Trademark Law

 

Claiming Your Unique Business Identity

A trademark is automatically created when you use in the marketplace a name or logo associated with your service or product. But without registering the trademark with the federal Trademark Office in Washington, D.C., your protection is limited to only those states in which you use the mark. To gain protection in other states, you need to federally register the trademark. Having a federally registered trademark allows you to stop persons in any state from using confusingly similar trademarks in the general field of your product or service. Having a federally registered mark also demonstrates strength and goodwill to prospective clients and investors.

How to Apply

To register a trademark, you must file a detailed application with the federal Trademark Office, including examples of the mark and a description of the goods and/or services that the trademark will be used to identify.

What Happens

When your application is received, an examiner at Trademark Office responds almost always by denying the application on first review, usually for being too similar to a mark already being used with, or because your mark itself is too descriptive of, the kind of goods or service at issue. You have opportunity to write the examiner with counter argument, which back-and-forth may go several rounds until the examiner either grants or denies your trademark for federal registration.

What to Discuss with a Lawyer

You want a good idea of costs versus your available funds and relevant risks and benefits. Before undertaking the registration process, an attorney can assist you with seeking a trademark search report to better gauge likely opposition by a trademark examiner or an entity holding a similar mark. Working with an attorney to draft or review your application before filing, and to argue your application for issuance, will greatly increase your chance of obtaining a federally registered trademark.

Related Legal Terms

Affixation – using a mark in commerce in connection with goods or services, often regarding packaging and labels (goods) or advertising (services)

Arbitrary Mark – an indicator that a mark is generally suitable for registration, as lacking any logical relation to the underlying goods or services

Classification – designating in a trademark application the type of goods or services at issue, e.g., under the so-called International Classification of Goods and Services

Fanciful Mark – an indicator that a mark is generally suitable for registration, as being made up or not existing in language, whereby it is sufficiently distinct for protection

Confusingly Similar Mark – an indicator that a mark is not suitable for registration, as having too much in common with a mark already used

Deceptive Mark – an indicator that a mark is not suitable for registration, being misleading as to the underlying good or service

Descriptive Marks – an indicator that a mark is not suitable for registration, as being insufficiently distinct and merely describing the general product or service

Dilution – an area of trademark protection, preventing others from weakening the strength of a famous mark via blurring or tarnishing consumer association to the source of goods or services

Disclaimer – certifying that a mark does not cover certain aspects, e.g., waiving right to specific words or elements in a mark

Distinctiveness – an indicator that a mark is suitable for registration; capable of consumer association to a particular source of goods or service

Examination – the administrative process for pursuing federal registration of a trademark

Forbidden Mark – an indicator that a mark is not suitable for registration, e.g., being disparaging, deceptive, overly functional, or a person’s name without permission

Generic Marks – an indicator that a mark is not suitable for registration, as being insufficiently distinct and merely describing a broad category of good or service

Distinctiveness – as an exception to the general rule that trademarks are created by use in commerce, a federal trademark applicant can claim mere “intent-to-use” a mark, thereby allowing the applicant to see if the mark is suitable for registration before investing in use

Priority Date – generally the date a mark is considered superior to a competing mark, often the date of first use in commerce or application for federal registration

Suggestive Mark – an indicator that a mark is suitable for registration; as a slight distinction to a mark that merely describes the general product or service, which is insufficiently distinct for registration, and one that overcomes that hurdle by requiring some mental process before drawing a connection to the nature of the goods or services

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This is for general information only. It is not intended as legal advice.