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A trademark’s protections differ depending on if you have a common law, state, or federal trademark. But in general, trademarks offer the exclusive right to use your mark in commerce within a certain geographic area, as well as the right to pursue legal action against infringement on your mark.
To learn how trademark protections work and how to make the most out of your trademark’s rights, keep reading.
In this article, we'll cover:
What Does a Trademark Protect?
A trademark protects a word, phrase, symbol, design, or sound that distinguishes one source of goods/services from another. A trademark can be a business’s name, a logo, a jingle, or some other recognizable branding mark that is used in commerce to sell products/services.
But what does this actually mean for you? What protections do you get by having a trademark?
- Your right to use the mark in commerce.
- Your right to use the official trademark symbol(s): ™ for unregistered/state-registered trademarks, ® for federally registered trademarks.
- Your right to pursue legal action against infringement.
Trademarks do not protect:
- Your exclusive right to that word, phrase, or image across all markets (i.e., a bakery in Texas and a bowling alley in New Hampshire can both be called Lover’s Lane since there is no likelihood of confusion).
- Your right to use a mark that is already being used by another business if it’s connected to goods/services that are related to your own.
What Is a Trademark’s Scope of Protection?
A trademark protects your right to use your mark in commerce and fight infringement. But what is the full scope of trademark protection?
A trademark is always connected to specific goods/services being sold to customers. You can’t use the mark in commerce without connecting it to goods/services, and you can’t register a trademark until it is being used in commerce. (Note: you can file your federal trademark registration application with the intent-to-use filing basis prior to selling anything, but the process isn’t complete until you’re using the mark in commerce.)
Some of the best ways to understand your scope of protection are to talk with a trademark attorney, such as one of the lawyers available for federal trademark work at Law on Call, or file for trademark registration with the United States Patent and Trademark Office (USPTO), which clearly identifies your rights.
Generally, a trademark’s scope of protection can be broken into two different (but converging) paths: protection by use and protection by registration.
Trademark Protection By Use
A trademark’s protections begin when the mark is used in commerce. This means that once you start selling something while using the mark, your right to use the trademark is protected. (This is also when you can use that nifty ™ symbol, which basically tells people, Hey, this is my word/phrase/design! Don’t steal it!)
Common law trademarks are not registered, but have protections in the general geographical region where you’re using the mark. So, if you’re based in St. Louis, Missouri, you have the right to use your mark (exclusively) in St. Louis and surrounding places, like Chesterfield. But unless you can prove that your business expands across the river into Illinois, some close-by jurisdictions may not necessarily be included in your protections.
Of course, this is a bit complicated and it’s hard to pin down exactly what your common law jurisdiction is. The boundary-setting of your common law trademark rights include:
- Sales completed in an area
- Physical presence in an area
- Public awareness
Since it’s difficult to know exactly what would hold up in court, many businesses choose to register their trademark because this gives you a clear, defined jurisdiction, and takes some of the guesswork out of knowing your rights.
Trademark Protection By Registration
Why register a trademark if it has protections after being used in commerce? Well, a trademark that is registered with the USPTO has broader protections than an unregistered or state registered mark.
Federal registration includes:
- Your trademark existing in a central database, allowing people to find it when they search for marks similar to their own, which could reduce infringement before it begins.
- Governmental paperwork confirming your right to the mark as well as your first use date.
- Protection that extends federally rather than just in your business’ immediate area or to your state border.
Ready to get started? Our Trademark Service includes attorney review of your application, clearance check, and procedural office action response.
Why Do I Need Trademark Protection?
So, sure, a trademark has protections that other branding materials do not, but do you even need the protections? Couldn’t you just name your product line and not bother using the ™ symbol or registering it?
Sure – but you might regret not having the protections later on when your business grows.
Trademarks (especially USPTO-registered trademarks) offer businesses a way to protect their image with the public. In a world with nearly endless options for consumers, making sure that your business is distinct and memorable is crucial. Without trademark protections, another business could accidentally or intentionally profit off of your business’ good will and confuse customers about what they’re buying.
Filing for federal trademark registration gives your business the confidence and freedom to build a brand and a customer base, as well as help protect it from infringement.
Frequently Asked Questions
What is a trademark?
A trademark is a word, phrase, symbol, design, sound, or combination that distinguishes one good/service from another. The Google® logo, McDonald’s I’m Lovin’ It® , and Tiffany’s distinct eggshell blue are all examples of popular trademarks.
How do I decide on a trademark?
Choosing a trademark that is good for your business depends on a few factors, such as the trademark’s strength, its connection to the goods/services you’re offering, and its ability to be registered. Ultimately, it’s your decision – just make sure there’s not another mark in use that consumers could confuse with yours.
What is the first step after I choose a trademark?
Before you start selling products or fill out registration forms, make sure that your mark will not be confusingly similar to another mark. Trademark attorneys can help with this process, or you can start the search process on your own. Using the Trademark Electronic Search System (TESS) as your jumping off point, you can search for marks that might look like yours.
TIP: You can also go through state trademark databases, social media, and Google searches to check for similar marks that are perhaps not federally registered but nevertheless have trademark protections.
How much does it cost to have trademark protection?
Trademark cost changes depending on the type of registration, as well as the amount of trademark classes you want your registration to cover. Common law trademarks cost $0, state registration varies from jurisdiction to jurisdiction, and the USPTO registration starts at $250 per trademark class.
Can you register my trademark for me?
Yes! Northwest offers a comprehensive federal trademark registration service which includes an attorney review of your application, a clearance check, submission of application, monitoring of deadlines, responding to procedural office actions, and our expert customer support – for only $249 (plus the USPTO filing fee)! Want to know more? Learn about our trademark service process.
How long does trademark protection last?
Trademark protections last for as long as the mark is being used in commerce. To maintain federal trademark protections, you will also need to renew your trademark. Unlike patents and copyrights, there is no expiration inherent in the trademark protection. As long as you are renewing your mark with the USPTO and using the mark in commerce, your trademark protections can last in perpetuity.
Do I need to renew my trademark to retain protections?
Trademark renewal is required to keep federally registered trademarks active and protected. 5-6 years after your trademark registration date, you will file the Declaration of Use and/or Excusable Nonuse. This costs $225 per trademark class to file, and lets the USPTO know you’re still using the mark (or planning to continue use).
Then, between years 9-10 from your registration date (so 4-5 years after your section 8 submission), you’ll need to submit your second trademark renewal, which is a combined document of both the Declaration of Use and/or Excusable Nonuse and the Application for Renewal under sections 8 and 9. This will be due again every decade, so between years 19-20, 29-30, 39-40, and so on. This costs $525 per trademark class to file.