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Frequently Asked Questions
Over our years of trademark representation, we have compiled a list of the most frequently asked questions surrounding trademark law. See these questions compiled below.
What's the difference between a Trademark and Service Mark?
A trademark is a legal protection granted to a distinctive symbol, word, or phrase used to identify and distinguish goods in commerce, while a service mark serves the same purpose but specifically identifies and distinguishes services offered by a business. The main distinction lies in their respective applications: trademarks apply to goods, while service marks apply to services.
Also, trademarks submitted for registration on the Principal Register of the United States Patent and Trademark Office require different specimen types (i.e. evidence) to prove use than their service mark counterparts. You can learn more through our Guide to Properly Proving Use.
When do I use the "TM" symbol and when do I use the ®?
The "TM" symbol is used to indicate a claim of common-law rights in a trademark, showing that a mark is being used as a source identifier, while the circled "R" symbol (®) is used to signify a federally registered trademark, providing official notice of a registered trademark with the United States Patent and Trademark Office (USPTO) or the relevant trademark authority in other countries (see How Do I Protect My Trademark In Other Countries).
How do I protect my Trademark in other countries?
Similar to the United States you would first conduct a comprehensive trademark search in the target countries to ensure your mark is not already registered or in use by someone else. Next, file an international application: If you wish to protect your trademark in multiple countries, you can consider filing an international application through the Madrid System for the International Registration of Marks. This system allows you to seek protection in multiple countries by submitting a single application. Alternatively, you can file directly in specific countries: Alternatively, you can choose to file trademark applications directly in the countries where you want protection. Consult with local intellectual property attorneys or agents who are familiar with the laws and requirements of each country. Regardless of your path forward, consider local regulations and requirements: Be aware of the specific laws and regulations regarding trademarks in each country you wish to protect your mark. Some countries have different registration procedures, classes, or requirements that you need to fulfill.
What is the Madrid Protocol?
The Madrid Protocol is an international treaty that simplifies the process of registering trademarks in multiple countries. It allows trademark owners to submit a single application through their home country's trademark office to seek protection in multiple member countries, streamlining the filing and management of international trademark registrations.
What is the Supplemental Register?
The Supplemental Register is a secondary register maintained by the United States Patent and Trademark Office (USPTO) for trademarks that do not qualify for registration on the Principal Register but still have some level of distinctive character or potential protection. While it does not provide the same level of benefits as the Principal Register, registration on the Supplemental Register can offer limited trademark protection and some advantages in enforcement. (Learn more about the benefits of registering your trademark on the Supplemental Register here).
What is the Principal Register?
The Principal Register is the primary register maintained by the United States Patent and Trademark Office (USPTO) for trademarks that meet certain requirements and are deemed to have acquired distinctiveness. It provides the highest level of protection and benefits for registered trademarks, including nationwide constructive notice, the ability to bring legal actions in federal court, and the potential to obtain incontestable status after a certain period of continuous use.
Do I have to renew my trademark registration?
Within the fifth and sixth year following the registration date, trademark owners are required to file a Declaration of Continued Use or Excusable Nonuse under Section 8 of the Lanham Act. Additionally, they must submit an Application for Renewal under Section 9 of the Lanham Act. Failure to meet these requirements within the specified timeframe may result in the cancellation of the trademark registration.
What is a 'Famous' trademark?
A famous trademark is a mark that is widely recognized and enjoys a high level of public recognition and reputation. It typically goes beyond its specific goods or services and has achieved a significant degree of distinctiveness and consumer awareness. (Learn more about how a trademark becomes famous here).
What does 'acquired distinctiveness' mean?
Acquiring distinctiveness, also known as secondary meaning or acquired distinctiveness, refers to the process by which a descriptive or generic term that would not normally be eligible for trademark protection gains distinctiveness and becomes capable of functioning as a trademark. This occurs when the term develops a strong association with a specific source or origin in the minds of consumers through long and exclusive use, marketing efforts, consumer perception, and evidence of the mark's recognition in the relevant marketplace.
Do I have to register a trademark for it to be protected?
No, you don't have to register a trademark to have some level of protection for it in the United States. Trademark rights can be established through common law usage, meaning that simply using a mark in commerce can provide you with certain limited rights and protections. However, registering a trademark with the United States Patent and Trademark Office (USPTO) offers additional benefits and legal presumptions, such as nationwide notice of your claim, a legal presumption of ownership and validity, and the ability to bring a federal lawsuit for infringement. Registering a trademark provides stronger and more comprehensive protection compared to relying solely on common law rights.
What is a co-existence agreement?
A co-existence agreement in trademark law is a legally binding agreement between two parties who have similar or potentially conflicting trademarks, allowing them to peacefully coexist and use their respective marks without infringing on each other's rights. It typically defines the specific scope of use and geographic territories for each mark, ensuring that both parties can operate in their designated areas without causing confusion among consumers.
(Learn more about when to use a co-existence agreement here)
What is a consent agreement?
A consent agreement in trademark law is a formal agreement between two parties that have potentially conflicting trademarks, where one party gives explicit consent to the other party's use and registration of their mark. It is often used to overcome a likelihood of confusion objection during the trademark registration process by demonstrating that both parties are willing to coexist and that consumers are unlikely to be confused by the concurrent use of the marks. (Learn more about when to use a consent agreement here)
What is a letter of protest?
A letter of protest in trademark law is a written submission filed with the United States Patent and Trademark Office (USPTO) by a third party during the examination process of a trademark application. It is used to raise concerns or provide evidence regarding the registrability of a mark, such as prior similar marks, generic or descriptive nature of the mark, or potential confusion with existing trademarks, with the aim of influencing the examination outcome. (Learn more about when to file a letter of protest here)
What is a petition to cancel?
A petition to cancel in trademark law is a legal proceeding initiated by a party seeking to remove a registered trademark from the records of the United States Patent and Trademark Office (USPTO). It is typically filed when the petitioner believes that they have a valid basis to challenge the registration, such as prior rights, genericness, abandonment, fraud, or likelihood of confusion with their own mark. (Learn more about when to file a petition to cancel here)
What is a notice of opposition?
A notice of opposition in trademark law is a formal filing made by a party to oppose the registration of a trademark application with the United States Patent and Trademark Office (USPTO). It initiates a legal proceeding where the opposing party asserts grounds for why the trademark should not be registered, such as likelihood of confusion, dilution, or lack of distinctiveness. (Learn more about opposition proceedings here)
Who (or what) is the Trademark Trial and Appeal Board?
The Trademark Trial and Appeal Board (TTAB) is an administrative body within the United States Patent and Trademark Office (USPTO) that handles various proceedings related to trademarks. It is responsible for hearing and deciding disputes, including oppositions, cancellations, and appeals, providing a forum for resolution of trademark-related disputes outside of the federal court system.
What are the types of trademark infringement?
In the United States, there are generally two types of trademark infringement:
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Direct infringement: This occurs when someone uses a trademark that is identical or confusingly similar to a registered trademark without the permission of the trademark owner, in a way that may cause consumer confusion or dilution of the mark's distinctiveness.
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Contributory infringement: This refers to the act of knowingly facilitating or encouraging another party's direct trademark infringement. It typically involves providing assistance, products, or services that contribute to the infringing activities of another person or entity.
What are the remedies for direct trademark infringement?
The remedies for trademark infringement in the United States can include:
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Injunctive Relief: A court may issue an injunction, which is a court order that restrains the infringing party from further use of the trademark or engaging in activities that would likely cause confusion.
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Damages: The trademark owner may be awarded monetary damages, which can include actual damages (such as lost profits or damages suffered by the trademark owner) and, in some cases, statutory damages.
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Destruction or Disposal of Infringing Goods: The court may order the infringing goods to be seized, destroyed, or otherwise disposed of to prevent further infringement.
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Corrective Advertising: In some cases, a court may order the infringing party to undertake corrective advertising or take other actions to rectify any harm caused by the infringement.
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Attorney's Fees: In exceptional cases, where the infringement is deemed willful or malicious, the prevailing party may be awarded attorney's fees, which can help cover the costs of legal representation.
Can a trademark still register even if a similar one already has?
Two similar trademarks can potentially register on the USPTO Principal Register if they are used in connection with unrelated goods or services and there is no likelihood of confusion among consumers. However, if the marks are found to be confusingly similar and related to similar goods or services, registration for both may be refused to avoid consumer confusion.
What is the Trademark Modernization Act?
The Trademark Modernization Act (TMA) is a United States federal law enacted in 2020 that introduced various amendments to the Lanham Act, which governs trademark law. The TMA aims to streamline and improve the trademark registration process, enhance third-party participation in challenging registrations, and provide new mechanisms for addressing fraudulent or abandoned trademark applications.
What are the five types of trademarks?
1. Generic: A generic trademark in the United States is a term that has become the common name for a product or service and has lost its distinctiveness as a source identifier. It cannot be registered as a trademark because it fails to fulfill the primary function of trademarks, which is to distinguish the goods or services of one party from those of others.
2. Descriptive: A descriptive trademark in the United States is a term that directly describes a characteristic, quality, or feature of a product or service, rather than functioning as a distinctive source identifier. Descriptive marks may be eligible for trademark protection if they acquire distinctiveness through extensive and exclusive use in commerce. (See Question on Supplemental Register)
3. Suggestive: A suggestive trademark in the United States is a mark that hints or suggests something about the goods or services it represents, without directly describing them. It requires some level of imagination, thought, or interpretation by consumers to understand the connection between the mark and the product or service. One example of a suggestive trademark is "Netflix" for an online streaming service. The term "Netflix" suggests the concept of flicks (movies) and implies a connection to entertainment without directly describing the service itself.
4. Arbitrary: An arbitrary trademark in the United States is a mark that consists of a common word or phrase that has no inherent connection to the goods or services it represents. These marks are considered inherently distinctive and receive stronger trademark protection because their meaning is unrelated to the products or services they identify. An example of an arbitrary trademark is "Apple" for computers and electronic devices. The term "apple" has no direct connection to computers, but it is used as a distinctive and recognizable mark in the technology industry.
5. Fanciful: A fanciful trademark in the United States is a mark that is a coined or invented word with no existing meaning or association before its use as a trademark. These marks are highly distinctive and receive strong trademark protection as they have no connection to the goods or services they represent, making them inherently distinctive. An example of a fanciful trademark is "Kodak" for cameras and related products. The term "Kodak" was invented by the company and had no prior meaning or association before its use as a trademark.