Overview of U.S. Trademark Protection

What is a trademark? A trademark can be an invented, created or arbitrary word or group of words to describe a product or service (if a service, the term is “service mark”), such as Xerox or Kleenex, or a word or group of words that suggests but does not describe the product, such as Florida Gold orange juice, or a word or group of words that is merely descriptive of the product or service but which the public has come to associate with a particular business, such as Western Union. Generic terms that simply describe goods or services, such as Engineering, Drugs or Automobile, cannot be protected as trademarks or service marks.

The Requirement of Use. A mark must be used in order to be legally protected. Use is established by putting the mark on the product and the product must be sold to a third party. Service mark use requires using the mark in promotional materials or advertising that describe the services, and the services must be provided. The first user of an invented, created or arbitrary mark is entitled to legal protection as soon as such use begins. If the mark is merely descriptive, the user must first create a public perception, such as through marketing efforts, that the mark is associated with the user’s goods or services. Obviously, substantial time and investment is required to create this “secondary meaning” for a descriptive mark.

The Owner’s Legal Rights. Provided use of the mark has established ownership, the owner of the mark has a legal right to prevent any other person from using the same or a similar mark that is likely to cause confusion. Usually this is done by obtaining a court order that precludes the use of the same or a similar mark in the market where the owner does business. Note, however, that one cannot prevent usage that is not likely to cause confusion. For example, if you own the mark “Goldfish” for a cracker with a particular shape, you cannot use your ownership to prevent sales of goldfish at the local pet store. The products are unrelated. Also, usage in a distant market, away from where the owner does business, usually is not infringement of the owner’s mark.

What about designs? A mark may be words only, combined with a design, or a design only. The total impression of a product, its packaging and advertising, referred to as “trade dress”, may also be considered similar to a mark and thus be entitled to legal protection.

Is Registration Required? Many states have registration statutes, and of course federal registration is an option. The owner of a mark may acquire common law trademark rights through first use, thus formal registration is not required to assert legal rights. However, to obtain maximum legal protection federal registration is advisable and should not prove too costly, even for small start-up businesses. The primary advantage to federal registration of a mark is that it provides nationwide priority over everyone else, with the exception of those who used the mark prior to your filing date, filed before you, or may have an earlier U.S. filing date based on filing a trademark application in a foreign country. Nationwide priority means you will have protection for your mark if your business expands to new geographic markets, whereas without such protection you generally have legal rights to the mark only where your business is located. Another advantage is that with federal registration treble damages may be available in cases of intentional infringement.

The Federal Application Process. The first step to obtain federal registration is a trademark search. This can be done through the database of the U.S. Patent and Trademark Office (“USPTO”), to reveal previous registrations and pending applications. It is also common for a trademark search service to be employed to expand the search to include individual state registrations and other databases and sources to discover whether the same or similar marks are being used without federal registration. Once the search results are satisfactory, the trademark application is filed with the USPTO. The application must include examples of the mark in actual use. Applications may be based on actually use or “intent-to-use”. Approximately 12 months should be allowed for a use-based application; an intent-to-use application may take much longer, depending on when actual use begins. In either case, if registered, the protection for the mark begins on the application date. Once the mark is registered, the owner is entitled to use the symbol ® next to the mark. Prior to registration use of this symbol is prohibited, although the symbols ™ (or SM for a service mark) may be used to indicate usage as a mark.

What about Foreign Registration? A mark owner may file for foreign registration. The United States is a party to various international conventions and treaties that facilitate a claim of priority based on the filing date of the U.S. application. Note however, that the foreign application must be filed within six months of filing the U.S. application.

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