Trademark 101 For Business Owners

Published On: August 22nd, 2015

WHAT IS A TRADEMARK? A trademark is a word, phrase, symbol or design (or a combination of these) that identifies a good or service. A trademark typically protects brand names and logos used on goods and services. Examples: the name "McDonalds ®" for fast food restaurants; the slogan "Just Do It" (Nike) for footwear; and the apple logo :

Apple icon for technology products.

IS TRADEMARK REGISTRATION REQUIRED? No. There are common law trademark rights in a business name, logo or slogan based on use of the trademark, even if it is not registered with the United States Patent and Trademark Office ("USPTO"). Anyone can use the "TM" symbol on proprietary goods or services without registering the trademark with USPTO. Many trademark and business owners decide to pursue registration of their trademark with the USPTO to take advanced of enhanced rights and protections that come with trademark registration. These include a legal presumption that a party has exclusive right to use the mark nationwide in connection with the goods/services listed in the registration, the right to use ® to designate the goods or service, and the ability to bring an action in federal court against infringers. The entire trademark registration process, from submission of the application to obtaining the registration from USPTO, if successful, is likely to take 12-18 months.

FILING FEES. The filing fee for an online USPTO trademark application ranges from $225 to $325. A paper trademark application filing is $375 per class. A separate fee is required for each class of goods and services in which trademark protection is sought. For example, Target's "Merona" store brand is registered in Class 25 for Clothing, Class 18 for Handbags, Class 14 for Jewelry, Class 9 for Eyeglasses, Class 26 for Hair Accessories and Class 3 for Cosmetics. Each of those classes requires a separate fee.

HOW LONG DOES TRADEMARK PROTECTION LAST? A common law trademark lasts for so long as the mark is being used in commerce and is recognized by the consuming public as being associated with a particular brand or source of goods and services. A registered trademark can also last for so long as the mark is being used in commerce, provided that every 5 years the trademark owner maintains the registration with USPTO by filing the required documents, including a specimen showing that the trademark is still being used in commerce. There is also a fee due at each 5 year interval in order to maintain the trademark.

Throughout the life of the trademark, the trademark owner also must police and enforce its trademark rights. Cease and desist letters must be sent to infringers and action must be initiated against any competing marks. Failure to self-police the trademark could result in a trademark owner losing its trademark rights.

WHAT ABOUT COPYRIGHT, PATENTS and TRADE SECRETS?

  • A copyright protects an original artistic or literary work. This includes literary, dramatic, musical, artistic and other works of "original authorship." A play, a novel or artwork would be eligible for copyright protection.
  • A patent protects any new and non-obvious process, machine or design. Patents can be for many types of items, including business methods, computer software, and jewelry or furniture designs.
  • Trade Secrets are formulas, methods or techniques used in business that give an economic advantage over competitors who do not know the information. If a trade secret holder fails to maintain secrecy of the information, then the trade secret protection is lost.

Many businesses will use multiple types of intellectual property protection to safeguard its rights in a particular good or services. For its Cherry Coke product, the Coca-Cola Company has: (a) a copyright registered for the logo and graphics on the products; (b) a patent registered for the design of the beverage container and the sweetener used; (c) a trademark for the name "Cherry Coke"; and (d) a trade secret for the Cherry Coke formula.

See United States Patent and Trademark Office (USPTO): Trademark Basics

http://www.uspto.gov/trademarks/basics/