A trademark is any word, name, symbol, device, or any combination of those things.  Trademark law protects words, phrases, symbols, product shapes and packaging, sounds, colors, and designs that identify the source of the goods or services of one party and distinguishes them from the goods or services of others.  Some examples of trademarks are:

• Words (Sony, Nike)
• Numbers (7-11)
• Logos/Pictures (Morton Salt Girl, McDonald’s Golden Arches)
• Slogans (Just Do It)
• Symbols (The Nike Swoosh) 
• Characters (Mickey Mouse)
• Sounds (NPR Jingle, NBC Chimes)
• Shapes (Coca-Cola Bottle)
• Colors (Brown for UPS)

It depends! Typical lawyer answer.  

Trademark rights are jurisdictional, meaning that just because you have rights in one jurisdiction, like the U.S., doesn’t mean you have rights in another jurisdiction, like Canada, the EU, China, or anywhere else for that matter. The rules for how long a trademark registration will be valid vary by jurisdiction.

Here in the U.S., federal (there are also state trademark rights) trademark rights are based on use; in other words, if you use a trademark in interstate commerce (generally, this means across state lines, although there are exceptions) to offer and sell a product or service. Without formal registration of your trademark, if you actually use your unregistered mark in interstate commerce you have what are called “Common Law” rights in your trademark. However, you will not receive all the valuable benefits of the federal Lanham Act, the law governing federal U.S. trademarks, unless you formally apply for registration or your trademark and are granted a Registration Certificate by the United States Patent and Trademark Office (the “USPTO”).

In the United States, a trademark registration can last forever, so long as you continuously use the mark in commerce and certain maintenance and renewal deadlines are met and required filings are completed. For example, in the U.S., a trademark registration must be renewed between the 5th and 6th year after registration, between the 9th and 10th year after registration, and every 10 years thereafter. Failure to file the appropriate renewal documents with the USPTO will result in the registration being cancelled. If this happens you may still have Common Law rights, but you will lose all the Lanham Act statutory benefits granted by registration. Most countries have a similar renewal system, although the timing and requirements may be different.  

Determining whether a trademark is available for adoption, use, and registration is a complicated process and we recommend that you hire an experienced trademark attorney to help you. To start, you should do a search online to see if anyone else is using the same trademark for the same or similar goods or services. Next, you can do a search at the United States Patent and Trademark Office: https://www.uspto.gov/trademarks. However, this level of search is likely insufficient to determine whether a trademark is available to adopt and use a trademark. An experienced trademark attorney will be able to do a more thorough search, with the intricacies of trademark law in mind, and give you an opinion on whether you are likely to be able to use the trademark without infringing anybody else’s rights, and whether a mark is likely to be approved the USPTO for registration.

Yes! You may be able to obtain trademark protection for a unitary phrase or a slogan.  What is a “unitary phrase?” The United States Patent and Trademark Office says that a phrase is “a group of words that are used together in a fixed expression,” “two or more words in sequence that form a syntactic unit that is less than a complete sentence,” and “a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence.” This differs slightly from a slogan. A slogan, according to the USPTO, is a type of phrase and is defined as “a brief attention-getting phrase used in advertising or promotion” and “a catch phrase used to advertise a product.”  

Many companies obtain trademark registrations for their phrases or slogans. For example, Just Do It® is a very famous slogan used by Nike. Here at Crown®, LLP we have a trademark registration for our slogan, Advising Creativity®.

Keep in mind, though, that a trademark must be used to identify the source of a good or a service, i.e., you must be offering goods or services in connection with the phrase.  For example, the phrase “Let’s get ready to rumble” has been made famous by sports announcer Michael Buffer. While Mr. Buffer owns trademark registrations for the phrase, that doesn’t mean he can stop anyone from simply saying it. Like any other trademark application, Mr. Buffer had to define the goods or services that he is offering with this phrase, which is generally his entertainment and announcing services, as well as promotional items like clothing and coffee mugs.

Yes! A trademark is any word, name, symbol, or device, or any combination of those things, that is used by a person or company to identify and distinguish his/her/its goods or services from those manufactured, offered, or sold by others, and to indicate the source of the goods or services. Trademark law protects words, phrases, symbols, product shapes and packaging, sounds, colors, and designs that identify the source of the goods or services a party and distinguishes them from the goods or services of others. Some examples of words that are protected by trademark law are Sony®, Nike®, and our firm name, Crown®.

It depends. Here in the U.S., you must be using your trademark in interstate commerce to obtain registration (if you are using a mark only within a state and not in interstate commerce, it is possible to secure a state trademark registration). There are two types of trademark applications that can be filed at the U.S. federal level. The first is an application for a trademark that you are already using in interstate commerce, which generally speaking means across state lines. The second is an application for a trademark that you have a bona fide intent to use in interstate commerce, but haven’t yet used; for example, you have a business plan but just haven’t launched your business yet. A use-based application will usually be faster because you are already using the trademark. If you have not yet used your trademark, you can still file an application, but it will not be registered until you use it and prove that use to the United States Patent and Trademark Office (“USPTO”). Also, once a trademark application is filed, it goes through a substantive examination process. Sometimes an application moves quickly through this process, while other times there are issues that must be addressed before an application can move forward. Even after the USPTO approves a trademark for registration, third parties may protest the registration and file an Opposition. This will further delay an application. The fastest you can expect for a use-based trademark application with no issues is about 9 months from application to registration. However, it could be much longer than that. You can use your trademark while the application is pending.

There are important benefits to trademark registration. A registration discourages others from using confusingly similar trademarks by making the trademark easier to find in a trademark availability search, thereby preventing problems before they even begin. A registration also protects against registration of confusingly similar marks because the United States Patent and Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse to register such marks, thereby enlisting the power of the U.S. government in helping to prevent infringement at no additional cost to you. Also, a trademark registration grants a presumption of nationwide use from the date of application, which can be vital in dealing with competitors. A registration also serves as evidence of the validity and exclusive ownership of the trademark for the goods and/or services listed in the registration, with heightened protection after five years, which can help not only in court proceedings, but perhaps more importantly in quickly convincing others to cease using a similar trademark without the need to go to court. It also gives the trademark owner the right to use the ® symbol when the mark is used for the goods and services listed in the registration (unregistered marks may be designated by a superscript “TM”), giving your products or services more marketing cachet, and putting competitors on notice that you are serious about protecting your rights. A registration grants the right to sue in federal court and, in certain cases, obtain treble damages and attorneys’ fees, thereby providing for potential significant monetary recovery in appropriate cases. There are many other benefits to trademark registration, and you should consult a trademark attorney if you have questions.

Yes! That is, if you are using that business name to offer and sell goods or services to the public. There are important benefits to trademark registration, such as that it discourages others from using confusingly similar trademarks by making the trademark easier to find in a trademark availability search, thereby preventing problems before they even begin. There are many other benefits to trademark registration of your business name, and you should consult a trademark attorney if you have questions.

Use of the registration symbol ® for registered marks is required to recover damages and other monetary relief in a lawsuit for trademark infringement under the Lanham Act where there was no actual notice of the registration. In any suit for infringement, if you have failed to use the registration symbol you may be barred from recovering any profits or damages unless you can conclusively prove that the defendant had actual notice of your trademark. In some instances, this can be difficult, if not impossible. As such, use of the registration symbol is imperative, and it is in your best interest to use the proper trademark symbol whenever your trademark is used.

For unregistered marks, you should use the TM (trademark) or SM (service mark) symbol. For registered marks, you should use the ®, or the wording “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.”

Use of the TM, SM, ®, or the wording above is not required each and every time a trademark is used. If your mark appears more than once on a single page, for example in an advertisement, or on the website, use of the TM (trademark) or SM (service mark) or registration symbol ® in at least one prominent instance of the mark is likely sufficient to provide notice under the Lanham Act (the primary U.S. trademark law).

As to where it goes, it should be put directly to the right of the trademark, and it usually appears in superscript. For example, Crown®, LLP. The TM or SM would go in the same place if the trademark were not registered.

Technically, yes. Any licensed trademark attorney may file an application with the United States Patent and Trademark Office. In fact, anybody can file a trademark application, even non-attorneys. However, trademark law is nuanced and complicated and hiring an experienced trademark attorney is imperative if you want it done correctly.

We get this question a lot!  There is no such thing as an international trademark, or worldwide protection for a trademark.  Trademark rights are jurisdictional, meaning that just because you have rights in the U.S. doesn’t mean you have rights in Canada, the EU, China, or anywhere else for that matter.  If you are offering your goods or services outside of the U.S., you should hire a trademark attorney experienced in foreign trademarks.  For instance, here at Crown®, LLP we have a vast network of attorneys who we work with outside of the U.S. to assist our clients with trademark filings in other jurisdictions.  We also have extensive knowledge of international trademark treaties, which, in some cases, allow U.S. attorneys to file trademark applications in foreign jurisdictions, and may recognize the priority established by earlier-filed U.S. registrations.  

Here in the U.S., federal (there are also state rights) trademark rights are based on use; in other words, if you use a trademark in interstate commerce (generally, this means across state lines, although there are exceptions) to offer and sell a product or service you have what are called “Common Law” rights in your trademark. However, you will not be accorded all the valuable benefits of the federal Lanham Act, the law governing U.S. trademarks, unless you formally apply for registration and are granted a Registration Certificate by the United States Patent and Trademark Office (the “USPTO”). Not all countries recognize Common Law trademark rights.

It depends. Trademarks only protect you for the specific goods or services that you are offering in connection with the trademark. For example, you can’t obtain a trademark registration and then stop all others from using that word, phrase, or symbol. It’s not a monopoly. But you could stop another party from using or registering a trademark that is identical or similar to yours for the same or similar goods or services.

There are many companies that share identical trademarks, but for different goods or services. Some examples of this are:

1. Delta Airlines, Delta Dental, Delta Faucets
2. Dove Soap and Dove Chocolate
3. Apple Records and Apple Computers
4. Pink (Victoria’s Secret) and Pink (Thomas Pink)
5. Finlandia Cheese and Finlandia Vodka
6. Domino Sugar and Domino Pizza

The most common form of trademark infringement is a likelihood of confusion with another trademark, for example, use of the same or similar trademark for the same or similar goods or services. A likelihood of confusion exists when consumers are likely to assume that a product or service has a source other than its actual source because of similarities between the two sources’ marks or marketing techniques. There are several factors that go into the consideration of whether the use of one trademark is likely to be confused with that of another. Marks may be confusing if they are similar in sight, sound, connotation, and/or marketing channels, and are being used on similar goods or with similar services. There are other forms of trademark infringement as well, such as passing off, blurring, tarnishment, and disparagement, among others. If you believe your trademark has been infringed, we recommend that you contact an experienced trademark attorney to advise you.

The typical lawyer answer is “it depends.”  

Just like in copyright law, the law allows for the fair use of someone else’s trademark without their consent in certain circumstances.  Fair use is a defense against a claim of infringement and generally falls into two broad categories: (1) “classic” fair use, and (2) nominative fair use.

1. Classic Fair Use: This is when another’s trademark is used not as a trademark, but rather to describe the “infringer’s” product or service.  For example, a term may have a descriptive meaning in addition to its secondary meaning as a trademark.  For example, the motorcycle manufacturer Harley-Davidson’s use of the phrase “ride hard” was considered a fair use and did not infringe an apparel company’s registered RIDE HARD® trademark because it was used in a descriptive manner.
2. Nominative Fair Use: This is where a third party’s trademark is used to describe that party’s product or service.  This typically occurs when simply talking about the mark owner’s product or service, or for the purpose of comparison to the mark owner’s product, such as in comparative advertising.  There are a few requirements: (1) you must need to use the trademark to identify the product or company; if the product or service is identifiable without using the mark, you can’t use it; (2) you can only use as much of the other party’s trademark as necessary; and (3) your use of another’s mark cannot suggest their sponsorship or endorsement of your own product or service.  For example, in an article about Major League baseball, one could say “the professional baseball team that plays in San Francisco,” but it is easier – and a nominative fair use – to say the “San Francisco Giants.”  Nominative fair use generally encompasses the categories of comparative advertising, parody (an attempt at humor through the use of someone else’s trademark), and the non-commercial use of trademarks.  Be careful about relying on the fair use defense of parody – sometimes it provides the basis for a fair use defense but, often, it is simply an infringement.

No.  This is a common mistake, for example, one may ask: “can I trademark my logo?” or “has my competitor trademarked this word?”

A trademark is also not a noun.  For instance, you do not “obtain a trademark” in your brand name or logo, although you may obtain a trademark registration. 

A trademark is actually an adjective!  A trademark is any word, name, symbol, or device (or any combination thereof) that identifies and distinguishes the source of the goods or services of one party from those of others.  A trademark is an adjective used to describe a generic common descriptive name (a noun).  For example, a Kleenex^® tissue, a Peet’s^® coffee, or Nike^® running shoes.  A trademark is a brand name and does not identify a product or service itself.  Clients (or their marketing departments) often bristle at this because it can be cumbersome to always include the product or service name in an advertisement – e.g., “come eat at McDonald’s^®!” rather than “come eat at McDonald’s^® restaurant!”  However, proper use is essential for long term viability of the trademark and its validity.

I know we are splitting hairs concerning grammar here, but we can’t help it – we are lawyers!

It depends on where in the world you are! Here in the U.S., and in many other countries, trademark is one word. However, in some countries, such as the United Kingdom and Australia, it is two words: trade mark. Until mid-2019, Canada hyphenated the word as trade-mark. However, Canada has now adopted the singular word version, trademark.