How do you get trademark protection?
Fundamentally, getting trademark protection is very simple: use the trademark. But the law has a somewhat complicated definition of what “use” means. The mark must be in use, and that use must be use in commerce. Let’s unpack these two terms. First, for a trademark to be considered to be in use, the mark has to be used in the right places. For trademarks, the mark must be used on a product or on product packaging. For service marks, the mark must be used in advertising for the services. For example, the mark may be used on a website where a person can purchase the services or on business cards of the service provider. Second, for the use of the mark to be use in commerce, you have to have actually sold the product or services; mere advertising or offering for sale is almost never sufficient to establish ownership of a mark. It is essential to keep good records of advertising and sales that you have made using a mark because these records can help prove that you have been properly using the mark in commerce. Why do you need to use marks these ways, and keep records of these uses? You want to ensure that consumers are associating a specific mark with specific products, so that the mark can serve as a source identifier in the minds of customers. That is, at heart, the purpose of a trademark. So, to restate and summarize all of that: you can obtain trademark protection by using the mark when selling specific products or services so that consumers associate those specific products or services with the mark (and the mark owner) in their minds.
If you want examples of what use in commerce looks like, just look at the shelves next time you go to the store. Let’s say you pick up a tube of toothpaste. This single tube may have as many as three trademarks on it: the name of the company that makes the toothpaste, the brand of the toothpaste, and the type of toothpaste. For example, a tube of Crest® toothpaste could have the trademarks for Procter & Gamble®, Crest®, and a product identifier like Cinnamon Rush™ on it. As a consumer, you probably recognize at least two of those three marks, and have a pretty strong idea in your mind about whether or not you like and trust the source. These marks, which the owner uses when selling you the toothpaste, help you decide quickly which tube you want to pick up today.
So what do those little symbols mean, ® and ™?
These symbols are the trademark owner’s way of telling you that a particular word, image, phrase, etc., is a trademark. It helps set the trademark apart from other things that might be on the product packaging, like a description of the product.
Like copyrights, trademarks do not have to be registered for the owner to have rights. Unlike copyrights, trademark rights do not exist at the moment of creation; trademark rights take effort. They must be established by use in commerce. The ™ symbol means that the owner is claiming a mark by making efforts to use the mark in commerce, but has not registered it with the U.S. Patent and Trademark Office (PTO). The owner may be relying on the fact that the mark is used in commerce or on a state registration. Sometimes, the owner has already applied to register the mark with the PTO, but the registration has not yet been issued. The ® symbol means that the mark has been registered with the PTO, and the owner has all of the rights associated with federal registration.
What does “state registration” mean?
Trademarks work differently than either copyrights or patents, geographically speaking. While both copyright protection and patent protection are nationwide, trademark protection can apply to a very limited geographic region, even as small as a single city. And unlike either copyright or patent, which are both governed exclusively by federal law, trademarks can be protected by either federal law or state law, or both. For federal protection to apply, the use of the trademark in commerce has to be use in interstate commerce: you have to have sold a product or service from one state to a customer in another state. But if you have a business that operates only within one state, you can register your trademark at the state level and have special rights within your state only, depending on state law.
How much does trademark registration cost?
State registration fees vary from state to state; the Secretary of State’s office is usually in charge of state trademark registration, so you should check your state’s Secretary of State website for more information.
Federal registration fees vary depending on what kind of application you file and whether you file on paper or electronically. As of the date of this post, the PTO fee for electronically filing most trademark applications is $325 per mark per class. A class is the way the PTO categorizes trademarks and service marks. The PTO classifies every product or service you can sell into 45 groups called “classes.” If you sell items that are grouped into more than one class, you must pay a separate application fee for each class.
In addition, unlike copyright registration, trademark registration is a complicated process that can require assistance from a trademark attorney. A trademark does not automatically register; the mark owner must apply to register the mark, and the application requires some research, persuasive writing, and understanding of how the registration system and trademark laws work. For example, part of the application process is describing the products or services that are sold using the mark and determining which classes those goods or services belong in. Deciding how to describe products and services, and which classes contain the most important products and services, can be an important strategic and financial consideration for mark owners, and an attorney can be a helpful guide in making these decisions. Once an application to register a trademark has been submitted, an employee of the PTO called an Examiner will review the application. The Examiner may decide that the mark can be registered or may refuse registration. If the Examiner refuses registration, he or she will issue an Office Action, a document that explains the objections to the application that caused the Examiner to refuse registration. A trademark attorney can often craft the application so that it is unlikely to draw objections from the Examiner, or so that it is likely to draw only minor and easily addressed objections. If the Examiner refuses to register the mark, a trademark attorney can help the mark owner respond to the objections raised by the Examiner and convince the Examiner that the mark should be registered. It is therefore usually advisable to use a trademark attorney’s assistance to obtain a trademark registration. Depending on how smoothly the application and registration process goes, the cost of having an attorney apply for a mark on your behalf can be anywhere from a few hundred to several thousand dollars.
Tune in next week for Part II of “How Does Trademark Protection Work?”