Glossary

4.8 Establishing Trademark Protection

3 min read•june 25, 2024

protection is a crucial aspect of intellectual property law. It involves registering unique marks with the , conducting searches, and navigating the application process. This safeguards brands and prevents consumer confusion in the marketplace.

Establishing trademark rights requires actual or filing an application. Maintaining protection involves proper usage, renewals, and enforcement against infringers. Additional protections like and further strengthen trademark rights.

Establishing Trademark Protection

Process of trademark registration

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  • Conduct a trademark search ensures the mark is available and not already in use by another party (Apple, Nike)
  • File an application with the USPTO by providing the mark, goods/services, and filing basis along with paying the required fees
  • USPTO examines the application to ensure the mark meets legal requirements and issues if there are any objections (descriptiveness, )
  • Mark is published for opposition which is a 30-day period for third parties to oppose registration (prior users, similar marks)
  • If no opposition, the mark is registered and the owner receives a registration certificate
  • Benefits of trademark registration include:
    • of ownership prevents others from claiming innocent adoption of the mark
    • evidence of validity and exclusive right to use the mark nationwide
    • Ability to use the ® symbol to indicate registration (Coca-Cola®, Microsoft®)
    • Basis for foreign trademark applications through international agreements ()
    • Increased remedies against infringers such as statutory damages and attorney's fees
    • After five years of continuous use, the mark may become incontestable, providing stronger protection against certain challenges

Establishment of trademark rights

  • trademark rights are acquired through actual use of the mark in commerce in connection with the sale of goods or services (restaurant name, product packaging)
  • Common law rights are limited to the geographic area where the mark is used (city, state, region)
  • Rights continue as long as the mark is in continuous use in commerce
  • involves conducting a comprehensive search to ensure the mark is available for use and registration
  • of trademark rights:
    • First to use the mark in commerce has priority over later users ()
    • Constructive use priority can be established through an intent-to-use application before actual use begins
    • may be allowed in limited circumstances where two parties use similar marks in different geographic areas

Maintenance of trademark protection

  • Continued use of the mark in commerce is required to maintain trademark rights ()

  • Proper use of the mark as an adjective, not a noun or verb, and distinguishing it from surrounding text through capitalization or stylization (Xerox, Kleenex)

  • Avoid by preventing the mark from being used as a common name for the goods/services (aspirin, escalator)

  • Renewal of trademark registration:

    1. Between 5th and 6th year after registration
    2. Between 9th and 10th year after registration
    3. Every 10 years thereafter

  • Enforcing trademark rights:

    • Monitor the market for potential infringers using trademark watch services
    • Send letters to infringers demanding they stop using the mark
    • File trademark infringement lawsuits to prove likelihood of confusion among consumers (similar marks, related goods/services)
    • Defend against challenges to the mark in (prior to registration) and (after registration)

Additional Protections

  • Trade dress protection extends to the overall visual appearance of a product or its packaging
  • Dilution protection for famous marks prevents blurring or tarnishment of the mark's
  • Use in commerce is essential for maintaining trademark rights and can include sales, transportation, or advertising of goods or services under the mark

Key Terms to Review (31)

Abandonment: Abandonment, in the context of intellectual property, refers to the intentional relinquishment or discontinuation of rights or claims to a trademark, copyright, or other form of intellectual property. This term is particularly relevant in the areas of core intellectual property concepts, U.S. trademark law, and establishing trademark protection.
Abercrombie Spectrum: The Abercrombie Spectrum is a framework used to classify trademarks based on their distinctiveness and ability to serve as source identifiers. It is a critical concept in understanding the subject matter of trademarks and establishing trademark protection.
Arbitrary Mark: An arbitrary mark is a trademark that does not have any inherent connection or meaning related to the goods or services it represents. It is a completely made-up or fanciful symbol that serves solely as an identifier, without any descriptive or suggestive qualities about the product or business.
Cancellation Proceedings: Cancellation proceedings refer to the legal process of challenging and potentially revoking a registered trademark. This process is a crucial aspect of establishing and maintaining trademark protection, as it allows for the removal of marks that are deemed invalid or no longer serving their intended purpose.
Cease and Desist: A cease and desist order is a legal document that commands an individual or organization to stop a particular action and refrain from future similar actions. This term is crucial in the context of intellectual property law, as it is a key tool used to enforce patents, trademarks, and other IP rights.
Common Law: Common law refers to the body of unwritten laws based on legal precedents established by the courts, as opposed to statutes or constitutions. It is a legal system that relies on the decisions made by judges in previous cases to guide future rulings, rather than solely on codified laws.
Concurrent Use: Concurrent use refers to the situation where two or more parties use the same or similar trademarks in different geographic regions or market segments without causing consumer confusion. It is an important concept in U.S. trademark law and the establishment of trademark protection.
Constructive Notice: Constructive notice is a legal principle that imputes knowledge of a fact or circumstance to a person, even if the person does not have actual knowledge of it. It is an important concept in the context of establishing trademark protection, as it can affect the priority and scope of trademark rights.
Dilution: Dilution refers to the weakening or diminishing of the distinctive quality or reputation of a trademark, which can occur through the unauthorized use of a similar mark on unrelated products or services. This concept is central to understanding trademark protection and infringement.
Distinctiveness: Distinctiveness is a fundamental concept in trademark law that refers to the unique and identifiable characteristics of a trademark that distinguish it from other marks and allow consumers to associate it with a particular source or brand. This concept is central to the core principles of trademark protection, U.S. trademark law, the classification of trademarks, and the establishment and remedies of trademark rights.
DuPont Factors: The DuPont factors are a set of criteria used to evaluate the strength and distinctiveness of a trademark. These factors are considered in the context of determining the subject matter of trademarks and establishing trademark protection under the law.
Fanciful Mark: A fanciful mark is a completely made-up or invented word or symbol that has no prior meaning or association with the product or service it represents. These marks are considered the strongest and most distinctive type of trademark, as they are inherently distinctive and have no connection to the underlying goods or services.
Genericide: Genericide refers to the process by which a trademark loses its distinctive quality and becomes a generic term used to describe a category of products or services, rather than a specific brand. This can happen when the trademark becomes so widely used and recognized that it becomes synonymous with the product or service itself, rather than the specific brand.
Incontestability: Incontestability is a legal principle in trademark law that provides protection for a trademark owner by preventing their registered mark from being challenged or canceled after a certain period of time, typically five years from the date of registration. This concept is crucial in establishing and maintaining trademark rights.
Intent-to-Use: Intent-to-use is a concept in U.S. trademark law that allows an applicant to apply for federal trademark registration before actually using the mark in commerce. It signifies the applicant's good faith intention to use the mark in the near future, providing a way to secure rights in a trademark before the product or service is available on the market.
Likelihood of Confusion: Likelihood of confusion is a key concept in trademark law that determines whether the use of a trademark by one party is likely to cause consumer confusion with the trademark of another party. It is a central consideration in evaluating trademark infringement claims.
Madrid Protocol: The Madrid Protocol is an international treaty that simplifies the process of obtaining trademark protection in multiple countries. It allows trademark owners to file a single international application and designate the countries in which they seek protection, rather than having to file separate national applications in each country.
Office Actions: An office action is a written communication from the United States Patent and Trademark Office (USPTO) to a patent or trademark applicant regarding the status of their application. It provides feedback and instructions on how to proceed with the application process.
Opposition Proceedings: Opposition proceedings refer to a formal legal challenge filed by a third party against the registration of a trademark. This process allows individuals or organizations to object to the approval of a trademark application, typically on the grounds that the proposed mark is too similar to an existing trademark or may cause consumer confusion.
Prima Facie: Prima facie is a Latin term that means 'at first sight' or 'on the face of it.' It refers to the initial appearance or evidence that something is true or valid, before any further investigation or consideration.
Priority: Priority refers to the legal principle that determines the order of rights among competing claims in intellectual property law, particularly in trademarks. This principle is crucial in establishing who has the superior claim to a trademark based on the first use or filing date. The priority date can significantly impact the ability to enforce trademark rights against others and is often tied to the concept of good faith use.
Registrability: Registrability refers to the ability of a trademark to be officially registered with a trademark office. It is a key concept in both the subject matter of trademarks and the process of establishing trademark protection.
Secondary Meaning: Secondary meaning refers to the acquired distinctiveness of a trademark or trade dress that was originally non-distinctive or generic. Over time, through extensive use and promotion, a mark can become associated with a specific source or origin in the minds of consumers, gaining legal protection as a trademark even if it was not inherently distinctive.
Seniority: Seniority refers to the length of time an individual has been employed by a company or organization, which can confer certain privileges, rights, and responsibilities. It is a concept often associated with workplace hierarchies and the accrual of experience over time.
Service Mark: A service mark is a type of trademark that identifies and distinguishes the services of one provider from those of others. It is a symbol, word, phrase, or design that represents a service rather than a physical product. Service marks play a crucial role in branding, marketing, and protecting the identity of service-based businesses or organizations.
Suggestive Mark: A suggestive mark is a type of trademark that indirectly suggests or hints at the nature, quality, or characteristics of the product or service it represents, without directly describing it. These marks require some imagination, thought, or perception on the part of the consumer to understand the connection between the mark and the goods or services.
Trade Dress: Trade dress refers to the overall visual appearance and design elements of a product or service that identify its source and distinguish it from competitors. It encompasses the unique combination of features, such as size, shape, color, texture, graphics, and packaging, that create a distinct and recognizable brand identity.
Trademark: A trademark is a distinctive symbol, word, or phrase that identifies and distinguishes the source of a product or service from those of others. It serves as a brand identifier, allowing consumers to recognize and associate a product or service with a specific company or organization.
Trademark Clearance: Trademark clearance is the process of searching and analyzing existing trademarks to determine whether a proposed trademark can be used without infringing on the rights of others. It is an essential step in establishing trademark protection and avoiding potential legal conflicts.
Use in Commerce: Use in commerce refers to the requirement that a trademark must be used in the sale or advertising of goods or services in order to be eligible for federal trademark registration and protection in the United States. This term is central to understanding the core concepts of trademarks, U.S. trademark law, and establishing trademark protection.
USPTO: The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks in the United States. It plays a crucial role in the protection and promotion of intellectual property rights, which are essential for innovation, economic growth, and consumer protection.
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