For more information on trademarks, visit our Trademark FAQ.
Trademarks protect names, logos, and virtually any indicia of the source of a product (in some cases distinctive packaging, color, etc.). Service-marks receive the same legal protection as trademarks but are meant to distinguish services rather than products.
Trademarks may be protected by both Federal statute under the Lanham Act, 15 U.S.C. §§ 1051 - 1127,
and a state's statutory and/or common law.
Acting under its Constitutional grant of authority to regulate interstate and foreign commerce at US Constitution, Article 1, Section 8
Congress enacted the Lanham Act. A trademark or service mark registered under the Lanham Act has nationwide protection. See § 1115 of the Lanham Act. A trademark or service mark registered under a state statute has statewide protection at best. Since the costs are close, it is always better to seek federal registration whenever possible.
Federal registration is available to any person or business engaged in "interstate commerce". This requires the sale of goods or advertising across state lines.
- Types of Applications
- An applicant who has already begun using a mark in commerce may file based on that use (a "use" application).
- An applicant who has not yet used their mark may apply based on their "bona fide intention" to use the mark in commerce (an "intent-to-use" application).
- Registerable Types of Marks
The following types of marks are registerable:
- Fanciful. Fanciful words are words that have no established meaning, e.g., they are made-up. Examples of fanciful marks are: KODAK and EXXON.
- Arbitrary. Arbitrary words have an established meaning but not in the context for which it will be used. Famous examples of arbitrary marks are: APPLE (for computers).
- Suggestive. Suggestive marks indirectly describe the product or service. Imagination must be used to draw the inference. Note: many of the best remembered marks are suggestive because they help promote the product or service, e.g., COPPERTONE. The following types of marks are initially unregisterable, but may be applied for and can be registered after five years of continuous use.
- Descriptive. Descriptive marks merely describe the product or service, e.g., Legal Services Corp.
- Geographical. Describe the geographical origin of the goods or services, e.g., Baltimore Manufacturing, Inc.
- Deceptively Misdescriptive. If a mark misdescribes a product or service it is deceptively misdescriptive. A mark that is deceptively misdescriptive will not be registered unless there is a showing of secondary meaning.
The following types of marks are never registerable:
- Generic. A generic word is a common descriptive name of goods or services. Typically, they are words necessary for competitors to refer to their own products, e.g., "smoked salmon". Such words are so common that they cannot serve as an indicator of the origin of the goods. Frequently, generic words come from overly successful trademarks. Some examples of generic words that originated as trademarks: ASPIRIN, CELLOPHANE, VELCRO, ESCALATOR and THERMOS.
- Scandalous or Immoral. The Patent and Trademark Office routinely refuses to register such marks as a matter of public policy.
- Scope of protection
- Rights granted. Under the Trademark Act of 1946 ("Lanham Act"), Sect 1114, a trademark gives the exclusive right to use a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services if such use is likely to cause confusion. Upon an infringement, the registrant is entitled to recover damages.
- Lifetime. Each certificate of registration shall remains in force for ten years, and may be renewed indefinitely for periods of ten years upon payment of the prescribed fee and the filing of an application therefore. See Trademark Act, Sect 1058 & 1059.
- National rights. Trademark registrations give nationwide protection, but what is the value over state or common law rights? Suppose you have a federal registration, but a business started earlier making a similar product in a different location and they chose a confusingly similar mark. As long as your geographical markets do not overlap, there is no problem. However, when markets do begin to overlap, the federal registration will give rights in all but the immediate locale of the prior user. The prior user retains limited grandfather rights in the immediate area.
- Procedural steps and cost
- 1st: Clearance search. To clear a proposed mark for use and registration, it is essential to conduct an early search of existing trademarks and obtain a legal clearance opinion. The trademark database is available for searching online at
Experienced judgment often helps, and in this case we recommend a professional search/opinion. The cost is $295.
- 2nd: Application. If the opinion confirms the right to use/register, then it remains to file an application for federal registration. A Trademark application runs $325 per class of goods/services plus attorney's fees.
- 3rd: Receipt and docketing of Official Action(s) from the Trademark Office, and preparation and filing of Amendment(s) in response thereto. An official action from the Examining Attorney may not be received for 6 to 12 months after filing of an application. An amendment/response must be filed within the next 6 months. The cost for preparation and filing of an amendment/response varies greatly in accordance with the requirements imposed by the Examining Attorney. Generally, the costs run between $175-$375 per amendment/response.
- 4th: Approval and Publication. Once the Trademark Office approves the mark it is published in the Trademark Official Gazette. The public has a thirty day window to oppose registration of the mark.
- 5th: Registration. Assuming no opposition, the mark is registered. If the application was filed based on a bona fide intention to use a mark (rather than actual interstate use), either an Amendment to Allege Use or a Statement of Use must be filed prior to issuance of the registration. These costs generally run between $200-$250, inclusive of the government filing fee.
- 6th: Following the first five years after registration of a mark, the registrant must file an affidavit setting forth the goods or services recited in the registration and attaching to the affidavit a specimen showing current use of the mark. At this time, the registrant may also file an affidavit whereby the right to use the registered mark in commerce for the goods or services set forth in such affidavit becomes "incontestable." We ordinarily recommend that these affidavits be combined and filed together within the sixth year after registration of the mark. Currently, costs for filing a Combined Affidavit of Use and Incontestability are roughly $450.
- 7th: Each registration will expire after 10 years unless an Application for Renewal is filed within the six month period preceding the expiration of the registration. The current filing fee for an Application for Renewal is $300, to which our office adds an administrative fee for docketing, reporting, and payment.
- Notice. In the US, anyone can and should use a superscripted TM (or SM) to indicate that they believe to have state or common law trademark (or service mark) rights to a mark. However, one may only use ® when the mark becomes federally registered.