Updated: 5/17/2018

The question people most frequently ask about trademarks is, naturally: “what is a trademark?” Business owners in particular should understand what a trademark covers. They’re the ones who can benefit most from trademark protection.

We can broadly define trademark with a simple sentence, but the concept of trademark goes much deeper. Business owners are best served by understanding not only the what, but the how and why of trademarks. The use and misuse of trademarks can affect a business’s present and future.

Definition of a trademark

The soundbite definition of trademark: any word, phrase, name, logo, slogan, symbol or design that serves to distinguish the products or services of one business from those of another business.

The key here is the word distinguish. If the word, phrase, name, logo, slogan, symbol, or design that you choose does not distinguish your products or services from those of your competitors, then it is not a trademark.

For example, one of the world’s most famous trademarks are those of Nike. The word Nike, the swoosh symbol, and the phrase “Just Do It” are used by Nike to distinguish their products from those of competitors, such as New Balance and Adidas.

Why get a trademark?

See the main article: What are the benefits of trademark registration?

Once you own a trademark on a name, logo or slogan, competitors cannot legally use that mark on their own products or services. You retain exclusive rights to use that trademarked name, logo, or slogan.

Extending the above example, if Adidas started a new line of shoes using Nike’s swoosh logo, they would be in violation of Nike’s trademark rights. Nike could then sue Adidas for trademark infringement.

If you want to be able to brand your products or services with a specific name, logo or slogan, and if you want to prevent competitors and other businesses from also using the same name, logo or slogan, then you would want to get a trademark.

What is a service mark?

See the main article: Trademark or Service Mark: What’s the Difference?

If trademarks are used to distinguish products, can businesses that offer no tangible products register for one?

A service mark is used to distinguish or brand services and service businesses. Trademarks and service marks are indeed very similar, and offer essentially the same protections under the law.

As an example, Midas provides mechanical service to automobiles, so their slogan, “Trust the Midas Touch,” is a service mark rather than a trademark. While this application might seem clear enough, the differences between trademarks and service marks can become confusing.

Though it sells tangible products in its stores, Walmart is actually a service mark, since it provides retail store services. The products it sells inside stores would fall under trademark. If Walmart sells products under its own brand, it would also become a trademark.

The processes for obtaining service marks and trademarks are essentially the same. Both involve searching to ensure that the mark isn’t already in use, filing the appropriate paperwork, and proving use in commerce.

When do you need a trademark?

See the main article: When Do I Need a Trademark?

In order to conduct business, most states requires that companies register a trade name with the proper authorities. While this filing grants a business certain rights, it does not bestow any advantages of trademark ownership.

Not every business name requires a trademark. Small, local businesses in less competitive markets may not need to register their names as trademarks. The chances of a competitor mimicking or copying the name of the business are low.

Any business operating interstate or nationwide should certainly consider the benefits of trademark registration. This goes especially for a company’s product names and logos, which can be easily duplicated absent a trademark registration.

Even if The Smith Corporation hasn’t trademarked its name, it stands to benefit from registering the name of its hit product. Otherwise, competitors can seize on that popularity for its own gains, to the detriment of The Smith Corporation.

How long does a trademark last?

See the main article: How Long Does a Trademark Last?

Handled properly, your trademark can potentially last forever. As long as you actively use it in commerce, and you file the proper paperwork to maintain your trademark registration, the government will recognize your trademark in perpetuity.

Neglecting the necessary processes can mean losing the rights to your trademark.

After the five-year anniversary of your trademark registration, but before the six-year anniversary, you must file a Section 8 Declaration of Continued Use. For example, if you obtained your trademark registration on February 1, 2013, you would have to file a Section 8 Declaration after February 1, 2018, but before February 1, 2019.

The next form comes four years later, after your nine-year anniversary but before the 10-year mark. This form is the Combined Section 8 Declaration and Section 9 Application for Renewal. The business above would file this after February 1, 2022, but before February 1, 2023.

A new Combined Section 8 Declaration and Section 9 Application Renewal is required every 10 years thereafter. For the above, one would be due after February 1, 2032, February 1, 2042, and onward.

Failure to file these forms allows the government to cancel your trademark registration.

What is the difference between trademark and copyright?

See main article: How is trademark different from copyright?

The terms copyright and trademark are often used interchangeably by the general public, but they are distinct and unrelated. Each services a unique purpose, protecting different assets.

Trademarks, as described above, protect names, logos, and slogans that businesses use to identify and distinguish themselves or their products. Owning a trademark allows the owner to prevent competitors from using the trademarked name or logo.

Copyright protects the content of original creative works. Books, films, television shows, and paintings are prominent examples of copyrightable works.

Owning a copyright grants the owner control over how the creative work is used and reproduced. If an unauthorized party were to reproduce a copyrighted work in part or in whole, the owner could sue for copyright infringement.

A logo can actually be both trademarked and copyrighted, since it both identifies and distinguishes a business, and represents an original creative work.

The differences between a trademark and a trade name

See the main article: What Is the Difference Between a Trade Name and a Trademark?

Every business has a trade name: the name under which they conduct business. For many businesses a trade name, which is typically registered with state or county officials, can suffice by itself. But unless they also file for trademark protection, their brand can be vulnerable to copycats.

Only a registered trademark can protect a business against others who want to use the same, or a similar, name on products and services.

What do trademark registration symbols mean?

See the main article: The 3 Trademark Registration Symbols and What They Mean

registered trademark symbol trademark symbol service mark symbol

The ® symbol represents a federal trademark registration. Only businesses that have acquired a federal trademark registration can use this symbol in conjunction with their trademark, though its use is optional.

The ™ symbol is used by businesses that wish to claim trademark rights to a name, phrase, or logo. It grants no additional legal rights to the user. In fact, the user need not have even applied for a federal trademark registration when using this symbol.

The ℠ symbol also grants no additional legal rights to the user. It applies to service marks, the protection of a service business rather than a product.

How to obtain federal trademark rights

See the main article: How To Obtain Federal Trademark Rights

This short video lays out the basics of the federal trademark registration process.

The process of registering a trademark with the United States Patent and Trademark Office involves two main steps.

1. Conduct a comprehensive search. Before you apply for a trademark, it is imperative that you conduct a search to see if anyone else has claimed the rights to that mark, or to a mark that could be considered “confusingly similar.” The USPTO will not accept an application for a mark that is the same as, or considerably similar to, a prior-existing trademark.

2. File the trademark application. After you’ve picked a non-infringing name, logo or slogan, you can file a trademark application online with the USPTO. This application involves many requirements, including the identification of the appropriate class of the goods or services the trademark will cover. You’ll also have to either show that you are currently using the mark, or declare that you intend to use the mark in the near future.

If chosen and filed correctly, the USPTO should approve your trademark application and issue you a certificate of registration. Congratulations. You now have the exclusive rights within the U.S. to use the name, logo, or phrase you trademarked.

Trademark attorney Xavier Morales

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