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
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:
CRANAPPLETM 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.
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?
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.
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).