Introduction to Trademark Law
Trademark law is an intellectual property legal body that addresses the use, registration, and protection of trademarks. Trademarks can include words, phrases, and colors that make a company’s products or services distinctive in its market or industry. State and federal rules make up trademark laws, including the Lanham Act.
It’s also worth noting that trademark law only addresses legal issues on items that differentiate one business from another. Protecting original works will require creators to obtain copyrights. Copyrights are typically for written works, compositions, and artwork.
The USPTO website also discusses trademark law here.
Is Trademark Law Federal?
Yes, trademark law is federal. Federal trademark laws derive rules from the Constitution’s Commerce Clause under the Lanham Act. However, state trademark laws can also apply, depending upon headquarters or residency locations, and may exceed the requirements of federal trademark laws.
What Is the Lanham Act?
The Lanham Act, also known as the 1946 Trademark Act, is a federal law that regulates trademarks, service marks, and unfair business practices. The law governs trademark registration and use throughout the United States. It has also protected trademarks in the market while reducing consumer confusion.
The Lanham Act was long overdue to help regulate the creation and use of trademarks in a way that protects both trademark owners and consumers. Before the Lanham Act, the only protection trademarks had was state common law.
Here is another web page that discusses federal trademark law.
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What Does Trademark Law Usually Protect?
Trademark law protects businesses from others using their protected intellectual property (IP) rights. These rights also protect consumers as they authenticate the brand. You can prevent other parties from using a confusingly similar trademark to yours, even if it is not wholly identical.
The U. S. Patent and Trademark Office (USPTO) currently allows trademark law protections of the following elements:
- Color schemes
- Logos
- Slogans
- Smells
- Sounds
- Words
Most businesses require multiple trademark registrations to protect their brands. Don’t overlook the possibility of other outlier trademarks, such as special use logos, company slogans, or brand color schemes, and each will require a separate registration.
Requirements for Getting a Trademark
The requirements for getting a trademark are not overly burdensome or broad. However, the process is overwhelming, especially when registering multiple marks and establishing long-term management and use protocols. It takes approximately ten months from when you apply to receive approval but could take up to a year or more if your application contains errors.
Below, we’ve outlined seven requirements for getting a trademark protected under federal or state trademark laws:
Requirement 1. Have a Clear Trademark
The USPTO will most likely reject your trademark application if it’s too similar to an existing trademark. Perform a thorough trademark search on your trademark symbols before finalizing them. An intellectual property lawyer can help you handle this critical first step toward formal registration.
Requirement 2. Possess a Descriptive Mark
Trademark registration is required for products, while service businesses use service marks. Examine the mark to ensure that it accurately represents what you’re offering. The USPTO has the authority to deny your application if they determine that your description is too vague or indefinite.
Requirement 3. Intent or Commercial Use Determinations
The USPTO will also want you to designate how you plan to use your trademarks. When stating the basis for your trademark application, you have two choices, including:
- Commercial use : This designation signifies that you are currently using your trademark.
- Intent to use : This designation signifies that you plan to use your trademark in the future.
You must also provide evidence of commercial use, such as photographs of the trademark on labels or ads, promoting your products or services. These photographs need to be high-quality and clear so that the USPTO can final determine approval.
Requirement 4. Trademark Application Fee
The USPTO charges a fee for trademark applications. Depending on the application method and the registration class sought, trademark applications can cost between $250 and $350 per class of goods or services and marks as of 2022.
Requirement 5. Trademark Application
Filing the trademark application is the main requirement for registering a symbol. Filling out the trademark application form is straightforward, as long as you are familiar with the process.
In general, you must provide the USPTO with the following items on your application:
- Item 1. Mark description and identification
- Item 2 (Conditional). High-resolution image if the mark is a logo
- Item 3. Applicant’s name, address, and citizenship
- Item 4. Legal entity type applying for the trademark
- Item 5. Commercial or intent to use designations
Depending upon the results of your application, you may also need to provide additional evidence or documentation at the request of the USPTO examiner’s office. If you face an initial application denial, you should bring in legal representation as soon as possible.
Requirement 6. Trademark Agreements (Optional)
A trademark agreement, also known as a trademark assignment agreement, is a legally binding contract between a trademark licensor and licensee. You will want to have these documents drafted if you plan on licensing your trademarks to other businesses for profit.
Trademark Laws for Logos
Federal trademark law treats logos a little bit differently. You can acquire a logo trademark in two ways: commercial use and federal registration.
Here is a closer look at the two options below.
Option 1. Commercial Use
Businesses acquire common-law trademark rights by using them. These rights are limited to the geographic areas where a company uses a mark and are subject to priority and confusing restrictions.
Essentially, your business can stop another company from using the same or similar logo under this option if it meets the following conditions:
- Condition 1. Your business used the logo first
- Condition 2. The other business’ logo is nearly identical to yours
Confusing resemblance is typically determined by comparing the appearance of the two logos and examining the overlap between the companies’ products, services, and customer base.
Option 2. Federal Registration
The USPTO can grant the owner national priority over the logo as of the filing or registration date. Conducting a pre-application clearance search for a logo is more complicated than confirming the availability of a word-based trademark. Application analysts will also require a photograph of your logo in use.
What’s Considered Trademark Infringement?
Trademark infringement is when one party uses another party’s trademark without permission. However, some trademark law infringement violations occur over the similarity between two different marks. State and federal civil courts typically oversee trademark infringement lawsuits.
Elements considered when overseeing trademark law infringement cases typically include:
- Element 1. Prominence and distinction of the mark
- Element 2. Degree of similarity between the two
- Element 3. Similarity of products offered
- Element 4. Impact on the plaintiff’s business
- Element 5. Evidence showing customer confusion
- Element 6. Defendant’s overall intent
- Element 7. Quality of the defendant’s products
- Element 8. Consumer sophistication
Businesses should always protect their trademarks through all available means under state and federal trademark law. Trademark lawyers can assist you in determining what your business requires. They can also help you perform trademark searches, prepare your application, and answer your questions throughout the legal process.
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