What Is a Trademark and Why Are They Important?
- Brand Protection
- Trademark Clearance
What is a Trademark?
A trademark can be any graphically representable sign that can serve to distinguish the origin of a product. Sometimes you can get trademark protection just by using it, but registration is the safe choice. Trademark registries are maintained by trademark offices, such as USPTO and EUIPO.
A trademark is always registered for some specific products (goods and/or services), for which it is or will eventually be used. A trademark has to able to distinguish your products in that category from those of others’. This means that the mark cannot just describe the product (like APPLE for apples) or a generic quality of any product (like 7 DAYS A WEEK).
A trademark has to be graphically representable. Typically this brings to mind brand names and taglines (word marks, such as Corsearch®️ or OWN THE FUTURE™) or logos and other graphic elements (figurative marks, such as an upside-down R symbol), but that is not all. For example, tunes have been registered by registering the sheet music, and even smells have been registered with a verbal description of the smell (whereas gas chromatography plots have been unsuccessful so far).
Trademark, Copyright, Patent, What’s the Difference?
A trademark is legal protection for your brand so others can’t market similar products under a similar name, with a similar logo, in the same kind of packaging, and so on. Copyright protects a literary or artistic work with some concrete manifestation (such as a novel, a painting, or a computer program) against unauthorized copying, public display or exhibition, among others. A patent protects a new and non-obvious industrially usable invention against use by others.
Getting a patent requires registration and can be expensive, whereas copyright protection is automatic as long as the work is original enough to be protected. Trademarks are somewhere between the two: you can get the right to a common-law trademark without registration, but a registered trademark is safer and usually not as costly as a patent. Both trademarks and patents (as well as designs and some other intellectual property rights collectively known as industrial property) are territorially restricted rights, that is, only valid in specific jurisdictions, whereas copyright is automatically almost worldwide.
As far as the duration of the protection is concerned, a patent is granted for up to 20-something years and it must be renewed annually, and the renewal fees increase steeply especially towards the end of the term. Copyright is valid throughout the author’s lifetime plus 50/70/n years after that. A trademark registration must be renewed typically every ten years but as long as the trademark is still used in commerce, the registration can be renewed perpetually.
Is my Company Name Automatically Protected?
Yes and no. A registered trade name receives some of the protections as a registered trademark, but the protection is much weaker. With a registered trade name you are basically only protected against bad-faith use of your mark by others. If someone else files an application to register your trade name as their trademark before you do, you have to oppose the application within a specific timeframe, and even then your claim of priority will usually only succeed wholly if you can document that the earlier applicant knew about your name before they started using it.
What Should my Trademark Cover When my Business Does x, y, or z?
One easy alternative is to look up your competitors’ trademark registrations to see what products they have included and see if that makes sense. Or just ask a trademark attorney. Please remember that different trademark registries have different policies regarding the list of goods and services: in the US, you have to document actual use of the mark in commerce for the products in question before a registration is even issued, whereas in Europe generally you don’t (but even there non-use can lead to cancellation.)
Where Should I Register my Trademark?
Unlike copyright, which is automatically gained (almost) worldwide, trademarks are territorial exclusive rights. This means that you must register your trademark at the trademark offices for all the jurisdictions where you plan to use your trademark in commerce and want to protect it trademark through registration. A registration in a different jurisdiction will give you some protection in the form of priority for your application if you file it later, but in that case you have to make sure you react promptly if someone else is trying to use or register your mark. If you want to file an application in several countries at once, international registration is a convenient alternative, but even that is just a front-end to all the individual trademark offices, each of which processes the registration separately.
Do I Need a Lawyer?
While it is possible to file a trademark application without a lawyer in most jurisdictions, it is always strongly advisable to retain some kind of professional assistance to help you with clearing the mark, composing, and filing the application (especially the list of goods and services), corresponding with the trademark office after filing if your application must be changed to make it registrable, and representing you in any opposition or other proceedings that may arise. The Corsearch system does not practice law, but it can help at the trademark screening, clearance search, and watching stages.
How Much Does it Cost?
Applying for a trademark registration costs a certain amount in official application fees levied by the registering trademark office, which typically amount to some hundreds of dollars or euros per jurisdiction. Before you can get that far, you would normally engage a trademark attorney to clear the mark and prepare the trademark application for you, which, including search costs, can run up to thousands of dollars or euros per application. If your risk analysis at the trademark clearing stage hasn’t been thorough enough (or you decide to proceed with a high-risk application), you may incur additional lawyer’s fees if your application is opposed or it receives an office action.
My Trademark is Already Registered, Now What?
Good for you! You should still keep in mind at least the following:
- Use your mark. If you don’t, it can be canceled.
- Remember to renew your mark. A trademark registration will expire after a period of typically ten years, but it can be renewed as many times as you want and pay the renewal fees.
- Keep an eye on your trademark and similar marks. If someone applies for registration of an identical or nearby mark for similar products, you must file an opposition within a certain timeframe after the new application has been published. Or if someone is just using such a mark in commerce, you should promptly react with a cease-and-desist letter. Failure to do either of these can constitute acceptance and make it impossible to take any legal measures later on. The existence of a nearby mark will weaken your brand and cause confusion in the marketplace.
- Ignore official-looking solicitations for trademark “registration” without any legal force and other similar services. More information and examples at WIPO, USPTO, and EUIPO.
®, ™, ℠?
® is the symbol for registered trademarks, ™ for (unregistered) trademarks, ℠ for (unregistered) service marks. Longer version here.
Why are Trademarks Often CAPITALIZED?
Tradition, mostly. The use of upper or lower case in registration does not generally make much of a difference, except that sometimes CamelCasing (not a legal term) can be used to change how the mark is perceived. For example, IndiGo is not quite the same as indigo, Indigo, or INDIGO. This is however quite rare i
Trademark, Trade Mark, Trade-Mark?
Depends on the jurisdiction. “Trademark” as one word in the United States, among others, as two words in the European Union, among others, and with a hyphen in Canada.
Many trademark offices have their own FAQs, such as the USPTO (US) and the EUIPO (EU).
*This is an informational opinion article of the author. The views and opinions expressed in this article are those of the author and do not necessarily represent official policy or positions of Corsearch or its clients.