What Is a Trademark?
According to 15 U.S.C. § 1127, a trademark is any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or vendor from the goods of other manufacturers or vendors. The most common example of trademarks are the brands and logos used by companies all over the world like the Nike swoosh, the Ford blue and white badge, or the Louis Vuitton LV monogram. These trademarks are meant to help customers identify a company’s products and prevent the company’s competitors from using the same, or a similar, mark to identify their products.
Trademarks do not give a company or a person the unlimited ownership of a word, phrase, or logo, but they do provide protection for the use of the mark in connection with a specific type, or “class,” of goods and services. For instance, trademarks may be filed for a class of goods, say t-shirts, which prevents others from using that mark on t-shirts (T-shirts fall under Class 25, Clothing). However, trademarks will not prevent others from using the mark on alcoholic beverages. To obtain protection for alcoholic beverages, our t-shirt entrepreneur must file an application for the alcoholic beverages class of goods (Class 33) in addition to t-shirts.
Types of Trademark Protection
Many people think that trademarks are the exclusive reserve of large companies with huge revenues and expensive lawyers. It is true that filing for protection at the state and federal level does have costs associated with it and lawyers will likely be involved. However, the truth is that anybody that creates and uses a brand, logo, or slogan in commerce has automatically established some protection.
There are varying levels of protection available depending on whether or not the mark is registered, and with whom. Common law trademarks provide a basic level of protection without requiring any action by the owner of the mark. State and federally registered trademarks provide stronger protection than common law trademarks but require additional time and expense to obtain.
Common Law Protection
Common law protection automatically applies to anyone who uses a mark in commerce in connection with the sale of goods or services. However, there are some limits to common law protection that make it weaker than state or federal registration. A common law trademark will only protect your goods and services in the geographic region in which you are providing those goods and services. Common law, or unregistered, trademarks are often identified by using “TM” for goods and “SM” which is used for service marks.
State Law Protection
Trademark protection under state law is stronger than common law protection, but is less effective than a federally registered trademark. To obtain state law protection, an entrepreneur or business owner must register the mark with the appropriate state agency, typically the Secretary of State. Once registered and approved, the state level trademark will provide protection within the state in which it is registered.
While state level trademarks do not provide the same, nationwide protection that a federal trademark does, there are some benefits to filing for state trademarks for certain industries. For instance, because cannabis is illegal at the federal level, the United States Patent and Trademark Office (the “USPTO”) will not issue trademarks for cannabis products and associated services. For cannabis businesses, sometimes the only available option to obtain trademark protection is through registering for state level trademark protection.
Federal Law Protection
Federally registered trademarks provide the greatest level of protection, but they also require the most time, effort, and expense to obtain. To obtain federal trademark protection, entrepreneurs and business owners must file an application with the USPTO. This process can take months and even years to complete and typically requires the assistance of an experienced attorney.
Unlike state and common law trademarks, a federal trademark provides nationwide protection and also creates the ability to file for international protection. This enhanced protection is relatively inexpensive, with applications costing either $250 or $350 per class of good to register. A federal trademark also allows the owner to use the registered trademark symbol, ®.
What Does a Trademark Do?
Trademarks give the owner the exclusive right to use the mark for the mark’s class of goods or services. In order to enforce the owner’s rights to use the mark, trademarks give the owner the right to prevent competitors from using the same, or a deceptively similar, mark by suing them in court. At a minimum, trademarks put consumers and competitors on notice that the mark in question is claimed by a business and subject to protection.
The main value in a trademark is that it excludes anyone else from using your mark to sell competitive goods. This gives entrepreneurs and business owners a means of fighting back against counterfeiters and unscrupulous businesses trying to take advantage of the popularity of the brand and product in question. Depending on what type of protection is in place, a business owner can sue somebody violating the trademark by suing in either state or federal court.
Why Should I Get a Trademark?
Beyond providing the ability to protect a brand or logo, trademarks signal to customers, competitors, and investors that you are serious about your brand and its associated intellectual property. Customers may infer from a trademark that a company takes its brand seriously and that its products are special. Investors will want to see that your company has thought about its intellectual property portfolio and is taking the necessary steps to protect it.
As previously mentioned, common law protection is available to anyone who uses a mark in commerce to identify goods or services. However, because they are unregistered, common law trademarks can be difficult and expensive to enforce. One of the key benefits of state or federal protection is that registering the trademark creates a public record of the mark and its ownership.
How Do I Get a Trademark?
The amount of time, effort, and expense associated with obtaining trademarks depends on which type of trademark you’re going after. Entrepreneurs and business owners should do a careful cost benefit analysis prior to undertaking any trademark project and consult with an experienced intellectual property attorney. This will help determine what type of trademark protection is most appropriate under the circumstances.
Common Law Trademark
As stated earlier, there is no filing or registration requirement to obtain a common law trademark. All an entrepreneur or business owner needs to do to obtain common law trademark protection is use the mark in commerce. While there are limits on the level of protection and difficulties in enforcing the trademark, a common law trademark may be more than sufficient for smaller businesses, especially ones that operate in a small geographic area.
State Trademark
To obtain state level trademark protection, an entrepreneur or business owner must file a trademark application with the appropriate state agency. The applicant must identify the word, phrase, picture, or combination thereof they are trying to protect along with the class of goods or services that the mark applies to. Once the application is submitted and applicable fees have been paid, the trademark will be approved and provide trademark protection throughout the state.
Federal Trademark
To obtain a federal trademark, the entrepreneur or business owner needs to file with the USPTO. The process is similar to the state level trademark application in that the applicant must identify the word, phrase, picture, or combination thereof they are trying to protect along with the class of goods or services that the mark applies to. Unlike the state level trademark application, a federal trademark application undergoes a thorough review by the USPTO to make sure that it doesn’t conflict with any pre-existing trademark registrations.
Because the federal trademark registration process is longer and more involved than the state registration process, it is highly recommended that an experienced intellectual property attorney be involved. A skilled attorney can help identify potentially conflicting trademarks at the outset of the registration process and can work with the USPTO throughout the review process to ensure that the trademark is finally issued. While you can work through the process on your own (the USPTO even provides a how-to guide), having an experienced attorney in your corner can smooth the application process and ensure that everything is filed and handled properly.
Conclusion
Trademark protection is something that every business should explore sooner or later. Today’s marketplace is driven by consumer brands and trademark protection can help ensure that your brand is protected against competitors and counterfeiters. There are many benefits to registering trademarks and the costs are relatively low compared to other forms of intellectual property protection and/or the cost of litigation. If you’re considering trademark protection for your business, contact us today to consult with an experienced intellectual property attorney straight away.
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