What is a Trademark?

A trademark is a word, a name, a symbol, or a combination of words, numbers, or symbols used to identify a company's goods. As a result, using a trademark to identify and distinguish a company's goods (or using a service mark to distinguish services) from other companies' goods and services creates trademark rights governed by trademark law. A trademark lawyer near you can help determine if you need a trademark.

Trademarks are more commercial-oriented forms of intellectual property. They're used to distinguish a company's brand, goods, and services from those of its competitors. Consequently, the U.S. Patent and Trademark Office (P.T.O.) prosecutes trademark applications like patents. However, unlike patents, trademarks do not protect inventions or other tangible assets. Instead, business-related logos, symbols, words, images, colors, and sounds are eligible for trademark protection.

The Lanham Act

Through the Lanham Act (15 U.S.C.S. § 1051 et seq.), federal law has provided benefits to trademark owners for over 70 years. As a result, this law created the registries which list the registered trademarks (known as the Principal and Supplemental Registers) and provides trademark owners with the means of defending their marks and obtaining relief from infringers.

Trademarks are critical to protecting a business's identity, as they distinguish a company's brand from others in the marketplace. Moreover, they preserve the goodwill a company has accrued through years of growing its business.

With the help of a trademark lawyer, a prudent business owner seeks trademark protection on the words and images associated with their company, such as its name and logo, and any other symbols used to identify its goods and services. With a federally granted trademark, a business can grow its reputation. Plus, as the goodwill grows, so too does the effect of the trademark and the likelihood of successfully defending challenges from rival entities and repelling infringers.

A Trademark Lawyer Can Ensure Your Mark is Distinct

A trademark must meet several requirements like patents before the P.T.O. grants it. The Lanham Act further sets the conditions for trademark registration. Of all the requirements outlined in the Act, a trademark must distinguish the goods or services the trademark identifies from similar goods and services. A trademark lawyer can clarify if you meet the requirements.

The distinctiveness of a trademark falls into one of five categories:

  1. generic (least distinct)
  2. descriptive
  3. suggestive
  4. arbitrary
  5. fanciful (most distinct)

The more distinct the mark, the less the likelihood of being confused with other marks, and the greater legal weight it carries when defending against competitors and other unlawful uses. To receive protection under federal trademark law (the Lanham Act), you must register your trademark with the United States Patent and Trademark Office. 

A trademark must be distinctly different from the generic name of the product it represents. For example, Kleenex® is a trademark for facial tissue, while White Out® is a trademark for correction fluid. In addition, a trademark must not be confused with a trade name. The trade name identifies the company. For instance, "The Coca-Cola Company" is a trade name while COKE® is a trademark. 

If you feel your trademark may be more generic, you can still apply for a trademark. Read more about trademarking a generic name here.

Do I Need a Trademark Lawyer to Register My Mark?

Trademark registration requires attention to detail. For example, you must apply for trademark registration within the appropriate class or classes of goods to make sure your mark receives the protection you desire. However, there are 34 classes for goods and 11 for services, which leaves much room for error. However, an IP lawyer is familiar with the process and can avoid those errors.

In addition, an IP lawyer offers several advantages over going it alone. For instance, a trademark lawyer can help you do the following:

  • Search for similar trademarks that could prevent yours from being registered or used in commerce.
  • Interpret the results of the findings and tell you how to proceed.
  • Evaluate the strength of your proposed mark and help you develop a strong mark.
  • Explain your rights concerning the registered mark and how to pursue infringement claims.
  • Prepare and file the trademark application and amend any concerns.
  • Follow up on the process, adhere to deadlines, check status, and respond to any further inquiries regarding the application.

Once the trademark is registered, a trademark lawyer can help you enforce your intellectual property rights by monitoring and pursuing claims related to potential infringement. 

How Do I Trademark Something?

To obtain a registered trademark, a business (or individual) must formally apply to the United States Patent and Trademark Office, the federal entity tasked with prosecuting and registering trademarks and maintaining the Principal and Supplemental Registers. The process involves numerous steps, and you can learn more about the basics here. In addition, a trademark lawyer can work with you to ensure you apply correctly.

Trademarking your company's name is not as simple as filing for an L.L.C. and may take longer than you imagine. You'll need to go through these steps:

1. Search

You need to search the federal database to ensure the name you want to trademark is available. The USPTO's Trademark Electronic Search System (T.E.S.S.) will aid in the process. It's essential to be flexible. For example, in addition to searching for the trademark you want, you should search for similar names. For example, the P.T.O. may deny your registration if the name is too similar to a name registered in the same class. A trademark lawyer can search for you if you aren't comfortable with the process.

2. Apply

Once you've searched and cleared the name you want to trademark, prepare your trademark application. You can file for a name already in commercial use or intending to use the name in the future.

The trademark application has ten components:

    • The name and address of the applicant
    • The citizenship and legal entity of the applicant
    • A name and address for future correspondence
    • A drawing of the desired mark, or you can enter the title without one
    • A description of the mark
    • A specific list of services or goods covered by the trademark application
    • The class of services or goods
    • An example of the mark in use and the date your first used it
    • A dated signature from you or an authorized representative like your copyright lawyer
    • The appropriate fee for the type and number of classes included on the application

3. File

You have two filing options: TEAS Plus and TEAS Standard. The Plus option is less expensive and streamlined. In addition, it has a lower rate of rejections. However, if you need to create a custom description of your services or goods, that capability is unavailable in the preset list offered by Plus.

Once you've submitted your application, you will receive a confirmation receipt from the USPTO and a serial number that you can use to check the status of your application in the Trademark Status & Document Retrieval (T.S.D.R.) portal.

Our Trademark Lawyers Can Help

Our IP lawyers can support you with copyright or trademark protection. We work with clients in Montgomery County, Bucks County, PA, and Camden County, NJ. As a full-service firm, we can also support you with other business matters, including commercial litigation employment law, and workers' compensation.

Trademark Law Attorneys

Joel D. Rosen

Joel Rosen | corporate law attorney at High Swartz Attorneys for Law

Managing Partner and corporate law attorney Joel D. Rosen has 30+ years experience practicing law in employment, franchise and business areas.

Intellectual Property Law Blog

Intellectual Property Law News