What does a trademark protect?
A federal law known as the Lanham Act governs how trademarks are registered and protects owners of trademark registrations from other confusingly similar marks being used for similar goods or services. The Lanham Act defines a trademark as "any word, name, symbol, or device" used to identify goods or services and distinguish them from other competing goods or services. This can include:
- Brand names.
- Company names.
- Product or company logos.
- Slogans used in marketing and advertising.
- A particular design or layout used in product packaging, known as "trade dress."
These are also known simply as "marks." The Lanham Act uses the term "trademark" to refer to marks that identify products, and "service mark" for marks that identify services. "Trademark" can apply to both kinds of marks.
Using a mark in commerce automatically gives the owner certain rights under U.S. trademark law, even if the person has not registered it. These rights are known simply as "common law" rights because they do not depend on a registration. "Use in commerce" might mean placing the mark on products for sale, or using it in advertising.
However, a federal registration with the U.S. Patent and Trademark Office (USPTO) gives trademark owners additional rights that make this option attractive. These benefits include the following:
- The trademark is listed on the searchable USPTO database of registered and pending trademarks. This provides notice to potential competitors that you have claimed certain rights in the mark.
- You have the right to bring a trademark infringement lawsuit concerning the trademark in federal court. In a lawsuit, your registration proves your ownership of the mark, which may save significant legal expenses.
- There is a legal presumption that you own the trademark and have the right to use it.
- You can use your registration as a basis for filing for trademark protection in foreign countries.
- You may use the federal trademark registration symbol, ®. Prior to registration, or if you only assert common law rights, you can only use the "™" symbol.
A preliminary step in any trademark application is to show proof that you have actually used the mark in commerce, or show "a bona fide intent" to do so in the future.
Do I have to file a federal registration for trademark protection?
States have their own trademark laws and databases for registering trademarks with state agencies. However, a state trademark registration can only offer protection in the state where the goods or services are provided. Contrast that with a federal registration, which will protect your trademark throughout the entire U.S.
Whether a business should register a trademark at all, and whether it should do so at the state or federal level, depends on the size of the geographic area it serves. If your market is limited to the town where your business is located, state registration or no registration might work for you. If you operate in multiple states, or if you sell products nationwide or worldwide on the internet, a federal registration with the USPTO might be a good idea.
How is a trademark different from a copyright?
Trademarks and copyrights are similar in the sense that they both give a person the exclusive right to use the protected material in most situations. They differ in what kind of materials they protect.
As mentioned above, trademark law protects words, phrases, logos, and designs that identify a product or service. Using a mark in commerce is an important part of maintaining trademark protection. In fact, a person can lose trademark protection if they do not use it for a long enough period of time.
Copyright protects creative works, such as films, photographs, drawings, novels, poems, songs, or software code. The work must have some tangible form, either physical or digital. Ideas cannot, by themselves, be copyrighted. Unlike trademarks, a copyright owner does not have to use the copyrighted work to maintain protection. It is not necessary, for example, to publish a novel in order to maintain copyright protection for the novel.
Can I protect my trademark if another business used it first?
Trademark protection in the U.S. is based on first use of the mark, so the dates that the first user can prove they used the mark are critical. However, the geographic area and the type of product or service used with the mark can also make a difference in proving who owns the rights to a mark. It might be possible to register a particular mark for use with, say, athletic apparel, even after someone else has used the same or similar trademark for a completely different product or service, like tax preparation services. If someone has already used a mark, but their use is limited to a particular state or region, it might be possible to get trademark protection in a different area.
Can I stop a business from using a trademark that looks similar to mine?
Even if the two marks are not identical, it could still be trademark infringement if they are very similar to one another and provide similar or related goods or services. A mark cannot be so similar to an existing trademark that it is likely to cause confusion among consumers. The first step, once a trademark owner has learned about a similar mark being used in commerce, is to send a Cease and Desist Letter to the person using the similar mark asking them to stop using their mark. Additional steps can include entering into a co-existence agreement, where distinct areas of operation and types of use are carved out, or if further escalation is needed, the owner of the mark can file a trademark infringement lawsuit and ask a court to determine who has rights to the trademark for particular goods or services.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.