A Very Brief Summary of Trademark Law

October 1, 2008

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. In this article, “trademark” or “mark” is used for both trademarks and service marks.

Trademark rights arise through use of a mark. No registration is necessary for protection. Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent and Trademark Office (“USPTO”). However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

While federal registration of a mark is not necessary, it offers a number of benefits including:

  • Constructive notice to the public of the registrant’s claim of ownership of the mark;
  • A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark
  • Nationwide in connection with the goods and/or services listed in the registration; and
  • The use of the U.S. registration as a basis to obtain registration in foreign countries.

As of the date of this writing (October 2008), the U.S. government filing fee for the application to register a mark is between $275-$325 per mark per international class if done electronically and $375 per mark per international class if done on paper. The foregoing fees do not include legal fees.

The most important rule of grammar regarding proper trademark use is that a trademark should be used as an adjective, not a noun or verb. A mark is used to identify the source or brand of a product, not the product itself. It is important to follow this rule to prevent your mark from potentially becoming considered generic (and thus available to everyone). Examples of proper use include: KLEENEX® tissue and APPLE® computer. Examples of trademarks that have not been used properly and have become generic include: aspirin, escalator, yo-yo and zipper.

When trademarks are used, they should stand out from surrounding text. This helps to further distinguish the trademark from ordinary descriptive or generic terms. There are numerous ways to present a trademark to make it stand out. For example:

  • All capitals: APPLE® computers
  • Quotation marks: “Kleenex”® tissue
  • Italics: Life Savers® candy
  • Boldface: Big Mac® hamburger

Trademarks should be used consistently. Failure to use a mark consistently can result in consumer confusion or dilute the distinctiveness of the mark.

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