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.
- Conduct a search for the same or similar marks to avoid infringing another’s mark
- 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).
Video Transcript
If you’re like most business owners, you’re wondering: should I get a trademark for my logo, for my business name, or for my brands or program names? How does trademarking work? What’s the difference between federal and state trademark? What is the cost associated with trademark? Can I get a trademark for products and services, or just one or the other? I’m Aaron Hall. I’ll address these questions today.
What is a trademark? A trademark is a mark. It could be a symbol, it could be a word that is associated with the source of goods or services. So I’ve addressed that final question already: a trademark can relate to services, in which case it’s often called a service mark, or it can relate to goods or products, in which case it’s called a trademark. And trademark is generally used for services as well.
Now, how do you get a trademark? There are three ways. Common law trademark is when you use your mark in commerce in a county. So maybe that’s Hennepin County, Minnesota; Anoka County; Sherburne County; Washington County; Ramsey County. Wherever you actually have sales or significant advertising, you have established common law trademark rights. But what if you want a larger area? Well, under federal law, which preempts state law, you can get a federal trademark registration. That gives you protection nationwide, not just in the county where you’ve operated. You have one third option, and that is a state trademark registration. Now, my advice is don’t waste your time with this. Federal trademark law trumps state trademark law, so you’re essentially wasting money if you do a state trademark registration. You really want to lock in either your common law rights, which you acquire simply by using the mark in commerce, or do a federal trademark registration application.
Okay, so what can you protect? You can protect a standard set of characters in word. So let’s say that is Apple computer. You could protect that. You could protect the font and color of that. That’s called a design mark. So we talked about standard character mark, that’s just the letters. A design mark is letters with a font or color associated with them. And then you could have something that is just entirely a design, so there aren’t any letters associated with it. That might be the Apple for Apple computer, or the swoosh for Nike. You can do all those, and the strongest of them is going to be the standard character mark, because it doesn’t matter what color it’s used in or what font it’s used in, you can’t use those words.
Now, how different does something need to be in order to be infringing versus not infringing? Let me give you an example. We have Apple Computer. Well, what if you, we had Apple technology? Is that too similar? Here’s the question: is it confusingly similar? Would a jury, so just average United States citizens, believe that the two names are somehow related, or maybe confusingly associated? And the reason I say related is because there’s another legal doctrine that’s similar to trademark infringement, and it’s called trademark dilution. For simple terms, though, all we have to worry about here is, would the public be confused? Would they say it’s odd, it’s confusingly similar, maybe they’re related?
Now if you have Macintosh onions, someone might think that’s related to Macintosh apples, but they’re probably not going to think it’s related to Macintosh computer. So in other words, you can see it matters what industry is it in. And when you’re looking at how similar is it to a company, how big is that company? For example, Mercedes is so big that if you start using the word Mercedes on any product, you’re probably going to have a problem. But if you pick some random little product that nobody has really ever heard of, you could use that word associated with fruit, or maybe, you know, let’s say that’s on a sporting goods, you might be able to use it on some computer technology because they’re so different. So is it confusingly similar, or is it very different? And you might think, oh, I know, how do you decide this? Legal definition, it’s given to a jury or a finder of fact. And so what that means is it’s typically average people saying, do I find that similar or not?
So how long does it take to get a federal trademark registration? Typically about a year. There’s this whole process the federal government goes through after your application has been submitted, the applicant. The process includes publishing it, giving a chance for people to dispute it, and then finally approving it.
Now if there’s a dispute, or if the trademark office says no, we’re not going to allow this, then what’s called an office action is created. The federal trademark office says we’re initiating an office action. You can either respond to this to our satisfaction and work out whatever the issue is, or your application will be denied. Yeah, and there’s no problem, you can let the application be denied. You just, you don’t get the protection you would have otherwise got, and it’s like letting your application, or it’s as if you had never filed the application. So takes about a year.
How much does it cost? Typically there’s a filing fee of a few hundred dollars, and attorney’s fees, you’re typically looking at about a thousand dollars for the trademark application process. If you do a trademark search, an opinion letter, you’re probably looking at additional thousand dollars. It’s not always necessary. If you are trying to protect the mark in multiple industries or classes, they’re called international classes, there’s going to be extra fees associated with that, extra filing fees and extra attorney’s fees.
If you’re doing multiple marks at the same time, like maybe you have the word Nike, and then you have in standard characters, and then you have the word Nike in stylized mark, so its colors and fonts, and then you have the swoosh there, you’re talking about three registration applications. So typically you’re going to pay a filing, or a fee, on the first one, and probably get a bulk discount on the second and third.
What if you’re doing a common law trademark? There’s no registration required. You get that trademark right as soon as you start using your mark in commerce. Now, of course, that’s not as strong protection. There are significant additional benefits by doing a federal trademark registration. But at least you can see this is kind of how it works.
So as a business owner, you’re wondering: should I do a federal trademark registration, or should I just rely on the common law trademark rights? I think it really depends on, first, what is the brand value you’re trying to build. And then second, geographically, do you plan to expand in the future? And then I think third, how valuable is that intellectual property? If it’s a multi-million dollar business, it’s a no-brainer, spend the money, get a trademark. If it’s a lawn mowing business and you’re making $500 each per summer, don’t, don’t spend the money on it. So you see the idea there.
Now, are there things that you can’t trademark? Absolutely. You can’t trademark generic words, because essentially what you’re doing is you’re getting a monopoly on that word, and nobody else can use that word associated with the same class of goods or services. So you can’t have the word, for example, cheap plumber. You can’t be the cheap plumber, because then no other plumber can say I’m a cheap plumber, because you’d say, uh-uh, trademark infringement, I own cheap plumber. That’s why a generic word or descriptive word is not typically protectable.
However, you might say, well, what about Edina Realty? That’s a real estate company located in Edina, Minnesota. That’s descriptive: Edina Realty. Well, there’s an exception in the law for if you’ve been using a descriptive mark, in this case it’s a geographically descriptive mark, Edina Realty, Edina Minnesota, and a Realty company there. If you’ve been using that for an extended period of time and you can demonstrate to the US Patent and Trademark Office that people associate that word with you, not generally with others in the area like other realty companies or real estate companies in Edina, then you’re entitled to getting trademark protection. So there’s a process that you need to go through to demonstrate that you’ve been doing this for years and people generally think of you when the word Edina Realty, for example, is mentioned.
Here’s one of the problem that comes up. I had a client one time who created a comic book hero, and the name that was used was like something man. Now, I’m not gonna say what it is because it’s a client, but we’ll call it raccoon man, okay, just, I’m making that up. Well, a company that had raccoons as its like branding mascot in the detergent and soap and cleaning space said that this raccoon man comic-book hero was infringing on their mark. Ridiculous. But I looked it up and I found that this company continually challenges it. I told my client, we are highly likely to win this because that is a whole different industry, but it’s gonna take some attorney time to write up a legal response and put together our arguments and provide some case law to support our arguments. And then the US Patent and Trademark Office will make a decision on that. If they don’t rule in our favor, we’ll have to do another appeal. That’s gonna be more expensive. I’m happy to do that. And you know what, this author who is creating comic books, he said it’s not worth it, I’ll change the name.
So you will find many times there are what I would call frivolous disputes over a trademark registration application, and you then, as a business owner, have to decide, am I gonna fight it or am I gonna drop it? And this comes up with surprising regularity. I’d say about one of every 20 applications that I file, I’ll see what I think is a pretty frivolous issue, and then we have to decide, are we going to dispute it and go through that office action process with the US Patent and Trademark Office?
So there you have it. These are some common questions that I get around trademark from the perspective of a business owner. What do you need to know to decide whether trademark is right for you? Obviously this is education material. This is not a replacement for meeting with an attorney, but it at least gives you a framework to better understand the issues at play, to help spot questions and topics to discuss with your attorney. I’m Aaron Hall. I’m a business attorney in Minneapolis, Minnesota.
