What are Trademarks?
Trademarks are a kind of Intellectual Property (“IP”) that protect a business’s goods and services.
This includes protecting names, logos, and slogans
Trademark rights are obtained naturally. All you have to do is sell a good or service to obtain a “common law trademark”.
You can also register for a federal or state trademark.
Contact MILS
If you need additional assistance, please contact MILS at 231-947-0122.
What are the Requirements for Obtaining a Federal Trademark?
The mark must be distinctive, non-descriptive, and used in commerce.
Distinctive
Distinctive means that the mark must help a consumer identify the source of a good or service.
Your mark can be distinctive if it is a made-up word (like “Google”) or if it has acquired secondary meaning in the marketplace.
Secondary meaning is just another way of saying that the public has begun to associate a good or service with a particular source.
Non-Descriptive
Non-descriptive means that the mark does not describe the goods or service.
Even if your mark contains some descriptive elements, the mark can still be registered so long as it is distinct overall.
For example, “Swiffer Wet Jet” is a protected trademark. Even though the word “wet” is descriptive, the overall mark is still distinct.
Used in Commerce
Commercial use or used in commerce means that the mark is connected to the sale or transport of goods, or the giving of services.
What Rights Do Trademarks Give You?
Trademark rights allow you to prevent others from using a name or logo that is confusingly similar to your trademark. This includes preventing false advertising and trademark dilution. These rights are valid and do not expire as long as you can demonstrate commercial use
How do I Protect My Trademark?
Determine whether your mark qualifies for trademark protection.
A trademark must be distinctive, non-descriptive, and used in commerce.
Conduct a trademark search to find out if anyone is using your mark.
Visit the United States Patent and Trademark Office (USPTO)’s Trademark Database to conduct a search here.
Search for the term(s) you plan to use in your trademark.
Refine your search to view specific and relevant classes of goods.
Use different and unique spellings to look for similar marks.
Conduct a search for unregistered marks using an internet search engine, such as Google.
Look for any businesses, websites, etc. using a similar mark.
Pay extra attention to your geographic region and/or field of business.
Begin using your mark in commerce.
A trademark must be used in commerce to be protected.
Decide whether to register your trademark.
A trademark registered with the USPTO gives the holder the right to prevent others from using the mark in the United States. An unregistered trademark (sometimes referred to as a common law trademark) gives the holder rights in only a limited geographic area.
How to Register a Trademark
File a trademark application with the USPTO here.
Describe your trademark.
For a word mark (for example, a product name), provide the word(s).
For a design mark or a combination word/design mark (for example, a logo), provide a copy of the mark.
Describe the goods or services that your mark will be used in connection with.
Specify whether you use the mark in commerce or intend to do so.
Include a sample if you are currently using the mark in commerce.
Prosecute your trademark application with the USPTO.
Prosecution is the back-and-forth negotiation to determine whether your mark is distinctive, non-descriptive, and used in commerce.
This process typically takes about 11-18 months from filing to approval.
Maintain your trademark after it is filed.
Maintenance fees and a renewal application are due 10 years from issuance.
You must also provide proof that you are actually using the trademark to sell goods/services. In other words, one cannot simply “squat” on a trademark by registering it without actually using it. So, for example, if you have a business with a trademarked name and close the business, your trademark may lose its protection.
What to do if Someone is Using Your Mark
Determine where the infringing party is using your mark.
If your mark is unregistered, they must be using your mark in the same limited geographic location as you. For example, in the same city.
If your mark is registered with the USPTO, they must be using your mark in the United States.
Determine what goods and/or services the infringing party is using your mark in connection with.
If the goods and/or services are similar to yours, you may be able to prevent them from using your mark in connection with those goods and/or services.
If the goods and/or services are very different, you may not be able to prevent them from using your mark. This is because a customer’s likelihood of confusion is much less when the goods and/or services are different.
Consult an attorney to prepare a cease-and-desist letter.
A cease-and-desist letter can inform the infringing party that they are using your trademark in an unauthorized way. The letter will usually demand that they stop using your mark.
If the other person will not willing stop using your mark, then you may need to consider filing a lawsuit against them to enforce your mark.
What to do if Someone Accuses You of Using Their Mark
Determine whether they have a registered or unregistered trademark.
Conduct a search on the USPTO’s Trademark Database for a registered mark, and on Google for an unregistered mark.
If their trademark is unregistered, consider whether you are using the mark in the limited geographic area in which it is protected.
Stop using the other person’s mark as requested.
If the demand requests that you stop using the mark in connection with similar goods and/or services, consider complying with the demand and using the mark with only with unrelated goods and/or services.
If the demand requests that you stop using the mark in a certain and limited area, consider whether you can stop conducting business in that location.
Consider hiring an attorney to help you respond.
If you believe that you might be infringing on someone else’s trademark, and you do not want to comply with their demands, consider hiring an attorney to help you navigate the situation.
Frequently Asked Questions and Definitions
What is “trademark dilution”?
Trademark dilution happens when a very famous trademark becomes weaker because unauthorized people are using the same mark.
For example, Macintosh’s trademark might be diluted if someone started selling Macintosh purses. This would confuse purchasers, who might think that Macintosh is now rolling out a line of purses.
Macintosh’s trademark might also be diluted if someone started selling Macintosh cigarettes. This could affect the way people view Macintosh and could place the company in a bad light.
What is a “class of goods”?
When you register a trademark, you must indicate what class of goods you are using the mark in connection with.
Registration costs are based on the class of goods the mark is used with. This means that if you use your mark with two classes, you might pay $500 to register your mark. More information on trademark classes is located here.
What is “likelihood of confusion”?
To prevent others from using your mark in connection with a good and/or service, your goods and/or services must be so similar that a customer would be confused as to the source of the goods.
For example, although Dove beauty products and Dove chocolates both use the “Dove” trademark, the goods are not so similar that customers would be confused as to the source.
Do I need an attorney to file a trademark application?
Not necessarily, there is no legal requirement to use an attorney when applying for a trademark. But you might want an attorney to advise you on the likelihood of success of your application and to help you prepare the application materials.
Do I need to register my trademark?
Not necessarily, unregistered trademarks can also be protected once they are used in commerce. But registered trademarks have more benefits, like the right to bring a lawsuit concerning the mark in federal court. You can also benefit from a legal presumption that you own the mark and have a right to use it.
What are some examples of trademarks?
Nike’s “swoosh” and tagline “Just Do It” are both trademarks.
McDonald’s golden arches are a trademark.
The specific and unique way that the “Coca-Cola” name is written is a trademark.
The red sole of a Christian Louboutin shoe is a trademark.