What is a Trademark?
…and what do they mean to marketers?
You see the little floating letters everywhere: ™ or ®. Occasionally an SM slides in there, as well. But what do the different symbols mean, and can you just find the right keyboard shortcut, and type it at the end of your brand name and call it a day? Trademarks are a vital part of protecting your business and your brand, but for marketers who didn’t take the bar exam, they can seem daunting.
What is a registered trademark?
According to the International Trademark Association (INTA), a registered trademark is “any word, name, symbol or device that identifies and distinguishes the source of the goods of one party from those of others.” As an example, if we were to think about the trademark of an up-and-coming burger chain, a trademark could be a word (Big Mac), logo (golden arches), slogan (I’m lovin’ it) or package design (a Happy Meal bag). These are all trademarks of an upstart company called McDonald’s.
There’s also something called service marks (SM), that are essentially trademarks for services instead of goods.
A more handy definition is to think of it as simply a brand name. And like a brand name, the point of a trademark is to identify a specific product as coming from a specific source. That’s important to the holder to ensure that their product can’t be copied by anyone off the street. But it’s also important to a consumer. They want to make sure they’re getting into a Lyft car, which has all of the rules and guarantees of the rideshare company, and not a Jyft car, a rideshare company started by my friend Jeff, who’s a terrible driver. Trademarks protect the rights of the owners, and the safety of consumers.
That’s why they are legally protected intellectual property. You can’t slap a Minute Maid logo on your sidewalk lemonade stand without a cease-and-desist letter from Big Lemonade. Another interesting fact about trademarks, they are adjectives, not verbs, according to the International Trademark Association. In other words, a photocopier is a Xerox machine, trademarked by the company. But the trademark does not apply to the expression “xeroxing” a document.
Armed with that knowledge, how do you define a trademark for your brand? And what are the steps for registering a trademark?
What is the trademark symbol? How do I use it?
It isn’t necessary to register a trademark in order to establish one. But according to McDowell, it’s wise to do so. Registration is a legal process, requiring filing with the United States Patent and Trademark Office (USPTO). Filing for a trademark requires strict adherence to guidelines and deadlines, and paying the appropriate fees. But while the USPTO has thorough tutorials for those who want to go it alone, it’s recommended that you hire an attorney who is well-versed in trademark law.
What’s the difference between ™ and ® ?
You don’t have to file with the USPTO in order to start applying the ™ symbol to your brand name. In fact, those floating symbols specifically denote an unregistered trademark. However, McDowell, says, doing so may only give you protection in the state where your business is registered. And you’ll miss out on many of the federal protections registering with the USPTO provides.
“Say you register your trademark with USPTO, you can take that trademark and put it on your product or service and use it anywhere in the 50 states,” says McDowell. “Let’s say you didn’t do that, you have the same mark for the same product, you might only have common law rights in that state.
It puts the whole world on notice you own that mark and it’s yours. Other people shouldn’t be using it for the same product.”
If you’re just launching your product, and you haven’t yet registered your mark, putting the ™ next to the logo or the phrase you want to trademark is a good idea. But, in the end, you’ll want to go through the process with the USPTO to ensure you have ownership of that mark.
How do I trademark a name, logo or symbol?
So you have your logo, and you want to register it with the USPTO. What do you do? You have to file an application with the USPTO. (The USPTO website actually has a very good tutorial for first-time applicants.)
Before you apply, the USPTO recommends you consider two questions: Is your mark registerable, and how difficult will it be to protect your mark based on its strength?
The first question is relatively simple: Are you applying to register a mark for your brand, rather than, say, a patent or some other form of intellectual property. The second question is a little more complex, and goes to whether your mark is distinctive enough from other marks for similar products.
A good first step is understanding whether there is already a similar mark for a similar good, and whether your application will conflict with a trademark that’s already been registered. The USPTO maintains a public search database where you can search for similar logos, names, phrases, designs, etc. Your application will be the same no matter if you’re registering a logo or a brand name. McDowell says the public database is a good place to start, but it will be up to the USPTO’s examining attorney to determine whether your mark meets the various legal requirements, and is different enough from other registered marks.
The USPTO does have a guide for pro se applicants (those going it alone, without a lawyer). And the INTA has a pro bono clearinghouse, where applicants can be matched up with volunteer lawyers who can assist in their application.
How do I search for a trademark?
A good first step before applying for a trademark is understanding whether there is already a similar mark for a similar good, and whether your application will conflict with a trademark that’s already been registered.
The USPTO maintains a public search database where you can search for similar logos, names, phrases, designs, etc. Your application will be the same no matter if you’re registering a logo or a brand name.
McDowell says the public database is a good place to start, but it will be up to the USPTO’s examining attorney to determine whether your mark meets the various legal requirements, and is different enough from other registered marks.
What is the difference between a trademark, patent and copyright?
If you’re making something–an invention, a brand, a book, etc.–you want to protect it. But which tool is right for the job?
As noted above, a trademark protects any word, symbol, design or logo, otherwise known as your brand.
If you’re not trying to protect a good but rather a service, then you need a service mark. You use the ™ mark if you haven’t yet registered your trademark with the USPTO, and you use the ® symbol when you have.
According to the USPTO, a patent is “a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.”
As McDowell says, “A patent is a completely different animal, from a trademark. A trademark is used for marketing, but a patent has nothing to do with the marketing of a product.” As an example, you could create a new energy bar with a genetically modified rice grain in it. If that genetically modified rice is your invention, you could seek a patent for it to keep competitors for using it. You would still have to register a trademark for the branding of that energy bar.
A copyright is for creative works.
The USPTO defines a copyright as protecting “original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture.” While trademarks and patents are registered with the USPTO, copyrights are handled by the U.S. Copyright Office.
How much does it cost to register a trademark?
There is no easy, short answer to how much it costs to register a trademark. Depending on the type of mark you’re registering, the initial filing fee is between $225 and $400. There can be additional fees as well, throughout filing, if you need to file an extension, or if there is information missing from the initial application.
How long does a trademark last?
Unlike a patent or copyright, a trademark has no expiration date, provided you’re still using the trademark and you pay maintenance fees. The fee schedule requires you to pay between the fifth and the sixth year after you filed, and then at the ten-year mark. You then have to pay a fee every ten years after that, in perpetuity. Do that, and your trademark is immortal!
What is trademark infringement and how am I protected?
Registering a trademark helps protect your brand against trademark infringement. The USPTO defines infringement as “the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” In other words, if someone makes a product that is similar to yours with a branding that is similar to yours, they may be infringing on your trademark.
If you feel your trademark is being infringed upon, you need to file a civil suit, most often in federal court.
The court then considers evidence that a) your trademark is registered and is in good standing (i.e. you’ve paid your maintenance fees and b) that the defendant has created a mark that is likely to “cause confusion” in consumers. Key factors in the court’s decision-making include whether the defendant’s goods are “sufficiently related,” the “strength” of your mark, and whether there is any evidence of actual confusion caused by the defendant’s mark.
If you’re able to achieve trademark justice, the penalties for the offending parties include an injunction to stop using the mark, an order requiring the goods be destroyed, and monetary relief.
Because registering a trademark is a legal proceeding, it may seem daunting to marketers. But the benefits for marketing a product hugely outweigh the minimal fees, and protect your brand as well as your consumers.