Trademark Registration Symbol

How does trademark protection work? Part II

This is the second part of a two-part post, “How does trademark protection work?” To read Part I, click here.

Why bother to register trademarks if they are protected without registration?

The owner of an unregistered mark has more limited rights in the mark than the owner of a registered mark. An unregistered mark is good only in the geographic areas where the owner is able to prove that the mark has been used enough to be associated with the owner’s goods or services in the minds of consumers. To show that you have use-based ownership of a mark in a particular geographic area, it may be necessary to demonstrate advertising over time and to show that consumers associate your company’s products or services with the mark through surveys.

Federal trademark registration offers several benefits to owners of registered marks. First, the owner of a federally registered trademark is allowed to use the ® symbol with the mark. This puts others on notice that the mark is federally registered and may send the message that the mark owner takes intellectual property rights very seriously. Second, the owner of a federally registered mark also gets a legal presumption of ownership of the mark nationwide. This means that if there is litigation over a mark, it is assumed that the owner of the federally registered mark is using the mark in commerce unless the other party in the litigation can prove otherwise. Third, the owner of a federally registered mark has the exclusive, nationwide right to use the mark on or in connection with the products or services described in the registration. This means that a mark owner that has only sold its products in interstate commerce between two states may obtain the exclusive right to use its mark in all 50 states simply by registering the mark with the United States Patent and Trademark Office (PTO). This is a very powerful tool for a growing business. Fourth, all marks that have been applied for or registered are visible in the fully-searchable PTO database, which can often deter would-be infringers. Savvy companies always search the PTO database before selecting a new trademark so that they can avoid infringing on existing marks.

The benefits of state trademark registration often mirror the benefits of federal registration, but at a statewide level rather than a nationwide level. However, each state’s laws are different, so you should check with an attorney licensed in your state to find out what benefits of state registration might be available to you.

What if you have picked a mark but haven’t started using it yet? Can you still apply for it?

Yes. The PTO has a process for “intent to use” applications, which are applications filed based upon the mark owner’s intent to use a mark rather than actual use of a mark. These applications, if accepted, reserve a mark either until the owner begins to use the mark in interstate commerce, or for three years following acceptance of the application, whichever is sooner. If the intent-to-use application expires before the owner begins to use the mark in commerce, the owner can file a new intent-to-use application with a new “reserve” date.

Is the owner the only one who can use a trademark?

No. The owner is the only one who can use or authorize use of a mark in association with the same goods and services that the owner provides, or similar goods and services to those the owner provides. This means that the owner does not have to be the sole user of a mark—or even use the mark at all. As long as the mark is being used in commerce by a licensee of the owner under a properly drafted license, the mark is being used in commerce in a way that satisfies the requirements of trademark law.

All that said, some people misunderstand how powerful a trademark is (or isn’t). A trademark is not a complete monopoly on a word, phrase, color, scent, sound, and so on. It is only a right to prevent others from using the mark in a confusingly similar way, meaning using the mark in a way that might confuse consumers about the source of a product or service. As a real-world example, there are two completely unrelated companies named GRACO that use the GRACO mark. One of them makes baby products like high chairs and toys. The other makes chemicals. Because the products are so dissimilar, it is possible for the two companies to use the same mark in these completely different contexts without a risk of confusing consumers about the source of the products. Likewise, It is possible to have two different marks that are used on the same products that are so similar to one another that they are confusingly similar despite not being the same. This kind of confusing similarity occurs when a consumer who is exercising a normal level of diligence for buying a particular product or service might not realize that the marks are different from one another and accidentally buy the wrong product or service. For example, if a new company started making baby products using the name GRAYCO, the Graco company that makes baby products in our example above could reasonably object to the similar-looking and -sounding name.

Are there any limitations on what kinds of trademarks can be registered?

Yes, there are several limitations on what kinds of marks can be registered, although recent developments in case law are raising questions about whether some of these restrictions will continue to exist. For the moment, however, the following kinds of trademarks cannot be registered:

  • marks that are immoral, deceptive, or scandalous;
  • marks that disparage others, whether living or dead, or bring them into contempt or disrepute;
  • marks that disparage institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
  • marks that falsely suggest a connection with others, living or dead;
  • marks that falsely suggest a connection with institutions, beliefs, or national symbols;
  • marks that identify a place of origin incorrectly when used with wines or spirits;
  • marks that include a flag or insignia of the United States, of a state or municipality, or of a foreign country;
  • marks that use the name, signature, or portrait of a living person without that person’s consent;
  • marks that use the name, signature, or portrait of a deceased President of the U.S. during the lifetime of his widow, unless she has given consent;*
  • marks that are confusingly similar to marks that have already been registered;
  • marks that merely describe the goods or services;
  • marks that deceptively misdescribe the goods or services;
  • marks that merely describe the geographical origin of the goods or services;
  • marks that deceptively misdescribe the geographical origin of the goods or services;
  • marks that are primarily merely a surname; and
  • marks that are functional.

There are exceptions and ways of convincing the U.S. Patent and Trademark Office to register marks that seem to fall into these categories, so do not assume that a particular mark cannot be registered until you have spoken with a trademark attorney.

How long does trademark protection last?

Trademark protection can last indefinitely, as long as the owner of the mark registration performs the necessary maintenance. The oldest registered trademarks in the U.S. that are still in use date to the 1800s. Marks registered at the state level usually need to be renewed periodically; you should consult your state’s registration authority (usually the Secretary of State) for more information. For marks federally registered with the PTO, a Statement of Use must be filed between the fifth and sixth year following registration, and the mark must be renewed every ten years. There are small fees associated with these actions.

Some parts of this post originally appeared on my law firm blog, the Web 2.0 Law Blog.

*The statute assumes that the President is male and has a female surviving spouse. The statute may need to be updated in the very near future.

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