Trademarks

The short version

A trademark is a word, phrase, symbol, or design that identifies your goods or services and distinguishes them from others. Protecting your trademark prevents others from using a confusingly similar mark for similar products or services. This lesson explains how federal law, specifically the Lanham Act, helps you protect your brand name and logo.

The law this is built on

Every point below comes from the authority named next to it. Verify the current text before relying on it.

15 U.S.C. § 1051(a)(1)
This section states that the owner of a trademark used in commerce may apply to register the mark on the principal register. The application must include the mark, the goods or services it's used for, and a declaration.
Why it matters: This is the main way to officially protect your brand name or logo at the federal level, giving you stronger legal rights across the U.S.
15 U.S.C. § 1051(a)(3)(C)
This part requires the applicant to state that the mark is in use in commerce, or that the applicant has a good faith intention to use the mark in commerce.
Why it matters: You can register a trademark either after you've started using it for your business, or if you plan to use it soon, securing your rights early.
15 U.S.C. § 1051(a)(1)(B)
This section specifies that the application must include a drawing of the mark and a description of the goods or services on or in connection with which the mark is used.
Why it matters: This makes sure your trademark is clearly defined and everyone knows exactly what you are protecting and for what types of products or services.

Words you need to know

Trademark: A word, phrase, symbol, or design (or a combination of these) that identifies and distinguishes the source of the goods of one party from those of others.
Service Mark: Similar to a trademark, but it identifies and distinguishes the source of a service rather than a product. For example, the logo for a cleaning service.
Lanham Act: The main federal law that governs trademarks in the United States. It allows for the federal registration of trademarks and provides legal remedies against infringement.
Use in Commerce: For federal registration, a trademark must be actively used in the sale or transport of goods or services across state lines or internationally. This proves you are actually doing business with the mark.
Principal Register: The primary federal register for trademarks. Marks registered here receive the strongest legal protections and benefits.
Likelihood of Confusion: The main legal test to determine if one trademark infringes on another. It considers if consumers would likely be confused about the source of goods or services because of similar marks.

Your rights

✓You have the right to prevent others from using your trademark for similar goods or services if it would cause confusion.
✓Federal registration of your trademark gives you nationwide rights and makes it easier to enforce those rights.
✓You can use the ® symbol next to your trademark once it is federally registered.
✓You can stop the importation of goods with infringing marks.
✓Your federal registration is public notice of your claim of ownership of the mark.

How the process actually works

1
Choose your mark
Before you start using your brand in commerce, ideally.
Pick a name, logo, or slogan that is distinctive and identifies your goods or services. Avoid marks that are too similar to existing ones or are merely descriptive.
2
Conduct a search
Before filing your application.
Search existing trademarks to see if your chosen mark is already in use or registered. This helps you avoid future legal problems. You can search the USPTO database.
3
File an application
Once you have chosen your mark and conducted your search, either when you start using it or when you have a genuine plan to use it.
Submit an application to the U.S. Patent and Trademark Office (USPTO) as per 15 U.S.C. § 1051. You must describe your mark and the goods/services it covers. You can file based on actual use or intent to use.
4
Examination by USPTO
Several months after you file your application.
An examining attorney at the USPTO reviews your application to ensure it meets all legal requirements and does not conflict with existing marks.
5
Publication for opposition
If approved, usually a few months after examination.
If your application is approved, your mark will be published in the Official Gazette. This gives others a chance to object if they believe they would be harmed by your registration.
6
Registration (or Statement of Use)
Usually 3-4 months after publication, or after you file your Statement of Use.
If no one successfully opposes your mark, it will be registered. If you filed based on 'intent to use,' you will need to prove you've started using the mark in commerce first.
7
Maintain your registration
Specific deadlines apply, typically after 5 years, and then every 10 years.
You must periodically file documents with the USPTO to show you are still using your mark and wish to maintain its registration.

Deadlines that can end your case

Statement of Use (for 'intent to use' applications)
Within six months after a 'Notice of Allowance' is issued by the USPTO, with up to five six-month extensions possible.
If you don't file this or get an extension, your application will be abandoned, and you will lose your potential trademark rights.
Opposition period
30 days from the publication date in the Official Gazette.
If no opposition is filed (or an extension is granted), your mark proceeds to registration or Notice of Allowance.
Declaration of Use (Section 8 Affidavit)
Between the 5th and 6th year after the registration date, and within one year before the end of every 10-year period after the registration date.
If you miss this, your registration will be canceled, and you'll lose federal protection for your mark.
Application for Renewal (Section 9 Affidavit)
Within one year before the end of every 10-year period after the registration date.
If you miss this, your registration will expire, and you'll lose federal protection for your mark.

Costly mistakes

✕Not conducting a thorough trademark search before using a mark, leading to infringement claims.
✕Choosing a descriptive or generic mark that is hard or impossible to protect.
✕Failing to file a 'Statement of Use' on time for an 'intent to use' application.
✕Not monitoring for others using similar marks, allowing infringement to go unchecked.
✕Forgetting to file maintenance documents (like Section 8 and 9 affidavits), leading to cancellation of registration.
✕Believing that registering a business name with the state or a domain name protects it as a trademark federally.

Your checklist

Brainstorm distinctive names/logos that represent your goods or services.
Perform a comprehensive trademark search at the USPTO and common law sources.
Determine if you have already used the mark in commerce or have a clear intent to use it.
Prepare your application, including your mark's drawing and a list of goods/services.
File your application with the USPTO and pay the required fees.
Respond promptly to any communications from the USPTO examining attorney.
If filing an 'intent to use' application, file your 'Statement of Use' when you begin using the mark in commerce.
Once registered, use the ® symbol and keep track of maintenance deadlines.

Common questions

What's the difference between ™ and ®?

The ™ symbol (trademark) can be used with any mark you claim as yours for goods, even if not federally registered. The ® symbol (registered trademark) can only be used once your mark is officially registered with the U.S. Patent and Trademark Office (USPTO). Using ® before registration can lead to penalties.

Do I need a lawyer to register a trademark?

The Lanham Act (15 U.S.C. § 1051) does not require you to use a lawyer to file a trademark application. However, trademark law can be complex, and many applicants find it helpful to work with an experienced attorney to conduct searches, prepare the application correctly, and respond to office actions.

How long does federal trademark protection last?

A federal trademark registration can last indefinitely, as long as you continue to use the mark in commerce and file the required maintenance documents with the USPTO. You must file a Declaration of Use between the 5th and 6th year, and then every 10 years along with a renewal application.

Is my business name automatically protected as a trademark?

No. Registering your business name with your state's Secretary of State or obtaining a domain name does not automatically provide federal trademark protection. These actions typically only give you the right to operate a business under that name or own that web address, not exclusive rights to use the name for goods or services across the country.

What happens if someone else uses my trademark?

If your mark is federally registered, you can sue for trademark infringement in federal court. You may seek an injunction to stop the infringing use and, in some cases, monetary damages. Without federal registration, your rights are generally limited to the geographic area where you have actually used the mark.

How this changes by state

While the Lanham Act (15 U.S.C. § 1051) provides for federal trademark protection across the U.S., states also have their own trademark laws. These state laws protect marks used only within that state. State trademark registration is typically simpler and less expensive than federal registration but offers much narrower geographic protection. To find your state's specific rules, you would typically look at your state's statutes related to intellectual property or business, often handled by the Secretary of State's office.

When you need a lawyer

You should consider hiring a lawyer when conducting your initial trademark search to avoid potential conflicts, when preparing and filing your application to ensure it meets all legal requirements, or when responding to office actions from the USPTO. A lawyer is also crucial if another party opposes your application, if you need to oppose someone else's, or if you believe someone is infringing on your registered trademark.

Do this today

→List all potential names, logos, and slogans you use or plan to use for your business's goods and services.
→Do a preliminary search on the USPTO website (uspto.gov) to see if similar marks are already registered.
→Consider consulting with a trademark attorney to conduct a comprehensive search and discuss the registrability of your chosen mark.

This lesson is legal information for educational purposes only, based on 15 U.S.C. § 1051 (Lanham Act). It is not legal advice and does not create an attorney-client relationship.