Trademark Basics

Trademark Basics

I thought a blog post on the basics of trademark law might be helpful to some of my clients. I’ll provide a brief overview of what a trademark covers, the benefits of federal registration with the U.S. Patent and Trademark Office, and how long a trademark registration will remain valid after it is granted. Please keep in mind that these are all general descriptions and your particular circumstances may merit additional considerations. Speaking with me (or another attorney experienced in trademark matters) to discuss protecting your intellectual property is highly recommended.

What Does a Trademark Protect?

A trademark is a word, symbol, or combination thereof that represents the source of a product. A service mark is a word, symbol, or combination thereof that represents the source of a service. Collectively, trademarks and service marks are called “marks.” As an aside, conflation of the definition of “mark” with “trademark” results from a few factors:

  • marks–including service marks–are colloquially referred to as trademarks by just about everybody
  • the relevant body of law is most commonly known as “trademark law”
  • the federal administrative agency that deals with marks is called the “U.S. Patent and Trademark Office”

A mark can be a product name, a slogan, a symbol, a smell, a color, or any other indicia that distinguish the source of goods or services. Trademark law evolved out of the need to provide this identification in order to incentivize merchants to produce high-quality products and allow consumers to seek out preferred merchants. By branding his products, a seller can inform consumers on what level of quality they should expect in connection with that brand (for better or worse).

Common Law and State Registration

One may gain rights in a mark as soon as it is used in connection with commercial activity. Those rights are based in state common law, which varies from state to state. Marks can also be registered at the state level through trademark offices of specific states. Mark usage and/or registration in one state might not extend any rights to other states (although it could, depending on the circumstances).

Benefits of Federal Mark Registration at the USPTO

Even though trademark rights are formed upon commercial use of a mark, registering the mark with the USPTO can deliver substantial benefits: Federal registration gives the registrant a legal presumption of ownership of that mark. A mark application is given a priority filing date the day it is submitted to the USPTO, which means that the registered mark owner could have rights senior to someone who later begins using the same (or similar) mark–even if the second person is in another state. That senior status is provided not just in the state(s) of mark usage, but is granted nation-wide. The registration’s filing date may also serve as a basis for later-filed international applications. Owning a federal registration creates subject-matter jurisdiction in federal court, should the registrant sue another for trademark infringement. Finally, an owner of a federal registration may record the registration with the U.S. Customs and Border Protection Service to prevent importation of infringing products.

How Long Does Protection of a Mark Last?

Unlike its two siblings in the intellectual property law family, patents and copyrights, a mark can last indefinitely as long as trademark maintenance (paying the required fees and filing the proper declarations with the USPTO) is properly completed and the mark remains in commercial use. Roughly speaking, there are declarations and fees due between the fifth and sixth years after registration, between the ninth and tenth years after registration, and every ten years after. If these requirements are met, the mark registration will never expire.