What Are Trademark Rules?
The correct use of trademarks is governed by regulations imposed by the federal and state governments. A word, phrase, or symbol that is used to distinguish the goods and services of one producer from another is referred to as a trademark.
The owner of the trademark retains some rights over the use of the mark after it is registered or becomes well-known via use.
Fines, legal action, and the loss of special protections that the federal government offers to trademark owners are a few potential outcomes for breaking trademark restrictions. Before you apply for a trademark you should know everything about trademark.
What Constitutes a Trademark and What Qualifies?
A trademark cannot be used to designate a class of goods or services that you want to market. The ability of the mark to distinguish the producer or provider of goods or services is known as distinctiveness. To determine whether a trademark is distinctive enough, the courts classify it into one of four groups: ❖ Generic\Descriptive\Suggestive\Random or fantastic According to the court, the distinctiveness of each of the four categories varies. As a result, depending on which category a trademark belongs to, so will the requirements for a trademark and the level of legal protection it obtains.
What Are the Trademark Rules for an Arbitrary or Fanciful Mark?
If a mark is fanciful or arbitrary, no logical connection exists between the mark and the underlying products and services.
❖ Some examples of fanciful and arbitrary marks include Apple, Kodak, and Exxon. No logical reason exists to explain why a company that sells computers, smartphones, and tablets chose the trademark Apple for its products.
The court views fanciful or arbitrary marks as distinctive. Therefore, the courts grant such marks significant protection under federal and state trademark rules and laws.
What Are the Trademark Rules for a Suggestive Mark?
A suggestive mark refers to a trademark or service mark that alludes to a certain characteristic of the product or service.
One example of a suggestive mark is Coppertone. The word Coppertone does not describe the underlying product specifically. However, consumers can use their imaginations to understand the association between the mark and the underlying product. Just like a fanciful or arbitrary mark, the courts view a suggestive mark as being distinctive. Therefore, the courts grant suggestive marks a high level of protection.
What Are the Trademark Rules for a Descriptive Mark?
A descriptive mark refers to a trademark or service mark that describes the underlying product or service directly. Usually, a descriptive mark will directly refer to a quality or characteristic of a product.
Some examples of descriptive marks include All Bran, Holiday Inn, and Vision Center. These marks describe characteristics of products.
What Are the Trademark Rules for a Generic Mark?
A generic mark refers to a mark that broadly describes the category of the underlying product or service. An example of a generic mark would be Coffee for a company that sells coffee. The courts don't require outside individuals to follow any trademark rules when it comes to generic marks.
Why Are Trademark Rules Important?
Once a trademark gets registered with the federal or state government or established through use, the trademark can last forever. However, you need to follow a few rules to keep the lifetime of your trademark indefinite.
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To maintain trademark protections, you need to continue to use the mark in commerce.
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Before the end of the sixth year after registration of the mark, you need to complete and file an affidavit with the U.S. Patent and Trademark Office (USPTO).
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You also need to pay renewal fees for the trademark registration before the end of the 10th year after trademark registration.
The courts don't offer trademark protections for generic marks because these terms are useful for describing and identifying a product or service. If a manufacturer or seller receives exclusive rights to a generic mark, this reception would likely put other manufacturers and sellers at a disadvantage. In some cases, a term that the courts consider distinctive can become generic with time. If this change occurs, the courts will refuse to afford trademark protection to the mark.
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If you fail to renew your trademark, you will not lose the trademark, but you will lose registration rights. The main way you can lose your trademark rights is by not using the mark in commerce without expressing your intent to resume using the mark in the future, also called abandonment.
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Another way you can lose rights to your trademark is by licensing the trademark without any restrictions.
Protecting Your
Trademark
You should register your trademark and use the federal trademark sign to identify your goods and services in order to protect it. You should label your product with the TM trademark symbol if you haven't registered your trademark. On the other hand, you can use the registered trademark (®) symbol if your trademark has been registered. These trademarks are not required to be used by law. Utilizing these marks, however, will assist in preventing trademark infringement. If you employ the marking, you will also find it simpler to demonstrate any trademark infringements.
As soon as you become aware of a trademark infringement, you should send a letter to the offending individual or company requesting that they stop using your trademark.
What Are the Trademark Rules for Use of the Federal Registration Symbol?
Federal law regulates uses for the registered trademark symbol. As stated above, no law exists that demands your use of this symbol. However, if you fail to use the federal registration symbol, you will forfeit your right to the recovery of money damages or lost profits. In court, you will need to prove that a defendant knew you registered the mark with the federal government if you don't use the federal registration symbol. As you can imagine, this proof can be a real burden on you. The law places the burden on a defendant to know about the trademark registration if the mark's owner uses the federal registration symbol properly.
What Are Trademark Rules for Registration?
Although you are able to register your trademark with the USPTO, this is not a requirement for protection.
If you decide not to register your trademark, you will only be granted protection for it in the regions in which you actually use it. Additionally, federal courts will not accept your infringement lawsuit. However, trademark registration gives you access to federal courts and offers your trademark national protection.
Trademark Rules for Litigation
In the event of a trademark ownership dispute, the person or business who first used the mark in commerce will be favoured by the courts. Even if another person or company registered the trademark before them with the federal government, this reality still holds true.
If you have a well-known trademark, you could convince the judge to rule in your favour by demonstrating that the defendant's use of the mark might damage your reputation.
What Shouldn't You Do With Trademarks?
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Don't use your trademark as a noun. Rather, use your trademark as an adjective. Follow up the trademark with a noun. For example, Apple computer.
❏ Don't use your trademark in the possessive form. The only exception to this trademark rule is if the trademark is possessive.
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Don't make your trademark plural. Instead, you should make the common noun accompanying the trademark plural. For example, Dell computers.
❏ Don't use your trademark as a verb.
Following these rules for trademark usage will help prevent your trademark from becoming a generic term.
Common Mistakes
Before you start using a trademark or business name , you should conduct research to make sure you're not breaking any trademark rules. You don't want to find out that someone else owns your mark after you use it to sell your products and services.
You can search a computerized database to make sure that your trademark is completely different. You can use these databases for free or at a reasonable cost. You can also pay an online service or a trademarking lawyer to do the research for you if you don't have the time to do the research yourself.
You don't want to confuse consumers and make them believe that a relationship exists between your company and an outside company or individual based on similarities of your logo, trademark, or business name.
You also don't want to face a lawsuit for trademark infringement or dilution. A trademarking lawyer will be able to tell
you whether the trademark you select would likely lead to confusion among your consumers.
