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is a trademark?
How could a trademark be useful to me?
How do I choose a trademark?
I already have a business name. Isn't
that automatically my trademark?
How do I acquire trademark rights?
How do I register my mark?
What is an Intent-to-Use (ITU) application?
How long does it take to register a trademark?
How much does it cost to register a trademark?
What is the difference between "TM",
"SM", and "®"?
How do I maintain my mark?
What can I do if someone else uses my
What is a trademark?
A trademark is a word, phrase, graphic design, or symbol that enables
a customer to recognize that a product bearing the trademark originates
from a particular source. A trademark may also be a combination
of words, graphic designs, and/or symbols, and under some circumstances
may include sounds, smells, and colors. If the word, phrase, graphic
design, or symbol is associated with a service instead of a product,
the mark is a service mark. Trademarks and service marks are legally
very similar, so for simplicity's sake I will refer generally to
A mark allows a customer to choose a product or service sold by
a desirable source and to avoid products or services sold by undesirable
sources. The customer does not need to know the actual name of
the source, only that any product or service bearing a particular
mark comes from the same source. This knowledge provides the customer
with reasonable assurance of receiving a desired combination of
quality, price, service, and any other important attribute.
• How could
a trademark be useful to me?
Your customers want to purchase your products or services again
and again. An effective mark allows a customer to instantly recognize
and choose your products or services in a crowded marketplace.
The value of a mark increases as customer goodwill grows. If customers
associate your brand with pleasure, power, or any other desirable
attribute, your mark may itself become marketable. For example,
the premium price charged for a piece of designer clothing may make
the designer's label or logo worth more than the garment that carries
Once you own rights to a mark, you can maintain the exclusivity
of your brand by suing others to prevent them from using marks similar
enough to your mark to confuse customers. And unlike a patent or
a copyright, a properly-maintained mark can last forever.
• How do
I choose a trademark?
Start by brainstorming marks that customers would find appealing.
Eliminate marks that are not good candidates for legal protection.
Then have a search performed on the remaining marks to eliminate
any that are already protected.
A mark's ultimate appeal depends on market psychology, which is
a subject beyond the scope of this summary. However, assuming that
you have thought of marks that would appeal to customers, your ability
to obtain legal protection depends on several factors. Two primary
goals of trademark law are to protect only marks that are unique
and to minimize legal constraints on the use of descriptive words.
To be consistent with these goals, a mark must not be a word that
is widely used to describe a group of similar products, must not
merely describe some characteristic of an individual product, and
must not be so similar to an established mark that it would confuse
customers as to the origin of your product or service.
Word marks fall within a spectrum of "strength," a qualitative
measure of a mark's ability to withstand a legal challenge. This
spectrum is divided into four classifications. Listed from weakest
to strongest, these classifications are generic, descriptive, suggestive,
and arbitrary or fanciful.
A mark is generic if it is a word widely used to describe a group
of similar products. For example, a generic mark for a new automobile
model might be "AUTOMOBILE." Since "automobile"
and "car" are the two words most widely used by English-speaking
people to describe non-utility passenger vehicles with four wheels,
allowing an auto maker to monopolize either word would make it very
difficult for other auto makers to even describe what they sell.
A generic mark can therefore NEVER receive trademark protection.
A descriptive mark is typically a widely-used term or phrase that
describes at least one characteristic of a product. An example
of a descriptive mark might be "BUBBLY CHAMPAGNE." Since
champagne is by its nature bubbly, this mark offers no unique association
with a brand, instead describing a single characteristic common
to every product in the category. Like generic marks, descriptive
marks generally cannot receive trademark protection. However, some
descriptive marks may eventually become eligible for trademark protection
by acquiring "secondary meaning" in the minds of customers,
usually as a result persistent marketing by a manufacturer. The
process of acquiring secondary meaning may take decades, or it may
Although descriptive marks are poor candidates for protection,
they are nonetheless quite common, probably because of the natural
human tendency to call something by its most common name. This
can especially be a problem for people who have technical backgrounds
and are accustomed to using specific, generally-accepted descriptive
terms to communicate ideas to colleagues. The descriptive terms
that facilitate research and development often make weak marks that
cost a company a fortune in legal fees before being reluctantly
Descriptive marks that deceive a customer about a product (called
"deceptively misdescriptive") are especially poor choices.
"FOOT-LONG SUB" is a weak mark even if your submarine
sandwich is actually a foot long. If your sandwich is really six
inches long, your mark probably cannot be protected and may raise
consumer fraud issues.
A suggestive mark implies but does not explicitly describe a characteristic
of a product. A well-known suggestive mark is "EVEREADY"
for batteries. While "EVEREADY" suggests long battery
life, the mark is not literally descriptive, as customers are unlikely
to expect batteries to have an infinite shelf life.
At the high end of the "strength" spectrum is the arbitrary
or fanciful mark. An arbitrary mark is an existing word used in
an unusual way, so that the word's commonly-accepted meanings describe
nothing about the product. An example might be a cologne named
"AUTOMOBILE." Notice that a particular word can be generic
in one context and arbitrary in another. A fanciful mark is an
invented word that does not otherwise exist in any language, such
as XEROX or KODAK. Since arbitrary or fanciful marks are unique
and do not constrain the use of descriptive words, these are the
Avoid lost sales and expensive legal wrangling by eliminating generic
and descriptive marks from your list of possible marks. Instead,
choose a suggestive mark or, better still, an arbitrary or fanciful
mark. If you are uncertain about the probable classification of
a mark, consult an attorney with experience in trademark law.
There are many other specific reasons why a given mark may be weak.
The names of people or places are often difficult or impossible
to protect, obvious exceptions notwithstanding. Avoid using a surname
or geographic name unless you have a compelling reason AND competitors
are not already using similar names AND you are willing to undertake
a long and taxing fight to acquire rights. Also, spelling variations
(such as "Rite" instead of "Right") make no
difference, nor does translating a mark into another language.
If you DO plan to use a mark in a language that you do not speak
fluently, get professional translation help. Many businesses have
been embarrassed by badly translated marks that were ridiculous
or lewd in another language.
Once you have narrowed your list of possible marks down to the
best candidates for customer appeal and legal protection, a search
for similar marks can help you avoid legal conflict with owners
of existing marks. Since similar marks may confuse customers as
to the source of a product, trademark law will not protect a mark
that creates a "likelihood of confusion" with an existing
mark. The law may allow identical marks for different mark holders
who are geographically separated or who have very different products.
On the other hand, even an arms manufacturer probably couldn't register
"McMISSLE" without receiving a legal thrashing from McDonald's.
The legal bases for deciding whether a given mark is confusingly
similar to another mark are too complex to summarize here. A search
and legal opinion by a trademark attorney can help you avoid investing
in a mark that you eventually have to either abandon or fight for
If you are considering a word mark, a fast, free web search can
be made with the USPTO trademark search engine
and other search engines like Google,
the online Yellow Pages,
and Switchboard. These search engines can
help you quickly eliminate some obvious matches. Unfortunately,
they miss many less-than-obvious matches. For a graphic mark, or
to search for those less-than-obvious matches, have a professional
search done. The best search services use proprietary databases
that are far more complete than anything available to the public.
Even so, NO search can guarantee location of every conflicting mark.
• I already
have a business name. Isn't that automatically my trademark?
Not necessarily. When you register a business name, your Secretary
of State normally checks state records to see whether anyone else
in the state has registered precisely the same name. If not, the
name is yours. However, your state may not check federal trademark
registrations, so your name could already be someone else's mark.
In that case, you might be prevented from using your business name.
Even if your state checks its own trademark registrations, someone
just over the state line may already have rights in the mark. Also,
trademark law withholds protection from confusingly similar marks,
and your business name may be similar to someone else's established
do I acquire trademark rights?
Common law trademark rights are acquired by use of a mark in commerce.
Using your mark to sell your product or service to customers is
use in commerce. If you were the first to use a particular mark
in commerce in a particular locality, you may already have the right
to prevent others from using that mark. However, common law trademark
rights may be very limited both in geographic range (usually to
areas where you have sold and advertised) and in legal remedies
available when someone else uses your mark.
You can greatly enhance your trademark rights by registering your
mark. The federal government and most states offer trademark registers.
State registration is usually simple, fast, and cheap, but state
trademark laws are often comparatively toothless. State registration
usually adds little to the geographic range of protection and does
not prevent out-of-state businesses from using your mark. A prior
federal registration trumps a later state registration, and federal
registrants control unoccupied geographic range even if they register
AFTER a state registrant. Still, some mark owners choose to register
with both the federal government AND selected states, considering
state registration as another "arrow" in their legal quiver.
Registration of a mark on the USPTO's Principal Register confers
protection within the entire United States, giving everyone else
in the U.S. legal notice that your mark is presumed valid and yours
to use exclusively. Your mark becomes incontestable if used continuously
for five years after registration. You may sue an infringer (someone
using your mark or a confusingly similar mark without your permission)
in a federal court rather than a state court, which usually gives
you substantial procedural advantages. If you win, you may prevent
the infringer from using your mark anywhere in the U.S., you may
bar importation of infringing products into the U.S., and you may
recover profits, damages, and costs. Under some circumstances,
you may also recover attorney's fees and treble damages.
Descriptive marks that have not acquired secondary meaning cannot
be registered on the Principle Register. For these and other marks
that might gain trademark significance, the USPTO provides a Supplemental
Register. Although the Supplemental Register does not confer many
of the benefits of the Principal Register, it does provide a basis
for suit in a federal court and can preclude registration of a substantially
• How do I
register my mark?
If you are already using your mark in commerce you may file a "use"
application with the USPTO. First, select at least one international
class for your mark from the International
Schedule of Classes of Goods and Services. You must also give
a more specific description of your goods or services than is provided
with an international class designation. Review the Acceptable
Identification of Goods and Services Manual for appropriate
descriptive terms. Provide the date that you first used the mark
anywhere and the date that you first used the mark in commerce.
You must supply both a drawing and a specimen of your mark. Marks
are printed in black and white when published by the USPTO, so the
drawing must be a black and white image of your mark, accompanied
by identifying information. Any colors in your actual mark should
be described in the text of the application. A specimen of a trademark
(for goods) is typically a label, a container, a display for the
goods, or a photograph of the mark in use on the goods. The USPTO
does not want the actual goods, or related materials like invoices,
letterheads, brochures, or business cards. On the other hand, a
specimen of a service mark may consist of a letterhead, brochure,
or business card, so long as the specimen also makes some reference
to the service.
When you file an application, the USPTO will check to see whether
you have supplied all of the required elements. If so, an examining
attorney at the Trademark Office will search for conflicting marks
and determine whether your mark can be registered. If the examining
attorney believes that your mark cannot be registered, the USPTO
will respond with a refusal. You may respond to the refusal with
legal arguments that address the examining attorney's objections
(reasons for the refusal), or you may abandon your attempt to register
the mark. Because a response depends on the applicant's ability
to make convincing legal arguments based on trademark law, a response
is best handled by a trademark attorney.
If the examining attorney raises no objections to registration,
or if you overcome all objections, the examining attorney will approve
the mark for publication in the Official Gazette, a weekly publication
of the USPTO. Publication allows other parties who might suffer
damage if your mark is registered to file an opposition, provided
that they act within 30 days of publication. The USPTO then conducts
an administrative proceeding to determine whether the opposition
has merit. If not, or if no opposition is filed, the USPTO issues
a Certificate of Registration.
• What is
an Intent-to-Use (ITU) application?
If you have not yet used your mark in commerce, you may file an
"intent to use" (ITU) application. Recall that trademark
rights are acquired by using a mark in commerce. The USPTO recognizes,
however, that you need some degree of assurance that a given mark
can be protected before you spend money promoting the mark. An
ITU application allows you to start the registration process before
you have used the mark in commerce.
The requirements for an ITU application are essentially the same
as those for a "use" application, with a few differences.
An ITU application must include a sworn statement that you have
a bona fide intention to use the mark in commerce. Once you overcome
any objections and prevail in any opposition proceeding, you are
issued a Notice of Allowance, which is official notification that
your mark can be (but is not yet) registered. If you start using
the mark in commerce before receiving a Notice of Allowance, you
must file an Allegation of Use. If you start using the mark in
commerce after receiving a Notice of Allowance, you must
file a Statement of Use. You do not have to submit a specimen until
you file your Allegation or Statement of Use.
If you have not filed an Allegation of Use, you have 6 months after
you receive a Notice of Allowance to file a Statement of Use. If
you have also filed an acceptable specimen, you then receive your
Certificate of Registration. If you still have not used your mark
in commerce within 6 months you may file an Extension Request.
If you do not file either a Statement of Use or an Extension Request,
your application is abandoned. You may file an Extension Request
every 6 months, up to 36 months after your Notice of Allowance.
If you still have not used your mark in commerce after 36 months,
your application is abandoned.
• How long does
it take to register a trademark?
Typically twelve to fifteen months. However, if the Trademark
Office considers your mark ineligible for registration, arguments
and appeals may stretch the process out considerably.
• How much does
it cost to register a trademark?
The current filing fee for a federal trademark ranges from $275 to
$375 per classification. A search may cost between $100 and $500,
depending on thoroughness. Application preparation and filing,
including a review of the search, is about $350. Responding to a
trademark examiner's refusal could cost anywhere from a few hundred
to several thousand dollars, depending on the amount of work involved.
• What is
the difference between "™", "SM",
"™" is an abbreviation for trademark, and should
be applied to any mark you use in commerce on goods. You do not
need to register your mark to use "™". "SM"
is an abbreviation for service mark, and should be applied to any
mark you use in connection with services. You do not need to register
your mark to use "SM".
"®" means "registered",
and may be applied only to a mark that has been registered with
• How do I
maintain my mark?
Once you have registered a mark, you can control that mark indefinitely
IF you make the appropriate USPTO maintenance filings and
you adopt certain business practices. Your initial registration
period lasts for ten years. The USPTO requires that you file an
Affidavit of Continued Use (also known as a "Section 8 Affidavit")
between the fifth and sixth year following registration. The Section
8 Affidavit must be accompanied by a specimen of your mark as used
in commerce. The filing fee for a Section 8 Affidavit is $100 per
If your mark is on the Principal Register and you have used your
mark in commerce continuously for at least five years, you may file
a Declaration of Incontestability (a "Section 15 Affidavit").
When a mark becomes incontestable, continued registration is considered
conclusive evidence of the validity of the mark and of your exclusive
right to use the mark in commerce. Although a Section 15 Affidavit
is not required, it is so commonly filed between the fifth and sixth
years after registration that the USPTO offers a special form for
a combined Sections 8 & 15 filing. The filing fee for a Section
15 Affidavit by itself is $200 per class. The filing fee for the
combined Sections 8 &15 filing is $300 per class.
To maintain federal protection beyond the initial ten-year registration
term you must file an Application for Renewal (under Section 9)
within the year before the expiration date of your registration.
Each renewal lasts ten years. Since you are also required to file
a Section 8 Affidavit and provide a specimen every ten years, the
USPTO provides a combined declaration of use in commerce/application
for renewal of registration of mark under Sections 8 & 9. The
combined declaration must be filed every ten years. The current
filing fee is $400 per class.
In addition to these USPTO requirements, mark maintenance also
requires certain business practices. Trademark rights can be lost
through abandonment, by improper licensing or assignment, and by
allowing a mark to become generic. Trademark rights flow from use
in commerce, so if you stop using your mark and do not intend to
resume using it, you have abandoned your mark and lose rights to
it. A court will infer your intent from your behavior, and three
consecutive years of non-use is considered prima facie evidence
You can lose rights to your mark if you license to another party
who does not provide your customers with the assurance of receiving
whatever combination of quality, price, service, and other attributes
they have come to associate with your mark. Likewise, assigning
your mark to another party without transferring the assets associated
with the mark can result in loss of rights. Each activity defeats
the central purpose of a trademark, namely identifying goods or
services with a specific source.
Misuse of a trademark may cause it to become generic, and therefore
no longer protected. Recall that a mark is generic if it is widely
used to describe a group of similar products. A perverse aspect
of trademark law is that too much success can destroy your trademark
rights. If your mark becomes the commonly-accepted description
for a whole class of products or services rather than for your product
or service in particular, your mark may become generic.
To avoid that fate, never use your trademark as a noun or a verb.
For example, a photocopy is not a "xerox," and the act
of making a photocopy is not "xeroxing." Instead, Xerox®
is a trademark of the Xerox Corporation. Xerox Corporation has
struggled for decades to prevent the company name from slipping
into genericism. If your brand is Widget™ (use capitalization and
the appropriate symbol) and you make bottle openers, do not EVER
refer to your product as a "widget" or its use as "widgeting."
Do not allow anyone else to do so either. Instead, insist on reference
to opening bottles with a Widget™ brand bottle opener.
While it may seem petty to insist on these distinctions, history
is full of examples of marks that became generic, such as aspirin,
dry ice, kerosene, nylon, thermos, and trampoline. If you fail
to "police" your mark, yours could be next. Use your
mark correctly, insist that others do so, and use your mark directly
on your product or in direct association with your service, not
just in advertising. If you have a trademark dispute and your adversary
claims that your mark is generic, the court will look at how well
you have "policed" your mark in judging that claim.
• What can
I do if someone else uses my mark?
If someone has without your permission used your valid mark, or
a mark so similar that it is likely to confuse customers as to the
source of goods or services, they have infringed your mark. The
legal bases for deciding whether a given mark is confusingly similar
to another mark are too complex to summarize here. Retain competent
The usual response involves at least one warning letter which,
if not heeded, is followed by a lawsuit. However, there are important
legal considerations in deciding when and how to issue even a warning,
let alone to file suit. A mistake can result in negative consequences
ranging from being sued in an unfavorable locality (yes, the infringer
might sue you) to losing your mark entirely. If your mark
is worth protecting, hire someone who knows how to protect it.