Intellectual Property Law Basics

Part 4: Trademarks (IP in Business)

Trademark protection applies to any “word, name, symbol, or device” used in commerce. The use is right there in the name: it’s a mark used in trade. Generally, trademarks to indicate the source of a good or service. Trademarks can be used without registering them, but marks that are important for a business should be researched and registered.

Trademark research consists of searching for previous usage of the mark in commerce. Because trademark registration can get relatively expensive (more expensive than copyright registration, but less expensive than a patent), and because branding is so important to a business, it’s a bad idea to put a lot of investment behind a mark that is already in use. Sometimes the options that aren’t available are pretty obvious. You wouldn’t want to start a new shoe company called “Nike.” But for most new business and product names and logos, it won’t be clear whether there is already use in the marketplace, so looking before you leap is a good idea.

Trademark registration in the US means filing an application for federal registration of the mark with the US Patent and Trademark Office. The applicant submits an example of the mark and also chooses a “class” for the mark, which is a description of goods or services that the mark is meant to cover. One mark may be used for several classes. For example, the Chicago White Sox mark might apply to both sporting events and athletic apparel. If that is the case, separate fees are paid for each class.

Registered trademarks are denoted with an ®, and unregistered trademarks are often marked with the legend TM. The TM designation may mean that a registration application is pending; it can also mean that the user of the mark has decided not to seek registration for some reason. Registration gives the owner several rights that do not apply to non-registered marks.

As with other types of IP, most countries have their own trademark systems and rules, and international protection of trademarks can get quite complex and expensive.

The goals of trademark protection are to avoid customer confusion in the marketplace and to reward the originators and users of a specific mark in commerce. Marks that have a high degree of creativity or abstractness are generally more protectable than marks that have a more generic nature or are clearly associated with the good or service. Thus, “Apple” for computer is a strong mark, because the association of the word Apple with computers is almost solely due to the good branding practices of that company. Meanwhile, a mark such as “Computer” for a computer would certainly never get authorized for registration in the U.S., and even a more abstract term like “Computing Machine” as a computer brand would have a slim chance of gaining good protection for its user.

Trademark registrations can last for as long as a mark is used in commerce, if regular statutorily-required maintenance fees and statements demonstrating their use in commerce are filed.

This is provided for information purposes only and does not constitute legal advice. If you have questions about any of these topics, you should consult with a lawyer.