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Trademark FAQs

Practical answers to the most common trademark questions.

The information below is for general educational purposes only and does not constitute legal advice. Trademark issues generally turn on the facts and circumstances relevant to a particular situation. It is recommended that one seek the advice of a trademark attorney before making a decision about a trademark matter.

 

Trademark Basics

  1. What is a trademark?

A trademark is a word, symbol, or other distinguishing feature used in connection with the sale of goods or services, which serves to indicate to the public the source of those goods or services. A mark used in connection with services is often referred to as a "service mark." The Nike “swoosh,” “Google,” and “AIRBNB” are all examples of trademarks used with well-known goods and services.

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  1. What can I trademark?

The majority of trademarks consist either of (1) words, (2) symbols or logos, or (3) a combination of the two. But the way a product looks, a particular use of a color, and even the particular use of a sound can qualify for trademark protection given the right circumstances.

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  1. How do I get trademark protection?

Simple. Use the word, logo, or other mark in connection with lawful commercial activity. In other words, use it in a way that identifies your business to the public as the source of goods or services you provide. Common examples include using the mark with offers for the sale of a product or services, including the mark on a product, or plastering it on your SaaS or e-commerce website. As long as a business is using a mark, it can enjoy a number of rights in the trademark, assuming there are no prior users of the mark or a confusingly similar mark.

Formal registration is not required to obtain basic trademark rights. But federal registration offers a number of important benefits that can add significant value to a mark and enhance your ability to protect it, as explained more below.

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  1. Do I get trademark protection for my business name when I register my business with the state?

Not necessarily. Simply registering one’s LLC, corporation, D/B/A, or other entity alone doesn’t satisfy the “use” requirement for enjoying trademark rights. You have to use the business name in a way that identifies your business to potential customers as the source of the goods or services you offer.

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  1. Do I get trademark protection when I register a domain name?

Not necessarily. Simply registering a domain name alone doesn’t satisfy the “use” requirement for enjoying trademark rights. You have to use the domain name (or the mark that comprises the domain name) in a way that identifies goods or services to potential consumers.

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  1. How do I pick a brand name, product name, or business name that is eligible for trademark protection?

There are a number of factors that go into this decision. Obviously, the business and marketing value of the mark is a big driver. But from a legal standpoint, it is not always a simple question, because it depends heavily on the circumstances at hand.  For starters, let’s look at two important questions. First, is your proposed mark, or one confusingly similar to it, already being used in connection with goods or services similar to those you are offering or plan to offer? If so, it might be time to go back to the drawing board. Remember, trademark law rewards use, so a prior user of a mark generally enjoys trademark protection. There are some exceptions to this principal, such as where the prior user uses the mark in a very limited geographic region. In any instance, it’s good practice to do a trademark search before you make any branding decisions.

As to the second major question -- is your proposed mark “distinctive,” as opposed to merely describing or a generic label for the good or services you offer? For example, compare the use of “Apple” with computers, which is a rather random mark to use in connection with the sale of computer products, with something more descriptive like “Speedy Computers” or “Smart Phones”. The latter two would likely be deemed merely descriptive (or even generic) and thus not eligible for meaningful trademark protection.

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  1. Can I use the ® or ™ symbol with my trademark?

Once you start using a word mark or logo mark in connection with the identification of goods or services to potential customers, you can start using the “™” symbol affixed to the upper right part of your mark (like This™). But you cannot use the ® symbol unless you are granted a federal trademark registration.

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  1. I have a great idea for a brand name or logo, but I haven’t launched my business yet. Is there a way to protect it? I don’t want someone to steal my mark idea!

In a way. You can file an “intent to use” federal trademark application. This is discussed more below, but the general idea is that you file an application on a mark you intend to use, and if (1) the application is approved, and (2) you follow through and use the mark by a certain future date, you are entitled to federal registration protection from the date you filed the application. Generally, you have three years to start using the mark after the Trademark Office approves your mark for registration.

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Trademark Registration

  1. Should I seek federal trademark registration?

If you sell goods or provide services in more than one state or over the internet, it’s wise to seek federal trademark registration. Even though you obtain certain common law rights in a mark once you start using it in commerce, the benefits are less extensive than they are with a federal trademark registration. Federal trademark registration can be a vital part of helping you maximize the potential of your mark, and has become even more important with the rapid growth of internet commerce and mobile application use.

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  1. What are the benefits of federal trademark registration?

Federal registration offers a number of benefits. These benefits can help provide leverage when you are trying to ramp up branding efforts or license a mark, add value to your asset portfolio, and can create certain advantages if you ever have to sue over use of the mark. Some specific benefits include:

  • You are presumed to be the owner of a distinctive mark. A federal registration is deemed to be evidence that you are the owner of a distinctive mark for the goods and services identified in your registration. This is a big plus if you ever have to sue for trademark infringement.
  • You can use the “®” symbol. This lends a little more power behind putting others on notice of your trademark rights.
  • Incontestability after five years. If you use your mark continuously for the five years after registration, the mark reaches “incontestable” status. This makes it much harder for others to challenge your rights in and use of the mark.
  • International Reach. A federal registration can make it simpler to obtain trademark protection abroad, which is an important tool in today’s global marketplace. A federal registration can also be filed with U.S. Customs to assist with the blocking of imported goods that infringe on your mark.

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  1. When should I seek federal registration?

It depends, and often turns on business-driven factors. But it’s never too early starting planning for federal trademark registration, as trademark protection is an important consideration when selecting names for your business, brands, products, and web domain.

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  1. What’s an “intent to use” application?

An intent to use application allows you to file an application on a mark you intend to use, and if you follow through and use the mark in the future, you are entitled to federal registration protection from the date you filed the application. Generally, if the Trademark Office deems your intended mark eligible for registration, you have three years to start using the mark in commerce in order for the mark to become registered.

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  1. How long does the federal trademark registration process take?

It can depend on many factors, such as the number of objections to or questions about your application that the Trademark Office may have. But as a general rule, a successful application for a mark you already are using in commerce takes between 9-12 months to complete registration. If the Trademark Office issues an objection to your application, you generally have six months to provide a responsive argument, which lengthens the time to approval and registration.

For an intent to use application, the time to registration depends heavily on when you start using the mark. An intent-to-use applicant has 36 months to begin using the mark, starting from the date the Trademark Office allows the mark for registration. Otherwise, the application is deemed abandoned.

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  1. My friend filed a trademark application on his own. Do I really need an attorney to apply for federal trademark registration?

An attorney is not required to file a federal trademark application. Anyone can file an application online. And some studious applicants have even overcome objections raised by the Trademark Office or third parties with enough self-study and guidance of a knowledgeable friend.

But an experienced trademark attorney can be an invaluable resource, particularly in providing judgement on key matters. These can include whether your proposed mark may infringe the rights of others, crafting effective legal arguments to Trademark Office objections, and helping you strategize to meet your branding goals. An attorney experienced with trademarks can also help free your time and resources to focus on your business.

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  1. How long does a federal trademark registration last?

There is no expiration date – remember, trademark rights are based on use. So, if (1) you continue to use your mark in connection with the goods and services for which you applied and (2) file certain renewal papers and fees at statutory intervals, your federal registration will remain effective.

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  1. What is a “trademark search”?

A trademark search is a search performed to look for existing marks in use that are the same or similar to your proposed mark. The purpose of the search is to evaluate whether your proposed mark may infringe on the rights of an existing mark user. A quality search is not limited to already-registered marks, and includes searches of domain names, state trademark databases, relevant publications, and other sources.  It is the first step one should takes when starting trademark registration efforts. Ideally, a trademark search should be done before the launch of a business and the start of any new branding efforts.

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  1. How much does federal trademark registration cost?

For most trademark applications, the federal government requires a $225.00 filing fee for each class of goods and services you want to apply. Some applications may require slightly higher fees, especially those used in connection with unique or novel goods and services. For intent-to-use applications, you also must pay a $150.00 filing fee when you submit proof to the Trademark Office that you have started using the mark.

If you choose to retain the services of an attorney, attorney fees can vary given the experience of the attorney, the quality of the work, and the scope and depth of services provided. Responding to objections raised by the Trademark Office, responding to objections raised by third-parties, and the amount of time required to satisfy the use requirement for an intent-to-use application generally will incur additional attorney fees.

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  1. What about state trademark registrations?

State trademark registrations can be enforced only within the borders of the issuing state. With most businesses having at least an internet presence, the need for state registrations has been diminished. But because state registrations generally are much faster to obtain than a federal registration, they can play an important strategic role in states where local competition is threatening to infringe your mark.

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Trademark Disputes

  1. I think someone is using my trademark! Should I sue immediately?

Discovering that another company or individual is using your trademark is frustrating, to say the least. But it’s almost always best to step back, investigate the facts the best you can, and develop an effective strategy for addressing the infringement. Licensing and even collaborative efforts sometimes can lead to better outcomes than a lawsuit. But sometimes a lawsuit is the only option to protect a business’s brand and reputation. Often, the first step is sending a letter to the potential infringer asking them to stop infringing, although the content and tone of the letter can vary depending on the circumstances. An experienced trademark attorney can help guide you through your options.

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  1. I received a cease and desist letter accusing me of using someone’s trademark! What should I do?

Try to calmly assess the allegations in the cease-and-desist letter and take a thoughtful approach to your response. It is easy (and often justified) to get upset when one receives such a letter, especially if you don’t believe you’ve infringed the mark in question. But it’s important to take a level-headed approach to any response, both to to protect yourself and to leave open options for mutually-beneficial arrangements. An experienced trademark attorney can help guide you through your options.

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  1. How do I show someone is infringing my trademark?

The legal standard for proving trademark infringement is “likelihood of confusion.” The likelihood of confusion standard does not require that a competitor’s mark be identical; rather, the mark must be “confusingly similar” to yours in the eyes of the consuming public. There are several factors that determine whether a competitor’s mark is confusingly similar to yours. But at its core, the standard boils down to whether a consumer would incorrectly assume that both marks were affiliated with the same source of goods or services.

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  1. In what courts are trademark disputes heard?

The overwhelming majority number of trademark lawsuits are brought in federal court. The increasingly rare exception is for lawsuits involving marks that are limited in use to a single state and ineligible for federal registration; these lawsuits are brought in state courts under state unfair competition law.

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  1. What sort of relief can a court grant if it determines someone has infringed my trademark?

A court can issue an injunction ordering an infringer to stop using your mark. The court can also award monetary damages. In federal trademark lawsuits, monetary damages may consist of (1) an accounting of infringer’s profits related to infringing use of your mark; and (2) actual damages you suffered from the infringing use. If the infringer’s use was willful, a court may increase the amount of monetary damages. Each party generally pays for its own attorneys’ fees, except that a court may award a prevailing party fees in “exceptional” cases.

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  1. Someone registered a domain name that I think infringes my trademark. What can I do?

A common first step is to reach out to the owner of the domain name, if it can be determined, and try to work out an agreement. But often the owner of the domain is in a foreign country or simply cannot be reached. If one has a registered trademark, one can file a complaint under ICANN’s arbitration procedure and ask that the ownership of the domain name be transferred to the mark’s owner. This is a relatively quick and cost-effective process, especially where the infringing domain name owner fails to respond to a complaint. Federal cybersquatting law also provides a traditional lawsuit option where monetary damages may be an appropriate remedy.

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