Once you have trademark rights, you can stop others from using the same or a confusingly similar mark to sell the same goods as you. You cannot stop anyone from selling the same goods under a different mark, nor can you stop people from selling a completely different product or service under a similar mark. You can only stop people from selling the same (or very similar) thing using the same (or very similar) mark. For example, you would not be able to operate a coffee and pastry shop called Dunk-In Do-nuts.
Although registration of your mark is not required, it does offer more protection than using an unregistered mark. In addition, you will want to consider registering your mark if you intend to do business nationwide, in foreign countries or if your product is one likely to be counterfeited.
How to Register a Trademark
To qualify for trademark registration, you must be currently using the mark in commerce or intending to do so. Additionally, you will need to do a trademark search to ensure the mark has not already been registered for a similar product or service.
You may fill out and submit your application online via the Trademark Electronic Application System (TEAS) or by mail, but the processing time for mailed applications is longer. Using a trademark application worksheet, compile the information you need, such as:
- Your completed application form
- A drawing of your mark, even if the mark is just a word without any design elements
- A depiction of the mark in use, if you're already using it
- Identification of the exact goods you will be using the mark on
Once you know that information, apply for your mark. You will need to pay a nominal application fee when you submit your trademark application.
Service Marks and Trade Dress
The term "trademark" is often used to refer to other types of branding that are similar to trademarks but technically have their own terms. Two of these are service marks and trade dress.
A service mark offers the same protections as a trademark but to services rather than to products.
Trade dress, meanwhile, refers to the "packaging" of a product or service. This can include actual physical packaging, such as the color of a box (Kodak's red and yellow, for example) or shape of a bottle (the classic Coca-Cola bottle), but can also mean how a product is displayed or the feel/decor/appearance of a place like a restaurant (the White Castle facade).
To qualify for trade dress protection, the packaging needs to be distinctive and likely to cause confusion if another product or service were to use similar dress. Non-distinctive dress-a common color, for example-can acquire distinctiveness over time if it becomes strongly associated with the product in the public's mind.
Unregistered vs. Registered Trademarks
Simply using a trademark-selling your product or service with the mark displayed on it-is enough to gain protection against others' use of the same word(s) or symbol(s), but the protection is limited. Your rights to an unregistered trademark extend only to your general geographic area, and you may only use state courts for legal action against people who try to steal your trademark.
By registering your trademark, you gain additional protections:
- The right to use the mark nationwide, although this may be limited within a geographic area where someone else has been using an unregistered mark on a similar product
- Protection before you start using the mark, although you will lose that protection if you don't start using it
- Right to take legal action against infringers in federal court
- Right to file your trademark with the U.S. Customs Service to stop infringing foreign products from entering the country
- A basis for filing for trademark protection in foreign countries
In addition, registration qualifies you to use the symbol R with your mark to notify the public that you are using a registered trademark. You may not use the R while your application is pending or on any products or services not stated in your application.
Even without registration, you may use your mark with the symbol TM for a product or SM for a service. These symbols do not offer legal protections but do serve to notify the public that you claim trademark rights to that mark.
To maintain your trademark rights, you must continue to use the mark. For a registered trademark, you will also need to file periodic applications for renewal (between the ninth and 10th years after registration or renewal) and declarations of use or excusable non-use (starting between the fifth and sixth years after registration and then with every renewal application). You may also need to file a declaration of incontestability after five years of continuous use in commerce.
Filing a Trademark in a Foreign Country
If you intend to do business in other countries, you will need to file for trademark protection in each of those countries. Member countries of the Madrid Protocol (87 countries as of September 2012) will recognize a single "international application" if you already have a registered trademark or an application pending.
Some other countries also recognize U.S. trademark registration as a basis for registering a mark. You will still need to follow the trademark laws of those countries.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.
