Basics of Trademarks

I often get asked to define a “trademark.” In the law, it is a complex topic with many facets. Most people who ask me the question are most interested in how to register their trademark. A trademark can be registered at the state level, but most people are (and should be) interested in registering their mark on the federal level. Federal registration provides the most benefits.

A trademark includes almost anything used by someone “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.” 15 U.S.C. § 1127. (emphasis added). A service mark is a trademark that is used in association with their services instead of goods.

To register a trademark or service mark with the U.S. Trademark Office, there are several basic requirements that must be met. First, the trademark must be a word, slogan, logo, color scheme, sound, or packaging design.

Second, the trademark must be used in interstate commerce. An exception is granted for marks where the user “intends” to use the mark in interstate commerce. A trademark owner can then file an application based on an “intent to use” the trademark. However, the application for registration must be updated within about a year to include proof of actual use of the mark in commerce.

Third, the trademark must be conspicuously marked on goods, or if necessary, marked on the packaging or something near the product or service.

Fourth, the mark should be distinctive. Under 15 U.S.C. § 1152, a mark shall be registerable on the principal register, “unless . . .,” and then a list of exceptions is given.  One of these states (1152(e)(1)): “No trademark . . . shall be refused registration on the principal register . . . unless it . . . [c]onsists of a mark which . . . is merely descriptive.” Thus, a mark should be distinctive, either inherently or by “acquiring” distinctiveness.

Fifth, a mark must not be same or confusingly similar to another mark used on the same or similar goods or services. Hence registration is needed for marks so that we know which marks are already being used. Accordingly, while it is not required for an applicant to conduct a search for conflicting marks, it is helpful to conduct a trademark search prior to applying for registration of a mark with the United States Trademark Office.

Sixth, a trademark must not be functional. It is one of several affirmative defenses under 15 U.S.C. § 1115(b) when a trademark is found (by a court) to be functional. The burden of proof is on the defendant, except in cases of trade dress infringement where the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional (see 15 U.S.C. § 1115(b)).

Finally, unlike a patent, the duration or lifetime of a trademark is potentially perpetual if goods are continuously used and the registration is periodically renewed.

One Comment - Leave a Comment
  • Benoit Fallenius -

    Regarding your fifth point, that a mark “must not be same or confusingly similar to another mark” and that “it is helpful to conduct a trademark search prior to applying for registration”, you should try Markify at

    It is a new kind of trademark search and watch service that very accurately will show you the similar trademarks in the USPTO (and Europe). As far as we know it is the only free service around with full similarity capabilities. You will save yourself and your clients a lot of time and money.

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