What Is a Trademark? Do I Need One?

Why does my trademark need to stand out?

Trademarks are how consumers tell companies and their offerings apart. As such, they need to be different from each other. A trademark registration may be denied if the mark is confusingly similar to an existing trademark and the goods/services they identify are related.

Even if you don’t intend to register your trademark, you’ll still want to ensure your mark doesn’t infringe on any others. If it does, you could receive a cease and desist letter prompting you to stop using your mark.

Are some marks stronger than others?

Yes. If a mark is overly generic or descriptive, it’s harder to gain rights and prove trademark infringement. The strongest marks are typically 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’ll be able to trademark your locally famous “Chocolate Chip Cookies.”

While generic marks might make sense head-on—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.

How do I know if my trademark is available?

To find out if your desired mark is available, you’ll need to conduct a thorough search. Here are some good places to start:

• USPTO’s Trademark Search
  If this search reveals pending or registered marks that are confusingly similar to yours and you proceed with the trademark application, you risk having your application denied.
• State trademark and business name databases
  These databases may reveal trademarks that the federal database does not.
• Social media Your government-based searches will likely reveal a lot of potential conflicts, if they exist. But social media might reveal even more.

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. The only way to sue for trademark infringement in federal court is to register the mark with the United States Patent and Trademark Office.

Common law trademark rights can be acquired when a mark is used in a particular region. If an unregistered mark has been in use longer than its federally registered counterpart, the common law mark may have stronger rights.

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 USPTO. The base fee is $350, and if all goes well, you’ll likely have a registered trademark in about a year.

But registering a trademark is a complicated, nuanced government process. The application is in depth and specific, and if you mess any of it up, the application process will slow down, you may have to pay additional fees, and your registration could halt entirely.

Here’s some of the most important information the application asks for:

• Trademark Owner This might be you or your business. Many choose to list their business as the owner, as the information on the application becomes part of the public record. Choosing an entity owner helps you keep more of your personal information private.
• Address
  You need to provide a domicile address and can provide a mailing address as well. If you provide a mailing address, the domicile won’t be publicly listed.
• Mark Description
  The USPTO provides pre-written descriptions for you to choose from. This is the cheapest and easiest option, as long as there are choices that align with your offerings. If nothing matches up, you can write your own description (but you need to pay an additional fee to do so).
• Goods/Services and International Classes
  There are 45 trademark classes: 34 for goods and 11 for services. One class is included with your base filing, and you’ll need to select the one you’d like your mark protected under. You can add additional classes for a fee.
• 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. Note that if your mark is not in use yet, you’ll have additional filings, fees, and deadlines to look out for.

What is trademark infringement?

Trademark infringement occurs when a trademark is used in a way that is “likely to cause confusion, deception, or mistake about the source of the goods,” per the USPTO.

If your trademark overlaps with another in the following ways (and if you offer similar things), you might be at risk of infringing:

• 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/services is key when determining if marks are confusingly similar. For example, if Sea Knot sells 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 for an issue to exist. If Sea Knot sells fishing gear, and See Not offers guided fishing expeditions, you might be in trouble.

What if someone infringes on my trademark rights?

Trademark infringement cases generally begin with a cease-and-desist letter. While these letters vary, their overall purpose is to point out the infringement, demand that certain actions be taken to stop infringing, and outline next steps 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, 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 may have a more laid back enforcement approach, others will go to great lengths to protect their brand image and associations.

Ultimately, enforcing your trademark rights is up to you. If it goes unchecked, your rights may weaken over time.