Trademark Basics: Eleven Things You Should Know About Trademarks in the United States

This article answers eleven frequently asked questions about trademarks in the United States.

A trademark is a word, phrase, symbol, design, or combination of those, such as a brand name or a logo, which identifies goods or services. It is the way consumers recognize goods and services in the marketplace as distinguished from other goods and services. The term “trademark” includes both trademarks, which identify goods, and service marks, which identify services. A trademark is protected from use by others under the common law and, if registered, under federal law.

Strong trademarks include those that are fanciful, arbitrary, suggestive, and in some cases, descriptive.

• Fanciful trademarks are invented words, such as Kleenex® for facial tissue, Exxon® for gas stations, or Pepsi® for soda.
• Arbitrary trademarks are real words, but they are used in a manner unrelated to the goods or services they identify. The use of Apple® for computer products, Shell® for gasoline stations, or Vans® for shoes are all arbitrary trademarks.
• Suggestive trademarks are words that suggest the quality of the good or service without specifically identifying the good or service. Examples of suggestive trademarks are Coppertone® for tanning oil, Jaguar® for sleek, fast cars, and Nike® for running shoes.
• Descriptive trademarks are words or terms that merely describe the product or service. Descriptive trademarks often fail to distinguish the product or service from others when first used, but they may become distinctive through continual use over time. Examples of descriptive trademarks include Bank of America® (a bank located in America), American Airlines® (an airline located in America), and United Parcel Service® (a package delivery company).

Generic words or terms such as “ice cream” or “computer” do not constitute trademarks. Likewise, functional product features such as a conveyor belt shape cannot be trademarks.

As soon as a trademark is used in commerce to identify a source of goods or services, it is a common law trademark. There are no applications or filing fees, and no common law database or registry. ^TM is the symbol used to signify a common law trademark. ^SM is the symbol used to signify a common law service mark. However, the ability to protect a common law trademark from use by others (infringement) is limited. A common law trademark is enforceable only in the geographic area where it is actively used. The owner of the mark must also prove that it was the first to use the mark, that it has continuously used the mark in a specific geographic area, and that consumers recognize the mark. These elements can be difficult to prove.

An owner is not required to register a trademark with the United States Patent and Trademark Office (USPTO). However, trademarks registered with the USPTO on either its Principal Register or its Supplemental Register are entitled to more protection than common law trademarks.

The Principal Register is for trademarks that are “distinctive,” such as fanciful, arbitrary, and suggestive trademarks. Some descriptive trademarks may also become distinctive through use over time. 

Registration on the Principal Register provides a trademark with significant protection from infringement by others. For example, the owner of a trademark registered on the USPTO’s Principal Register may:

1. Use a federally registered trademark nationwide;
2. Use the symbol ® to put others on notice that the trademark is registered and legally protected;
3. Enforce the trademark in federal court;
4. Enjoy a presumption of ownership and validity of the trademark;
5. Appear on the USPTO’s public record system to alert others that the trademark is in use;
6. Prohibit the same or similar trademark from being registered by the USPTO;
7. Seek additional types of infringement damages in a lawsuit;
8. Record the registration with U.S. Customs to prevent infringing goods from being imported into the United States;
9. Use the registered trademark as a basis for obtaining international trademark protection; and
10. Access International Trade Commission proceedings to assist with stopping and destroying imported goods infringing on the trademark.

In addition, after five years of ongoing, continuous use, the trademark owner’s rights may become “incontestable” if certain conditions are met, providing even more protection against trademark infringement

As discussed above, descriptive trademarks are often too weak to be listed on the Principal Register because they are not inherently distinctive. Descriptive trademarks may be listed on the Supplemental Register if they are used in commerce. Registration on the Supplemental Register provides a trademark with some important protection from infringement by others. For example, the owner of a trademark registered on the USPTO’s Supplemental Register may:

1. Use a federally registered trademark nationwide;
2. Use the symbol ® to put others on notice that the trademark is registered and legally protected;
3. Enforce the trademark in federal court;
4. Appear on the USPTO’s public record system to alert others that the trademark is in use; and
5. Prohibit the same or similar trademark from being registered by the USPTO.

As the trademark becomes stronger and more recognizable through ongoing, continuous use over time, it may become eligible to be moved to the Principal Register, which offers more protection than does the Supplemental Register.

To list a trademark on the Principal Register or the Supplemental Register, the owner must file an application with the USPTO, following these steps:

1. Determine if your trademark is registrable. Not every trademark can be registered. Therefore, it is necessary to first identify what type of mark you are using, whether it is distinctive, whether to apply for registration on the Principal Register or the Supplemental Register, and to search the federal trademark database to determine if the mark, or a substantially similar mark, is already in use by someone else.
2. Hire a lawyer. An attorney licensed to practice law in the United States is required if the owner of the mark resides or is headquartered outside the United States or its territories. An attorney is not required if the owner of the mark lives or is headquartered in the United States or its territories. However, the USPTO strongly encourages applicants to hire a U.S.-licensed attorney who specializes in trademark law to guide them through the application process.[1]
3. Create a USPTO.gov account. To access, complete, and submit a trademark application, you must create a USPTO.gov account.
4. Prepare and submit a USPTO trademark application. As discussed in more detail below, the applicant will need to gather all information necessary to complete a trademark application and submit it to the USPTO.
5. Monitor the application status. Applicants are responsible for checking the status of the application and watching for communications from and deadlines set by the USPTO after the application is submitted.
6. Work with the USPTO examining attorney. A USPTO attorney will examine the application to determine if it complies with all applicable rules and statutes and includes all required fees. The examining attorney will also search the USPTO database for conflicting trademarks and examine the drawing of the trademark and any specimen (discussed below). The examining attorney may also request additional information or pose questions for the applicant to answer.
7. Application approval or denial. Once the examination process is complete, the applicant will be notified whether the trademark has been approved or denied for publication on the applicable register. If the trademark is approved for publication, it is published in the USPTO’s Trademark Official Gazette. This starts a 30-day period in which any member of the public may oppose the registration of the trademark by filing a Notice of Opposition.
8. Notice of Opposition. If a Notice of Opposition is filed, the Trademark Trial and Appeal Board will hear the matter and determine whether to go ahead and register the trademark.
9. Registration. If no one files a Notice of Opposition during the 30-day period and the applicant has already used the trademark in commerce, then the trademark will register. This process can take several months. If, however, the trademark has not yet been used in commerce, the applicant must submit a Statement of Use, which includes a specimen, by the deadline set by the USPTO. Once an acceptable Statement of Use is filed, the trademark will be registered.

For more information about the application process, visit: https://www.upsto.gov/trademarks/basics/trademark-process#step1 

A trademark registration applicant will be required to provide the following information to the USPTO using forms and the electronic filing portal accessible through the USPTO’s website:

1. The applicant’s full legal name;
2. The applicant’s address;
3. The applicant’s legal entity;
4. The citizenship of each individual applicant or the state or county of incorporation of each entity applying for the trademark;
5. A drawing, specimen, and description of the trademark;
6. A list of goods and services identified by the trademark;
7. Whether the application is for a “use-in-commerce” trademark or an “intent-to-use-in-commerce” trademark;
8. Filing Fee; and
9. A verified statement signed by the applicant, attesting to the accuracy of the information provided and, if required, the dates of first use of the trademark.

A “specimen” is a photograph, scanned copy, screen capture, or printout of the trademark as presently used in commerce with existing goods or services in a way that directly associates the trademark with the goods or services. For example, an applicant selling goods might submit a photograph of the good showing the trademark on its product or packaging. An applicant selling services might submit a photograph of a business sign showing the trademark advertising the service. One specimen is required for each class of goods or services in the application.

If the trademark is already in use in commerce, the applicant must provide the USPTO with both of the following dates of “first use”:

1. A date of first use anywhere. This is the date the applicant first sold the goods and/or services in the application using the trademark; and
2. A date of first use in commerce. This is the date the applicant first used the trademark in interstate commerce in connection with the goods and/or services in the application (for example, the date the goods were first sold or transported in commerce across a state line). 

The date of first use anywhere will always be earlier than or the same as the date of first use in commerce.

According to the USPTO, the federal registration process takes approximately twelve to eighteen months.[2]

Owners of registered trademarks must renew their registration every five years to keep a trademark active and eligible for federal trademark protection.

Our Intellectual Property Group assists clients with all aspects of patents, trademarks, trade secrets, and copyrights.

[1] https://www.uspto.gov/trademarks/basics/trademark-process#step2

[2] https://www.uspto.gov/trademarks/basics/how-long-does-it-take-register