Dispelling Myths About Trademarks
Dec. 29, 2022
In the United States, unlike other countries, a trademark receives common law protection once someone starts using it in connection with providing goods or services. A trademark is any word, symbol, design, or combination of these elements that distinguish one's goods or services.
Technically, the symbol TM (trademark) is used to identify a mark being used to sell goods, and the symbol SM (service mark) is used to identify a mark for providing services, though, in practical terms, the trademark represents both goods and services.
Why do you need to register your mark with the United States Patent and Trademark Office (USPTO)?
There are several reasons, perhaps the most important of which is that it provides nationwide protection of your mark and also establishes a strong case that you were the first to use it for your particular goods or services, though, in fact, someone else may have used it prior to you but never registered it. You also get to use the Circle R symbol -- ®.
As an intellectual property attorney serving Kansas City, Missouri, and neighboring communities such as Columbia, Springfield, and Rolla, I receive many questions about trademarks and encounter many myths associated with registering and using a mark. If you are looking to register or protect your mark, contact my firm at the Law Office of Julie Scott LLC today for reliable legal assistance.
Common Trademark Myths
You Should Wait Until Your Business Grows to Register Your Trademark
While you will get common law protection for your mark the moment you start using it in connection with your commercial enterprise, registering it with the USPTO is an important step to provide nationwide protection, as well as giving you a shield against someone else swooping in and registering the same mark for the goods or services you provide. If an infringement case arises regarding your mark, USPTO registration can only help.
You Do Not Need to Do Anything Else Once You Register Your Trademark
The USPTO requires maintenance and re-registration fees and proof of continued use to keep a registration. Trademark registration is valid for ten years, but at five years after the initial registration, you must file a Declaration of Use to affirm you’re still using your mark and pay a fee for the reaffirmation. Thereafter, you can renew the registration every ten years and continued to use your mark in the intended way for which you registered it.
The USPTO can declare a trademark “abandoned” if it is not used for three years for its declared purpose. As a practical concern, you must also be vigilant in protecting your mark by searching if others have somehow used your mark for the same goods or services you provide.
Your Business Name Is a Common Term, So You Cannot Be Sued for Trademark Infringement
Generic or common terms generally are not allowed to be trademarked at the USPTO. However, if a common term is used particularly, it may well be available for registration.
Consider Apple computers. You cannot register apple if you’re selling apples, but if you’re applying the term to computers, or other products, you can. So, the answer to this question depends on whether you’re using a common term in its basic sense – that is, you’re using the word apple to sell apples – you’re likely immune from trademark infringement charges, but if you’re using it to sell computers, you could find yourself being sued.
You Own a Trademark Registration, So No One Else Can Use Your Mark
This is true only if, as in the above question, the mark is being used for the same goods or services. The USPTO maintains a system of what it calls classes. A trademark registered in the class for machinery products, for instance, can still be registered by another party if their use is for a different category, say jewelry products.
The standard is that so long as a similar mark does not confuse the consumer, it can be registered. Think of Dove Bars and Dove Soap. They use the same word but for different products or classes of goods.
You Can Stop Anyone From Using Your Trademark Because You Officially Registered It
Maybe, but a USPTO registration covers only infringement in the United States. If you’re worried about overseas infringement, you must register in those countries.
Also, there is the concept of senior user and junior user or senior and junior owner. You may well have registered your mark, perhaps in 2020, but another party started using the mark in 2010 and is thus the senior user and would have rights to the mark under common law. The senior user, of course, would have to prove when their use began. Also, see the above discussion about classes.
Trademark Applications Are Easy to File, and Registration Is Easy to Obtain
You can indeed file for a trademark online. That’s the easy part, but the USPTO will assign an examiner to research whether your mark is truly unique for the goods or services you intend. The process can take a year or more. No registration is guaranteed. You can expect delays and even further queries from the trademark examiner, even an “Office Action” denying your registration.
What to Do if You Suspect Trademark Infringement
If someone else is using your mark for the same goods or services you provide, then there is certainly a possibility of infringement, but as mentioned above, the other user may have preceded you in using the mark, becoming the senior owner under common law.
Also, unless the mark is confusing to consumers and robbing your business, your case might be hard to prove. Your best recourse is to seek the guidance and counsel of an experienced trademark attorney.
Legal Support You Can Trust
As a former research scientist, I know the hard work that goes into the creation of intellectual property, including trademarks. You certainly don’t want someone else coming along, stealing your creation, and using it for their benefit.
If you have a mark you intend to use for your business, or are already using, contact me for a free consultation at the Law Office of Julie Scott LLC. I will advise you on the proper steps to take and help you navigate the USPTO trademark process to gain the protection of the law. I also stand ready to help you with any instance of infringement on your mark. I proudly serve clients in Kansas City, Columbia, Springfield, and Rolla, Missouri.