Frequently Asked Questions About Trademark Law

I am attorney Zoe Bernstein, and I want to help you understand more about trademarks. Here are the answers to some questions you may have here in Boca Raton:

Why is it important to register a trademark?

The purpose of a trademark is to help protect a business’s good name. If a competitor uses a trademark, it could potentially tarnish a business’s reputation, hurt customer relations and lead to a loss of revenue.

A business can also use trademarks to build a long-lasting brand that is quickly identifiable by customers. Trademarks offer legal rights against infringement, create licensing rights, ensure brand differentiation and otherwise assist with valuable IP asset protection.

Can I trademark a slogan or phrase?

Yes, you can trademark a slogan or phrase, provided it meets specific criteria. To be eligible for trademark protection, the slogan must be distinctive and capable of identifying the source of your goods or services. Generic or merely descriptive phrases are typically not protectable.

For instance, a catchy tagline that is unique to your brand and resonates with consumers can qualify. The strength of the slogan often lies in its originality; a distinctive and memorable slogan can significantly enhance brand recognition and consumer loyalty. Furthermore, a well-protected slogan can deter competitors from using similar phrases, thereby safeguarding your brand’s unique market position and reputation.

Can I trademark a font or typography?

It may be difficult to trademark a font or typography alone. A font or typography can be used to convey readability and aesthetic appeal, particularly to draw the consumer’s eye and help a company stand out among its competitors.

However, to protect a font or typography, it may need to be used in a name, logo or slogan on a product or service. For example, the “Coca-Cola” script is trademarked. The name of a font, such as Times New Roman, could also be trademarked, but this may not protect the design of the font. Instead, it can prevent other companies from using the same name for a font.

How do I register a trademark?

First, you need to do significant background work and research to make sure that the trademark is available. Then, you are typically ready to file for a trademark, which can be done by submitting the appropriate information through the Trademark Electronic Application System (TEAS) or via a paper application, along with your fee and supporting documentation.

You then must wait on a notice of allowance from the United States Patent and Trademark Office (USPTO). At that point, you submit documentation of the mark in use with a Statement of Use to receive your registration certificate.

What are the costs involved in registering a trademark?

The cost of registering a trademark can greatly depend on the number of trademarks a business is seeking and the number of classes. The filing fees associated with the application to the United States Patent and Trademark Office (USPTO) for a single trademark is $350, but legal fees related to your attorney’s assistance are separate. You can discuss attorney fees at your initial consultation.

How long does trademark registration last?

With a successful trademark application, first renewal due 5 years after registration then every 10 years after registration after that. A renewal can lengthen the term of a trademark as long as a trademark is identified with products and services.

What is the difference between a trademark and a copyright?

Trademarks protect brand identifiers, such as the name of a company or product, logos, slogans, symbols, texts, specific packaging, scents and colors, so that products and services can be distinguished. A trademark has to be sought and granted before a company has exclusive rights to its use and the protections guaranteed under trademark law. Trademarks can last indefinitely, so long as they are periodically renewed and actively used.

In comparison, copyright protects original works of authorship, such as essays, books, music, movies, art and computer programming. Copyright grants the creator the exclusive right to use, reproduce and distribute their work. Copyright is effective the moment that a new work is created, even without specific steps taken to preserve the author’s rights. Copyrights generally last for the life of the author plus 70 years.

What are the benefits of registering a trademark?

Trademarks are valuable business assets because they help cement a brand identity and build “brand equity” with consumers. In general, trademarks quickly convey the source of goods and services to potential consumers, setting them apart from their competitors. Trademarks assist with the creation of brand loyalty and can even create a sense of prestige.

A trademark holder can sue under federal law, and recover damages under federal statute. After 5 years can file a form to be incontestable. In addition, trademarks can be licensed and sold to generate revenue for a company, and the possession of a trademark helps protect against brand devaluation by imitators. A trademark also acts as a deterrence against infringement and allows for stronger enforcement of your rights. When properly registered, trademarks can even help protect against foreign imitators.

What is trademark infringement?

Trademark infringement occurs whenever someone makes unauthorized use of a brand identifier that is identical to or confusingly similar to another’s registered trademark.

Often, the goal of infringement is to purposefully mislead consumers about the origin or affiliation of certain goods or services, but intention is not actually a factor when infringement is determined. The primary concern is whether or not the use of an identical or similar trademark can cause consumer confusion.

What is a trademark opposition?

A trademark opposition is a formal proceeding where a party challenges a pending trademark application before it becomes registered. Any party who believes the registration would damage them can file an opposition within 30 days after the mark is published for opposition in the Official Gazette.

Common grounds for opposition include the likelihood of confusion with an existing mark, descriptiveness or claims that the applicant lacks a bona fide intent to use the mark. The proceeding takes place before the Trademark Trial and Appeal Board (TTAB) and follows specific procedural rules and timelines.

What is a trademark cancellation?

This is a legal proceeding to remove an existing trademark registration from the federal register. Unlike an opposition, which challenges pending applications, cancellation proceedings target registered marks. Common grounds for cancellation include:

• Abandonment (nonuse of the mark)
• Fraud in obtaining registration
• Genericness (lack of uniqueness)
• Prior use by another party

The proceeding is conducted before the TTAB, and petitioners must demonstrate valid grounds for why the trademark no longer meets registration requirements. Cancellation can be filed at any time for certain grounds, while others must be filed within five years of registration. Successful cancellation protects the integrity of the trademark system and helps ensure fair competition in the marketplace.

Can I use the TM symbol?

You can use the TM symbol with any trademark you claim rights to, whether it is registered or not. The TM symbol indicates that you are claiming trademark rights in the mark, but it does not confer any legal rights. It serves as notice to others that you consider the mark your intellectual property.

However, only federally registered trademarks can use the ® symbol. Using the ® symbol without federal registration can result in legal penalties. Still, using the TM symbol can help establish your common law rights in the mark.

What is the likelihood of trademark confusion?

The likelihood of confusion occurs when a mark is similar enough to an existing mark, and consumers might mistakenly believe the goods or services come from the same source.

When determining confusion, the United States Patent and Trademark Office (USPTO) and courts consider:

• The similarity of the marks in appearance, sound and meaning
• Relatedness of the goods or services
• Strength of the senior mark
• Evidence of actual confusion
• Marketing channels used

This analysis is conducted from the perspective of an average consumer.

What are common law trademarks?

These are protections granted to businesses or individuals who use a name, logo or slogan in commerce, even without formal registration. The rights arise automatically when a mark is used in connection with goods or services and are enforceable within the geographic area where consumers recognize the mark. However, common law trademarks offer limited protection compared to federally registered trademarks, making enforcement more challenging, especially in disputes with businesses operating in different locations.

What should I expect during the trademark application process?

The trademark application process involves:

• Trademark search: Before applying, conduct a comprehensive search to ensure the mark is not already in use or registered.
• Filing the application: The application is submitted to the United States Patent and Trademark Office (USPTO), detailing the mark, the goods or services it represents and its intended use.
• Examination period: A USPTO examiner reviews the application, checking for conflicts, proper classification and legal compliance.
• Publication for opposition: If approved, the mark is published in the Official Gazette, allowing third parties 30 days to oppose registration if they believe it infringes on their rights.
• Final approval and registration: If no opposition arises or if challenges are resolved, the trademark is officially registered, providing nationwide protection.

The process takes 12 to 18 months from filing, but this is an estimate and can vary.

Can a trademark be sold or transferred to another party?

Yes, through an assignment agreement. This legally binding document transfers ownership of the mark from one party to another. The transfer must be recorded with the USPTO to be legally recognized.

In cases where a business is sold, trademarks are often included as part of the transaction. However, the trademark must remain associated with the original goods or services to prevent legal complications, ensuring that consumers are not misled.

What happens if I do not use my trademark after registration?

If you do not use your trademark after having it registered, you risk losing your rights. In the U.S., a registered trademark must be actively used within commerce to maintain protection. The law requires you to file a Declaration of Use between the fifth and sixth year after registration to confirm that your trademark is still in use.

If you fail to do so, your registration may be canceled. Additionally, if a trademark remains unused for three consecutive years, it is considered abandoned, making it vulnerable to cancellation by third parties.

Can my registered trademark be canceled?

Yes, a registered trademark can be canceled under certain circumstances. The most common reasons include:

• Non-use: If you have not used your trademark for three consecutive years, another party may file a petition to cancel it based on abandonment.
• Genericide: If your trademark becomes a generic term for the product or service it represents. For example, “escalator” and “aspirin” lost their trademark status due to widespread generic use.
• Fraud: If your trademark registration was obtained based on false statements or misleading information, it can be challenged.
• Likelihood of confusion: If another party successfully argues that your mark is too similar to a previously established mark, your trademark could be canceled.

If you are concerned about potential challenges, working with an attorney can help you navigate the complexities of trademark protection.

How do oppositions and cancellations work?

Both oppositions and cancellations are legal processes handled by the Trademark Trial and Appeal Board (TTAB).

• Opposition: Before a trademark is registered, third parties can oppose it during the 30-day opposition period after the U.S. Patent and Trademark Office (USPTO) publishes it for opposition. If an opposition is successful, the trademark will not be registered.
• Cancellation: After a trademark is registered, any party with standing can file a petition to cancel it, usually on grounds such as abandonment, fraud or likelihood of confusion.

These proceedings are similar to lawsuits, involving pleadings, evidence submission and legal arguments. However, they are administrative rather than court-based processes.

What is a trademark license agreement?

A trademark license agreement is a contract that allows a third party (licensee) to use your trademark under specified conditions while you (the licensor) retain ownership. This agreement usually outlines:

• Scope of use: Defines how and where the trademark can be used
• Quality control: Ensures the licensee maintains the standards associated with the brand
• Duration and termination: Specifies the time frame and conditions for ending the agreement
• Fees or royalties: Outlines any financial arrangements, such as royalty payments

Licensing can help businesses expand their brand presence while generating revenue. However, failure to monitor a licensee’s use can lead to a loss of trademark rights.

Can I trademark a color?

Yes. There are certain ways a color could be trademarked. A color cannot be trademarked alone but must have a “secondary meaning.” The color may be given a secondary meaning if it is used long enough by a company and it becomes associated with a specific good or service. For example, “Tiffany Blue” and “UPS Brown” are trademarked.

To trademark a color, it may need to be immediately recognizable and distinguishable from the company’s competitors. In addition, the color must not have any functional use or affect the quality or cost of a product or service, such as the use of fluorescent orange on safety equipment.

Can I trademark a sound or jingle?

Yes. A sound or jingle could be trademarked under special conditions. This sound or jingle must be distinctive audio that is used by a company to set its product or service apart from competitors. The sound or jingle must also have a description, an audio file and proof that it is connected to a particular good or service, such as the MGM lion’s roar or the “Intel Inside” chime.

Can I trademark a smell or scent?

Yes. A smell or scent can be trademarked if several conditions are met. The smell or scent must be distinguishable to a product or service. There must also be proof that the scent is not functional. For example, perfume often cannot receive trademarks because the scent has a purpose or function, but the scent of Play-Doh is actually trademarked.

What is a service mark?

A service mark functions similarly to a trademark but specifically identifies and distinguishes the source of services rather than physical products. Businesses that offer services, such as consulting, legal or educational services, utilize service marks to protect their brand identity and differentiate themselves from competitors. Service marks can also encompass logos or symbols associated with the services offered.

For example, a service mark can cover the name of a company or a specific slogan that advertises its services. Just like trademarks, service marks provide legal rights against unauthorized use, making sure that your business can maintain a unique identity in a competitive market. This protection helps prevent others from using similar marks that could confuse consumers, reinforcing the integrity of your brand and its reputation.

What is trade dress?

Trade dress refers to the visual appearance or packaging of a product that signifies its source to consumers. It includes elements such as shape, color, texture and overall design. For trade dress protection to be granted, the appearance must be distinctive and not functional. This means it should primarily serve to identify the source of the product rather than enhance its utility.

For example, the unique packaging of a well-known product could be protected as its trade dress, preventing competitors from mimicking its look and confusing consumers. Securing trade dress rights can add significant value to your brand, reinforcing its identity in the marketplace.

Protect Your Intellectual Property Today

Your trademark is more than just a name or logo – it is the foundation of your brand’s identity and market value. Zoe Bernstein Law PLLC can help prevent costly issues later.

Schedule your initial consultation through my Boca Raton office via 305-686-3421 or email.