What is a Trademark?

A trademark is any word(s), name, symbol, device, or any combination thereof, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of other sellers (and providers) so as to indicate the source of the goods/services sold under the trademark. In some circumstances, it may be possible for a sound, an odor, or a color to be a trademark.

The strength of a trademark depends on whether the mark is fanciful, arbitrary, suggestive, or descriptive. A fanciful mark may be a word invented for use with goods or services. An arbitrary mark may be a known word (or words) which has no relevance to the goods and services for which it is used. Fanciful and arbitrary marks are strong. A suggestive mark hints at or suggests the nature of a product or service or one of the attributes thereof without actually describing the product or service. Suggestive marks are less strong than fanciful and arbitrary marks. A descriptive mark may be a word (or words) that merely describes a product or the ingredients or attributes thereof. Descriptive marks are the weakest. Weaker marks are more difficult to protect and often more difficult to enforce.

A word (or words) which is the common name of a product or service is generic and therefore not registrable or protectable as a trademark in relation to the products or services it signifies.

The preferred approach to protecting a trademark is to file an application for a federal registration with the Trademark Office at the United States Patent and Trademark Office. Trademark rights under a federal registration are enforceable in all states of the United States and territories thereof. A trademark may also be protected by filing an application for a state registration with a state office responsible for trademark registrations. Trademark rights under a state registration are limited to the state where registered. A user of a mark in some circumstances may also accrue rights to a mark as a common law trademark. Trademark rights under common law are often more limited in scope and more difficult to enforce than either a federal registration or a state registration.

Is a trademark registered in the United States enforceable in other countries?

No. Trademark rights are country specific. Trademark rights must be secured in each country where such rights are required.

Trademark rights in some foreign countries may be pursued via an application under the Madrid Protocol based on a trademark application filed with the USPTO. The Madrid Protocol in some instances may simplify the application process when trademark rights are required in both the United States and foreign countries.

Foreign trademark rights vary widely outside the United States. Trademark rights accrued under common law by use are non-existent in many countries. Many countries offer only a federal registration. Many foreign countries also have a first to file system whereby the first party to register a mark has trademark rights to the mark even though the mark has been in use by another party.

What are the steps in a typical process for securing trademark rights in the United States?

Should a trademark search be performed before preparing and filing a trademark application?

A trademark application prepared and filed without first performing a comprehensive trademark search is much like skiing downhill with your eyes shut. Therefore, a trademark search performed by an experienced searcher is highly recommended before preparing and filing a trademark application.

A U.S. trademark search will identify trademarks registered with the federal government, trademark applications filed with the federal government, trademarks registered with state governments, various common law uses which may or may not include trademark rights, and domain names. Each registration or use in the search results in relation to your trademark might allow the possibility of confusion as to the source of goods and services.

The investment in a trademark search offers several benefits. The search results will allow you to assess whether additional investments of time and money in the use and the registration of your trademark are appropriate. The marks and uses identified in a trademark search will improve the quality of the application filed for registration of your trademark. The information pertinent to marks and uses in the search report will allow you to develop and implement filing and prosecutions strategies to optimize the rights obtained.