Thank you for considering Stake to assist with your trademark needs. Stake is an intellectual property boutique serving clients across the United States in both domestic and international matters. If you’re ready to chat about our trademark services and find out whether Stake would be a good fit for your business, please complete our contact form!
Why get a Trademark?
Trademarks protect brands. A trademark is a word, logo, symbol, or other brand element that identifies the originator of goods or services.
Practically speaking, a trademark provides its owner the ability to control its use on the market in connection with goods or services. You get to prevent others from confusing customers by marketing a similar product or service under a similar mark.
What exactly is a Trademark?
Like the other intellectual property rights, a trademark is a “right”—that is, an ability to exclude others from doing what’s protected by the right—that accrues to its owner. Trademarks are one of the four types of intellectual property.
Trademarks strengthen a brand by excluding others from providing goods or services under a confusingly similar brand. A trademark can protect various parts of a brand, including names, logos, emblems, symbols, colors, sounds, or designs identifying you as the source or origin of goods or services.
Are there exceptions to these rights?
The main exception to the exclusivity of trademark rights includes uses of the trademark that are not likely to confuse the market as to the origin of a good or service. For instance, a newspaper may be able to print the name of a company in a news story without confusion as to whether the newspaper originated from the company whose trademark was printed.
What’s the difference between a Trademark and a Patent, a Copyright, or a Trade Secret?
Trademarks protect brands and the goodwill associated with them. In contrast, patents, copyrights, and trade secrets all protect particular things. There is no practical overlap between trademarks and patents or trade secrets with respect to what can be protected, as the latter protect functionality and design of things.
However, there is some overlap between trademarks and copyrights.
One of the biggest differences between a copyright and a trademark is what triggers their existence. A copyright comes into being the moment a creative work is physically written, drawn, typed, filmed, or otherwise created. A trademark comes into existence when a brand is used to market or sell a particular product or service—though I frequently work with clients to start registration of their trademarks before marketing or selling actually happens to get ahead of the process.
If something only qualifies for either trademark or copyright protection, the answer is straightforward.
If something could qualify for both, like a logo on a sold product, since trademarks and copyrights arise automatically, it often does qualify for both. But it’s often more practical for a business to prioritize a trademark aspect or a copyright aspect of a thing over the other. Thus, oftentimes business will categorize their brand elements into the trademark bucket and everything else that qualifies as a copyright into the copyright bucket within their intellectual property portfolio.
How to get a Trademark?
Trademarks come into being by using the trademark to market or sell products or services. Trademarks can be registered to provide significant advantages in enforcing your trademark rights. They can be registered at the state level or, more commonly, federally with the United States Patent & Trademark Office. One way to tell if a trademark is registered federally is that the little circle with the “R” is used (®). Trademarks that aren’t federally registered can’t use this symbol—it’s actually a crime if you do. Trademarks not federally registered are identified usually by an uppercase “TM” (™).
Before settling on brand elements, and especially before settling on a name of a company, it’s prudent to do some level of trademark searching to determine whether your proposed brand is registrable as a trademark and whether you can even use the brand without infringing on another trademark. Three searching services are generally considered by clients desiring to do this.
- Knockout Search—a simple search of the U.S. Patent & Trademark Office database to see if there are any clearly-conflicting marks that “knock out” the proposed trademark from consideration.
- Clearance Search—a broader search of the U.S. Patent & Trademark Office database, state databases, known common-law trademarks, company databases, and more to gain a picture of the landscape for the proposed trademark.
- Clearance Opinion—an opinion of counsel based on a Clearance Search as to the likelihood that a trademark can be registered or the distinctiveness of the trademark. A more involved Infringement Clearance Opinion can be pursued to determine whether a proposed trademark might infringe on another trademark.
While common-law trademark rights originally arise just from using of the mark, registration of a trademark is accomplished by registering the trademark. Stake regularly works with clients to register trademarks federally at the U.S. Patent & Trademark Office.
How strong is a Trademark?
Generally, the place to start when judging the strength of a trademark is whether the mark is distinctive or not. A trademark is generally considered distinctive if it can be classified as arbitrary, fanciful, or suggestive (think Stake for a law firm—”Stake” and the services of a law firm, on their face, unrelated and thus arbitrary!). A trademark is not generally considered distinctive when it is just descriptive (including using names like “Mertzlufft Law”) or generic.
These categories are not permanent for every trademark, as a trademark that is merely descriptive can acquire something called “secondary meaning” and become distinctive. Additionally, failure to police a trademark can lead to something called “genericide,” where a trademark that was distinctive loses all quality as a protectable trademark—a famous example is “zipper.”
If you are evaluating possible trademarks for your brand, Stake can provide advice as to the strength of proposed trademarks.
Who owns a Trademark?
A trademark is owned by whichever person or organization has title to a live trademark. Registered trademark rights vest in the applicant for a trademark when the trademark is registered with the United States Patent & Trademark Office. Common-law trademark rights vest in the mark’s proprietor upon use of the mark in commerce. Like other classes of intellectual property, trademarks can be bought, sold, licensed, and more.
How long does a Trademark last?
As long as the mark is continually used in commerce, trademarks last indefinitely. Registered trademarks must be renewed with the U.S. Patent & Trademark Office between 5 and 6 years from registration, then between 9 and 10 years from registration and every ten years thereafter. State trademark renewal rules vary.
How can Stake help protect your Trademark?
Stake can help you through the entire lifecycle of a trademark—from concept through enforcement of the trademark against an infringer (or defense against an accusation of infringement). If you’re ready to chat about our trademark services and find out whether Stake would be a good fit for your business, please complete our contact form today!