Trademark FAQs

We know you have questions, so we have the answers

Trademark Types

What Is a Trademark?

Trademarks are words, phrases, symbols or designs that identify and distinguish the source of your goods or services from those of others. Trademarks may be words, phrases, or logos, but combinations of colors, sounds, and even odors have also been registered.  Simply put, a trademark is what your customers recognize as your brand.

The key word in the definition above is “distinguish.” If your chosen phrase, symbol, design, or logo does not distinguish your products or services from your competitors’ products or services, then it does not function as a trademark.

Trademarks are not only vital to your business, but they’re helpful to consumers because they assure consumers that the marked product they’re buying is associated with your business.

Without trademarks to distinguish your products, consumers may become confused about which product or service is actually from your business. For example, consumers looking for a John Deere® tractor know they’re getting one when the tractor is green and has the jumping deer logo on it. Clever slogans also help consumers. If they’re looking online for insurance from Allstate®, they know they they’re in the right place when they see the “You’re In Good Hands” slogan.

What Are the Types/Formats of Trademarks?

Trademarks generally come in three formats: standard character, stylized/design, or sound mark. The standard character format is used to register any combination of words, letters, or numbers. The chosen combination constitutes the trademark—there’s no font, size, color, style or any design claimed as part of the mark.

The stylized/design format is appropriate for trademarks that have a design element, or the words, letters, or numbers have a distinctive stylized appearance (e.g., logos). Standard character and stylized/design formats cannot be mixed in one mark.  Rather, two applications should submitted to the USPTO, one for the standard character mark and one for the stylized/design mark in order to protect both the simple standard character usage and the fanciful design portion of the mark.  Think of the Coke name and logo.  Coke wants to protect both the word mark “Coke” and stylized logo “Coke.”

What Are the Differences Between Trademarks & Copyrights?

The general public, and some small businesses, often use the terms trademark and copyright interchangeably. However, these are very different, each having its own purpose and legal protections.

Trademarks protect the names, slogans, and logos used by businesses to identify themselves and their products or services, distinguishing themselves and their products or services from competitors. With a registered trademark, other businesses in the United States are prevented from using the same identifying name, slogan or logo.

Copyrights, on the other hand, protect the content of original expression which is fixed in a creative work. For example, song lyrics, music, books, movies and paintings are examples of works having copyright protection.

The copyright owner has control over the reproduction of the creative work. Unauthorized copying of copyrighted material can result in the owner suing for copyright infringement.

There are some cases where trademarks and copyrights overlap. For example, a logo can have both trademark and copyright protection. The logo can serve to both identify and distinguish a business or product, but it also be an original creative work or artistic expression.

Benefits of Getting a Trademark

What Are the Benefits of Registering a Trademark?

When a business owns a registered trademark, competing businesses cannot use the protected name, logo, or slogan on their products or services. The business has the exclusive right of use throughout the United States.

For example, Fuji is a common variety of apples. Assume someone began producing a new line of smartphones, called them FujiFones, and placed a logo that looked like an apple on it. Due to Apple’s famous logo, they should not be surprised when Apple sues them for trademark infringement.

This scenario is an example of the broad protections that trademark registration confers upon businesses.

More specifically, some benefits are as follows:

You Are the Presumed Legal Owner of the Mark

Federal trademark registration confers upon the Registrant a presumption of ownership of the mark, including the exclusive right to use the trademark throughout the United States on the goods or services claimed. You also have the right to prevent competitors from using words, logos, or slogans that are confusingly similar to your mark on their goods or services. You have ultimate control over use of your mark, and which products or services are associated with it.

You Can Sue Others That Use the Registered Trademark

This ability to file a federal lawsuit is a major advantage of having a federally registered trademark. When a business chooses its name, its incorporation and/or fictitious business name filing does not confer trademark protection on that name.  That name is simply the name by which a company identifies itself. However, competing businesses may have similar names, and if an out-of-state competitor uses the same name, there may be little legal recourse to prevent confusion.

With federal trademark registration, the registrant can sue infringing businesses in federal court to prevent confusion.

Your Trademark Appears in the USPTO’s Database

Once a trademark is registered, it is added to the Federal Registers of Trademarks, easily available to the public on the USPTO’s Trademark Electronic Search System (TESS).  Any other business wishing to use a selected trademark will generally search this database prior to filing its own trademark application, and having your trademark listed there may discourage them from even adopting a similar trademark. Therefore, your trademark’s listing in the database minimizes the chance other legitimate businesses will choose a same or similar trademark. It also makes defending your trademark easier in court, because infringing companies can’t claim they weren’t aware of your trademark.  Your mark would easily come up in a search.

Offers Protection with Homeland Security and Customs from Wrongful Foreign Imports

Once you obtain a federal registration of your trademark, you can then record that registration with the National Intellectual Property Rights (IPR) Coordination Center of the U.S. Immigration and Customs Enforcement (ICE) at the Department of Homeland Security.  This U.S. task force combines the resources of 23 U.S. and foreign agencies in the investigation and interdiction of counterfeits and knock-offs and the enforcement of your trademark rights.  Homeland Security can seize products at the border or even in warehouses within the United States if they have been imported in violation of US law. The key to accessing these resources and protecting your rights is a federally registered trademark.

Easier International Registration

Businesses that seek trademark protection in foreign countries and territories can apply by claiming priority under international treaties from their US trademark application filing. Businesses that already have trademark registrations in the United States often have an easier path to protection in many foreign countries.

Right to Use the ® Symbol

While any company claiming trademark rights can use the TM symbol, only companies holding a federally registered trademark are legally allowed to use the ® symbol. Other entities using the ® symbol without federal registration are in violation of federal law. This is discussed below in further detail.

Service Mark

What Is a Service Mark?

When discussing trademarks and service marks, the term “trademark” is often used to refer to both trademarks and service marks.  Service marks are similar to trademarks, except that they are used to distinguish services, whereas trademarks formally apply to only products.

According to the USPTO, a service mark “is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods.”

Your business needs a service mark if it provides a service, rather than a produces and sells goods. It may seem clear enough, but sometimes the two types of marks can overlap and occasionally there is confusion about which type of mark is appropriate. When reviewing your application, the expert trademark attorneys you communicate with through the AKeyMark platform can help you decide which is appropriate for your business.

Example of Service Mark

Avis Car Rental provides rental vehicles, and one of its slogans is “We Try Harder.” Although Avis deals in vehicles, “We Try Harder” is a service mark because it refers to its service of renting out its fleet.

Although it sells goods and products in its stores, “Kmart” is a service mark because the store provides retail services. However, the store also sells products under its own brand. When branding its own products, “Kmart” is being used as a trademark.

Marks Can Be Both Trademarks and Service Marks

Finally, sometimes a phrase (or symbol, design, or logo) functions as both a trademark and a service mark. Assume there is a company named TakenBake that delivers take-n-bake pizzas. The company comes up with a new slogan: “Faster to Your Oven”, with the words enclosed in an open oven. If the company used the slogan to brand its pizza delivery service, then they are using their slogan as a service mark.

However, TakenBake also sells its take-n-bake pizzas through a distributor at local grocery stores. The slogan enclosed in the open oven is on the packaging. In that case, the slogan is functioning as a trademark because it brands the pizza itself.

As you can see, whether a mark is a trademark or service mark can depend on context.

Registration: Trademark vs. Service Mark

Whether registering a trademark or service mark, the process for registration with the USPTO is nearly identical. The difference between a trademark and service mark can be trivial, but important in providing the correct materials and information to support your application.  This is one reason that the USPTO encourages applicants to get legal counsel for help with their application. The AKeyMark Platform enables you to obtain multiple levels of vital legal assistance, beginning with an initial paralegal review and AKeyMark Audit of your AKeyMark Questionnaire.  This first level of review is then followed by the further review by, and then your telephone conference with your experienced trademark attorney before your application is filed in the best position possible to be approved by the United States Trademark Office.

Trademark Registration Symbols

What Do All of the Trademark Registration Symbols Mean?

The three major trademark symbols are ®, TM, and SM. They have different uses and provide varying levels of claimed legal protection. Your business should use the correct symbol to ensure maximum legal protection and compliance with the law.

The Trademark Symbol ™

The trademark symbol ™ may be used if you use the mark and claim “common law” rights to it as a trademark. By using this symbol with your mark, you notify the public that you claim rights to the mark under the common law.  A registration is not necessary to use the “TM” symbol in association with your mark, and you can continue using the symbol even if the USPTO denies your application.

The drawback is that trademark protections under the common law are limited and are generally insufficient to offer you the best protection possible. One failing of relying on common law protections is that your rights only extend to the level of your usage and the level of consumer recognition of the mark symbolizing your products or services as coming from your company, which may be quite limited. In order to enforce your rights you will have to obtain expensive evidence, like surveys and experts to show the extent that you have used the mark and the level that consumers recognize that mark as indicating your company.  For example, if a business has a common law trademark and usage throughout Georgia and Alabama, it has little recourse against a business using the same mark on similar goods in Oregon; a geographically distant location where consumers are not familiar with the company.  Federal registration creates a presumption of usage throughout the United States and its territories.

The bottom line is that if you have a brand, start down the path to getting an appropriate mark registered. Think of the TM symbol as a temporary solution until federal registration is achieved.

The Trademark Symbol ®

The ® symbol signifies that the trademark is listed on the United States Register of Trademarks and may only lawfully be used after the USPTO registers a trademark or service mark.  Furthermore, once a mark is registered with the Trademark Office, the use of the ® symbol with your mark is necessary to obtain profits or damages under a lawsuit brought under federal trademark law, unless you can show that the infringer had actual notice of your registration.  It is important to use the ® symbol with your mark if the trademark is federally registered.

The ® symbol cannot be used while the application is only pending, if the USPTO has denied your application, or if you have failed to renew it with USPTO. Once your trademark is registered, the ® symbol may be placed anywhere near the mark, but is usually placed in the upper right corner of the mark.

The ℠ Symbol

The SM symbol, which stands for service mark, is the equivalent of the TM symbol, except it is for services.

Trademark Necessity

Why Do You Need to Register Your Trademark?

Let’s review a scenario to make it clearer why and when most businesses need trademark protection.

Assume that Tom Smith starts up a leather glove business in his garage in Maine. At first, it’s mostly a hobby, but with time he hones his skills and starts selling a lot of high-quality gloves. Tom names his company, and gloves, “Leather Heaven.” Like most small business owners, Tom is busy and overwhelmed with all the challenges facing a growing business. He doesn’t register his brand.

Tom’s gloves become popular due to their superior artisanship, durability, and comfort. The gloves start to get brand recognition in Maine where Tom lives.

The next summer while on vacation in Colorado, Tom sees a display of shoddy gloves. They’re made of cheap material and poor artisanship, but have “Leather Heaven” stenciled on them.

Later, Tom is online and he notices a competitor company called “Leather Heaven” selling gloves named “Leather Heaven.” The competitor is based in a Seattle.  After looking into it, Tom learns that the Seattle competitor already filed a federal trademark application for the name “Leather Heaven,” and the USPTO approved it. Unless Tom can prove in an expensive proceeding that the competitor knew about Tom’s usage, then Tom will be limited from expanding his business and the out-of-state competitor will have more wide ranging rights.  Tom may be able to continue his usage in his limited market, without expansion, as long as Tom can prove his prior rights, again in an expensive proceeding.

Although Tom is still able to operate, he’s very limited. If he really wants to grow his business, Tom would likely want to start selling his gloves over the internet to people around the country. Now he has a problem, because he can’t legally use his own company’s name or call his gloves “Leather Heaven” in other parts of the United States. Tom may be forced to change his company’s branding, or engage in an expensive legal battle.  None of this would have happened if Tom had begun advertising his mark and properly registered his trademark with the United States Trademark Office.

Company Registration vs. Trademark Registration

Often times, small business owners may not register their trademarks due to confusion over the registration requirements for a business name. They may mistakenly believe that successful business name registration with a state, usually through a Secretary of State’s office, also confers trademark registration.  However, that belief is incorrect.

Filing an application with the Secretary of State for a company name, or with a County Clerk for a fictitious business entity is a completely different process, in which you are merely obtaining a legal identity and/or status for your company for tax purposes, legal liability, and the ability to receive money and pay bills. The threshold of distinction between names is low for these purposes, and often the Secretary of State will approve a company name even it is very similar to another one in the same state, or even the same as an entity in another state. The process has nothing to do with branding your company and its products or services.  Trademark protection, on the other hand, is meant to protect your branding from similar names that might cause your consumers confusion in the market.

Further Benefits of Trademark Registration; Creating and Protecting Your Asset

In addition to the legal benefits of trademark registration, there are other benefits to consider.

A strong trademark gives you an advantage over your competitors.  It builds goodwill by having consumers recognize your brand as being an indicator for your products or services.  That trademark effectively is the embodiment of that goodwill that you have spent years building through exceptional customer service and building relationships.  You don’t want your competitors to use your own goodwill in their products by adopting a similar name that your consumers might be confused into thinking they’re working with you when they are really working with your competitors.

By protecting your brand with a registered trademark, your competitors won’t be able to use your own name against you. They won’t be able to play off of your goodwill.  You’ll be able to stop them if they try to do so.

A strong trademark also allows you to control the uniformity of messaging regarding your brand. Once multiple people are using similar brands, the message around that branding becomes diluted to the consumers and you lose control over how the consumers perceive products or services in the market and how they perceive of your company as being in the market.  Think of your trademark registration as an asset, and treat it like businesses treat their assets—by protecting and optimizing them.

Common Questions About Trademark Registration

How Long Does Registration Take?

Successfully registering a trademark with the USPTO is a lengthy process, often taking a year or longer. There are several steps to the process, and a problem at any step could delay the process for months. AKeyMark’s online application process can smooth out the bumps and minimize needless delays by cost effectively and efficiently driving your communication with your expert trademark attorney.

Do I Need a Trademark Attorney?

To competently apply for trademark registration, a comprehensive understanding of U.S. trademark law is required. This is why the USPTO recommends that applicants work with trademark attorneys.

The AKeyMark Platform allows you to derive the benefits of efficient and easy to use communication tools, with an online questionnaire, and then driving multiple layers of systemic review and advice beginning with an initial paralegal review of your questionnaire, using the AKeyMark Audit, followed by your dedicated and experienced trademark attorney, reviewing your application prior to filing, and even a 15 minute consultation with your dedicated attorney to make sure that your trademark application is in the best position possible for approval by the US Trademark Office.

Through the AKeyMark Platform you are hiring the services of Sherman IP LLP for your legal work, a top Intellectual Property law firm that represents some of the largest companies in the world.  It’s the best of both worlds!

Statistics show that the odds of having your trademark application approved doubles when skilled attorneys handle it. In trademark applications, attorneys essentially act like guides through the process. The result is a better chance of approval, while at the same time avoiding common mistakes that could lead to the USPTO delaying or rejecting your application.

That’s what our job here at AKeyMark is – making your trademark application process painless, yet offering you the highest chances of success at obtaining a federally enforceable trademark registration at a cost-effective rate.

Trademark Application Rejection

What Are Some Reasons Trademark Applications Get Rejected?

Three of the major reasons why the USPTO may reject your trademark application are that the trademark is not sufficiently distinctive, is too generic, or can be confused with existing trademarks.

Nondistinctive Trademarks

The protection that a trademark provides is based upon how strong a mark is in terms of consumers’ being able to understand which goods or services come from whom. Strong marks benefit businesses because consumers associate the particular products and services using the mark as being sourced from a particular vendor. Strong marks also benefit consumers because they receive consistent quality when they’re assured of getting the right product from the right business. The stronger a mark is, the more likely the USPTO will register it.

The strongest marks are typically arbitrary. For example, “Kodak” is an arbitrary word that had nothing to do with cameras when it was adopted.  Another example is apple. The apple fruit has nothing to do with computers, so Apple’s trademark is an example of an arbitrary use.

Weak marks are those that contain words descriptive of a quality or feature of the product or service on which they are used. While this may seem counterintuitive, an example will show that descriptive trademarks make them much less distinctive. For instance, if there is an automotive company that sells cars, and its trademark is “Speedy Fast”, this does little or nothing to distinguish those cars from the sports cars of other manufacturers.  Those other car manufacturers would also say that their cars are speedy and fast.

Where the strength of a trademark is unclear, it’s then up to the trademark examining attorney at the US Trademark Office to determine whether a proposed trademark is sufficiently strong to be distinctive.

Sometimes the trademark examining attorney determines a mark is not distinctive enough to be registered, or more formally, to be placed on the Principal Register. Rather than rejecting it outright, the examining attorney can recommend that the mark be placed on the Supplemental Register. This allows the mark’s owner to use the ® symbol for an interim period while the mark becomes familiar in the consuming public’s mind as being indicative of the owner’s goods or services.  The trademark laws create a presumption that if, after five years of being on the Supplemental Register, the owner continues to be the exclusive user of the mark, then the owner can re-apply for placement on the Principal Register. The second application may be more successful than the first one because there has been time for the mark to gain “secondary meaning”, indicating that over time, the public has come to associate a company’s products or services with the perceived descriptive trademark.

Another benefit of the Supplemental Register is that anyone performing a standard trademark search will find the mark, dissuading that party from choosing a same or similar trademark for their similar goods or services.

Even though supplemental registration is not as legally beneficial as being listed on the Principal Register, being registered on the Supplemental Register does confer limited rights on the owner, and may make it easier to be listed on the Principal Register later if the mark acquires secondary meaning.

Generic Trademarks

The USPTO will also reject trademark applications for being a generic terms for the goods or services it is being used with; i.e. it describes a class of products rather than a specific product from a specific business. For example, “Blue Jeans” and “Computers” are generic. If a company actually got a trademark for one of these, no one else could use a word that formerly had described an entire class of products. This would be poor public policy, and therefore generic terms are not accepted.  The trademark office will not allow one vendor to take a generic term out of usage.

Although a generic word won’t work as a trademark, a generic word may be included in a trademark term. For example, “Dell Computers” has the generic word “computers” in it.

However, when using a trademark with a generic word in it, the owner must concede that others can still use the generic part of the mark for their goods. This filing, where you acknowledge that a portion of your mark is not claimed on its own, is called a disclaimer.

Confusingly Similar Trademarks

The intent of a trademark is to distinguish one company’s goods or services from its competitors. A proposed trademark that confuses consumers, rather than distinguishing a company or product for consumers, goes against the intent of trademark law. Therefore, the USPTO will reject confusingly similar terms.

For example, imagine a trademark, “PowerFishingWorm”. That trademark, while a bit descriptive, refers to rubber worms that a company sells for salmon fishing. If someone applied for “PowerfulFishingWorm” and sold rubber worms for bass fishing, there is the potential that consumers would confuse the two products.  Here, there is a similarity in both the trademarks themselves and the goods (or services) they are being used upon.

However, two completely different industries might have the same or similar marks and be allowable. A common example is “Delta”. Consumers looking for Delta Airlines are unlike to confuse the airline’s “Delta Official Airline of Champions” service mark with the company called Delta that manufactures faucets and bathroom-related fixtures under the trademark “Delta”.

There is a lot of gray area surrounding whether trademarks are confusingly similar to each other. The trademark office uses a specific set of factors which it analyzes to determine whether two trademarks will conflict with each other.  These factors include how similar the marks and goods or services are, and how much care the consumer would be required to exercise to distinguish between the two products or services. When considering these factors, appearance, sound, and meaning are important considerations, and a lawyer becomes a necessity in formulating the arguments and getting your application allowed.

Confusion is often an important issue in determining whether a mark should be registered. Therefore, AKeyMark recommends that a basic trademark search be performed before paying the trademark application fee. AKeyMark allows you to conduct your own free search using the AKeyMark Platform before you even start your questionnaire.

Intent-to-use Trademark (ITU) Applications

What Are Intent-To-Use Trademark Applications?

One of the critical factors to successful trademark registration is being recognized as the first business to adopt a trademark. First user status is achieved one of two ways: being the first to actually use the trademark, or through the filing of an intent-to-use trademark application where the trademark office allows you to reserve a trademark.

Actual use means that the business is the first to use the trademark on a product sold in commerce, or for service marks, the first to associate the mark with its services to the public in advertising or marketing.

For an intent-to-use (ITU) trademark application to be accepted, two conditions must be met. First, the application is filed prior to another business actually using the mark, or filing their own ITU application first. Second, after filing the ITU trademark application, the applicant completes the registration process and begins using the trademark on the claimed goods or services within six months after the USPTO allows the application. This six-month deadline can be extended up to three years, through six-month extensions, provided there are legitimate reasons for the delay and the Applicant pays an extension fee at each six month interval.

Should You File an ITU If You Haven’t yet Used the Mark?

Even if you haven’t begun using your trademark with your goods or services, there is a distinct advantage to filing an ITU application: your filing date becomes established as if it were the first date you started using the mark (assuming you do put the mark in actual use and complete the USPTO application process). The date of first use can be critical if a conflict arises with another mark, whether it is at the USPTO or in actual commerce.

If you do decide to file an ITU trademark application, it is important to act quickly, because you want to establish the earliest date of use as possible. While an ITU trademark application costs the same at filing, there is further governmental fees to file a Statement of Use, as well as service charges by your attorney in properly preparing and filing the document.  However, it’s usually worth the extra expense. This is especially true when you invested time or money to create a truly distinctive mark, and plan on a significant investment preparing to launch products or marketing campaigns, but are unwilling to make the investment until first use has been established.

What Happens If an ITU Application Is Abandoned?

If you file an ITU trademark application and then abandon it, this can negatively impact your ownership of the mark. For example, assume you’ve filed an ITU trademark application, but then another business uses a mark that is the same as or similar to your mark before you actually start using your mark. If you were to complete the registration process, then your original ITU filing date counts as your first use date and you’d likely prevail over the other business in establishing your ownership of the trademark rights. However, if you abandon the ITU trademark application, the other business will likely be considered the owner, because your filing date no longer qualifies as the date of your first use.

Trademarks Renewal

How Long Does a Trademark Last?

Subject to a few requirements, a trademark can last for as long as you use it, and a trademark registration can last for as long as you maintain it at the US Trademark Office.  First, you need to continue to actively use the trademark in commerce.  Once you stop, you may be perceived as having abandoned your claims to the trademark and someone else can start to use it themselves.  The other requirements involve filing the necessary declarations with the USPTO at the appropriate times. Failure to use the trademark in commerce, or to file the statutory declarations, can mean losing your rights to your trademark registration. AKeyMark will help you monitor your trademark even after it registers, at no additional cost to you.

After Five Years: The Section 8 Declaration

The US Trademark Office does not want unused trademarks to cluttering up its Trademark Registers. Therefore, a company that wants to continue having its trademark registration listed must notify the USPTO that it is continuing to use the trademark on (or with) the claimed goods (or services) at regular intervals.

Between the fifth and sixth anniversary of the date of trademark registration, a Registrant needs to file a Section 8 Declaration of Continued Use. For example, if your trademark registration date is March 1, 2012, you would need to file the declaration after March 1, 2017 but before March 1, 2018.

At this time, there is also a Section 15 Declaration of Incontestability which may be filed concurrently with the Section 8 Declaration.  The filing of the Section 15 Declaration offers certain benefits of eliminating some arguments third parties may have against your trademark rights and is generally a good idea if you qualify to file it.

The Combined Section 8 and Section 9 Application for Renewal

Between the ninth and tenth anniversary of the trademark registration date, you are required to file a Combined Section 8 and Section 9 Application for Renewal. For the registration date of March 1, 2012, this means filing the documents after March 1, 2021 but before March 1, 2022.

This filing notifies the USPTO that you are still interested in using the trademark. Once the initial Combined Section 8 and Section 9 Application for Renewal are filed, further Section 8 and 9 Declarations and Applications for Renewal are then required to be filed every ten years to maintain your trademark registration at the United States Trademark Office. Keeping track of all the filings is a difficult task. This is another area where AKeyMark’s monitoring service provides you the peace of mind by helping out.

Get Started on Your Trademark!