What is Trademark Law?

Brush up on the federal and state laws that govern branding

By Super Lawyers staff | Reviewed by Canaan Suitt, J.D. | Last updated on February 8, 2023

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Trademarks are among the most important forms of intellectual property. The United States Patent and Trademark Office (USPTO) defines a trademark as any combination of a symbol, word, phrase, or other design elements that serves as a source signifier for target-market consumers.

Businesses and other entities can seek trademark protection for both goods and services—though certain strict criteria must be satisfied before a service mark application can be approved. The information presented in this article is meant to serve as an introduction to trademark law. If you are a trademark owner with specific questions or concerns about your legal rights, responsibilities, or options, you should reach out to an experienced trademark lawyer.

Trademark Law – What You Need to Know

  • Trademark rights are protected under both federal law and state law.
  • Trademarks indicate the source of the goods to consumers, reducing consumer uncertainty or confusion.
  • Several benefits are associated with registering a trademark, including a legal presumption of legitimate ownership.
  • If you believe that another party is violating your trademark rights or your company has been accused of trademark infringement, an experienced IP lawyer can help.

An Overview of the Trademark System and Trademark Laws in the United States

Trademark law is complicated. Whether you are preparing to apply for the initial trademark for a startup company, seeking to register a trademark for a new product/service, or locked in an infringement dispute, you must know your rights, responsibilities, and options under the law. Here are five key things to know about the trademark law system in the United States:

  1. Trademarks are Protected by Both Federal and State Law: As a starting point, it is essential to know that trademark rights are protected under both federal law and state law. These laws protect owners’ rights and avoid consumer confusion over brand names and symbols. Federal trademark law arises primarily under The Lanham Act. For many trademark holders, it is beneficial to establish and develop trademark rights at the federal level. You can also register your trademark in individual states. Of course, doing so will only develop your trademark rights in that particular jurisdiction.
  2. Your Trademark Must Be Sufficiently Distinctive: On a fundamental level, trademark rights exist to serve as a source-signifier for consumers. They are a sign, symbol, design element, or other visual representation that attaches a specific good or service to a particular brand. With this in mind, you need to know that you cannot qualify for trademark protection unless your mark is deemed to be sufficiently distinctive. Trade names with generic terms will not be approved for trademark protection under either federal or state law.
  3. Bona Fide Commercial Use is Required: Registered trademark protection only applies with bona fide commercial use. You cannot lawfully squat on a trademark or seek trademark protection simply because you like a particular design. To qualify for trademark protection, your business or organization must be using the special mark in a legitimate commercial context. Without commercial use of the mark, there is no trademark protection.
  4. Trademark Registration is Not Mandatory (But is Valuable): Technically, a business does not have to register its trademark at the federal or state level to have rights. Assuming that a mark is sufficiently distinctive and there is no likelihood of confusion with another trademark, trademark protection can arise through the use of a mark in commercial activities. That being said, there are several different benefits associated with registering a trademark. Federal trademark registration creates a legal presumption of legitimate ownership and allows the holder to sue for damages in federal court for unauthorized use of a trademark. Unregistered trademarks can be marked with the ™ symbol, whereas registered trademarks get the registration symbol ®.
  5. A Trademark Holder Can Sue for Infringement: Intellectual property rights matter. When you hold a trademark, you hold the exclusive right to use the protected word, phrase, symbol, or design in a commercial setting in a particular area. Trademark rights can apply locally, statewide, or nationally depending on the context. When a trademark is violated, an owner that has fully developed their rights can file a lawsuit to seek compensation for the damages caused by infringement.

Trademark lawyers are intellectual property law professionals qualified to handle the unique issues centered around trademark registration, development, and protection. Many trademark law attorneys practice at both the federal and state level, and they have experience with the U.S. Patent and Trademark Office. A trademark law attorney can help clients with a wide array of different intellectual property matters, such as what to do when you find a business using similar mark. You may consult with an experienced trademark lawyer for guidance and support with any of the following:

  • Trademark Clearance Search: Building a successful brand is complicated—especially in today’s hypercompetitive market. Before a company builds significant resources into developing the brand behind a new product or service, it is generally best to “clear” trademark rights. An intellectual property lawyer can conduct a comprehensive trademark search. These searches are intended to give decision-makers a complete picture of all potential conflicts and challenges to developing trademark rights.
  • Trademark Registration: Although federal trademark registration is not required under the Lanham Act, it is generally the best approach for businesses and organizations looking to develop their trademark rights fully. Beyond providing the strongest possible legal presumption of ownership over a particular mark, trademark registration puts a party in a far better position to sue for damages should a conflict arise.
  • Trademark Licensing: Ultimately, a trademark is a form of intellectual property. Like other forms of property, the rightful owner has certain transfer rights. You can even license the right to use a trademark commercially to another party—perhaps in a partnership agreement, joint venture project, or as part of a more comprehensive transaction. If you have any specific questions or concerns about licensing, you should consult with an experienced trademark law attorney in your local area.
  • Trademark Infringement: Broadly defined, trademark infringement is the unauthorized use of a lawfully protected trademark. Trademark infringement cases are challenging. Whether you believe that another party is violating your trademark rights or your company has been accused of trademark infringement, an experienced IP lawyer can help.
  • Trademark Dilution: A trademark dilution claim can be considered a cousin of a trademark infringement claim. In effect, trademark dilution occurs when another party uses a mark similar to your protected mark in a manner that “blurs” or “tarnishes” your brand. Companies can seek compensation for damages caused by trademark dilution.

Common Questions About Trademark Law

A pragmatic and proactive approach is crucial in a trademark law case. No matter what trademark issue you are dealing with, you do not want to fall behind. Knowing what questions to ask a top intellectual property attorney can make a big difference. A confidential consultation is an opportunity to sit down with a lawyer and get answers to your most pressing questions. Here are some of the most common questions that you might ask a trademark law attorney:

  • Am I entitled to trademark protection?
  • What is the trademark application process at the federal level?
  • Do I need to take any state-level action to establish my trademark rights?
  • What happens if my trademark rights lapse due to non-use?
  • How do I structure a trademark licensing agreement?
  • What specific steps do I need to take to develop and protect my trademark?
  • Should I send a cease-and-desist letter to stop trademark infringement?
  • Can my business recover compensation through a trademark infringement lawsuit?
  • How do I defend my company against a trademark infringement claim?

Finding the Right Attorney for Your Needs

It is essential to approach the right type of attorney—someone who can advise on everything from applying to filing a claim. To do so, you can visit the Super Lawyers directory and use the search box to find an intellectual property law attorney based on your legal issue or location.

To help you get started, you may want to consider looking for a lawyer who practices trademark law.

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