Archives for August 2022

How to Trademark a Name for Free: An EASY Guide

August 27, 2022 by Michael Kondoudis

You can trademark a name for free with a “common law” trademark and establishing a common law trademark doesn’t require any forms or fees. However, you cannot register a trademark for a name for free.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking a name for free.

You may have heard that you can trademark your name for free. Is this true? The answer is both yes and no.

It is possible to get some trademark rights just by using a trademark. But, those rights are limited and pale in comparison to trademarks registered with the U.S. Patent and Trademark Office.

In this post, I’ll explain exactly how to trademark a name for free, and this information applies to logos and phrases as well.

So, if you want to learn how to trademark a name for free, this guide is for you.

Let’s get started!

CONTENTS

Part I. Trademarking for free

Part II. All about common law trademarks

Part III. How to get common law trademark rights

Part IV. All about registered trademarks

Part V. How to register a trademark for free

I. TRADEMARKING FOR FREE

How to Trademark a Name for Free

You can trademark a name for free by getting a common law trademark. A common law trademark can be a great way to protect your name without incurring the cost of registration.

Can You Trademark a Name for Free?

Yes, you can trademark a name for free by establishing a “common law” trademark through use of the name in commerce. This means using the name to brand your company, business, product, or service. You cannot register the name for free, however, because the U.S. Patent and Trademark Office charges a filing fee for every new trademark application. So, there is always a fee to register a name.

RELATED: How to Register a Band Name

How to Trademark a Phrase for Free

There is a way to trademark a phrase for free by establishing a common law trademark. A common law trademark can be a great way to protect your phrase without having to pay for registration.

Can You Trademark a Phrase for Free?

Yes, you can trademark a phrase for free by establishing a “common law trademark” simply by using your phrase in commerce. This means using the phrase to brand your business, products, or services.

Is There Such a Thing as Free Trademark?

Yes, you can establish a common law trademark for free. A trademark registration is never free, however. The U.S. Patent and Trademark Office charges a “filing fee” for every application.

II. COMMON LAW TRADEMARKS

What is a Common Law Trademark?

A common law trademark is not registered with the USPTO but is instead established through use in commerce and taking steps to prevent others from using it.

Common law trademarks are not registered with the government but are still protected under the law.

Common law trademarks are established through use in commerce. They are based on use, through actual use in commerce rather than through registration.

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The Benefits of a “Free” Common Law Trademarks

There are several benefits to common law trademarks.

First, common law trademarks are easier to obtain than federal trademarks. There are far fewer requirements. Common law trademark rights come from use in commerce.

Second, common law trademarks are much less expensive than registered federal trademarks. It is cheaper to establish a common law trademark than to register one with the U.S. Patent and Trademark Office (USPTO).

Third, common law trademark rights can be established in less time than registered trademarks. All that is required is use in commerce.

The Limitations of a “Free” Common Law Trademark

Common law trademarks can provide valuable protection for businesses, but they have limitations. The two most important limitations are geographic and enforcement.

First, common law trademark rights are limited to the geographic area where a mark is used. They are not national, unlike registered trademarks. That means that other businesses outside of your local region could use your name or slogan, and you would be unable to stop them. So, if you plan to expand your business into multiple markets, you should consider registering your trademark with the USPTO.

Second, enforcing common law rights is far more complex and expensive. For example, a trademark owner must prove ownership, validity, and regions of use. In contrast, with registered federal trademarks, these elements of infringement are legally presumed, so enforcement is easier and less expensive. Also, it is presumed that a registered federal trademark is recognized as representing a brand.

The surest way to LEGALLY own your trademark is to register it with the U.S. Patent and Trademark Office. Federally registered trademarks are stronger than common law trademarks. Read about the advantages of trademark registration here.

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III. HOW TO GET A COMMON LAW TRADEMARK

How to Establish a Common Law Trademark

To establish a common law trademark, you will need to do two things:

1. Use the mark in commerce; and

2. Demonstrate that it has “secondary meaning,” which is to say that it has become associated with your brand in the minds of consumers.

Use in commerce

You have to use the mark in a way that identifies it as being associated with your goods or services. For example, you could use the mark on packaging, labels, signage, or advertisements.

Secondary meaning

This can be shown by promoting the mark through advertising and marketing and ensuring that it is used consistently across all your business’s communications. This can be done by showing that the mark has been in continuous use for a period of time or that it has become well-known among consumers.

Once you have established a common law trademark, you can enforce it against infringements in certain situations. However, note that common law trademarks do have some limitations.

IV. ABOUT REGISTERED TRADEMARKS

What is a Registered Trademark?

A Federal trademark is an enhanced trademark certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights, preventing anyone else from registering anything similar for your industry.

The United States Patent and Trademark Office (or “USPTO”) is the Federal agency that registers trademarks.

What Are The Benefits of a Registered Trademark?

Federal trademark registration is the ultimate protection for any brand. There is no higher level. That makes a Federal trademark the best insurance against having to rebrand.

Here are just some of the reasons why:

A registered federal trademark is an official confirmation that you own your trademark.
A registered federal trademark comes with the immediate, exclusive, and nationwide right to use your mark.
A registered federal trademark will prevent anyone else from registering it (or anything similar) in your industry.
A registered federal trademark gives you enhanced protection for domain names and social media platforms and access to Amazon’s brand registry.
A registered federal trademark gives you the legal right to use the ® symbol.

Read about ALL of the legal and financial benefits of trademark registration here.

V. HOW TO REGISTER A TRADEMARK FOR FREE

How to Register a Trademark for Free

You cannot register a trademark for free because every application filed with the U.S. Patent and Trademark Office (“USPTO”) must be accompanied by a non-refundable filing fee. This fee is mandatory and is non-refundable. The USPTO filing fee is $250 or $350 per class of goods or services. Therefore, while it is possible to register a trademark without hiring a lawyer, it can never be free.

Can You Register a Trademark for Free?

No, you cannot register a trademark for free because the U.S. Patent and Trademark Office (“USPTO”) charges a filing fee for every application it receives.

Is There Such a Thing as Free Trademark Registration?

No. To register a trademark, you must pay a non-refundable government filing fee to the United States Patent and Trademark Office (“USPTO”). So, free trademark at the federal level is not an option.

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How Much Does Trademark Registration Cost?

Currently, the U.S. Patent and Trademark Office charges a filing fee for every application. The current filing fee is at least $250 per application, and often more when many products or services are listed in the application.

The average cost is between $275 and $400 to file a trademark application with the USPTO. However, the actual cost will depend on several factors, including the complexity of the application. Ultimately, the cost of trademark registration will vary depending on the specifics of your situation.

VI. SUMMARY

In the United States, you can establish “common law” trademark rights in a name just by using it to brand your company, products, and/or services. Common law trademark rights are limited and difficult to enforce, however.

The best way to protect a name is to register it with the U.S. Patent and Trademark Office (USPTO). Trademark registration is the way to make sure that no one else registers your mark and takes it from you.

Common Law Trademarks: Limited Protection

One way to trademark a name for free is by obtaining a common law trademark. This type of protection is established through commerce use and taking important steps to prevent others from using your name. Unlike Federal trademarks, common law trademarks do not require any forms or fees, making it ideal for small businesses on a budget.

However, there are some limitations when it comes to common law trademarks. Two of the most significant challenges are:

Geographic limitations: A common law trademark is usually limited to the geographical area where your business operates. This can be a disadvantage if you plan to expand your business and reach new customers across the country.

Enforcement challenges: Enforcing a common law trademark might be more difficult than a registered one. Without a record of your distinct mark in the government database, disputes could become convoluted and time-consuming.

These are significant drawbacks.

Federal Trademarks: Stronger Protection But With Costs

For businesses seeking nationwide protection and legal exclusivity, a Federal trademark may be the better option. Obtaining a Federal trademark involves registering your name or phrase with the U.S. Patent and Trademark Office (USPTO). This enhanced level of protection offers several advantages:

Nationwide legal rights: A federal trademark gives you exclusive rights across the entire country, regardless of the geographical location of your business.

Easier enforcement: With a Federal trademark, disputes are generally more straightforward to manage, as there is an official record of your ownership.

However, when it comes to the cost, there’s one essential fact to note: there is no way to register a Federal trademark for free. Every application filed with the USPTO must be accompanied by a non-refundable filing fee, which ranges from $250 to $350 per class of goods or services.

The process of registering a trademark includes filing an application with the USPTO and the USPTO charges a filing fee for every new trademark application. The application fee is currently $250 per class of goods or services that you list in your application. So, there is no such thing as a free trademark registration.

VII. FREQUENTLY ASKED QUESTIONS

1. Can I trademark a name for free?

No, you cannot register a trademark for free, but you can establish a common law trademark for free by using the name to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a name trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

2. Can I trademark a phrase for free?

No, you can’t register a phrase for free, but you can establish a common law trademark for free by using the phrase to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a phrase trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

3. What is the least expensive way to trademark a name?

The cost to trademark a name is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS).

4. What is the least expensive way to trademark a phrase?

The cost to trademark a phrase is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS). Learn about how to qualify for the lowest filing fee in our guide to TEAS.

5. What is the cheapest way to trademark?

There is a free option to get a trademark for your name, logo, or phrase. The way to get a free trademark is to establish common law trademark rights by using your mark to brand your business, products, or services. Common law trademark rights have limitations, but they can offer some protection for names, logos, and phrases.

6. Can you trademark things for free?

Yes, you can establish common law trademarks and no cost. However, you cannot register a trademark for free. The U.S. Patent and Trademark Office always charges a filing fee.

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Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Suggestive Trademarks – AN EASY GUIDE with Examples

August 25, 2022 by Michael Kondoudis

Suggestive trademarks hint at aspects of products and services but do not describe them. They “require imagination, thought, or perception” to connect the mark to the goods or services.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to suggestive trademarks.

Suggestive trademarks are an important part of branding for many businesses. By choosing the right suggestive trademark and taking steps to protect it, you can ensure that your business has the exclusive right to use it.

In this easy guide, we explain suggestive trademarks, give some tips on choosing the right suggestive trademark for your business, and show you how to protect your suggestive trademark.

We’ll also answer frequently asked questions about suggestive trademarks along the way.

Let’s get started!

CONTENTS

→ What a suggestive trademark is

→ Whether suggestive trademarks can be registered

→ Examples of suggestive trademarks

→ Advantages of suggestive trademarks

→ Common pitfalls of suggestive trademarks

→ How to pick a suggestive trademark

→ Ways to protect your suggestive trademark

→ The benefits of registering suggestive trademarks

→ Condensed Summary

1. Suggestive Trademarks

What is a Suggestive Trademark?

A suggestive trademark is a distinctive mark that alludes, implies, or hints at some quality of a product or service, but does not actually state or describe the product or service outright. Suggestive trademarks have some association to a product or service, but the association is not immediately clear because they do not say it outright. Consequently, customers must use their imagination to connect the mark with the product.

A suggestive trademark is a type of mark that suggests a characteristic or quality of a product, service, or business. Suggestive trademarks require thought and imagination to connect the mark to a product, service, or business. Suggestive trademarks never directly or immediately describe or communicate features, qualities, or aspects of a product, service, or business. As a result, people have to use thought and imagination to connect a suggestive trademark to a product, service, or business.

Suggestive trademarks use terms or designs that hint or allude to specific qualities and/or features of the products or services they brand but do not state them outright. They are connected to the products and services they brand, but the connection is not immediately apparent.

What Makes a Suggestive Trademark Distinctive?

The test for whether a trademark is suggestive is:

Does the mark hint or allude to a quality, characteristic, or property of the product, service, or business that it brands so that thought or imagination is required to make the connection?

If the mark directly or immediately conveys a quality, characteristic, or property, it is not a suggestive trademark.

How Do Suggestive Trademarks Differ From Other Types of Trademarks?

Suggestive trademarks require imagination or a ‘mental step’ to link them to products and services. While suggestive trademarks allude or hint at aspects of products or services, other types of trademarks are either wholly unrelated to the product or service (e.g., Apple®) or outright describe the product or service (e.g., British Airways®).

Can Suggestive Trademarks Be Registered?

Yes, suggestive marks can be registered. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. The USPTO considers suggestive marks to be entitled to moderately strong legal protection because they are inherently distinctive.

Do suggestive trademarks need secondary meaning?

No, suggestive trademarks do not need secondary meaning because they are inherently distinctive, which means that they can be registered and protected without proof that customers identify with a certain company through use over time.

Suggestive trademarks are considered distinctive enough to function as trademarks through proper use alone.

Suggestive marks are registrable without a showing of acquired distinctiveness, assuming all other conditions for registration are satisfied.

2. Examples of Suggestive Trademarks

Suggestive Trademark Examples

Suggestive trademarks hint at the nature of products or services without directly describing them and require some imagination to associate them with the underlying products or services.

The following are examples of suggestive trademarks:

TRAVELODGE: is suggestive of hotel services because holiday alludes to times when travel is common

RAIN-X: is suggestive of car wax because the name alludes to prohibiting rain spots

TESLA: is suggestive of electric vehicles because Nicholas Tesla was a renowned scientist in the field of electricity

NIKE: is suggestive for running shoes because Nike was the Roman god of athletics, which alludes to sports and sports gear.

WALMART: is suggestive for retail stores because the name implies a “mart”

THE NORTH FACE: suggests outdoor gear because the north face alludes to mountains, hiking and the like

Consumers who encounter these trademarks in the marketplace need to use their imagination to link them to products or services because the association is not immediately apparent.

The Ten Best Examples of Suggestive Trademarks

These are the ten best examples of suggestive trademarks:

1. RAIN DANCE: is suggestive for car wax because it implies that rain will dance of the finish

2. COPPERTONE: is suggestive for suntan lotion because the color copper brings to mind skin tanning in the sun.

3. CITIBANK: is suggestive for financial services because the terms “citi” and “bank” hint at banking services in cities.

4. NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.

5. MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software

6. GREYHOUND: is suggestive of travel services because greyhounds are racing dogs, which suggests fast travel.

7. JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars

8. AIRBUS: is suggestive of air travel because it conjures the image of a flying bus

9. KITCHENAID: is suggestive of kitchen appliances that help in the kitchen

10. PINTEREST: is suggestive of an image sharing service because the name alludes to “pinned images of interest”

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The Advantages of Suggestive Trademarks

Suggestive names draw on the power of metaphor and analogy to create positive associations in customers’ minds. Many marketing professionals prefer them because they plant seeds in consumers’ minds as to the nature of branded products and services. So, they support efforts to promote brand identity.

There are some of the many benefits suggestive trademarks:

1. Suggestive trademarks are entitled to legal protection, which makes them easier to protect against infringement.

2. Suggestive trademarks are inherently distinctive and eligible for registration at the U.S. Patent and Trademark Office.

3. Suggestive trademarks are powerful marketing tools because they can allude to aspirational aspects of a brand identity.

4. Suggestive trademarks invite consumers to use their imagination to connect them to products and services, which strengthens brand identities

What are Some Common Pitfalls With Suggestive Trademarks?

There are a few common pitfalls that businesses make with suggestive trademarks. First, they may choose a trademark that is too similar to another one. This could lead to a likelihood of confusion and could invalidate their trademark. Second, they may not register their suggestive trademark with the U.S. Patent and Trademark Office. Without registration, they are not fully protecting their trademark.

3. Picking Suggestive Trademarks

How to Pick a Suggestive Trademark for Your Business

Picking the right suggestive trademark for your business is essential. There are a few key factors to consider when choosing a suggestive trademark. First, you want to make sure that the trademark is inherently distinctive. This means that it should not be descriptive of your product or service but should instead suggest something about it. Second, you want to ensure that the trademark is not too similar to another. This could result in a likelihood of confusion and could lead to your trademark being invalidated. Finally, you want to make sure that the trademark is capable of being registered with the U.S. Patent and Trademark Office. If it is not, you may be unable to protect it.

Hierarchy of Trademarks

The sole functions of a trademark are to identify the source of a product or a service and to distinguish them from the competition. A distinctive trademark performs this function. A distinctive trademark is strong.

It turns out that some marks have a natural tendency to be distinctive. Courts and the U.S. Patent and Trademark Office (USPTO) judge this tendency using the following hierarchy of trademarks:

Fanciful: (most distinctive) a term without a dictionary meaning that is invented for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Arbitrary: (highly distinctive) a term with a dictionary meaning that is not related to the product or service with which it is used. They are strong trademarks and entitled to broad protection by courts and the USPTO.

Suggestive: (distinctive) a term that alludes to something about the product or service with which it is used and requires some imagination, thought, or perception to make that connection. They are trademarks and are entitled to protection by courts and the USPTO.

Descriptive: (potentially distinctive) a term that directly conveys something about the product or service they brand. Descriptive marks are only entitled to protection if the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic: (never distinctive) the common name for a category of product – cannot be trademarked.

As a general rule, distinctive trademarks are preferable because they tend to be stronger and easier to register and protect.

What Are the Five Categories of Trademarks?

These five categories are:

- Arbitrary trademarks
- Fanciful trademarks
- Suggestive trademarks
- Descriptive trademarks
- Generic trademarks

4. Protecting Suggestive Trademarks

Are Suggestive Marks Protected?

Yes, suggestive marks are protected. Federal courts have found that suggestive marks are entitled to protection under Trademark Law.

How to Make Sure Your Suggestive Trademark is Protected

There are a few steps that you can take to make sure that your suggestive trademark is protected. First, you should register it with the U.S. Patent and Trademark Office. This will give you the complete protection that you are entitled to under trademark law. Second, you should use your trademark in commerce. This will help put the public on notice of your trademark ownership. Finally, you should monitor for unauthorized use of your trademark. If you see someone using it without your permission, you can take steps to stop them.

Can you register a suggestive trademark?

Yes, you can register a suggestive trademark with the USPTO.

To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.

Register a suggestive trademark

Suggestive marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable on the Principal Register without a showing of acquired distinctiveness.

The Benefits of Registering a Suggestive Trademark

There are several benefits to registering a suggestive trademark. First, it allows you to protect your trademark fully. Second, it gives you the exclusive right to use your trademark. This means that no one else can use it without your permission. Third, it will prevent a competitor from registering the trademark and taking it from you. Fourth, it ensures that your trademark does not infringe anyone else’s trademark. Fifth, it puts the public on notice of your trademark ownership, which helps deter others from trying to use it.

Read about all of the advantages that come with federal trademark registration here.

Tips to Register a Suggestive Trademark

If you’re a small business owner who is looking to trademark your suggestive trademarks, you’ll need to make sure that consumers will be able to easily associate them with the underlying goods or services.

Here are four things to keep in mind when filing for a suggestive trademark:

1. Make sure the mark is suggestive, not descriptive.

2. Make sure there’s a separation between the mark and the goods or services it represents.

3. Don’t use any confusingly similar marks yourself.

4. Be prepared for a longer wait time than with other types of trademarks.

Do you need help with your trademark?

How Can a Business Make the Most of Its Suggestive Trademark?

To make the most of a suggestive trademark, a business should consider registering it with the USPTO. Registering a suggestive trademark gives a business the exclusive right to use the mark in connection with its products or services. It also serves as notice to the public that the mark is owned by the business and helps to deter others from using it. Furthermore, registering a suggestive trademark can make it easier for businesses to enforce their rights if someone does attempt to use the mark without permission. Registering a suggestive trademark is important for businesses looking to protect this valuable asset.

They should also use the mark consistently and avoid using it in a way that might dilute its power.

With care and attention, a suggestive trademark can be an invaluable asset for any business.

5. Condensed Summary

Suggestive trademarks are marks that have some association with a product or service, but the connection is not immediately apparent. They require imagination, thought, or perception to connect the mark to the nature of the goods or services that the mark brands. There is no specific definition for what constitutes a suggestive mark. However, the mark is most likely suggestive when consumers need to use their imaginations to make a mental connection between a trademark and a product or service.

Ultimately, the US Patent and Trademark Office (USPTO) decides whether a particular trademark is suggestive. The USPTO uses various factors to make its determination, including how well-known the mark is and how much imagination is needed to make the relevant connection between trademark and product.

Suggestive trademarks can be registered with the USPTO. They are protectable under trademark law and are eligible for federal trademark registration.

The USPTO will not register trademarks that are simply descriptive of a product or service. However, suggestive trademarks, because they allude to features of a product or service, are considered inherently distinctive and thus registrable.

6. Frequently Asked Questions

1. Can you register a suggestive trademark?

Yes, you can register a suggestive trademark with the USPTO. To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.

2. Are suggestive marks protected?

Yes, suggestive marks are protected. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. Also, federal courts have found that suggestive marks are entitled to moderately strong legal protection because they are inherently distinctive.

3. What are some examples of suggestive trademarks for products?

Suggestive trademarks require some imagination to associate them with the underlying products. The following are examples of suggestive trademarks for products:

COPPERTONE: is suggestive for suntan lotion because the color copper conjures the color of skin tanning in the sun.

JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars

MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software

4. Is Microsoft a suggestive trademark?

Yes, MICROSOFT is a suggestive trademark because it alludes to the company’s products and services without describing them. Micro implies small electronics and soft alludes to software.

5. What are some examples of suggestive trademarks for services?

Suggestive trademarks require some imagination to associate them with the underlying services. The following are examples of suggestive trademarks for service:

CITIBANK: is suggestive of financial services because the terms “citi” and “bank” hint at banking services in cities.

GREYHOUND: is suggestive of travel services because greyhounds are fast, which suggests fast travel.

NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.

6. Are Suggestive Trademarks Inherently Distinctive?

Yes, suggestive trademarks are considered inherently distinctive. This means that is not necessary to show that distinctiveness has been acquired.

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We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademark, we invite you to book a FREE brand protection strategy session with us here.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Simple Trademark Rules: AN EASY GUIDE

August 24, 2022 by Michael Kondoudis

If you want to keep your trademark, you need to know the trademark rules.

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademark rules.

A trademark is a sign that distinguishes your goods or services from those of other businesses. It can be a word, phrase, logo, or even distinctive packaging. Trademarks are essential to any business because they help consumers identify your company and products. As a business owner, it’s important to understand the rules surrounding trademarks so that you can protect your brand.

So, if you’re ready to learn how to use a trademark properly, this guide is for you.

Let’s get started!

Contents

> About Trademark Rules

> The First 10 Trademark Rules

> The Next 10 Trademark Rules

> Overview of Trademarks

> Frequently Asked Questions

1. About Trademark Rules

What Are Trademark Rules?

Trademarks are words, logos, and phrases that identify a product, service, or company. Trademark rules dictate how to use them. Trademark rules are the guidelines that dictate how trademarks can be used, registered, and protected.

Trademark rules ensure that businesses can identify their products and services to consumers. Trademark rules also prevent consumer confusion. Following trademark rules helps to protect consumers and the owners of registered trademarks.

Trademark rules come from federal and state governments and help ensure that trademarks are properly used to identify specific products and services.

What Happens if I Don’t Follow Trademark Rules?

You risk losing control over your brand if you don’t follow trademark rules. Others may be able to use your trademarks without your permission, leading to confusion among consumers. Additionally, you may be sued for trademark infringement. Infringement lawsuits can be very costly, and if you are found liable, you may be required to pay damages to the trademark’s rightful owner.

You Could Be Sued for Infringement

If you don’t follow the rules, you could be sued for infringement. This is when someone believes that their trademark rights have been violated. An infringement suit could force you to change your name or pay damages. It’s expensive and time-consuming, so it’s best to avoid it if you can. If you infringe a registered trademark, you could be ordered to pay damages, have your website shut down, and even be banned from using the infringing mark in the future.

You Could Lose Your Trademark Rights

If you don’t use your trademark correctly, you could lose your rights to it. You could also end up weakening your trademark. For example, if you allow others to use your mark without permission, they may be able to argue that it’s not yours anymore. This is called “genericide.” It happens when a brand name becomes so popular that it’s used as a generic term for the product or service, like Kleenex or Band-Aid. In fact, there have been several high-profile cases of businesses losing their trademarks because they were used incorrectly.

You Could Be Forced to Stop Using Your Trademark Altogether

If someone challenges your trademark and wins, you could be forced to stop using it altogether. This is rare, but it does happen. So if you’re considering using someone else’s trademark, do your research first. Otherwise, you could end up on the receiving end of a cease and desist letter—or worse.

Why Are Trademark Rules Important?

Properly used trademarks keep their value and stay enforceable. Incorrectly used trademarks lose their value and can even result in the loss of all legal protection.

Consider the names escalator, cellophane, and aspirin. They were once Federally registered trademarks – now they’re not. What happened?

The short answer is that they were misused, stopped being distinctive, and became generic. Trademarks become generic when consumers stop seeing them not as a brand but as a type/category of product. When a mark becomes generic, it loses its protection under the law.

So, how did escalator, cellophane, and aspirin become generic? Their owners misused and/or permitted the misuse of these once valuable trademarks in their advertising. Many trademarks have been lost this way.

If you want to keep your hard-earned trademark rights, you need to follow the trademark rules.

2. The First 10 Trademark Rules

Ten Trademark Rules

1. Always use your whole mark

2. Make sure your mark stands out

3. Use a trademark symbol

4. Avoid descriptive words, terms, and phrases

5. Use your trademark as an adjective

6. Business and domain names do not protect trademarks

7. Avoid commonly used words, terms, and phrases

8. You can file a trademark before you start using it

9. Federal trademark registration is the best way to protect your mark

10. The ® symbol is reserved for registered trademarks only

Bonus Rule: Working with a trademark lawyer increases your chances of registration by about 50%

If you follow these trademark rules, your trademark will keep its value and protect your brand.

1. Always Use Your Whole Mark

Use your complete trademark in its entirety and avoid any temptation to vary it. If your mark contains more than one linguistic or graphic component, use all of them. For example:

come see us at the TOY EMPORIUM

would be correct, while “see us at the Emporium” would be incorrect. Dissecting your trademark by using less than all of it and/or using variations of your mark both risk diminishing its distinctive quality in the minds of consumers.

Don’t experiment with variations of your trademark – especially logos!

2. Make Sure Your Marks Stand Out

Trademarks should always be used in ways that distinguish/set them off from surrounding text. This can be accomplished in any number of ways, including:

large type (BAND-AID bandages);
distinctive font/lettering (Disney); and
use of the word “brand” (Scotch brand transparent tape).

The use of the word “brand” after a mark is especially helpful to combat generic tendencies. Repeated reference to scotch tape as Scotch brand cellophane tape, for example, helps to remind consumers that “Scotch” is a brand name of a tape from a particular source.

Consistency is key

References to your mark must be consistent, i.e., the mark should be represented the same way each time. For example, if a mark is represented by a distinctive font, you should consistently use that same distinctive font when referencing that mark. This has the desired effect of emphasizing that the term is indeed a trademark, not merely another word in the text.

Set your mark off from surrounding text, and you’ll promote its distinctiveness.

3. Use a Trademark Symbol

A trademark symbol should follow each use of a trademark. At the very least, this notice should be used at least once in text and preferably with the trademark’s first or most prominent appearance.

Providing public notice of trademark rights is important for registered and unregistered marks alike.

For unregistered marks, it is proper to use TM or SM. The TM symbol identifies an unregistered trademark. The SM symbol identifies an unregistered service mark (a mark used in connection with a company’s services rather than goods). For example:

CRANAPPLE^TM cranberry apple drink

The symbol does not mean a trademark application has been filed or a registration has been issued. This means that the TM symbol may be used from the outset. Again, TM simply means that the term is claimed as a trademark.

Read our complete easy guide to trademark symbols here.

Do you need help with your trademark?

4. Avoid Descriptive Words, Terms, and Phrases

Many businesses mistakenly believe that names, logos, and phrases that describe their products are good choices for trademarks. This is not the case. Trademarks that convey a product’s or service’s characteristics, qualities, or purpose are considered weak marks. Weak marks are difficult to register with the U.S. Patent and Trademark Office and offer few protections.

Top reasons to avoid terms

Difficult to register
More expensive to register
Not catchy or memorable/ Customers may not remember your brand
Tougher to stand out
Don’t communicate anything about your brand
Weak trademarks

5. Use Your Trademark as an Adjective

Trademarks are adjectives. They should be used only as adjectives.

Adjectives explained

For the non-grammarians reading this guide, adjectives are words that modify nouns. Consider:

a “hot” day
a “wise” grandmother
a “red” car
a “powerful” drug

The words hot, wise, red, and powerful are adjectives that modify the nouns day, grandmother, car, and drug, respectively.

The simple trick to ensure the use of any trademark as an adjective

Unless you are a grammarian, the easiest way to guarantee that your mark is used as an adjective is to place the generic name of your product after your mark. Consider these examples:

a SCHWINN bicycle
STARBUCKS coffee
CHEERIOS cereal

The generic words bicycle, coffee, and cereal are nouns modified by the various trademarks.

Also, consistent reference to the generic term “teaches” consumers that your trademark is not the common name for a kind of goods from many different companies.

Don’t use your mark as a noun or verb.

7. Business and Domain Names Do Not Protect Trademarks

Trademarks are occasionally confused with registered business names and domain names. They are very different. Understanding the differences can save you time, money, and headache.

Registered business names vs. trademarks

A registered business name is just that… a name under which you do business. Registration is with a State agency and only authorizes you to use the name for business operations. That authorization is according to the statutes of the State.

Domain names vs. trademarks

A domain name is part of an address that identifies and locates computers on the Internet. For example, in the web address “http://www.uspto.gov,” the domain name is “uspto.gov.” Domain names are registered through non-governmental registrars. Technically, it is a possessory right to the address alone.

The most important right conferred by a trademark is exclusive use in marketing. That is what makes a trademark an effective identifier of the source of a product. Business names and domain names are essential, but they DO NOT confer any rights to use names, words, or logos.6

7. Avoid Commonly Used Words, Terms, and Phrases

Avoid using terms that are widely used in your industry. They are weak trademarks because consumers won’t recognize them as a brand. Also, common words can be hard to register with the U.S. Patent and Trademark Office

Top reasons to avoid common terms

May have to disclaim exclusive rights to them
Weak trademarks
Hard to enforce against infringers

8. You Can File a Trademark Application Before You Use It

The U.S. Patent and Trademark Office accepts trademark applications based on “intent” to use a trademark. This means you can start the trademarking process before selling products or services. You DO NOT need to wait. All that is required is that you have an actual intent and use the trademark for the products and services listed in the application.

Remember: The sooner you start the trademarking process, the sooner you can legally own your trademark.

9. Federal Trademark Registration is the Best Way to Protect Your Mark

The United States trademark system protects trademarks at three levels – Federal, State, and common law. The differences between these levels of protection are significant.

Common law rights exist from the moment a trademark is used and do not require registration with any governmental agency. They are minimal because they.

extend only as far as the region where the trademark is actually used
do not extend to the Internet
are easily trumped by registered trademarks.

State trademark registration confers rights that extend throughout a single State. But, like common law rights, they are limited, especially since they are only to a State’s borders.

Federal trademark registration provides protection throughout the entire country and its territories and possessions. It confers nationwide rights and important legal presumptions like ownership and validity.

Federal registration is almost always best

10. The ® Trademark Symbol is Reserved for Registered Trademarks Only

If the trademark is registered, it is proper (and important) to use any one of these notices:

The letter R enclosed within a circle;
The phrase “Reg. U.S. Pat. & Tm. Off.”; and
Registered in U.S. Patent and Trademark Office.

Still, use with statutory notice is not mandatory. But, notice helps set off a trademark and gives notice that precludes an innocent infringer defense.

Remember – no one can reasonably feign ignorance of your mark when the ® symbol follows it!

A word of caution

A statutory notice should only be used after the USPTO issues your registration. Technically, intentional improper marking is a violation of Fe

Use your trademark with the correct symbol!

Working With a Trademark Attorney Increases Your Chances for Registration by about 50%

According to the Wall Street Journal, Federal trademark applications filed by a trademark attorney are 50% more likely to be approved than those filed by applicants on their own. Plus, you’ll be more likely to secure more protection and avoid overpaying the Official fees.

3. The Next 10 Trademark Rules

Ten More Trademark Rules

11. You can start using your trademark before you register it

12. You can register your trademark at the federal level

13. You can use someone else’s trademark under certain circumstances

14. You need to use your trademark in commerce

15. Your trademark must be distinctive

16. Your trademark can’t be too similar to anyone else’s

17. There are many different types of trademark applications

18. Trademarks and copyrights are very different

19. Trademark registrations must be renewed every 10 years

20. There are five types of trademarks

If you follow these trademark rules, your trademark will keep its value and protect your brand.

11. You can start using your trademark before you register it

You can start using your trademark as soon as you start selling your goods or services. However, registering your trademark gives you additional legal protections. For example, if someone else tries to register a similar trademark, you may be able to prevent them from doing so. You can also sue for damages if someone uses your registered trademark without permission.

Do you need help with your trademark?

12. You can register your trademark at the federal level

The United States Patent and Trademark Office (USPTO) registers trademarks at the federal level. Federal registration offers significant legal protections. For example, you can sue for damages in federal court if you have a federally registered trademark.

To combat infringement, companies should consider registering their marks with the USPTO. The registration process provides certain legal benefits and puts would-be infringers on notice that the mark is already taken. Once registered, a company can enforce its rights in federal court where it may be entitled to collect damages for infringement.

13. The use of someone else’s trademark is allowed under certain circumstances

There are some circumstances under which you can use someone else’s trademark without their permission. This is called “fair use.” Fair use allows for the use of another company’s trademark for purposes such as criticism, commentary, news reporting, teaching, or research. If you’re not sure whether your intended use qualifies as fair use, you should consult with an attorney.

14. You need to use your trademark in commerce

In order to register a trademark, you need to be using it in connection with the sale of goods or services. Simply having a great name or logo isn’t enough—you need to put it to use in order to get trademark protection.

In order to be eligible for federal protection, a trademark must be used in interstate commerce—that is, it must be used in connection with goods or services that are sold across state lines. However, many states also protect trademarks that are used only within the state’s borders.

15. Your trademark must be distinctive

In order for a trademark to be registered, it must be distinctive enough to distinguish your goods or services from those of others in the marketplace. This means that generic terms (like “shoes” or “batteries”) can’t be registered as trademarks.

16. Your trademark can’t be too similar to anyone else’s

Obviously, you can’t have a trademark that’s identical to one that’s already taken. But even a slightly similar trademark can cause problems down the road. That’s why it’s so important to do your research before settling on a name or logo for your business.

17. There are many different types of trademark applications

There are many different types of trademark applications, but the two most common types are (1) use in commerce applications and (2) intent to use applications. Use in commerce applications are filed when the applicant is already using the mark in commerce on the products and/or services listed in the application. Intent to use applications are filed when the applicant has a bona fide intention to use the mark in commerce on the products and/or services listed in the application but has not yet begun using the mark.

18. Trademarks and copyrights are very different

The biggest difference between trademarks and copyrights is that copyrights protect original expression while trademarks protect words, phrases, symbols, or designs that identify and distinguish goods and services. Unlike copyrights, trademark rights can last indefinitely if the owner continues to use the mark.

Another key difference is that copyright infringement occurs when someone copies protected expression while trademark infringement occurs when someone uses a confusingly similar mark on competing goods or services. Because of this confusion, consumers may mistakenly believe that two separate companies or brands are connected when they are not. This can cause irreparable damage to a company’s reputation and goodwill.

19. Trademark registrations must be renewed every 10 years

Another important rule for maintaining a trademark registration is that the registration itself needs to be renewed every 10 years. This process is relatively simple and can be done online through the USPTO’s website. The only requirements are that the owner still intends to use the mark in commerce and that there have been no changes to the mark since it was last registered. If either of these conditions is not met, then the registration may be cancelled.

20. There are five types of trademarks

There are different types of trademarks which include word marks, figurative marks, color marks, sound marks, and smell marks.

Wordmarks: A wordmark is a type of trademark that consists of one or more words used to identify a product or service. The words can be in any language and can be presented in any font style as long as they are distinguishable from other words in the same language. Names, phrases, and slogans are word marks.

Figurative Marks: A figurative mark is a type of trademark that uses images or graphics to identify a product or service. This could include any image that represents the company such as their logo.

Color Marks: A color mark is a type of trademark that uses one or more colors to distinguish a product or service from others. The colors must be used in a particular way and must be shown in the application for registration with the USPTO.

Smell Marks: A smell mark is a type of trademark that uses a particular scent to identify a product or service from others. The scent must be distinctive and must be shown in the application for registration with the USPTO.

Sound Marks: A sound mark is a type of trademark that uses particular sounds to identify a product or service from others. The sound must be distinctive and must be shown in the application for registration with the USPTO. Jingles and tones are sound marks.

4. Overview of Trademark Law

Overview of Trademark Law

The main law that governs trademarks in the United States is the Lanham Act. If you use a name or logo for your business, you automatically have “common law” trademark rights. These rights are enforceable in state courts. Marks that are registered with the U.S. Patent and Trademark Office are given more protection than unregistered marks in federal courts.

Distinctiveness

A trademark must be distinctive in order to serve as a mark — that is, it must be able to identify the source of a specific product. The four categories established by U.S. courts for determining whether a mark is distinctive are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.

Four Categories

Different categories of trademarks have different levels of legal protection. The amount of protection a trademark gets depends on which category it falls in (i.e., how distinctive it is)

Arbitrary + Fanciful trademarks

An arbitrary or fanciful trademark is a mark that does not have a logical relationship to the underlying product or service. For example, the words “Exxon,” “Kodak,” and “Apple” do not have a relationship to their underlying products. Also, for example, Apple’s Apple Logo does not have a relationship to computers. Arbitrary or fanciful marks are easily recognized and inherently distinctive. These types of marks are highly protected by law.

Suggestive trademarks

A suggestive mark is a mark that evokes or alludes a feature of the underlying product or service but does not come out an describe it. For example, the word “Jaguar” is suggestive of a fast car but does not specifically describe it. Instead, some exercise of thought or imagination is needed to associate the word with the underlying product. Like arbitrary or fanciful marks, suggestive marks are given a high level of protection because they are inherently distinctive.

Descriptive trademarks

A descriptive mark is a mark that directly tells buyers something about a product or service (e.g., its color, function, or ingredients). For example, “Vision Center,” “British Airways,” and “Cartoon Network” each describe an aspect of the underlying product or service. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have “acquired distinctiveness,” which comes from years of exclusive use.

Generic trademarks

A generic mark is a mark that describes an entire category or type of product or service. For example. “Lawn Care,” “Milk,” and “Computer” are generic terms for entire categories of products or services. Generic marks are not protected under trademark law, and a business that sells products or services under these names would have no exclusive right to use that term.

5. Frequently Asked Questions

What are the top Trademark Rules?

These are the top 10 trademark rules:

1. Always use your whole mark

2. Make sure your mark stands out

3. Use a trademark symbol

4. Avoid descriptive words, terms, and phrases

5. Use your trademark as an adjective

6. Business and domain names do not protect trademarks

7. Avoid commonly used words, terms, and phrases

8. You can file a trademark before you start using it

9. Federal trademark registration is the best way to protect your mark

10. The ® symbol is reserved for registered trademarks only

Bonus Rule: Working with a trademark lawyer increases your chances of registration by about 50%

If you follow these trademark rules, your trademark will keep its value and protect your brand.

TAKE THE NEXT STEP

Ready to Legally Own Your Trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Trademark vs. Copyright: AN EASY GUIDE

August 23, 2022 by Michael Kondoudis

Trademarks are signals that identify and protect brands, while copyrights protect creative works from copying.

By Michael Kondoudis, Small Business Trademark Attorney

This is our new EASY guide to trademarks, copyrights, and the differences between them. So if you want to understand how to use trademarks and copyrights to protect your hard work, then this guide is for you.

Let’s get started!

Contents

PART I: Trademarks

PART II: Copyrights

PART III: Trademark Vs. Copyright

PART IV: Trademark vs Copyright vs Patent

PART V: Frequently Asked Questions

PART I. TRADEMARKS

What Is a Trademark?

A trademark is a distinctive word, phrase, symbol, or other “signal” that represents your brand identity. They tell customers which products or services come from your business. A trademark distinguishes your products (or services) from the competition and helps stop imitations. Its main purpose is to provide protection for your brand, helping consumers recognize its origin effortlessly.

When you protect a trademark, you protect the brand that goes with it.

What Can Be a Trademark?

The most popular types of trademarks are names, logos, and slogans because they represent brands so well. However, almost anything that identifies and distinguishes a business’s products or services can be trademarked, including designs, sounds, characters, colors, and color schemes, so long as they are used to identify your brand.

Worried About Your Trademark?

How Do You Protect a Trademark?

The best way to protect a trademark is to register it with the United States Patent and Trademark Office (USPTO). Federal trademark registration comes with the nationwide right to use your mark and prevents competitors from registering it for their brand. Trademark registrations are granted by the USPTO.

Pro Tip: After applying to the USPTO, you should consider using the trademark symbol “TM” with your mark. It is not a requirement but is a good practice because it shows that you own the creative work and deters others from using it without permission.

PART II. COPYRIGHTS

What Is a Copyright?

A copyright protects authors and creatives from the unauthorized copying of their creative and artistic works. Copyrights protect creative works like songs, books, photographs, movies, and performances. A copyright gives you the exclusive right to use a work in a variety of ways: including:

Reproducing the work
Preparing derivative works based on the work
Performing the work publicly
Displaying the work publicly

Copyrights ensure that artists and creatives are rewarded for their artistry.

What Can Be Copyrighted?

Almost any artistic or creative work can be copyrighted. They protect against unauthorized copying of creative works. Examples of artistic and creative works that can be copyrighted include:

Books, novels, and stories
Poems
Photographs and paintings
Movies and videos
Song lyrics and sheet music
Sound recordings

How Do You Protect a Copyright?

The best way to protect a copyright is to register it with the U.S. Copyright Office, which is part of the Library of Congress. Registration is optional but highly recommended because it comes with more legal protections. Copyright registrations are granted by the U.S. Copyright Office.

Pro Tip: After applying to the Copyright Office, you should consider adding a copyright notice to your work. It is not a requirement but is a good practice because it shows that you own the creative work and deters others from using it without permission.

PART III. TRADEMARK vs. COPYRIGHT

Now that we know a bit about trademarks and copyrights, let’s look at the key differences between them.

Trademark vs Copyright: The Top Seven Differences

1. Purpose: Trademarks are associated with brands and protect distinctive signs connected to goods or services (e.g., Nike’s Swoosh logo), while copyrights protect original creative works of authorship (e.g., books, music, films).

2. Scope of Protection: Trademarks shield against confusing similarities (not just identical marks), safeguarding customers from counterfeit products or services. In contrast, copyrights protect against unauthorized copying of their creative works.

3. Type of Protection: Copyrights give the owners the exclusive right to reproduce, distribute, and display their works, while trademarks only give their owners exclusive rights to use the marks mark in connection with their products or services.

4. Duration: Copyrights expire 70 years after an author’s death, by statute. Unlike copyrights, trademarks can potentially last indefinitely, provided you continue to use and renew them. So, while copyrights definitely expire, trademarks do not.

5. Symbols: Trademarks are designated by the symbol “TM” or, in the case of registered trademarks, “®”. Copyrights are designated by the symbol “©”.

6. Use: Trademarks must be used in commerce, copyrighted works do not need to be used in commerce

7. Registration: Trademarks are registered with the U.S. Patent and Trademark Office (USPTO). You can obtain federal trademark registration through the USPTO. Copyrights are registered with the U.S. Copyright Office, which is a part of the Library of Congress. You can obtain federal copyright registration through the U.S. Copyright Office of the Library of Congress.

Remember: The main difference between trademarks and copyrights is that trademarks protect distinctive signs associated with goods or services (ex: Nike’s Swoosh logo), while copyrights protect original works of authorship (ex: books, music, films).

PART IV. TRADEMARKS vs. COPYRIGHTS vs. PATENTS

Patents, copyrights, and trademarks are different types of intellectual property. Each one offers different protections for different types of intangible properties (i.e., brands, creative works, and inventions). The distinctions among the three can be subtle, and often the same product or service may involve more than one of these intellectual property or “IP” rights.

The key to understanding the differences between trademarks, copyrights, and patents is in what they protect.

Trademarks protect brands.

Trademarks distinguish a company’s products from the competition and help customers find and rely on brands they know and trust.

Names, logos, colors, and even sounds can all be trademarks – if they are used to distinguish products.

Federal trademarks, the most common and most valuable type, are granted by the U.S. Patent and Trademark Office. They continue indefinitely so long as they are renewed.

Do you need help with your trademark?

Copyrights protect creative works.

Copyrights ensure that artists and creatives are rewarded for their artistry.

Novels, movies, poetry, photographs, songs, and even computer software can be protected by copyrights.

Copyrights are administered by the Copyright Office of the Library of Congress.

Patents protect inventions.

Patents help encourage inventors to keep inventing.

Patentable works include “new” and “useful” machines, industrial processes, chemical compositions, and even some plants. There are two main types of patents:

(1) Utility patents for how something works (e.g., machines, articles of manufacture, or compositions of matter);

(2) Design patents for how something looks (ornamental features).

Patents are granted exclusively by the U.S. Patent and Trademark Office in exchange for public disclosure of the invention in the patent document.

PART V. FREQUENTLY ASKED QUESTIONS

1. Do you trademark or copyright a logo?

You trademark a logo. Logos are trademarked. You protect a logo by trademarking it. With a logo trademark, you can prevent competitors from using your logo in connection with their products or services. Logos are not copyrighted.

If you have a logo, and you want to protect it, then you need a trademark. Famous examples of trademarked logos are the McDonald’s “Golden Arches” and the Nike “Swoosh.”

When a logo is trademarked, competitors will not be permitted to offer products or services under the same logo or anything similar.

Logo = trademark

2. Do you trademark or copyright a name?

You trademark a name. Names are trademarked. You protect a brand name by trademarking it. With a name trademark, you can prevent competitors from using your name in connection with their products or services. Names are not copyrighted.

If you have a product and want to protect the name, you would need a trademark. Famous examples of name trademarks include IPHONE® and BIG MAC®.

When a name is trademarked, competitors will not be permitted to offer products or services under the same name or anything similar.

Name = trademark

3. Do you trademark or copyright a business name?

You trademark a business name. Business names are trademarked. You protect the name of a business by trademarking it. With a name trademark, you can prevent competitors from using your business name in connection with their products or services. Business names are not copyrighted.

If you have a business and want to protect its name, you would need a trademark. Famous examples of trademarks for business names include GOOGLE®, APPLE®, and COKE®.

When a business name is trademarked, competitors will not be permitted to offer products or services under the same name or anything similar.

Business name = trademark

4. Do you trademark or copyright a phrase?

You trademark a phrase. Phrases are trademarked. You protect a phrase by trademarking it. With a trademark, you can prevent competitors from using your phrase in connection with their products or services. Phrases are not copyrighted.

If you have a service and want to protect a phrase that you use to brand it, you would need a trademark. Famous examples of trademarks for phrases include DON’T LEAVE HOME WITHOUT IT® and WHAT’S IN YOUR WALLET?®.

When a phrase is trademarked, competitors will not be permitted to offer products or services under the same phrase or anything similar.

Phrase = trademark

5. Do you trademark or copyright a slogan?

You trademark a slogan. Slogans are trademarked. You protect the slogan of a business by trademarking it. With a trademark, you can prevent competitors from using your slogan in connection with their products or services. Slogans are not copyrighted.

Well-known examples of slogans for businesses include and Apple’s THINK DIFFERENT® and McDonald’s I’M LOVIN’ IT®.

When a slogan is trademarked, competitors will not be permitted to offer products or services under the same slogan or anything similar.

Slogan = trademark

6. What Goes Into a Copyright Notice?

A copyright notice includes the following three items:

The copyright symbol © or the word “copyright”
The name of the copyright owner
The year of publication

7. Do you trademark or copyright a stage name?

You trademark a stage name. Stage names are trademarked. You protect a stage name by trademarking it. With a stage name trademark, you can prevent competitors from using your stage. Stage names are not copyrighted.

If you have a stage name that you want to protect, you would need a trademark. Famous examples of trademarks for stage names include LADY GAGA, DRAKE, SPIKE LEE.

Stage name = trademark

Take the Next Step and Legally

Own Your Trademark

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Request a Free Strategy Call

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

What Can Be Trademarked: An EASY Guide

August 16, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

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This is our EASY guide to what can be trademarked. If you want to know what can be trademarked (and what can’t), then this guide is for you.

Let’s get started!

Contents

> What is a trademark?

> What is a registered trademark?

> What a trademark does

> What can be trademarked

> The top 15 things that can be trademarked

> What cannot be trademarked

> The top 7 things that cannot be trademarked

> What is a trademark?

> What is a registered trademark?

> What a trademark does

> What can be trademarked

> The top 15 things that can be trademarked

> What cannot be trademarked

> The top 7 things that cannot be trademarked

What Is A Trademark?

A trademark is a sign or signal that represents a brand identity and identifies a business’s products or services in the marketplace. Names, logos, and phrases are the most popular trademarks.

Trademarks represent brands. Every successful brand is built on at least one trademark. When you protect a trademark, you protect the brand that goes with it, along with all of the hard work and investment that you put into your brand. In most cases, names and logos are the cornerstones of brands.

What Is A Registered Trademark?

A registered trademark is an enhanced trademark certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights and prevents anyone else from registering anything even similar for your industry.

Registered trademarks are sometimes referred to as federal trademarks.

Federal trademark registration is the best way to protect the mark(s) that reflect your brand. Read our quick guide to all of the reasons to register a trademark.

U.S. Trademark 48,461 for Campbell’s Soup

U.S. Trademark 977,190 for the NIKE Logo

The United States Patent and Trademark Office (or “USPTO”) is the Federal agency that registers trademarks.

What Does A Trademark Do?

Trademarks represent brands. A trademark tells customers which products or services come from your business. So, trademarks help customers identify your business as the source of a product or service. A trademark individualizes a product or service and differentiates it from the competition.

• Trademarks help customers find the products and services that they like, which helps make them repeat customers.

• Trademarks also help customers recommend products and services to their friends, which is free marketing.

• Trademarks convey stability and trust and tap the human preference for visuals, which makes your marketing more effective and less expensive.

The purpose of a trademark is to allow customers to easily identify the source of goods or services. Trademarks protect businesses’ investments in their brands and stop others from unfairly reaping the benefits of that investment.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

What Can Be Trademarked?

Many things can be trademarked, especially business or product names, logos, slogans, and phrases. As long as the trademark identifies a source of goods or services and is used in commerce, it is generally eligible for trademark protection. Generally, trademarks cover goods and services that are related to the brand. Typically, trademarks are registered with the U.S. Patent and Trademark Office.

The most popular types of marks are:

Names: Usually, your company name or the name of your product.

Logos: Your company logo or other graphic used to brand your products

Phrases + slogans: The phrase you use to sell your products.

For example, Apple Inc. protects its brand with a combination of its name “Apple,” its apple logo, the slogan “Think Different,” and product names like “MacBook” and “iPhone.”

Almost anything that identifies and distinguishes a business’s products or services can be trademarked, including a word, name, phrase, symbol, design, sound, character, color, or color scheme, so long as it is used as a brand. Every element of your brand can be a trademark. The possibilities are almost limitless.

What Can You Trademark?

Anything that represents your brand and distinguishes your products from the competition can be trademarked, especially business or product names, logos, slogans, and phrases. So, you can trademark anything that distinguishes your products and services from the competition and helps consumers identify brands, including:

1. Band Names (“The Beatles”)
2. Blog Names (“Mashable”)
3. Catchphrases (“That’s Hot!”)
4. Characters/Mascots (“Ronald McDonald”)
5. Company Names (“Google”)
6. Logos (the Nike “swoosh”)
7. Podcast Names (“The Joe Rogan Experience”)
8. Product Names (“Corvette”)
9. Product Shapes (Coca-Cola contoured bottles)
10. Restaurant Names (“Taco Bell”)
11. Services (“Bank America”)
12. Slogans (“What’s in your wallet”)
13. Webinar Names + Platforms (“Zoho”)
14. YouTube Channel Names (“PewDiePie”)

What Can You Trademark?

Band Names (“The Beatles”)
Blog Names (“Mashable”)
Catchphrases (“That’s Hot!”)
Characters/Mascots (“Ronald McDonald”)
Company Names (“Google”)
Logos (the Nike “swoosh”)
Podcast Names (“The Joe Rogan Experience”)
Product Names (“Corvette”)
Product Shapes (Coca-Cola contoured bottles)
Restaurant Names (“Taco Bell”)
Services (“Bank America”)
Slogans (“What’s in your wallet”)
Webinar Names + Platforms (“Zoho”)
YouTube Channel Names (“PewDiePie”)

What Cannot Be Trademarked?

Inventions and creative works of art cannot be trademarked; they are protected by patents and copyrights, respectively. Also, some brand elements cannot be trademarked because they do not identify the source of a product or service.

• Names and logos that are too similar to an existing trademark cannot be trademarked. Confusion could result.

• Generic terms and phrases cannot be trademarked because they are never recognized as a brand.

• Common surnames cannot be trademarked without a separate showing that the name has acquired distinctiveness through use.

• Geographic descriptors cannot be trademarked because they just describe an aspect of a product or service.

Other examples of things that you cannot trademark are inventions and creative works, which are respectively protected by patents and copyrights.

1. Generic terms

Generic terms that describe a category of product or service cannot be trademarked. For example, you cannot trademark the word “car” or the word “computer.”

2. Descriptive terms

Descriptive terms that describe a feature of a product or service cannot be trademarked. For example, you cannot trademark the word “fast” or the word “efficient.”

3. Geographical terms

Geographical terms that identify the original or location of a product or service cannot be trademarked. For example, you cannot trademark the word “California” or the word “New York.”

4. Personal names

Personal names cannot be trademarked. For example, you cannot trademark the name “John Smith” or the name “Mary Jones.”

5. Trademarks that are misleading

Trademarks that are misleading cannot be registered. For example, you cannot register a trademark for the word “Natural” if the product is not actually natural.

6. Trademarks that are too similar to existing trademarks

Any mark that is likely to cause confusion with an existing registered mark is not registrable.

What Cannot Be Trademarked?

• Names and logos that are too similar to an existing trademark cannot be trademarked. Confusion could result.

• Generic terms and phrases cannot be trademarked because they are never recognized as a brand.

• Common surnames cannot be trademarked without a separate showing that the name has acquired distinctiveness through use.

• Geographic descriptors cannot be trademarked because they just describe an aspect of a product or service.

Other examples of things that you cannot trademark are inventions and creative works, which are respectively protected by patents and copyrights.

1. Generic terms

Generic terms that describe a category of product or service cannot be trademarked. For example, you cannot trademark the word “car” or the word “computer.”

2. Descriptive terms

Descriptive terms that describe a feature of a product or service cannot be trademarked. For example, you cannot trademark the word “fast” or the word “efficient.”

3. Geographical terms

Geographical terms that identify the original or location of a product or service cannot be trademarked. For example, you cannot trademark the word “California” or the word “New York.”

4. Personal names

Personal names cannot be trademarked. For example, you cannot trademark the name “John Smith” or the name “Mary Jones.”

5. Trademarks that are misleading

Trademarks that are misleading cannot be registered. For example, you cannot register a trademark for the word “Natural” if the product is not actually natural.

6. Trademarks that are too similar to existing trademarks

Any mark that is likely to cause confusion with an existing registered mark is not registrable.

What Cannot Be Trademarked

The United States Patent and Trademark Office (USPTO), which is responsible for examining applications and granting registrations for trademarks, has strict rules about what can and cannot receive protection. The following things cannot be registered as trademarks:

Deceptive Words, Names, Phrases, Slogans (they are misleading)
Merely Descriptive Words (e.g., Best ice cream, Red car)
Merely Decorative Features (they don’t identify source)
Generic Terms and Phrases (e.g., milk, toaster)
Proper Names or Likenesses (without consent from the person)
Disparaging Words, Names, Phrases (by law)
Government Flags, Coats of Arms, Flags (by Statute)

Frequently Asked Questions

1. What can I trademark?

You can trademark anything that helps customers recognize you in the marketplace and distinguish you from your competitors. Company names, product names, logos, and phrases are prime candidates for trademark protection. You can trademark words, phrases, and logos by submitting an application to the U.S. Patent and Trademark Office (USPTO).

2. What cannot be trademarks?

Creative works and inventions are not eligible for trademark protection. They are protected by copyrights and patents, respectively. Also, merely descriptive terms such as “shoes” or “books” and generic terms such as “car wash” or “dry cleaning” cannot be trademarks because they do not distinguish a company or its products in the marketplace.

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Why Register a Trademark – ALL YOU NEED TO KNOW

August 12, 2022 by Michael Kondoudis

You should register a trademark because it is the highest level of protection you can get for a trademark. Registration has benefits that reduce the costs of enforcing your trademark rights and enhances those rights, which can save you money over time.

By Michael Kondoudis, Small Business Trademark Attorney

Registering a trademark is REALLY important if you want to protect it. If you are not 100% sure about registering your trademark and want to know the answer to the question “why register a trademark?” here it is:

Registration is the ultimate protection for any trademark.

For example, when you register a trademark, you prevent any competitor from trademarking it and taking it from you. Also, trademark registration is official confirmation from the US Government that you own your trademark that ensures that you will never be forced to rebrand. It is a cost-effective way to protect your brand.

Let’s jump in!

CONTENTS

> About Registered Trademarks

> Registering Trademarks

> The Benefits of Trademark Registration

> Frequently Asked Questions

1. About Registered Trademarks

What is a Registered Trademark?

A Federal trademark is an enhanced trademark that has been certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights preventing anyone else from registering anything similar for your industry.

How Do You Get a Registered Trademark?

You get a registered trademark by filing an application with the United States Patent and Trademark Office (or “USPTO”), the Federal agency that registers trademarks.

2. Registering Trademarks

Do You Have to Register a Trademark?

No, you do not have to register a trademark. There is no legal requirement to register your trademark. But there are many advantages to registering a trademark and many risks if you do not register it. Also, the cost of registering a trademark is far less than the losses you might incur if you do not register. So, while you do not have to register a trademark, registering is a good idea.

What Happens If You Don’t Register a Trademark?

Not registering a trademark comes with legal and financial risks.

A competitor can register your trademark for their business and take it from you. You will be forced to rebrand.

You will have limited trademark rights at best. They will be limited to only the geographic areas in which you use your mark, and you may not be able to stop a concurrent user.

You will not be entitled to the enhanced damages that owners of registered trademarks can get.

A competitor can earn superior rights in your mark and charge you with infringement.

Do you need help with your trademark?

Why Register a Trademark?

You should register a trademark because it is the highest level of protection you can get for a trademark, confirms your LEGAL ownership of it, and increases its value. Plus, registering your trademark strengthens the legal protection of your mark, which makes enforcing your rights easier and less expensive. Registered trademarks enjoy significantly greater rights and protections than unregistered marks.

You should register a trademark because it makes it easier and less expensive to stop copycats and imitators. Also, trademark registration will prevent competitors from registering your mark and take it from you. Additionally, registering your trademark is a good idea to ensure that you do not infringe on anyone else’s trademark

Remember: The U.S. Patent and Trademark Office is not an enforcement agency. You are responsible for protecting your trademark rights. By registering your trademark, you can significantly reduce the costs of enforcement.

3. Benefits of Trademark Registration

Top Seven Benefits of Trademark Registration

These are the top benefits that come with trademark registration:

Trademark registration is confirmation of your legal ownership of your mark.
Trademark registration is the best protection from trademark infringement by competitors.
Trademark registration prevents a competitor from registering your mark or anything similar.
Trademark registration ensures that your trademark does not infringe anyone else’s marks.
Trademark registration makes your mark more valuable as a business asset.
Trademark registration puts others on notice of your rights in your mark.
Trademark registration enhances the value of a company’s brand.

Top Ten Reasons to Register a Trademark

Here are the top ten reasons to register a trademark:

Legal Ownership
Protection from Infringement
Prevent Competitors from Registering Your Mark
Easier and Less Expensive Enforcement
Verification that Your Trademark Does Not Infringe
Exclusive National Rights
Right to Use the ® Trademark Symbol
Addition to the USPTO Trademark Database
Better Online Protections & Access to Amazon Brand Registry
It Will Protect Your Investment In Your Brand

1. Legal Ownership

Trademark registration is official confirmation from the Federal government that you legally own your trademark. You become 100% in charge of how your trademark is used and by whom. When you register a trademark, you legally own it.

2. Protection from Infringement

You should register a trademark because it will protect you from infringement. A trademark registration will help keep anyone related to your industry from using your trademark. This ensures that your trademark remains distinctive.

3. No Else Can Register Your Mark

You should register a trademark because it will prevent anyone in your industry from trademarking it (or anything similar). If someone else registers your trademark, they will own it, and you will need to rebrand.

4. Easier and Less Expensive Enforcement

You should register a trademark because it will lower the costs to protect and enforce your trademark rights. Trademark registration comes with important legal presumptions that make protecting your trademark easier and less expensive, such as the legal presumptions that you own your trademark and have the national right to use it. Plus, you will be able to sue infringers for triple (3x) damages and attorney fees!

5. Verification that Your Mark Does Not Infringe

During the registration process, a U.S. Patent and Trademark Office investigates whether a trademark is likely to infringe any other trademarks, and it rejects trademarks that do. So, when you register your trademark, you get the peace of mind that you do not infringe anyone else’s trademarks.

6. Exclusive National Rights

A Federal trademark comes with the immediate, exclusive, and nationwide right to use your mark in your industry with the backing of Federal courts to protect it. Only one business can use a trademark in an industry, and it is usually the one that registers it first.

7. Use the ® Symbol

Only owners who register their trademarks can legally use the ® symbol, an attention grabber that tells the world that conveys credibility, stability, and professionalism. So, trademark registration will boost your new business in the marketplace.

8. Addition to the USPTO Trademark Database

Trademark registration adds your trademark to the U.S. Patent and Trademark Office database of registered and pending trademarks. Your trademark will appear in trademark searches and can scare off anyone thinking of using your trademark.

9. Better Online Protection & Access to Amazon Brand Registry

Trademark registration makes it easier to protect your mark online. Amazon’s brand registry requires a trademark registration and makes proving ownership to Facebook, Tik Tok, and Instagram a mere formality. Plus, trademark registration provides for enhanced protection against cybersquatters.

10. It Will Protect Your Investment

Trademark registration will protect profits and your investment in your brand. If someone else starts selling products with your mark, they could divert sales and damage your business. Plus, with a registered trademark, you can invest in marketing with confidence that you will receive the full benefit of your efforts.

4. Frequently Asked Questions

1. When Should I Register a Trademark?

As soon as possible, according to most authorities. The trademarking process typically takes more than a year, so starting early is essential. Most business owners begin the process of registering trademarks as soon as they are formed and long before they take a product to market. Also, it is costly to have to rebrand if you accidentally infringe someone else’s registered trademark.

2. Do Trademarks Need to be Registered?

Yes, you need to register your trademark. Registration is optional, but there are many advantages to registering a trademark and many risks if you do not register it. Also, the cost of registering a trademark is far less than the losses you might incur if you do not register. So, while you do not have to register a trademark, registering is a good idea.

3. How Long Does a Federal Registration Last?

Your trademark registration can last forever, so long as you continue to use your trademark in commerce and provide us with evidence that you’re still using it. Specifically, you need to file maintenance documents with fees at prescribed, periodic intervals. For example, you must file a maintenance document after your trademark has been registered for five years. You can read more about the requirements for trademarks here.

TAKE THE NEXT STEP

Ready to LEGALLY own your trademark?

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Handle Trademark Infringement

August 10, 2022 by Michael Kondoudis

Your brand is WHO you are, WHAT you do, and WHY you do it. It’s how consumers will first encounter your business. It’s the common thread throughout your marketing. Your website, business cards, and invoices all reflect it. That’s why brands are important.

Trademarks (name + logo + slogan) represent brands. Federal trademarks protect brands. If you discover that another company is infringing your trademark, you can and should take action to enforce your rights.

How should you handle trademark infringement?

1. Learn What You Can About Them

The first thing to do is to learn about them. Visit their website and social media pages. Grab screenshots. Take pictures of their products or advertisements.

You’ll want to find out:

What they sell
Where they sell it
When they first used the brand
Whether they have a Federal trademark

2. Keep it Off Social Media

You don’t want to post about it on social media. It can get you into legal trouble and won’t help.

We’ve seen defamation lawsuits that started when one company posted an Instagram story about another company stealing their brand. Handle it offline – away from your customers.

Trademark infringement is a complicated Federal legal matter. We can help.

3. Ask Yourself: Are They Too Close?

You’ll need to weigh whether they are using a trademark that is legally too close to yours. This test can get complex. Still, they’re probably too similar if they meet these three conditions.

You’ll want to be broad about what sounds and looks similar. For example, if the brands share a keyword, they may be too similar. Words like “Inc.” “The” or “And” won’t make a difference. You can ignore them.

You’ll also want to consider what the brands mean. If the brands allude to related feelings or even geographic locations, they may be too similar. The use of another language won’t make a difference. In the US, hello and “hola,” for example, are treated as the same.

You’ll want to be broad about what is a similar product or service. They don’t need to be the same. Even complementary products and services can be “similar” for trademark infringement.

For example, shirts and bags could be too similar because many stores sell both.

If their products and services can be sold in the same way that you sell yours, then they need to stay further away from your trademarks.

4. Know Your Trademark Rights

A (Federal) trademark gives you the exclusive right to use your name + logo + slogan. This exclusive right extends to all 50 States.

This exclusive right extends to all trademarks that are “confusingly similar.” If (1) you have a Federal trademark, (2) the new brand is similar to (or the same as) your trademark, and (3) they started their business after you, then you can take steps to stop them. Keep reading to see what to do next.

If you don’t have a Federal trademark, you can’t stop them yet. You may still be able to trademark the brand and stop these copycats. Consider talking with an experienced trademark lawyer.

5. Get Legal Help to Handle Trademark Infringement

If you decide that someone is using a trademark that is too close to yours, contact a trademark lawyer to help you work through your many options.

Most trademark-infringement enforcement strategies start with sending a cease and desist letter addressed to the trademark infringer demanding that they stop infringement. Many times, however, other options are preferable. These include applying for a Federal trademark, sending a reservation of rights letter, or continued monitoring.

In the US, you are responsible for enforcing/protecting your trademark property rights. You can lose your trademark rights if you do not enforce them.

Trademark enforcement is not a DIY project. It involves Federal Statutes, legal analyses, and strategy. Also, you may inadvertently say something that can be used against you.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Trademark Renewal: Keeping Your Trademark Alive

August 10, 2022 by Michael Kondoudis

Congratulations! You’re the proud owner of a (Federal) trademark! You made a smart business decision to secure the trademark that represents your brand. Now it is time to learn about trademark renewal.

You now have the exclusive right to use it for the products and services that you sell. This means you’re the only one who can use it to represent your brand.

You don’t have to worry about copycats or rebranding. Plus, you have a leg up when it comes to legally protecting your trademarks.

Here is the really good news. A properly maintained Federal trademark may last forever – if you use it and keep it in good standing. If you don’t stay on top of your trademark renewal, someone else can take your trademark.

Here’s what you need to know.

Start Using the Trademark Symbol

You should add the ® symbol to the upper right corner of your mark wherever it is used. This includes on social media and especially your website.

The symbol lets the world know that your brand is protected nationally by Federal law.

It also makes it easier to show that someone intentionally copied your mark.

You should not use any trademark with your corporate identity.

Example: Microsoft Corporation is a corporation in the State of Washington, but Microsoft® is a federally registered brand of software, computer hardware, and cloud services.

Use Your Mark

If you use your trademark to brand a product, then it must appear on the product (e.g., tags or labels), the product packaging, or on a display for the product.

If you use your mark to brand a service, then your mark must be used in the sale or advertising of the service (e.g., a website).

Be Consistent in How You Use It

You’ll need to continue using your trademarks in the exact same way. That means the same exact words, colors, spacing, and punctuation. You’ll also need to use it on the same products or services.

Any alteration in how you use a trademark could hurt your trademark rights.

Keep Using It

Trademark rights come from use in the marketplace. You need to use your trademark to brand the products or services that you sell. Otherwise, you risk losing it.

Also, you need to use your trademark to renew it (see below).

Look for Copycats

As a trademark owner, you need to find and stop copycats. Otherwise, you could lose your trademark rights.

While the U.S. Patent and Trademark Office will prevent others from registering similar marks, it does not get involved with enforcement.

You’ll need to search for similar brands selling similar products or services. The best way to do this is with Internet searches. Some trademark owners set up “Google Alerts” to automate this process.

If you do see a similar brand, for similar products or services, you’ll want to have a trademark law firm prepare and send a trademark cease + desist letter.

Renew on Time

Trademarks may never expire – if you “check-in” with U.S. Patent and Trademark Office at specific times to let them know that you are still using your trademark.

These dates for trademark renewal are listed on your registration certificate and they’re vitally important.

If the documents are not filed by the due dates, your registration will be canceled and cannot be revived or reinstated.

@ Five years

- You’ll need to file a Declaration of Continued Use. This states that you’re still using your mark. You’ll need to do this to continue your trademark rights.
- Also, you may want to file a Declaration of Incontestability if you have used your mark continuously and consistently.
- Incontestability means that your brand is strong and easier to legally protect. It also makes it harder for people to challenge your trademark.

@ Ten years

- You’ll need to file a Declaration of Continued of Use. Again, this states that you’re still using your mark.
- You’ll also need to file an Application for a Renewal.
- This is required to continue using your trademark.

@ Every Ten years thereafter

- You’ll need to file both a Declaration of Use + an Application for Renewal.

Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

How to Trademark an Image – AN EASY GUIDE

August 10, 2022 by Michael Kondoudis

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking an image or picture.

If you want to learn how to trademark an image or picture then read on – this guide is for you.

Let’s get started.

CONTENTS

This article explores issues that trademark owners need to know, including:

> I. THE BASICS OF TRADEMARKS

> II. IMAGE TRADEMARKS

> III. TRADEMARKING IMAGES

> IV. TRADEMARKING PICTURES

> V. WORKING WITH THE U.S. PATENT AND TRADEMARK OFFICE

> VI. TOP REASONS TO TRADEMARK IMAGES AND PICTURES

> VII. FREQUENTLY ASKED QUESTIONS

I. TRADEMARK BASICS

What is a Trademark?

A trademark is a signal to consumers that distinguishes a company’s goods and/or services from the competition. Trademarks protect brands. This, in turn, reduces consumer confusion and encourages consistent quality.

Trademarks offer national protection from imitation by copycats.

Company names, logos, catchphrases, and product names can be trademarks. The most popular types of trademarks are:

names
logos
phrases
characters

Can You Trademark an Image?

Yes, you can trademark an image when you use it in your branding. Images can be trademarked. So, if you are using an image to tell customers that a product or service comes exclusively from you, you can trademark the image. Trademarking an image is the best way to protect it for your brand.

The answer to the question “can you trademark an image?” is yes!

Can You Trademark a Picture?

Yes, you can trademark a picture when you use it as a brand. Pictures can be trademarked. So, if you are using a picture to tell customers that a product or service comes exclusively from you, you can trademark the picture. Trademarking a picture is the best way to protect it for your brand.

The answer to the question “can you trademark a picture?” is yes!

II. IMAGE TRADEMARKS

What is an Image Trademark?

An image trademark is a trademark for a graphic or illustration that a company or business uses in its branding. The most common image trademarks are likenesses, characters, and logos.

III. TRADEMARKING IMAGES

Can You Register an Image as a Trademark?

Yes, you can register an image as a trademark by applying to the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications for image trademarks that represent brands. So, the USPTO allows you to trademark an image if it’s used in your branding. This can be a valuable asset for your business, helping to protect your brand identity.

Do You Need to Trademark an Image?

Yes. If you are investing in a brand and using an image to represent the brand, you should trademark the image by registering it with the U.S. Patent and Trademark Office (USPTO).

Trademarks protect brands and the names, logos, and images that represent brands.

How to Trademark an Image

Trademarking an image that represents your company, product, or service is the best way to protect it – and your brand. Knowing how to secure an image trademark is important. Here’s how to trademark an image in six steps:

1. Develop a unique and distinctive image (e.g., a logo, character, or likeness)

2. Search the USPTO trademark database for existing trademarks to confirm that no one has registered the image

3. Collect the information required for a new application and decide on a trademarking strategy

4. Prepare and file your new application with the U.S. Patent and Trademark Office (USPTO)

5. Navigate the USPTO application review process

6. Use the correct trademark symbol. Read more about trademark symbols here.

Generally, you trademark an image by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking with the USPTO is a legal process that usually takes about 12 months. So, the sooner you start trademarking your image the better.

Stop Worrying About Your Trademark!

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

How Long Does It Take to Trademark an Image?

It takes about between 12 to 18 months to trademark an image with the U.S. Patent and Trademark Office (USPTO).

IV. TRADEMARKING PICTURES

Can You Register a Picture as a Trademark?

Yes, you can register picture as a trademark by applying to the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications for picture trademarks that represent brands.

The USPTO allows you to trademark a picture if it’s used in your branding. This can be a valuable asset for your business, helping to protect your brand identity.

Do You Need to Trademark a Picture?

Yes. If you are investing in a brand and using a picture to represent the brand, you should trademark the picture by registering it with the U.S. Patent and Trademark Office (USPTO).

Trademarks protect brands and the names, logos, and pictures that represent brands.

How to Trademark a Picture

Trademarking a picture that represents your company, product, or service is the best way to protect it – and your brand. Knowing how to secure an image trademark is important. Here’s how to trademark picture in six steps:

1. Develop a unique and distinctive picture (e.g., a logo, character, landscape, or likeness)

2. Search the USPTO trademark database for existing trademarks to confirm that no one has registered the picture

3. Collect the information required for a new application and decide on a trademarking strategy

4. Prepare and file your new application with the U.S. Patent and Trademark Office (USPTO)

5. Navigate the USPTO application review process

6. Use the correct trademark symbol. Read more about trademark symbols here.

Generally, you trademark a picture by applying to the U.S. Patent and Trademark Office (USPTO) and getting your application approved for registration. Trademarking with the USPTO is a legal process that usually takes about 12 months. So, the sooner you start trademarking your image the better.

How Long Does It Take to Trademark a Picture?

The process to trademark a picture with the U.S. Patent and Trademark Office (USPTO) takes between 12 to 18 months.

V. WORKING WITH THE USPTO

Where Do You Trademark an Image or Picture?

You trademark an image or picture by filing an application with the U.S. Patent and Trademark Office (USPTO). The USPTO accepts applications to trademark image trademarks online via its Trademark Electronic Application System (TEAS).

When Should You Trademark an Image or Picture?

Most experts agree that you should trademark your image or picture sooner rather than later. The process of trademarking an image or picture usually takes more than a year. So, the earlier you start, the sooner you’ll have confirmation that you legally own your image or picture and that it is protected. Plus, if you encounter any obstacles to registration, you will have more time to address them.

Also, you do not need to wait until you start using the image or picture as your trademark. It is possible to start trademarking an image or picture as soon as you decide to use it.

Stop Worrying About Your Trademark

Schedule a Free Strategy Call

See How My Law Firm Can Help You Protect Your Trademark

New Applications – Legally own your trademark.

Office Actions – We can navigate the trademarking process at the USPTO.

Enforcement – Flex your trademark rights. Stop copycats.

Why Trademark an Image or Picture?

Trademarking an image or picture is the best way to protect it and make certain that it is exclusively yours for your brand. When you trademark an image or picture, you ensure that it:

• is available for your exclusive use, does not infringe anyone else’s trademarks, which saves you legal headaches

• stay unique and stands out in the marketplace over time, which keeps your brand recognizable and more trusted

• stays legally yours so that you never have to rebrand, so you can invest and promote your brand with confidence.

These benefits protect your profits. Read our quick guide to all of the reasons to register a trademark.

VI. REASONS TO TRADEMARK IMAGES AND PICTURES

The top five reasons to trademark an image are:

1. You will avoid future branding conflicts

2. No one else in your industry will be able to trademark it

3. It will be easier to stop imitators

4. It will increase trust and recognition in your brand

5. You will be able to use the ® symbol

Avoid future conflicts: Trademarking your image ensures that your image does not conflict with any existing trademark registrations. Trademarking involves research to make sure that no one else has trademarks that are the same or similar to your image. Plus, the USPTO only registers trademarks that do not conflict with existing registrations. So, the trademarking process confirms that your image: (1) does not infringe any existing registered trademarks and (2) is available for your exclusive use

Prevent trademarking by others: Trademarking your image will prevent any competitors from trademarking the same or similar name image for their products or services. As a general rule, only one person can own a trademark in an industry. So, by trademarking your image, you ensure that no one else can trademark it and take it from you. This makes trademarking great insurance against ever having to rebrand.

Stop imitators: Trademarks, including image trademarks, come with legal presumptions that make protecting your brand easier and less expensive.

Trust: Trademarking your image will increase its value and the value of the property it represents. Trademarks ensure authenticity, which increases trust in your brand.

Use the ® symbol: Trademarking your image gives you legal permission to use the ® trademark symbol with them. The ® symbol is “public notice” that your image trademark is protected under federal law. This enhances your brand credibility and warns competitors to stay clear of your marks, both of which promote trust in the authenticity of your brand.

Remember: Once you have registered your trademark, it will be officially yours and no one else can use it (or anything similar) without your permission.

VII. FREQUENTLY ASKED QUESTIONS

1. Do you copyright or trademark an image?

It depends. If the image is original artwork that you want to protect from use without your permission, then you should copyright it. If the image is closely associated with your brand, you should trademark it. Copyrights protect creative works while trademarks protect names and logos that represent brands.

Learn More: Our Easy Guide to Trademark vs. Copyright

So, if you are using an image to represent your brand, you should seek a trademark registration to protect it. But, your image may also qualify for copyright protection as well.

2. Do you copyright or trademark a picture?

It depends. If the picture is original artwork that you want to protect from use without your permission, then you should copyright it. If the picture is closely associated with your brand, you should trademark it. Copyrights protect creative work while trademarks protect names and logos that represent brands.

So, if you are using a picture to represent your brand, you should seek a trademark registration to protect it. But, your picture may also qualify for copyright protection as well.

3. Can you trademark a person’s likeness or image?

Yes, if the likeness is being used to represent a brand then it is eligible for trademark protection. An example of a trademarked likeness is Kentucky Fried Chicken’s “Colonel Sanders”.

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).