Trademark Law: 10 Things You Should Know

Over 500,000 trademark applications are submitted every year, making the creation of a distinctive mark quite a challenge. So, if you’ve managed to come up with a unique brand identity that stands out from the crowd, congratulations! Now, it’s time to hold on to your trademark by utilizing the benefits of trademark law for your protection. 

Trademark law protects words, slogans, designs, sounds, or symbols that extend brand recognition to help consumers identify your products or services. Trademarks are “first come, first serve”—the original creator of the mark gets priority of ownership, and their originality is the legal basis for their protection. 

The fundamentals of federal trademark law

Trademark law has evolved with human commerce. Signs and symbols were used for branding material throughout ancient history, marking the earliest introduction of trademarks for creators. The establishment of markings was used to identify and uphold accountability to ensure quality products and services for consumers. In other words, trademarks make it easier for consumers to quickly identify the source of a given good, and trademark law furthers this goal by regulating their proper use.

In the late 1800s, the U.S. Congress enacted the first federal trademark law, which became the foundation for current law. The Trademark Act of 1946—also known as the Lanham Act—was enacted to address concerns surrounding ineffective protection and laws that were considered unconstitutional.

Today, trademark law is mostly governed by the Lanham Act, which offers protection for both registered and unregistered marks. Ever-evolving trademark laws continue to provide protection from competitors infringing on the use of identical or similar slogans and symbols.

Trademarks are part of everyday life for most people, from the tags on our clothes to the names of our phones. Many consumers, starting from youth, can easily recognize popular slogans and phrases—for instance, perhaps you can connect the slogan “I’m loving it” with the golden arched “M” symbol, representing the McDonald’s food chain.

Now, it’s your turn to get started with the protection your innovative ideas deserve.

10 things you should know about trademark law

Before you get started, it's important to familiarize yourself with trademark law. Here are 10 facts you should know to avoid trademark challenges that may arise along the way.

1. United States Patent and Trademark Office

Trademark registration with the United States Patent and Trademark Office (USPTO) is not a requirement; however, marks registered with the USPTO are given a higher degree of protection in federal courts than unregistered marks. To register your trademark, you must complete a trademark application with the USPTO, which can take 12 to 18 months to complete. The starting cost will range between $250–$350, depending on the filing option. 

Although the registration process may seem costly and time-consuming, it may be worth the investment, considering the following benefits: 

• Nationwide federal protection 
• Increased business value and investor confidence
• Trademark owner receives exclusive rights 
• Right to use ® symbol to deter infringement from competitors 
• Provides supporting evidence of ownership in case legal issues arise

2. Unregistered trademarks

Although an unregistered trademark is not recommended, you can use your trademark without registration. If you do, you’re automatically granted common law trademark rights upon use. However, trademark protections are limited to the geographic location where the trademark is used. 

For instance, if you decide to use an unregistered trademark to start a jewelry line in Brooklyn, New York, a competitor located in upstate New York can use the same mark without overstepping trademark infringement laws. Additionally, your competitors will have the right to use your trademark to conduct business online. However, your competitors can not use your unregistered trademark within the same geographic location.

It’s important to note that the starting date of trademark use is hard to prove without registration, which can lead to an expensive game of trademark tug-of-war. To prevent unnecessary legal issues, it is highly recommended to apply for trademark registration. 

3. Trademarks vs. service marks

Both registered and unregistered trademarks are marked with different trademark symbols that are small but mighty, considering the legal weight they carry to identify and protect your trademark from competitors. There are three symbols that are used depending on commerce and registration status.

Unregistered or pending trademarks will use the TM (™) symbol to represent a trademark associated with the sale of goods and use the SM (℠) service mark symbol to represent services provided by a business. However, federally registered marks are authorized to use the R (®) symbol for both goods and services, which can only be used after registration approval.

4. International trademark law

International trademark law is protected under the Madrid Protocol. In November 2023, the Madrid Protocol, also known as the Madrid system, was created to allow trademark owners registered in the United States to apply for international trademark registration with the International Bureau of the World Intellectual Property Organization (WIPO). This “one-stop shop” process will forward your single application to individual trademark offices in up to 124 countries for trademark application review. 

It’s important to note that this does not guarantee trademark approval. However, this application process is the most efficient way to obtain international trademark benefits that include global protection, brand reach, and increased value. 

5. Commerce and trademark protection

Trademark protection was not designed to be a placeholder for your creative ideas, although you can file an intent-to-use (ITU) application. However, trademark law requires “use in commerce” to register and maintain trademark rights. Commerce refers to the act of buying and selling goods or services, which is the economic driving force behind your business. 

To obtain trademark protections, you must be the first to use your desired mark on goods and services, including branding material that will be used for marketing purposes. Keep in mind that this does not mean you can leave free products on your neighbor’s doorstep. Although this can be a great place to start, it is not considered legal evidence. Instead, you must provide proof of sales and availability to consumers without lengthy gaps from the start of use. 

6. Trademark infringement

Trademark infringement is the unauthorized use of a similar or identical trademark, such as a logo, slogan, design, brand, or domain name, that may cause deception or customer confusion. To prevent infringing on the rights of another trademark owner, you can conduct a trademark search to avoid costly lawsuits. 

There are several ways to conduct a trademark search. To start, you can visit the USPTO website, which will grant you access to the trademark database—but don’t stop there. Considering the legal consequences of trademark infringement, it’s certainly worth a thorough Google and social media search for registered and unregistered trademarks that may already be in use. 

7. Anti-Cybersquatting

As the digital age changed the way we interact with the world around us, it has also changed the way we conduct business and exchange information. Although one of the benefits of today’s growing cyberworld is increased trademark visibility, it can also attract more risks. To offer better protection for trademark owners, President Bill Clinton signed the Anti Cybersquatting Consumer Protection Act into law to extend trademark protections beyond the physical world to the web. 

This protects trademark owners from cybersquatting, which is the illegal use of similar or identical domain names and trademarks to profit from the success of the trademark owner. Likewise, it’s important to avoid the usage of existing trademarks as you conduct business online to avoid legal issues.

8. Trademark dilution

The Federal Trademark Dilution Act of 1995 was designed to protect marks that the courts have determined as “famous.” Highly reputable marks, such as Nike’s iconic check mark or Adidas' well-known three-striped logo, have earned rights to extended protections from customer confusion and brand harm.

Dilution can occur in two forms:

• Blurring: The most common form of dilution due to the increased likelihood of branding imitation of “famous” marks. As a result, blurring is the use of a similar or identical “famous” trademark that weakens brand identity and causes customer confusion. 
• Tarnishment: The use of a similar or identical well-known trademark that is deemed offensive or potentially harmful enough to tarnish the renowned brand's reputation. For example, the unauthorized use of the children’s educational ABC Mouse trademark on a T-shirt with offensive language may harm the child-friendly brand. 

The magnitude of public trademark disputes, such as the lengthy battle between artist Kanye “Ye” West, and Walmart, reveals the importance of trademark dilution. Ye’s use of a trademark that closely resembled Walmart’s infamously known sun symbol exposed the increased risks associated with public figures and giant retail corporations. The likelihood of customer confusion and conflicts of interest between celebrity partnerships can hinder business success for all parties involved.

9. Maintaining your trademark registration 

After submitting your trademark application and the year-long anticipation of receiving your official approval, the moment will finally arrive for you to celebrate your trademark registration. However, in the midst of the excitement, you must remember to set the date on your calendar for registration renewal.

If you don’t want to restart the registration process and potentially lose your registered mark protection, you must submit registration maintenance documents within three separate time frames starting from the 5th year of registration. You will include a formal declaration of continued use and proof of use for all goods and services listed on the original registration. For accuracy, it’s recommended to reevaluate your original registration and make updates where necessary to reflect your current use to avoid violation fees.

10. Choosing a distinctive trademark

Did you know that nearly 50% of trademark applications are rejected every year? Although it may sound discouraging, it serves as a reminder to ensure that your trademark is in compliance with federal law and you’ve hit the jackpot with a highly distinguishable trademark. 

One of the most common reasons for trademark rejections stems from an increased likelihood of confusion. This may occur if the trademark looks, sounds, or means something similar to an existing or pending trademark, even if the goods and services offered are different. 

Trademark registration made easy with LegalZoom

After countless hours of research, the trademark registration process may still feel a bit intimidating. Considering the hard work that goes into creating the perfect trademark, it’s natural to want a successful start. Thankfully, LegalZoom offers trademark registration services that will streamline the process, which may increase your chances of trademark approval. Our experienced attorneys will help you save time and money and, most importantly, give you the confidence you need that your brand and business are protected. 

Frequently asked questions

What is a trade dress? 

A trade dress is the distinctive physical appearance and feel of a product that separates your merchandise and services from competitors. For instance, the classic shape of the Coca-Cola bottle or kitchen staple Heinz ketchup. The Lanham Act extends this protection to product packaging and designs, including the color, shape, size, and texture. 

How long does a trademark last? 

A federal trademark registration will last for 10 years. However, it is possible to maintain ownership of your trademark indefinitely by meeting filing renewal deadlines and continued use.

What is a trade secret?

A trade secret is concealed information that would be considered valuable to the general public, such as KFC’s infamous fried chicken recipe or Olive Garden’s chicken gnocchi soup. Although a trade secret is not limited to recipes, it can also include business strategies, chemical formulas, and manufacturing techniques. Similar to trademark and patent protection, a trade secret limits and secures access from competitors and public use.