Trademark

The short version

A trademark is a word, name, symbol, or design (or a combination of these) that identifies and distinguishes the goods or services of one seller from those of others. It protects your brand's identity and prevents others from using confusingly similar marks. Understanding trademark law helps you secure your brand and avoid legal disputes.

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 (Lanham Act)

  This federal law states that owners of trademarks used in commerce may register them in the United States Patent and Trademark Office (USPTO). It outlines the process and requirements for federal trademark registration.

  Why it matters: This is the primary federal law that governs how you can protect your brand's name, logo, or slogan nationwide.

Words you need to know

Trademark

A word, phrase, symbol, and/or design that identifies and distinguishes the source of goods of one party from those of others. For example, a company's product name or logo.

Service Mark

Similar to a trademark, but it identifies and distinguishes the source of a service rather than goods. For example, the name of a cleaning service.

Use in Commerce

For federal registration, your trademark must be used "in commerce," meaning it is sold or transported across state lines or used in connection with services provided across state lines. (15 U.S.C. § 1051(a)).

Federal Registration

The process of officially recording your trademark with the United States Patent and Trademark Office (USPTO), which grants nationwide protection and other legal benefits.

Likelihood of Confusion

The main test used to determine if one trademark infringes on another. It considers if consumers would likely be confused about the source of goods or services due to similar marks. (15 U.S.C. § 1052(d)).

Common Law Rights

Rights you get automatically simply by using a trademark in business, even without federal registration. These rights are generally limited to the geographic area where you actually use the mark.

Your rights

• ✓You have the right to register your trademark with the USPTO if you use it in commerce. (15 U.S.C. § 1051).
• ✓Once registered, you have exclusive nationwide rights to use your trademark for the goods/services listed in your registration.
• ✓You can stop others from using a confusingly similar mark for related goods or services.
• ✓You can sue for trademark infringement in federal court if someone uses your registered mark without permission.
• ✓You can place the ® symbol next to your trademark once it is federally registered.

How the process actually works

1. 1
   Choose your mark

   Before you start using your brand name publicly.

   Select a unique word, phrase, symbol, or design that you want to use for your goods or services. Stronger marks (like made-up words) are easier to protect.

2. 2
   Conduct a search

   Before applying for registration.

   Search the USPTO database and perform general internet searches to see if anyone else is already using a similar mark for similar goods or services. This helps avoid conflicts. (15 U.S.C. § 1052(d)).

3. 3
   File an application

   As soon as you decide to use a mark, or once you've started using it.

   Submit an application to the USPTO, either based on your current use of the mark in commerce (15 U.S.C. § 1051(a)) or your intent to use it in the future (15 U.S.C. § 1051(b)).

4. 4
   Examination and publication

   Several months after filing the application.

   A USPTO examiner reviews your application to ensure it meets legal requirements and isn't likely to be confused with existing marks. If approved, it's published for public opposition.

5. 5
   Registration

   Typically 6-12 months after application, sometimes longer.

   If no one successfully opposes your mark, and you meet all requirements (including showing use if you filed an 'intent to use' application), the USPTO will issue a registration certificate.

6. 6
   Maintain your registration

   Between the 5th and 6th year after registration, and every 10 years after that.

   You must file declarations of continued use and pay maintenance fees at regular intervals to keep your registration active. (15 U.S.C. § 1058).

Deadlines that can end your case

• Response to Office Action
  6 months

  If the USPTO examiner finds an issue with your application, you typically have 6 months to respond. Missing this deadline can lead to your application being abandoned.

• Filing Statement of Use (for 'intent to use' applications)
  6 months from Notice of Allowance (can be extended)

  If you filed based on 'intent to use' (15 U.S.C. § 1051(b)), you must show proof you're using the mark in commerce within 6 months of receiving a Notice of Allowance. You can apply for up to five 6-month extensions. Failure to file means your application will be abandoned.

• Declaration of Continued Use/Incontestability
  Between 5th and 6th year after registration

  You must file a Declaration of Continued Use and/or Incontestability to keep your registration alive and strengthen its protection (15 U.S.C. § 1058, 15 U.S.C. § 1065). Missing this causes cancellation of your registration.

• Renewal of Registration
  Every 10 years after the initial registration date

  You must renew your registration and file another Declaration of Continued Use every 10 years (15 U.S.C. § 1059). Missing this leads to cancellation.

Common questions

How this changes by state

Trademark law is mainly federal, governed by the Lanham Act (15 U.S.C. § 1051 et seq.). Federal registration provides nationwide rights. However, you can also register a trademark at the state level. State registrations provide protection only within that specific state and are generally less robust than federal registrations. Most states have their own trademark statutes, often found in their commerce or business codes. You can usually find your state's specific rules by searching your state's government website for 'trademark registration' or 'business names'.

When you need a lawyer

You should consider hiring a lawyer if you need help conducting a comprehensive trademark search, if you receive a rejection (Office Action) from the USPTO, if someone opposes your trademark application, or if you need to enforce your trademark against an infringer. A lawyer is also crucial if you receive a cease and desist letter or are sued for infringement.

Do this today

• →Think about what unique word, phrase, or logo represents your business or product.
• →Search the USPTO's TESS database (Trademark Electronic Search System) for similar marks.
• →Consider whether federal trademark registration is right for your business goals.