Trademarks

What should I consider when choosing a mark?

The first thing to consider when choosing a mark is whether it could be confused with any others. A trademark registration will likely be denied if the mark is confusingly similar to an existing trademark AND the goods/services they identify are related.

When goods and/or services are similar and the mark seeking registration is also similar in at least one of four other ways, a likelihood of confusion will exist and the application will be rejected. The four ways in which the mark can be found to be similar are:

• Sound. If you want to trademark your business name, Sea Knot, but the trademark See Not already exists, a likelihood of confusion could exist on the basis of sound.
• Appearance. What if Sea Knot already exists, but the logo uses a basic serif font and your logo uses a cursive script? Sorry, but the marks may look too similar even though the fonts are different.
• Meaning. If Sea Knot is available but the Spanish translation, Nudo de Mar, is already trademarked, your application may be denied because the names have the same meaning.
• Commercial Impression. If Ocean Knot has already been trademarked, Sea Knot will likely be denied because the two names produce the same mental associations.

Relatedness of goods and/or services is key when determining if marks are confusingly similar. For example, if your Sea Knot business sells ocean fishing gear, and See Not sells eye wear, you’re likely in the clear because the businesses offer totally different goods. But, goods/services do not have to be identical in order for their relatedness to result in a likelihood of confusion. If Sea Knot sells ocean fishing gear, and See Not offers guided ocean fishing expeditions, you might be in trouble because the goods/services have too much in common.

Are some marks stronger than others?

Yes. If your mark is overly generic or descriptive, it will be harder to prove trademark infringement. The strongest marks are often fanciful, arbitrary, or suggestive.

Keep in mind that only phrases or symbols currently (or soon-to-be) used in commerce can be trademarked. And, the name must be unique and distinct—so it is unlikely you will be able to trademark your personal name, or your locally famous “Chocolate Chip Cookies.”

While generic marks might make sense from a marketing standpoint—a vacuum repair business named “Vacuum Repair Shop” tells the consumer exactly what’s offered—they also aren’t unique enough to protect with trademark rights. A bar named Vacuum Repair Shop, on the other hand, stands a better chance of protection, as its arbitrariness makes it unique and strong.

Do trademarks need to be registered?

The short answer is no, trademarks don’t need to be registered to have legal validity. However, registering a trademark increases your ability to protect your mark should the need arise. Additionally, the only way to bring a trademark-related action in federal court is to have the mark federally registered.

Common law rights can be acquired when a mark is used in commerce in a particular region. If a common law mark has been in use longer than its federally registered counterpart, the common law mark may have stronger rights. Common law rights can be further established by placing ™ (for goods) or ℠ (for services) after the mark. But, this doesn’t guarantee nationwide trademark rights. Guaranteed federal protection only comes after trademark registration, and can be indicated by using Ⓡ.

Trademarks can also be registered at the state level. However, just like with common law rights, state-level registration does not guarantee federal protection.

How do I federally register a trademark?

Once you’ve determined that your mark is available, you can apply to register it with the U.S. Patent and Trademark Office’s Principal Register. Theoretically, you could apply for a trademark without first researching availability, but this is ill advised as application fees are non-refundable. If your application is denied, you’ll be out hundreds of dollars.

There are two filing options when it comes to trademark registration: TEAS Standard and TEAS Plus. The applications must be submitted electronically. For either application method, you’ll need to be able to provide at least the following information.

For the most part, the below instructions align for both, though we’ve noted some deviations.

• Attorney
  If an attorney is filing the form, they’ll check “Yes” here and include their information farther down the application. If you’re filing the form yourself, check “No.”
• Applicant Information
  You’ll need to list the trademark owner’s name (click the “Add Owner” button if there are additional owners), the entity type (individual, corporation, LLC, etc.), mailing address, domicile address (home address if filing as an individual; business address in all other situations) if different from mailing address, and email address. Keep in mind that most of this information will be publicly available.
• Mark Description
  Before describing your mark, check a box to indicate whether your mark is in standard characters (no particular color or font), special form (specific design, font, size, and/or color), or sound. Based on your selection, you’ll be able to describe your mark and upload corresponding files. Those files may include specimens (samples) of your mark as used in commerce. Make sure you’ve described your mark correctly—the USPTO may not allow revisions after application submission, but in some instances may propose an alternative description, giving you the opportunity to accept its proposal and move forward with the process.
• Goods/Services and International Classes
  To identify the goods/services that will be connected to your mark, you’ll choose “International Classes” that describe your offerings. Responses need to be precise. You may need to select more than one class to achieve the best description. If you’re filing TEAS Plus, you must use the ID Manual to describe your goods/services. If you’re filing TEAS Standard, you can write a free-form entry.
• Basis for Filing
  “Basis for filing” is a confusing way to say “Are you using your mark yet?” You’ll identify whether your mark is currently being used in commerce (Section 1a), will be used in commerce (Section 1b), has been applied for in a foreign country (Section 44d), or has been registered in a foreign country (Section 44e). If you have multiple classes, you’ll identify the filing basis for each of them.
• Attorney Information
  This section will only appear if you selected “Yes” at the top of the form, indicating that an attorney is filing the application. So, if you’re not an attorney and this section appears, go back and select “No.”
• Correspondence
  Whatever email you entered in the “Applicant Information” section will appear here as the primary email. Up to four secondary emails can also be added. If an attorney is filing the application, their email will go here and the USPTO will conduct all correspondence with them.
• Fees
  If you’re filing TEAS Standard, you will owe $350 for each class of goods/services. If you file TEAS Plus, you’ll owe $250 for each class.
• Declaration
  There are a few boxes to check here prior to signing. Mostly, you’re confirming that the mark is currently in use in commerce or is intended to be used soon; that the mark is yours to use; and that the statements in the application are true.
• Signature
  Signing electronically is easiest, though you can also email the form to another party to sign, or print the document and sign in pen. Additional signatures can be added as well.
• Validation Page
  Before submitting your application, review it and amend any errors. If everything looks good, save the application for your records, then hit the “Pay/Submit” button.

What is trademark infringement?

Trademark infringement occurs when a trademark is used—without permission—for goods/services in a way that is “likely to cause confusion, deception, or mistake about the source of the goods,” per the USPTO.

What if someone infringes on my trademark rights?

Trademark infringement cases generally begin with a cease-and-desist letter. While these letters vary based on individual circumstances, their overall purpose is to point out the infringement(s), demand that action(s) be taken to stop infringing, and threaten legal action should the infringing continue.

The next course of action is to file a lawsuit in state or federal court. If the court rules in your favor, the plaintiff (in this case, the infringed-upon party), monetary damages may be awarded and/or the defendant may simply be forced to stop infringing.

Are trademark rights really enforced?

Yes. That said, how rigorously those rights are defended depends on the organization. While some organizations may have a more laid back enforcement approach, others will go to great lengths to protect their brand image and associations.

But, trademark cases are complex. Even if you believe your trademark rights have been infringed upon, it can be tough to prove in court, as seen in the example below:

Tiffany & Co. vs. Costco Wholesale Corp.
Tiffany filed a lawsuit against Costco in 2013, claiming both trademark infringement and counterfeiting. For years, Costco had used the word “Tiffany” on engagement ring signage in their stores. Among other things, Tiffany claimed these signs led to consumer confusion about the rings’ brand, and that Costco had willfully confused these consumers.

Costco claimed they’d only used the word “Tiffany” to describe a certain ring style, (“Tiffany setting”) not to say that the rings themselves were Tiffanys. The U.S. District Court for the Southern District of New York sided with Tiffany, awarding the company $21 million in damages.

But, the case didn’t end there. Costco appealed, and in 2020 the U.S. Court of Appeals for the Second Circuit vacated the lower court’s decision. The appeals court ruled that if this case were before a jury, the jury could just as easily side with Costco as with Tiffany. As the appeals court saw it, the district court had ruled prior to sufficiently answering all relevant questions.

The result is that Tiffany vs. Costco will likely find itself before a jury in the coming years, and perhaps even another round of appeal.