the product or service. An example of this is Kodak.

While your trademark should be carefully contemplated before you begin to use it in commerce and apply for registration, it's generally best to select an arbitrary or fanciful mark to differentiate your brand. These types of trademarks not only can be legally beneficial in the event of a potential infringement action, but they may also be best for the overall marketing strategy of your business.

What is the Trademark Process?

There is a specific trademark process to register your brand and ensure it has nationwide protection. Importantly, using "TM" or "SM" does not adequately safeguard your mark from use by competitors in all 50 states — only federal registration can ensure this scope of protection.

While every trademark application will be different, the process is generally the same and consists of the following steps:

  1. A comprehensive trademark search should be conducted to ensure a similar mark hasn't already been registered.
  2. A detailed trademark registration application is submitted to the USPTO.
  3. The examining attorney will review your trademark application.
  4. An office action will be sent if there is an issue with your mark or the application.
  5. A response must be sent to remedy any issues addressed in the office action.
  6. If all the problems identified in your application are resolved, your mark will be forwarded for publication.
  7. As long as no entity successfully opposes your trademark registration during the publication period, the examining attorney will conduct a final review.
  8. The USPTO will send your final certificate of registration in the mail.

With the guidance of an efficient attorney, the trademark process usually takes several months. However, the entire trademark process may take as little as half a year to over several years, based upon any office actions issued and the timeliness of your response.

What is a Trademark Class?

A trademark class indicates the type of good or service the mark represents. For instance, there are 34 classes for products, including clothing, food, beverage, tools, toys, paint, musical instruments, pharmaceuticals, and rubber goods. There are also 11 classes for service industries. Each trademark class is very specific, and you must ensure you file your application in the correct category. Sometimes, multiple classifications may be selected if appropriate.

When Can You Sue for Trademark Infringement?

Trademark infringement occurs when a business uses a mark without the owner's authorization. If you discovered that someone else is using your mark — or a mark that would confuse consumers into thinking they are purchasing your product — you may have grounds to commence legal action if you have priority rights.

Contact a Reliable Trademark Attorney to Safeguard Your Most Valuable Asset

To learn more about how a trademark can protect your brand, it's a good idea to consult with an experienced trademark attorney. The Trademark Lawyer Law Firm, PLLC has successfully registered over 5,500 trademarks and is committed to guiding clients through the USPTO trademark process. Located in Ann Arbor, Michigan, we assist business owners nationwide concerning all aspects of trademark law. Contact us today to schedule a free 15-minute consultation with a knowledgeable and proficient trademark attorney.

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FAQ

What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.

A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.

In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application:

Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.

Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.