Trademark Overview – Types
Generally speaking, a trademark is a form of intellectual property right to protect your uses of identifiers that allow consumers to distinguish the source of your goods and services from those of anyone else. Trademark and trade dress source identifiers can be virtually anything nonfunctional, such as words, symbol, colors, shapes, and even smells, so long as the primary purpose is to inform the world that you or your company is the source of the product or service.
Coca Cola®, for example, utilizes many types of source identifiers as trademarks. It has a trademark in the name, “Coca-Cola” in various languages, the cursive script of the name “Coca-Cola”, the wavy lines of its bottle labels, and even the shapes of its bottles. We couldn’t possibly do it justice in a single summary, but Coca Cola® claims over 1000 trademarks in the United States alone.
Our most successful clients have allowed us to build similar (though more modest) brand portfolios of trade dress and trademark registrations that collectively strengthen their rights in many obvious and subtle ways.
Legally there are many names for the various types of trademarks, such as “service marks” or “trade dress”, but lawyers and their clients will usually just use “trademark” or “mark” to refer to any type of intellectual property that protects your brand identity.
You do not need to register a trademark to enforce it against others. However, an unregistered trademark, also known as a common law trademark, does not enjoy many of the legal benefits automatically given to registered trademarks.
For example, lawsuits require the Plaintiff to prove that what they are saying is true, but in disputes involving registered trademarks, the enforceability of the trademark is assumed to be valid and it’s the Defendant who must prove otherwise. This is incredibly powerful, and it applies to all registered trademarks and trade dress.
Trademark Overview – Strength
Another benefit of registered trademarks over common-law trademarks is that the longer the trademark is registered, the stronger it becomes. For example, the USPTO will sometimes place a descriptive trademark on its supplemental register, meaning the trademark is generally weak and difficult to enforce. But after five years of registration, if the conditions are right, the trademark can be placed on the principle register, meaning that the trademark has become strong.
And trademarks on the principle register, under the right conditions and after five years, can become incontestable, meaning that the strength of the trademark can no longer be challenged! Further yet, if after considerable use the trademark becomes very well recognized by the consuming public, it may be considered famous, which opens an entirely new toolbox for enforcing the trademark such as lawsuits for trademark dilution.
However, a generic trademark, like Kleenex or Aspirin, are terms that are so commonly used they are unable to acquire strength over time because the public cannot associate the term with any one source for a product or service. Companies must always be vigilant that the public uses their brand names properly, so as to avoid having their trademark strength hollowed out from improper generic use. See, for example, Velcro® Brand’s public service announcement, which, as trademark and trade dress attorneys, we simply can’t get enough of.
Trademark Overview – Searches
Trying to navigate trademark law without having completed a proper trademark search is like navigating a minefield without a map. The quality and depth of your trademark search depends on your needs, but generally a simple “knockout” search on the USPTO federal trademark database is sufficient to identify any registered trademarks that could cause problems for your application.
For example, if your trademark examiner determines that your application is confusingly similar to that of a previously registered trademark, you will likely be required to persuade the examiner that the likelihood of confusion, if any, is very low. This is much easier to do if you have planned ahead and the trademark search gives you that foresight. Likewise, if your trademark search reveals particularly similar trademark registrations, you may consider using our firm to help you rebrand before you even begin the trademark application process.
Trademark Overview – Applications
Ultimately, before your trademark application becomes a trademark registration, the United States Patent and Trademark Office (USPTO) must conclude that your trademark is distinctive from all other prior registered trademarks. The methodology and strategy is simply too complicated to address in a general trademark overview, but the descriptiveness, strength, and market competition for your brand will all be relevant. And, although it does not occur frequently, third parties can even oppose your application before the trademark trial and appeal board (TTAB), which would further complicate your trademark application process.
But as a general rule, virtually all trademark applications break down into two categories: those where the applicant can demonstrate that the trademark is already in use, and those where the applicant swears that proof will be provided at a later date in the application. In legal jargon these are referred to as Trademark Act Section 1(a) “in use” and Section 1(b) “intent to use” applications.
Legally, to say that your trademark is in “use” specifically refers to whether you make a clear association between the mark and the products or services that you place into United States commerce. In other words, the public must have the opportunity to recognize that you are the source of the product or service they are thinking to purchase.
Thus, during each trademark application, we provide specimens (or proof of use) to demonstrate consumer association between the applied for mark and the goods or services you sell. Usually, a simple screenshot or photograph is sufficient to satisfy the USPTO examiner that your trademark is in use, but sometimes additional evidence may be necessary to overcome an office action or third-party opposition. Ultimately, trademark proof of use is always required at some point before trademark registration can occur.
Your ongoing use of your trademark will remain relevant as long as it is active. Your trademark or trade dress attorney will be repeatedly required to show proof of use every time you renew the registration, when you attempt to establish that it has become incontestable or famous, and particularly when you must your mark against third parties.