What is a Trademark?

by Lizbeth Hasse

Basic IP Terminology Series—What is a Trademark?

Earlier this month, I posted the first blog entry in my basic IP terminology series about copyright.  This time, we’ll take a look at what exactly a trademark is and what the benefits are of protecting and registering your trademark.

TM Photo 300x212 - What is a Trademark?

What is a Trademark?

Trademark and copyright are often confused by those who are unfamiliar with how IP rights are distinguished.

A trademark is a word or design (like a logo) that is used in a branding capacity to indicate to consumers the source of the particular product or service that is being offered to the public.

When you use a particular name or design on your products or in connection with the offering of your services, you are developing your trademark rights in that name or image.

Generally, if you are the first person to use that trademark in that area of commerce, you have priority rights in the mark and can stop others from using it or a close variation of it in the same field or a similar field of commerce.  For example, the word “Mercedes” and the Mercedes logo, a circle with three distinct prongs in the middle, are trademarks used in connection with automobiles.

It is important when developing your trademark in the initial stages of your business (or when you are adding new products or services that you will be identifying by separate trade names) to search as extensively as your time and budget will allow in order to find out if there are others out there who are using the trademark or some close variation.

This is something that you can do on your own, or invest in hiring an attorney to assist you with a more comprehensive search.  The deeper the search, the more likely you are to find other users that could have priority over you with a similar mark in a similar field of commerce.

The search is an important first step for new businesses for a few reasons.  For one, this step can save you from investing time and money in developing a trademark that someone is already using.

It isn’t good for your business or the other user’s business for consumers to be confused between companies, so it’s not just in the prior user’s best interest for you to make sure your mark does not conflict.

The more distinct your mark is from other users, the stronger your trademark rights will be in that mark.  Also, a thorough search can save you from the potentially devastating cost of defending a trademark infringement law suit if there is a prior user out there who becomes upset that you are using their trademark or something close to it.

As with copyright, trademark rights do not require registration in order to exist.  If you have not registered your trademark, you can still assert what are referred to as “common law trademark rights” against a potential infringer.

The flip side is also true, so just because someone has not registered their trademark rights does not mean that they could not also sue you for using their mark if they have priority over it.

However, there are certain very important benefits of registering a trademark, particularly when you register with the U.S. Patent and Trademark Office (USPTO).  Some of the advantages of registering with the USPTO include:

  • The public is put on notice of your claim of ownership in the trademark, so others who come after you may be less likely to try and use the name.
  • A legal presumption arises that you own the mark and have the exclusive right to use it throughout the U.S. in connection with those goods or services listed in the registration.
  • You can bring a lawsuit against someone infringing your trademark in federal court.
  • You can use your U.S. trademark registration as a basis to obtain a registration in foreign countries where you may want to do business under the name.
  • You can record your federal trademark registration with the U.S. Customs and Border Protection Service to prevent importation of foreign goods that may infringe your trademark.
  • You gain the right to use the federal registration symbol (for more information, see Shioun Lee’s blog post on the subject).

For more information on trademarks generally and how to register your trademark with the USPTO, visit their website at www.uspto.gov.

Because trademark is a very nuanced area of law and the consequences for errors can be high, it is highly recommended that you contact a trademark attorney to assist you with searching, registration, enforcing your trademark and/or responding to a potential trademark dispute.

The attorneys at Creative Industry Law are experienced in trademark law and are happy to assist you with any trademark matters.

Attorney 1 - What is a Trademark?

Lizbeth Hasse

Lizbeth Hasse is the founder of Creative Industry Law. Her practice encompasses intellectual property, media, entertainment and business counseling for corporate and individual clients. She is also a neutral expert in these areas, negotiating and resolving IP, business and media matters.
Attorney 1 - What is a Trademark?

About Lizbeth Hasse

Lizbeth Hasse is the founder of Creative Industry Law. Her practice encompasses intellectual property, media, entertainment and business counseling for corporate and individual clients. She is also a neutral expert in these areas, negotiating and resolving IP, business and media matters.