Trademark Basics

What are the different types of marks that can be registered with the federal government?

There are many kinds of marks that you can register with the United States Patent and Trademark Office ("USPTO").  There are word marks; design marks; composite marks, which may be a word and a design; service marks; certification marks; collective marks

What is a 'trademark'?

A trademark protects the identification of the source of origin of goods and services.  So trademarks generally protect the name, design or logo of an owner of a particular good or service.  So for example, Nike has a  trademark on for the word Nike, in connection with their goods and services which are atheletic shoes and apparel.  However, Nike also has several additional trademark registrations for the word mark of "Nike" for other goods and services such as atheletic equipment.

What is a 'composite trademark'?

A composite trademark is a trademark which includes a word and a design together in one. So the scope of protection of the composite trademark, will be the totality of the mark.

What is a 'design trademark'?

A design mark is often thought of as a logo, or anything other than simple text. 

What is a 'service trademark'?

A service trademark can be either a word or design mark that covers services instead of goods. For REMAX has a service mark for its real estate services. 

What is a 'common law trademark'?

There are different levels of trademark protection and trademark rights. You don't necessarily have to file for a federal trademark in order to obtain trademark rights.  Common law trademarks are derived from simply using the mark in commerce within a particular geographical region.  However, your protection will be limited to that geographical region that you can prove use.  Although not always, "use" is determined by the amount of sales in connection with the trademark in a particular geographical regional.  Thus, the first (or senior use) of the trademark will have priority over any subsequent or junior use. 

What is a 'federal trademark'?

A federal trademark is obtained by filing an application with the United States Patent and Trademark Office.  Once the trademark is issued, the owner will obtain federal rights.  Generally, federal rights conveny nationwide protection of the trademark in connection with the goods and serviced filed with the application.  There are often competing and conflict rights between federal and common law rights that can lead to priority disputes.  However, obtain a federal application convey the strongest level of trademark protection.  If a federal application is granted into US registration, the registrant my place a 7 next to its trademark.  If the trademark owner only has common law rights, then they can only place a TM next to their trademark.

What is an 'trademark search'?

I always recommend that clients conduct  trademark search conducted by an experienced trademark attorney to interpret the results prior to adopting a trademark.  It's critical to make sure the name you adopt has not already be trademarked or is confusingly similar to an existing trademark registration or pending trademark application.  

Is it necessary to conduct a 'trademark search'?

An trademark search is not required, but it is highly recommended because if you proceed with a trademark without doing a search, you may fly under the radar for a period of time without any problems but in the future you may receive a cease and desist letter because you failed to conduct a search that would have revealed you are actually infringing another users trademark.  If you conduct a trademark search now, prior to adopting any mark, you save a lot of time, money and headache.

What happens when I apply for a trademark registration?

After filing for trademark application the USPTO will typically not do anything other than docket your application for the first 4-6 months after filing.  Around that time or thereafter your application will eventually get reviewed by a trademark examiner at the USPTO in which they will conduct an internal service to determine if the application you submited is confusingly similar to an existing registration or pending application.  Further, the examiner my issue an "Office Action" which is a rejection, as a result of several possible legal or formality grounds.  Alternatively, if your application was filed correctly and there is no likelihood of confusion, you may receive a notice of allowance.  

What are 'trademark markings'?

Trademark markings are the TM that you normally see next to a name, or the ‘R' with a circle around it. The TM indicates that someone is claiming common law trademark rights, but they do not have an issued federal registration yet. The R with the circle around it a means you have registered trademark, a Federal registered trademark.  If you place a 7 next to your trademark although you do not have a registered trademark, that may be deemed fraud against the USPTO.

What is a registered trademark's 'scope of protection'?

A registered trademark, which means it's been registered with the United States Patent and Trademark Office, conveys nationwide protection of that trademark, as opposed to a common law trademark which is limited to a geographical region.

Trademark Issues

Are there certain designs that are not eligible for registration as trademarks?

If you're seeking to get a registration on a design mark, which means simply a design or some kind of logo, the design cannot be confusingly similar to an existing registration or pending application. If the trademark examiner at the USPTO finds that there's an existing mark that's similar to yours, he may reject your design mark application.

Are there certain words that are not eligible for registration as trademarks?

Generally any kind of generic or descriptive word such as cars, food, clothing, or company cannot receive trademark protection.  Not all trademarks are created equally as some are considered to be stronger than others.  There is a hierachy of strongeths in trademark protection.  At the top are arbitrary and fanciful marks which are considered to be the strongest type of trademark.  An example would be Apple Computers (arbitrary because apples have nothing to do with computers) and Exxon (fanciful because this is a coined made up wordl).  Suggestive marks are also considered to be strong because they require a leap of the imagination to determine what they are refering to.  Jiffy Lube is an example of a suggestive mark.  Descriptive marks are the weakest and can only be trademark under certain circumstances.

What are 'generic' and 'descriptive' trademarks?

Generic marks cannot receive trademark protection. An example of a generic trademark would be Aspirin. Aspirin was originally a trademark many years ago, but through time people referred to asprin in the generic sense and did not refer to a particular brand.  Thus it became genericized overtime.  So everyone uses that term now, just like the term “automobiles” does not refer to a specific brand of car.  Therefore you cannot trademark certain terms that other people need to use. Descriptive terms describe something you're trying to do or what the goods or services are.  Descriptive marks do not receive trademark protection because it would be not fair to preclude others from using certain terms that are necessary to describe their goods and services.

How are the damages for trademark infringement determined?

There are different kinds of remedies for trademark infringement. The most common one is injunctive relief. An injunction typically stops the infringer from doing what they are doing, so if they are infringing upon your mark and you are granted an injunction from the judge, he will order them to stop using that trademark. The other kind of remedy available to trademark holders are damages. Damages are monetary relief, but you have to prove how you were damaged typically by proving your loss profits and the defendants profits.

How can I adopt a name for use as a trademark?

Trademark rights occur through use in commerce. You have to actually use the trademark in interstate commerce for federal right to accrue. There are different kinds of uses, whether it is common law or for federal purposes, you must  use the trademark in connection with certain goods and services for trademark rights to occur.

The questions and answers provided above is intended to provide only general information and does not constitute legal advice. You should not act or rely upon the information without seeking the advice of an attorney and receiving counsel based on your specific facts and circumstances. Many of the legal principles referenced are subject to exceptions and qualifications, which are not discussed in the answers. Furthermore, laws are subject to change and may vary by jurisdiction.