Frequently Asked Questions (FAQs) for Trademark Law

A trademark is a word, phrase, symbol, design, or any combination of the previous that identifies and distinguishes the source of goods or services of one party from those of others. Trademarks serve as indicators of quality and origin, allowing consumers to make informed choices about products and services.

1. a) ™ (Trademark): Used for unregistered trademarks on goods
2. b) ℠ (Service Mark): Used for unregistered trademarks on services
3. c) ® (Registered Trademark): Used only for trademarks registered with the USPTO

The following can be protected by trademark:

1. a) Words and phrases
2. b) Logos and symbols
3. c) Slogans
4. d) Colors (in some cases)
5. e) Sounds
6. f) Scents
7. g) Product packaging (trade dress)

The key is that the mark must be distinctive and used in commerce to identify the source of goods or services.

Trademark rights (specifically those that come with federal registration) can last indefinitely as long as the mark is continually used in commerce and proper renewals are filed. In the U.S.:

1. Federal registrations are valid for 10 years
2. Must file a Declaration of Use between the 5th and 6th year
3. Can be renewed for successive 10-year periods

Common law rights for unregistered marks can also last indefinitely; however, these rights are limited based on priority of use and the geographic region in which the mark is used.

1. Common law rights: Arise from actual use of a mark in commerce, limited to the geographic area of use
2. Registered rights: Obtained through federal registration, provides nationwide protection and additional legal benefits (such as being prima facie evidence of validity and being eligible to become incontestable after five years)

To conduct a trademark search:

1. Use the USPTO’s Trademark Search Database
2. Search for similar marks in relevant classes of goods or services
3. Check domain names and social media handles
4. Look for state trademark registrations
5. Consider using a professional search service for comprehensive results and to obtain a Search Opinion Letter

To register a trademark with the USPTO:

1. Conduct a trademark search
2. Prepare and file an application online via the Trademark Electronic Application System (TEAS)
3. Pay the required fees
4. Respond to any Office Actions from the USPTO
5. If approved, maintain the registration through continued use and renewal filings

An Office Action is an official letter from the USPTO raising issues with your trademark application. It may:

1. Refuse registration based on likelihood of confusion, descriptiveness, etc.
2. Require disclaimers or modifications to the application
3. Request additional information or specimens

You typically have a maximum of six months to respond to an Office Action.

1. Likelihood of confusion: Occurs when similar marks on related goods/services may confuse consumers about the source of those goods/services
2. Dilution: Weakening of a famous mark’s distinctiveness through blurring or tarnishment, regardless of competition or likelihood of confusion

Trademark infringement occurs when a party uses a trademark that is identical or confusingly similar to another’s registered trademark on related goods or services without permission, likely causing consumer confusion.

Remedies for trademark infringement may include:

1. Injunctive relief (court order to stop infringing use)
2. Monetary damages (lost profits, infringer’s profits, or reasonable royalty)
3. Corrective advertising
4. Destruction of infringing materials
5. Attorney’s fees in exceptional cases

A trademark opposition is a proceeding where a third party challenges a trademark application before it is registered. The opposer files a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB) within 30 days after the mark is published for opposition.

Common grounds for trademark opposition include:

1. Likelihood of confusion with an existing mark
2. Dilution of a famous mark
3. Descriptiveness or genericness
4. Functionality
5. False suggestion of a connection
6. Lack of bona fide intent to use

A trademark cancellation is a proceeding to remove an existing trademark registration from the register. It can be filed with the TTAB at any time for certain grounds, or within five years of registration for others.

Common grounds for trademark cancellation include:

1. Abandonment (non-use with intent not to resume use)
2. Genericism (mark becomes generic for the goods/services)
3. Fraud in obtaining the registration
4. Likelihood of confusion (if filed within 5 years of registration)

A trademark license is an agreement where the trademark owner (licensor) grants permission to another party (licensee) to use the trademark, usually in exchange for payment (royalties).

Key elements of a trademark license agreement include:

1. Identification of the parties and the trademark
2. Scope of the license (exclusive/non-exclusive, territory, duration)
3. Quality control provisions (this is critical!)
4. Royalty or fee structure
5. Termination clauses
6. Indemnification and warranties
7. Dispute resolution mechanisms

A Trademark Assignment is the transfer of ownership of a trademark from one party to another. It must be in writing and should be recorded with the USPTO for registered marks.

The Madrid Protocol is an international treaty that allows trademark owners to seek protection in multiple countries by filing a single application through their home country’s trademark office.

Trade dress refers to the overall visual appearance of a product or its packaging that signifies the source of the product to consumers. It can be registered as a trademark if it is distinctive and non-functional.

Trademark dilution is the weakening of a famous trademark’s distinctiveness through:

1. Blurring: Use of a similar mark that creates an association with the famous mark
2. Tarnishment: Use that harms the reputation of the famous mark

Only famous marks are protected against dilution.

Fair use in trademark law allows limited use of another’s trademark without permission when:

1. Descriptive fair use: Using a term in good faith to describe one’s own products
2. Nominative fair use: Using another’s trademark to refer to the trademark owner’s goods or services

Cybersquatting is registering, trafficking in, or using a domain name that is identical or confusingly similar to a trademark with bad faith intent to profit. The Anticybersquatting Consumer Protection Act (ACPA) provides remedies for trademark owners.

A trademark watch service monitors new trademark applications and registrations for marks that may be confusingly similar to your own. It helps detect potential infringement or conflicting marks early.

Trademark strength is often categorized as follows (from strongest to weakest):

1. Fanciful: Invented words with no dictionary meaning (e.g., Kodak)
2. Arbitrary: Common words used in an unrelated context (e.g., Apple for computers)
3. Suggestive: Hints at a quality or characteristic of the goods/services (e.g., Coppertone for suntan lotion)
4. Descriptive: Directly describes a quality or characteristic of the goods/services (e.g., Soft Soap for liquid soap) – requires acquired distinctiveness for registration

Generic terms cannot be trademarked.