What is a Trademark?

A trademark protects words, phrases, names, sounds, logos, symbols, designs, or a combination of these elements used to identify or distinguish the goods and services of one company or individual from that of another.

Trademarks should not be confused with copyrights. Copyright protects original artistic and literary works like music, books, art, poems, etc. Trademarks are associated with the goods or services in commerce. There are three types of trademark protection: common law trademarks, state registered trademarks, and federal registered trademarks.

What is a Common Law Trademark?

Common law trademarks exist as trademarks with limited protection through usage, or being used in commerce. These marks are not registered and are not governed by statute. Common law rights may allow the trademark user to challenge competing registered trademarks or the applications of such trademarks. Common law marks have limited protection in the geographic area where they are in use, similar to a state trademark. Because these marks are not registered, they contribute to the difficulty and high cost in performing a thorough search for competing marks as required for registering a state or federal mark.

What is a State Registered Trademark?

In Minnesota, state trademark registration is provided in Minnesota Statutes section 333.18 to 333.45. Federal trademark law supersedes state trademark law, so state trademark registration has virtually no practical benefit and federal trademark registration should be used instead.

What is a Federal Registered Trademark?

Registering a trademark federally with the United States Patent and Trademark Office (USPTO) will protect the mark throughout the entire United States. Businesses conducting interstate commerce (which is defined loosely) may find a federal trademark more useful than a state registered mark so to protect their trademark in any state their business operates in. Federal trademark registration can take 9-16 months and involves government filing fees and attorney fees (properly registering trademarks usually requires an experienced trademark attorney).

Federal trademark protection is retroactive to the filing date of the trademark application upon final approval and registration. In the event you have not begun, using your mark in commerce as required for final registration you may simply file an intent to use trademark application. This designation allows a business to ensure retroactive protection for a mark they will begin to use in the next two years. It simply requires submission of an amendment to the application once the mark is in actual use.

How Do I Register a Trademark?

The process for registering a trademark, which can be done by any person or business.

  1. Conduct a search for the same or similar marks to avoid infringing another’s mark
  2. Register the mark with the USPTO (trademark law is at the federal level, so it’s best to avoid state registrations)

Because of the complexity of searching for conflicting marks, particularly common law marks, an attorney should be used in conducting the search. For any trademark registration, a search must be conducted nationwide. This is to prevent future issues that could arise from a registered trademark conflicting with another trademark.

Who Wins If There Are Conflicting Marks?

Rights to a trademark can either be acquired by being first to use the mark or by being the first to register the mark. The United States allows protection of first to use because most marks starts as a common law mark. As the first user of a mark, the creator is afforded the opportunity to develop the mark. This applies to conflicting marks if the marks are on the federal level or the state level. Most countries outside of the US give rights to a particular mark to the first person to register a mark or “first to file.”

If there is an issue of conflicting marks the law generally considers who used the mark first and in what market the mark is used. If two trademarks are conflicting, each may continue to be used by the respective party only if the marks are used in different markets dealing with unrelated goods or services. If there are conflicting marks between state and federal levels, the Lanham Act provides that should a federal trademark which is used before the same or confusingly similar state trademark was registered, then the federal trademark will prevail. If the state trademark is registered before the federal trademark is first used, the state trademark may have the right to maintain use in the state where it is registered or used.

Trademark Symbols

Service Mark (SM) Symbol: The ℠ symbol is for a trademark that relates to services (not the sale of products or goods).

Trademark (TM) Symbol: The ™ symbol is used to claim any trademark, including an unregistered common law trademark. Registration is not required to use the ™ symbol.

Copyright ® Symbol: The ® symbol can only be used with valid United States federally registered trademarks. The federal registration process must first be successful to use this mark. The ® symbol cannot be used for state registered trademarks.

About the Author

Aaron Hall is a licensed trademark attorney who regularly represents business owners in trademark matters before the United States Patent and Trademark Office, state courts, federal courts, arbitration, and the World Intellectual Property Organization (WIPO).