Trademarks are the symbols and names that we see every day that identify the origin of a product or service. We can be confident that Tesla Model S comes from Tesla, Inc. because of trademarks. Since the blacksmiths of the Roman Empire, trademarks have been used to make the link between goods and their source.
Trademarks allow consumers to make quick and safe purchasing decisions and allow trademark holders to build trust and goodwill in their brands, giving them value.
The federal and state governments have are interested in promoting commerce so they grant enhanced trademark rights through registration.
A Trademark Is a Symbol
Most trademarks consist of a word or words, a logo, or a combination of the two. With widespread public recognition, trademarks can also include product packaging, product shape, color, scent, or sound.
A Trademark Must Be Distinctive
Since trademarks act as an indicator of origin, they must be distinctive. A trademark can’t overlap another trademark in a way that’s likely to confuse customers. A trademark also can’t only describe the product since that only tells consumers what it is—not where it comes from.
Using APPLE for a smartphone case would, of course, run afoul of Apple’s trademark rights in the name and wouldn’t be distinctive. Using APPLE for a new airline might not infringe those rights since consumer confusion isn’t likely and thus might make it distinctive. Similarly, using Apple for a brand of apple cider would be descriptive and wouldn’t be distinctive.
If you Want a Trademark With Teeth, Federal Trademark Registration Is Essential
Common law rights in a trademark can come through regular commercial use, but those rights are limited. Registering a trademark with the United States Patent and Trademark Office (USPTO) provides a host of benefits. Examples:
(1) National rights as opposed to the regional rights given for common law use.
(2) Registered trademark holders can use the ® symbol indicating the registered status.
(3) Placement on the federal trademark register can discourage others from using similar trademarks.
(4) Blocking the registration of confusingly similar marks. Trademark examiners may find the registration and use it as a ground to reject an application that is too similar.
(5) Enabling the owner to pursue an infringement claim in federal court.
(6) Providing a basis for registration around the world.
(7) Enabling U.S. Customs to block or seize imports that are counterfeit or infringe the registered trademark.
Not Every Trademark Is Available
Prior to using a trademark or filing an application, we conduct a clearance search to make sure that a trademark is available. This minimizes the risk not only that an application would be rejected, but that the application would be liable for trademark infringement.
A clearance search can run from a very basic search of the USPTO register to a comprehensive search conducted by a third party that examines not only the USPTO, but domain names, business directories, state registries, and other sources. Searches may also include a legal opinion on the availability of the mark, which can be helpful in the event of a dispute.
A Trademark Must Be in Commercial Use
Before the USPTO will register your trademark, it must be in use in commerce. There’s no bright line test for the amount, and the Trademark Act only describes the requirement as: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
Single or infrequent shipments likely don’t qualify as use in commerce, nor does using the logo on a website without any sales. Using the logo on a website page where consumers can buy a product or service and have done so in more than a token amount likely is enough.
Whether a trademark is in commercial use is fact-specific and merits discussion with a trademark professional. Not claiming the correct status or correct date of first use can compromise your rights in the mark.
No Use? The Intent-to-use Application As An Alternative
For applicants that aren’t using a mark commercially but are taking steps in that direction, the USPTO allows for an intent-based trademark application.
The particulars of the application are the same as a use-based application with one distinction: once allowed, you’ll have 36 months to file proof of use, and you’ll pay fees every six months for the extension. As soon as you can show use in commerce, the application can be finalized, and the registration issued.
“Intent to use” (ITU) means a real, verifiable intent to use the mark commercially, as opposed to a long-term hope or effort to reserve rights in a mark before business preparation has taken place.
The Application Process
Applying for federal trademark registration in the U.S. is a multi-step process that typically takes 12-24 months.
(1) Several months after you file the application with an identification of the trademark and a description of the goods and services that will be sold under that mark, an examining attorney (EA) reviews the file. The wait time fluctuates with the USPTO’s workload and resources and right now you can expect to wait about nine months.
(2) If the EA finds a problem—e.g., a confusingly similar registration, a mark that is descriptive, an indefinite goods and services description—they will issue an office action. The office action will include an explanation for the refusal and give the applicant a chance to file a response within three months.
(3) If there are no issues, or after the applicant addresses the EA’s concerns, the application is allowed and then published for 30 days, during which interested parties (e.g., someone with a similar trademark) object.
(4) If there’s no public objection, a use-based application will register.
(5) An ITU applicant will have six months to file proof of use, with extensions totaling 30 months available.
Trademarks Last As Long As You Use Them
Federally registered trademarks last as long as you’re using the mark commercially and renew the registration on time. Proof of use (the Section 8 Declaration) has to be be filed within six years after registration, and a combined proof of use and renewal (Sections 8 and 15) every 10 years following registration. You’ll need to show proof of use with these filings.
U.S. trademark rights end at the border. However, most foreign countries will allow you to use your U.S. registration as a basis for filing trademark applications in that country. You have six months from your U.S. filing to file abroad. An international agreement called the Madrid Protocol is another option, providing a streamlined one-application approach to international filing but with some limitations.
If a company is using a mark commercially in a manner that is likely to cause confusion, deception, or mistake about the source of the goods or services, then that company is infringing the mark. The likelihood of confusion in the eyes of consumers is the baseline.