Common FAQs
Some of the most common frequently asked questions regarding trademarks
What is a trademark?
A trademark is a word, phrase, symbol, design or a combination of these that identifies and distinguishes the source of goods or services of one party from those of others. Meaning the product is coming from you and not from one of your competitors.
What can be trademarked?
Almost anything that distinguishes goods/services can be trademarked – words, slogans, logos, product shapes/packaging, colors, sounds, scents, etc. However, generic terms cannot be trademarked. See what can and cannot be trademarked.
What are the benefits of registering a trademark?
Registration provides exclusive nationwide rights to use the mark for the goods/services covered. It makes enforcement easier, acts as a deterrent to potential infringers, and is a valuable business asset.
Do I have to wait to file until I’m using my trademark?
No. It is absolutely possible to file a trademark application before you start using it, so long as you have an actual intention of using the trademark in commerce within the United States of America. The only consideration here is that you won’t actually get a trademark registration until you show use of your trademark.
What is the use requirement for trademarks?
In order to obtain and maintain a federal trademark registration, the trademark owner must actually use the trademark in commerce in connection with the goods or services identified in the registration. This means that the trademark must be used in a way that identifies and distinguishes the source of the goods or services from those of others in the marketplace.
What qualifies as “use in commerce”?
There are two types of use that qualify for the purpose of obtaining and maintaining a federal trademark registration:
1. Use in commerce: This refers to the use of the trademark in connection with the sale or transport of goods in commerce between states or between the U.S. and another country. It also includes use in connection with services rendered in commerce between states or between the U.S. and another country.
2. Intent to use: If the trademark owner has a bona fide intent to use the trademark in connection with the goods or services identified in the registration, they may file a trademark application based on that intent to use. However, they must provide proof of actual use of the trademark in commerce before the trademark registration can be granted.
What qualifies as acceptable proof of use in commerce?
To show proof of use in commerce the trademark owner must submit a specimen, which is a sample photograph of how the trademark is being used in connection with the goods or services identified in the registration.
For goods acceptable specimens must show the trademark as used in connection with the sale or transport of goods between states or between the U.S. and another country. This means that the trademark must be affixed to the goods themselves or to the packaging of the goods, or used in advertising materials that accompany the goods, such as labels, tags, brochures, or flyers. Additionally, a specimen may take the form of a website screenshot that shows the trademark being used in connection with the sale of goods, such as an e-commerce listing that displays an “add to cart” or “buy now” button next to the product image. The screenshot should clearly show the trademark as it appears on the website, and should also display the product name, price, and any other relevant information that would help identify the goods associated with the trademark.
For services, the use of the trademark in commerce must be in connection with the rendering of services in commerce between states or between the U.S. and another country. This means that the trademark must be used in advertising materials that promote the applied-for services or in communication with customers regarding the provision of the services. This can include websites, social media, and/or other marketing materials.
Do I need to do a trademark search before filing?
While not legally required, it is highly recommended to conduct a comprehensive trademark search before filing to avoid infringing on existing marks and wasting money.
How long does a trademark last?
In the U.S., a trademark registration can potentially last forever as long as it is renewed every 10 years and the mark is continuously used in commerce. Between the 9th and 10th year after registration, the trademark owner must file a renewal application and pay renewal fees to keep the registration alive for another 10-year term. If no renewal application is filed, the registration expires and the trademark rights will be canceled/abandoned.
In addition to the 10-year renewal, there are some other periodic filing requirements: Between the 5th and 6th year after registration, an Affidavit of Continued Use must be filed to show the trademark is still in commercial use. In some cases, further continued use filings may be required during the 6-year period after each renewal.
What is trademark infringement?
Trademark infringement occurs when an unauthorized party uses a mark that is confusingly similar to another’s registered mark on related goods/services.
What is the difference between a trademark, copyright, and patent?
Trademarks protect brand names and logos, copyrights protect original works of authorship, and patents protect inventions or discoveries.
What is the difference between a trademark, a wordmark, a logo, and a service mark?
Trademark: a trademark is a broad term referring to any recognizable sign, design, or expression used to identify and distinguish the goods or services of one seller or provider from those of others. It can include words, phrases, symbols, logos, designs, sounds, colors, or a combination thereof.
Wordmark: a wordmark, also known as a “word mark” or “standard character mark,” consists solely of words, letters, numbers, or any combination thereof, without any stylization or design elements. It typically represents the brand name or a specific word associated with a product or service. Examples include “Google,” “Coca-Cola,” or “Nike.”
Logo: a logo is a visual symbol or graphic representation used to identify a company, organization, product, or brand. Unlike a wordmark, a logo may include stylized text, imagery, shapes, or other design elements. Logos are often used in conjunction with wordmarks to create a distinctive brand identity. Examples include the Nike swoosh, the Apple logo, or the McDonald’s golden arches.
Service Mark: a service mark is similar to a trademark but is specifically used to identify and distinguish the services of one provider from those of others. While trademarks are associated with goods (tangible products), service marks are associated with services (intangible offerings). In practice, however, the term “trademark” is often used to refer to both trademarks and service marks.
What is the difference between generic, descriptive, suggestive and fanciful trademarks ?
The differences between generic, descriptive, suggestive, and fanciful trademarks relate to their degree of distinctiveness and protectability under trademark law. Here’s an explanation of each category:
Generic Trademarks: These are terms that merely identify the general type or class of goods/services. Generic terms can never be trademarked because they lack any distinctiveness. Examples: “Car” for automobiles, “Bank” for financial services.
Descriptive Trademarks: Descriptive marks merely describe an ingredient, quality, characteristic, function, feature or purpose of the goods/services. They are not inherently protectable unless they acquire “secondary meaning” distinctiveness in the minds of consumers over time. Examples: “World’s Best Pizza”, “Xtra Soft Tissues”.
Suggestive Trademarks: Suggestive marks suggest or hint at a product’s nature, qualities or attributes without directly describing them. Suggestive marks are inherently protectable as trademarks. Examples: “Coppertone” for suntan lotion, “Microsoft” for computer software.
Fanciful/Coined Trademarks: These are made-up words invented solely to function as a trademark. They are inherently distinctive and given the highest level of legal protection. Examples: “Kodak” for cameras, “Exxon” for petroleum products.
The distinctiveness and protectability increase as you go from generic to descriptive to suggestive to fanciful marks. Fanciful and suggestive are immediately registrable, while merely descriptive marks require acquiring secondary meaning to be protectable. Generic terms can never be trademarked.
This “spectrum of distinctiveness” is an important concept in trademark law for determining protectability and registration eligibility of potential trademarks.