When you think about your business, what comes to mind? Perhaps it’s your unique product, the exceptional service you offer, or the loyal customers you’ve cultivated.
But what about that name you painstakingly chose, the logo that perfectly captures your brand’s essence, or the catchy slogan that sticks in everyone’s head?
In the United States, these valuable identifiers can be legally protected as trademarks.
Understanding what a trademark is, its purpose, and how it functions within the legal system is important for any business owner. Therefore, this guide will walk you through the essentials of trademarks in the USA.
What is a Trademark?
According to the U.S. Patent and Trademark Office (USPTO), a trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.
The key function of a trademark is to prevent consumer confusion in the marketplace. By providing a distinct signifier, trademarks help consumers easily recognize and rely on the quality and reputation associated with a particular brand.
The term “trademark” is often used as a general term, but it can specifically refer to:
- Trademarks: Used for goods (e.g., the name on a clothing label).
- Service Marks: Used for services (e.g., the name of a delivery service).
Essentially, a trademark (or service mark) identifies the source of your goods and services and provides legal protection for your brand.
Types of Trademarks in the US
There are different types of trademarks such as:
- Brand Names: The name of your business, product, or service (e.g., “Microsoft,” “Starbucks,” “Tesla”).
- Logos: Symbols or designs that visually represent your brand (e.g., the Twitter bird, the Target bullseye).
- Slogans/Taglines: Catchy phrases closely associated with your brand (e.g., L’Oréal’s “Because You’re Worth It.”).
- Sounds: Distinctive jingles or sounds (e.g., the Netflix “ta-dum” sound).
- Colors: In specific cases, a particular color can function as a trademark if it’s strongly identified with a brand for certain goods/services (e.g., UPS brown for delivery services).
- Product Packaging/Product Design (Trade Dress): The unique overall look and feel of a product’s packaging or the distinctive shape of the product itself, if it identifies the source (e.g., the unique shape of a Hershey’s Kiss).
What Makes a Name or Logo Trademarkable in the US?
Not every name or logo can be federally trademarked. The USPTO has specific criteria. Generally, for your mark to be registrable, it must be:
- Distinctive: It needs to be capable of identifying your goods/services and setting them apart from others.
- Generic terms (like “Software” for software products) cannot be trademarked.
- Merely descriptive terms (like “Creamy Ice Cream” for ice cream) are usually weak and difficult to register unless they have acquired “secondary meaning.” This means that through extensive use and marketing, consumers have come to associate that descriptive term specifically with your brand as the source.
- Suggestive, Fanciful, or Arbitrary marks are inherently distinctive and generally receive stronger protection.
- Not Likely to Cause Confusion: Your mark should not be so similar to an existing registered trademark (or a pending application for one) for related goods or services that it would likely confuse consumers about who is providing the product or service. This is a primary reason why conducting a thorough trademark search before filing is so critical.
The Difference Between Owning a Trademark vs. Having a Registered Trademark
Becoming a Trademark Owner (Common Law Rights)
You actually become a trademark owner as soon as you start using your trademark in commerce with your goods or services. This use establishes “common law” rights in your trademark. However, these rights are generally limited to the specific geographic area where you are using the mark and can be harder to enforce.
Registered Trademark (Federal Rights)
If you want stronger, nationwide rights and the significant legal benefits mentioned earlier, you’ll need to apply to register your trademark with the USPTO.
You are not legally required to register your trademark, but a federally registered trademark provides much broader rights and protections than an unregistered one. For example, if you sell handmade jewelry at a local market under a specific brand name, you have common law rights in that area. If you expand online and want nationwide protection, federal registration is the way to go.
Common Misconceptions About Trademarks
In our work helping businesses understand and protect their brands, we’ve noticed some common misunderstandings about trademarks that often arise. Clarifying these, as the USPTO also emphasizes, is key to using trademarks effectively.
1. Trademark means I own the word/phrase
Perhaps the most common misconception we have come across is trademark owners believing that they now own the word or that specific phrase. In reality, having a trademark doesn’t mean you legally own a particular word or phrase in general and can stop everyone from using it.
Your rights are specific to “how that word or phrase is used with your particular goods or services to identify you as the source”. For example, if “Pioneer” is your trademark for tents, you generally can’t stop someone from using “Pioneer” for unrelated financial services.
2. Descriptive marks are as effective as creative marks
The second misconception is believing that a trademark that merely describes your goods or services is effective. While it might seem intuitive, descriptive marks are often weak and hard to protect. Creative, unique, and distinctive trademarks are much more effective and easier to defend.
For instance, If you want to open an ice-cream shop, naming it “best ice-cream” would mean it would be hard to protect. However, in comparison, naming it “Scoopsicle” might be stronger and easy to protect protect.
How Long Does US Trademark Protection Last?
A federally registered US trademark can potentially last forever, as long as you continue to use the mark in commerce and file specific maintenance documents and pay fees at regular intervals.
- Initial Registration: Valid for 10 years.
- Maintenance:
- Between the 5th and 6th year after the registration date, you must file a Declaration of Use (and/or Excusable Nonuse) under Section 8.
- Between the 9th and 10th year after the registration date (and every 10 years thereafter), you must file a combined Declaration of Use (and/or Excusable Nonuse) and an Application for Renewal under Sections 8 and 9.
Failure to make these timely filings will result in the cancellation or expiration of your registration.
What Happens If Someone Copies Your US Trademark?
If you have a federally registered trademark and you find someone else using a mark in a way that is likely to cause confusion among consumers (infringement), your registration gives you strong legal tools to address it:
- Cease and Desist Letter: Often, the first step is to have an attorney send a formal letter to the infringing party, demanding they stop using the mark.
- Legal Action (Lawsuit): Your federal registration allows you to sue for trademark infringement in federal court. If successful, you may be able to obtain an injunction (a court order stopping their use), monetary damages (including potentially their profits, your actual damages, and sometimes attorney’s fees and statutory damages).
- U.S. Customs and Border Protection: You can record your registration with U.S. Customs to help prevent the importation of goods that infringe your trademark.
Having a registered trademark significantly strengthens your position when dealing with infringement. Without it, proving your rights and stopping others can be much more difficult and costly.
Want to take the next step in protecting your brand in the USA? Explore our services or contact us to learn how we can help.