Trademark FAQs

A trademark is anything that is used in commerce to identify the source of a product or service and distinguish it from others. 

A service mark is a tradmeark that is used to identify the source of a service, not a product. 

A collective membership mark signifies membership in an association, cooperative, union, or other collective group. AAA (American Automobile Association) and FTD ((Florists’ Transworld Delivery Associatoin) are examples.  

A common law trademark is a trademark that has not been registered with the USPTO. 

“TM” stands for trademark. “SM” stands for service mark. The encircled-R symbol is reserved for trademarks and service marks that have been registered with the USPTO. 

A trademark comes into existence when a word, logo or other thing is used in commerce to identify the source of a product or service and distinguish it from others. In some countries, registration is necessary. In the United States, registration is not necessary. In the United States, a trademark is arises automatically by use in commerce, provided the source identifier that is used is distinctive enough to distinguish the product or service from the same, similar or related goods or services from a different source. Stated more formally, trademark rights in the United States arise when:

(1) a word, logo, symbol or other thing 

(2) is used in commerce

(3) to identify the source of a product or service,

(4) is distinctive, and

(5) is not likely to confuse consmers about the source of the product or service. 

A trademark esists when all five of these criteria are met.

AI-generated output can serve as a trademark, even if it entirely AI-generated. Unlike copyright law, there is no legal requirement for a trademark to be created by a human. As long as it meets the criteria for a valid trademark (use inc commerce as a source-identifier of a product or service; distinctiveness; no likelihood of confusion), an AI-generated logo or other output may be a valid trademark. For this reason, it is not necessary to disclose the use of AI (artificial intelligence) in the creation of a trademark. 

Trademarks must not confuse consumers about the source of a product or service, but there is no requirement for them to be creative. THOMAS B. JAMES is a registered trademark of attorney Thomas B. James of Cokato, Minnesota. You can’t get less creative and imaginative than that. 

To qualify as a “use in commerce” for trademark purposes, a trademark must be used in a bona fide, ordinary commercial transaction. A token sale, that is, a sale that is made solely for the purpose of creating or preserving trademark rights, do not qualify as “use in commerce.” Sham transactions, such as pretended sales to family and friends, also do not qualify. Wholly internal company use, such as in prototypes mofels for testing, or internal company documents, does not qualify. Pre-launch marketing does not qualify, either. This includes uses in sales brochures, advertising materials, and domain names prior to any actual, completed sales or service delivery. Use in connection with goods shipped by a manufacturer to the trademark owner normally does not qualify, either. To qualify as trademark use in commerce, the sale should be to a consumer or customer. The consumer does not have to be a retail store shopper, though. A B2B sale of a business product or service can qualify as use in commerce, too. 

Advertising alone is not sufficient to establish use in commerce unless the produce or service is actually availble for purchase and delivery. Similarly, a website that displays or describes goods or services but has no way of actually ordering them will not suffice. Advertising that includes a display of a service mark may suffice as a specimen of use of a service mark for purposes of registration, but an actual sale or at least the present availablity of the service to the public is necessary to establish use in commerce. 

Not necessarily. Merely using something as a business name does not count as “use in commerce” for a trademark. Business registration and/or internal use are not sufficient, either. To qualify as a use in commerce, the mark must appear on goods, labels, or in advertising that offer services to customers. A trademark for a product must be affixed to the product, the packaging, or set out in a tag or label that is connected to the product or the packaging in some way. In the case of a service mark, it must be set out in the sale, delivery or advertising of the service.  

A business name may qualify as a trademark if it is used in commerce as a trademark and meets all of the other criteria for a valid trademark. APPLE, for example, is both the name of a business and a trademark for computers. 

Yes, a domain name can be a trademark, but only if it fuctions as a brand identifier for a product or service. Merely reserving or registering a domain name with a registrar is not enough to establish trademark rights. To qualify as a trademark, it must be used as something more than just a web address. It must be used in commerce to identify the source of a product or service and to distinguish it from others. BOOKING.COM is an example of a domain name that also functions as a trademark. 

Use in intrastate commerce can satisfy the “use in commerce” requirement for a common law trademark. To qualify for federal registration, use in interstate commerce, or in foreign commerce, is required. 

The 5-tier distinctiveness pyramid developed by Minnesota attorney THomas James is a visual aid for understanding the different levels of distinctiveness a trademark can have. 

1. Generic terms. In the first tier are generic marks. These are words, symbols, etc. that describe an entire category of products or services rather than identifying a particular brand of on eof them. MILK, if used as a trademark for milk, is an example. Trademark rights cannot be claimed in generic terms for a product or service. Permitting people to claim rights in a generic term would result in given them monopolies on those products or services. A person with an exclusive right to use to word “milk” to sell milk would have an unfair advantage over other milk sellers. Generic terms for a product or service are never distinctive enough to be claimed as trademarks for the product or service they identify. 

2. Descriptive marks. A descriptive mark is one that describes a quality or feature of a product or service. INTERNATIONAL BUSINESS MACHINES is an example. “Business machines” is generic, of course. “Internatoinal” is descriprive. It describes a quality or feature of these machines, namely, that they are marketed and/or used internationally. Descriptive marks may be claimed as trademarks only if they have acquired distinctiveness, i.e., secondary meaning as a brand identifier. 

3. Suggestive marks. A suggestive mark is like a descriptive mark, in that it describes a quality or feature of the product or service, but it does not do it directly. It requires an additional step in the thinking process. JAGUAR as a brand identifier for a motor vehcile is an example. Jaguars run very fast, so using this as an identifier for a car suggests that the car is fast. This describes a quality or feature of the car, but it does not do it directly. We wouldn’t say, “That car is more jaguar than others.” The term “Jaguar” is not a direct description of the car; it only hints at a quality or feature of it. Suggestive marks are inherently distinctive. It is not necessary to prove that they have acquired secondary meaning as a trademark. 

4. Arbitrary marks. An arbitrary mark is an actual word or thing, but one that bears no logical relationahsip to the product or service to which it relates. APPLE as a trademark for computers is an example. Arbitrary marks are inherently distinctive.

5. Fanciful marks. A fanciful mark is a made-up word, design, etc. EXXON is an example. It is a word that has no meaning and serves no purpose in language other than as the name of a business and the source of the products the business sells. Fanciful marks are inherently distinctive.

Genericide occurs when a trademark becomes a common generic name for a product or service. ESCALATOR is an example. At one time, it was a trademark for a particular brand of moving stairway. After a while, people came to use it as a generic word for any moving stairway, from any source. Now it is even listed in dictionaries as a generic term for any moving stairway. Other examples of trademarks that have been lost through genericde include ASPRIIN, THERMOS, CELLOPHANE, DRY ICE, LAUNDROMAT, KEROSENE, TRAMPOLINE, YO-YO, and VIDEOTAPE. This is not an exhaustive list. Many other examples of trademarks that have been lost through genericde exist.

While there is nothing a trademark owner can do to guarantee that the trademark will never be lost through genercide, there are things a trademark owner can do to lessen the risk of genericide. Always using a trademark as an adjective to descibe a particular brand of a product or service rather than as a noun or verb for the product or service itself can help prevent genericde. For example, instead of saying, “Buy Kleenex,” say, “Buy Kleenex brand tissues.” When possible, it is a best practice to ensure that licensees, franchisees, retailers, advertisers and any agents over whom you have control do this, too. 

To be valid, a trademark must not only identify the source of a product or service, but it must distinguish it from those of competitors. Trademark rights cannot be enforced if the trademark is confusingly simliar to another trademark that is being used to market the same, similar or related kinds of products or services. For example, if you establish an independent tax preparation service called H&R BLOCK, you won’t have an enforceable right to the exclusive use of that name as a brand identifier for tax preparatoin services, because it would very likely confuse consumers about the source of your tax prepatation services. They would reasonably confuse your company’s services with those provided by the pre-existing company called H&R Block. If a brand identifier fails to distingujish the product or service from a product or service provided by a pre-existing trademark owner, it does not, and cannot, function as a trademark. 

Making minor changes to an existing trademark, such as by altering the spelling, adding or removing a punctuarion mark, putting a circle around it, etc. is not likely to remove or lesen potential consumer confustion about hte source of a product or service. MICROWSOFT and MICRASOFT, for example, are not likely to be enforceable as trademarks for computer products because even though they are technically different, consumers are still very likely to confuse them with MICROSOFT. A helpful rule of thumb here is to think of the average consumer as a poor speller with a fuzzy memory. A trademark does not have to be identical to a pre-existing one to create consumer confusion. Consumer confusion may also arise when a trademark is similar to another one, even if not identical to it. 

Probably not. Using the same or similar trademark for the same or similar products or services may be likely to confuse consumers even if the trademarks, the product or service, or both, are not identical. LIkelihood of confusion may exist if similar trademarks are used to market simlar products or services. For example, DOLE is curently being used as a trademark for pineapples, bananas and certain other fruits. Dragon fruit is not currently being marketed under the DOLE label. Nevertheless, choosing DOLE as a brand identifier for dragon fruit would not be a good idea because dragon fruit is similar to the kinds of products the Dole company sells, namely, fruit. Consumers would be likely to mistakenly believes that DOLE dragon fruit comes from the same company that sells DOLE pineapples and bananas.

Possibly, but not necessarily. Using another company’s trademark as a brand identifier for a different kind of product or service is usually permissible because it is not likely to confuse consumers about the source of the product or service. Consumers generally do not assume that a business sells completely different products and services. This is why DOVE can be used by one company to sell soap and by another company to sell chocolate, for example. Using the same or similar trademark for completely differnt products or services is not likely to confuse consumers. 

An exception to this rule exists, however, if the products or services, although different, are related. Computers and computer peripherals are examples of related goods. If a consumer could reasonably believe that a company that markets one kind of a product or service could expand to market a different kind of product or service, too, then marketing the different but related product or service under the same or a similar trademark could confuse consumers about the source of the product or service. For example, a consumer could reasonably expect a company that sells computers to expand ito sell computer peripherals, too. Therefore, marketing printers under the same name that another company is using to sell computers would not be a good idea. Using the same brand name for printers that another company is using to sell computers will not effectively distinguish the source of the printers from the source of the computers. It would also put you at risk of liability for trademark infringement. 

A trademark lasts for as long as it continues to satisfy the five criteria for a valid trademark. 

It is important to distinguish between registration of a trademark and the existence of the trademark. Rights incident to the registration of a trademark can be lost by failing to renew the registration or cancellation of the registration by the USPTO. Abandonment or cancellation of the regsitration, however, does not necessarily terminate the trademark, however. A common law trademark may exist even if the registration is cancelled. 

Yes. The maxim, “Use it or lose it” applies to trademark law. Trademark rights continue only so long as all five criteria for the existence of a valid trademark continue to be met. Those criteria are: (1) a word, symbol or other thing; (2) use in commerce; (3) use as an identifier of the source of a product or service; (4) distinctiveness; and (5) no likelihood of confusion with another trademark. If the mark is no longer used in commerce as a source identifier, then the second and third criteria are no longer satisfied, so it ceases to be a valid trademark. 

Not every discontinuance of use is abandonment. A temporary, short-term interruptino of use is not “abandonment” of the trademeark if the owner has an intent to resume use. Abandonment occurs when use is discontinued without any intention of resuming use. Under federal law (the Lanham Act), three consecutive years of nonuse creates a rebuttable presumption of trademark abandonment. In other words, three consecutive years of nonuse is sufficient to establish a prima facie case of trademark abandonment. This shitfts the burden of proof to the trademark owner to prove intent to resume use.

The presumption of abandonment that arises from three consecutive years of nonuse requires proof of intent to resume use, but simply asserting an intention to resume use at some indefinite time in the future probably will not be enough to overcome the presumption. The presumption may be overcome by providing valid reasons for the nonuse (illness, business hardship, etc.) and a concrete, specific plan to resume use in the near future. 

Possibly. failure to enforce trademark righs does not automatically invalidate the trademark. but allowing infringing uses can dilute the distinctiveness of a trademark or lead to it becoming generic. To remain viable as a trademark, it must operate to distinguish a product or service from one source from identical or similar goods and services from a different source. If you allow your trademark to be used on competiting goods or services, it may cease to operate as an identifier of your product or service that distinguishes it from those from another source. If a trademark no longer meets the criteria for a valid trademark, including distinctiveness and unlikelihood of confusion, then it will no longer be an enforceable trademark. 

Failing to enforce trademark rights can result in other kinds of legal disadvantages, too. If you wait too long to file, an applicable statute of limitations may bar the claim. Even if the statute of limjitatoins has not expired yet, a claim might be time-barred by the equitable doctirine of laches. And regardless of the timeframe, failing to object to infringement reasonably promptly after learning of it will put a trademark owner at risk of being barred from proceeding with a claim by an application of the equitable defenses of waiver or acquiescence. 

An assignment transfers ownership of the trademark to another. A trademark license authorizes a person other than the trademark owner to make use of a trademark. A licenset does not transfer ownership of the trademark to the licensee. 

An exclusive license transfers the exclusive right to use to trademark. A non-exclusive license does not.In both cases, the trademark owner retains ownership of the trademark.

Yes. 

While recordation of a trademark assignment is not mandatory, it is strongly recommended because it puts potential users and acquires of interests and rights in the trademark on notice of the identity of the new owner. This can prevent, and help resolve, disputes over the validity of the claims of subsequent purchasers and licensees.If the trademark is federally registered, the benefits of federal registration can be lost or severely diminished by failing to record a transfer of ownerhip with the USPTO. While an unrecorded transfer may be valid and enforceable betwen the parties, failing to record an assignment within three months can make the assignment void against subsequent purchaers for value who did not have notice of the transfer. Y

Naked licensing is the licensing of a trademark without retaining and exercising control over the quality of the goods or services produced or provided by the licensee. A license agreement that does not contain quality control provisions is at risk of being a naked licensing arrangement.

Here are some examples of naked licensing:

• A trademark owner licenses it to a manufactuer but does not review the products, allowing the licnesee to use it on shoddy, inferior goods.
• A contract grants a license to use the trademark to one of the parties but fails to include quality standards of guidelines.
• A franchisor licenses its trademark to the franchisee but fails to inspect the franchisee’s location and operations.
• A trandemark owner allows another person to use the trademark without any contract specifying how the mark is displayed or used.

Yes. Trademark rights can be lost through naked licensing. If a trademark owner fails to exercise reasonable control over the license’s products or services, the trademark may cease to function as an accurate identifier of the source of the product or services. The purpose of a trademark is to inform consumers about the source of a product or service. Consumers rely on them in making purchase decisions. They develop an understanding of the nature and qualify of a product or service that is marketed under a particular brand name. Naked licensing essentially results in making the licensee rather than the trademark owner the true source of a product or service. Trademark laws are not only intended to protected the rights and interests of trademark owners. They are also intended to protect consumers from being miled about the nature, quality or source of a product or service. Because naked licensing amounts to giving up control over the nature or quality of the product or service marketed under the trademark, naked licensing can result in a finding that the trademark owner has abandoned the trademark. The USPTO or a court may cancel a trademark if it findgs that the trademark owner has abandoned it through naked licensing.

An assignment in gross is a transfer of a business’s trademark without also transferring the goodwill of the business. 

For the purposes of trademark law, “goodwill” refers to the inherent value and name recognition assiciated with a trademark.

An assignment in gross is not valid. Worse, it will cause the trademark to be deemed abandoned. This means the assignee does not acquire trademark rights and the assignor (trademark owner) loses them. The priority date of the trademark is also lost. These are drastic consequences, but they are deemed necessary to prevent consumer confusion. The assignment in gross doctrine helps ensure that a trademark, serving as a source identifer, continues to represent the same goods or services with which consumers associate it.

What this means is that to have a valid trademark assignment, the trademark must be assigned along with other brand assets and the assignee must produce substantially similar goods or services to the ones the assignor marketed under the trademark. If, for example, Sony sells its trademark to Eddie Johnson and Eddie proceeds to use the trademark SONY to market street tacos that he prepares in his RV in his spare time, the transfer would be an invalid assignment in gross. This is because the goodwill associated with Sony electronic products does not carry over to street tacos. The assignee must use the trademark on substantilly similar goods or services for the transfer to be valid. 

Yes. A trademark may be transferred at any time. It may be transferred before an applicatoin for regsitratoin is filed, while an application is pending, or after registration. If the transfer occurs after filing an Intent-to-Use applicatoni, then it may be necessary to wait until an Amendment to Allege Use is filed. A trademark does not come into being until it is used in commerce, so there will be no trademark to transfer until use has occurred. 

No. Registering a trademark is optional, not mandatory. It is possible to own a valid trademark without registering it. A trademrk arises from use, not registration. Until a trademark is registered, it is called a “common law” trademark. A common law trademark may be enforced in court without registering it first. The geographic scope of a common law trademark, however, is limited to the geographic area of trade. Thus, the exclusive right to use a common law trademark that functions as a source identifier in only one state is limited to use in that state. Federally registered trademarks have nationwide protection. 

The primary benefits fo federal registration of a trademark (registration with the USPTO) are:

• Presumptively exclusive right to use the mark anywhere in the United States;
• Presumption of validity of the trademar;
• Presumption of the registratnt’s exclusive right to use the trademark in connection with the specified classes of goods and services;
• Public notice of an ownership claim in the trademark. This can deter others from adopting it as a trademark. It can also prevent spuriour claims of status as a “bona fide purchaser for value without notice.”
• Enables the owner to file trademark claims in federal courts, not just state courts.
• Can be filed with U.S. Customes and Border Protection to stop counterfeit grods from entering the United States.
• “Incontestibility.” After five years of continuous use, a registered mark can become “incontestable.”
• Basis for foreign registration. A U.S. registration can be used as a basis for securing protection in other countries.
• Facilitates registration with Amazon, Walmart and other brand registries, making it easier to take down infringing content.
• Provides a stronger foundation in domain name disputes and cybersquatting cases.
• In some (but not all) cases, it enables the recovery of treble damages and attorney fees in a lawsuit filed in federal court.
• Lends more strength and credibility to a cease-and-desist letter. 
• Entitles the registratnt to use the encircled-R symbol (®) 

No. A trademark does not have to already have been used in commerce before an applicatoin to register it may be filed with the USPTO. An applicatoin to register a trademark with the USPTO may be based on either use or intent to use the trademark in commerce. That is to say, you can apply to register a trademark even before you’ve started using it. 

A tradmark applicatoin must indicate whether the application is based on use of the mark in commerce or intent to use the mark in commerce. A use-based application must include a specimen of use. A specimen of use does not need to be included (and is not logicallky possible to include) in an intent-to-use application. It is filed later, when the applicant files a Statment of Use or Amendment to Allege Use. 

An intent-to-use trademark applicant must file a Statment of Use or Amendment to ALlege Use within six (6) months of the mailing date of the Notice of Alloawnace. If more time is needed, a six-month extension may be granted. Up to 5 consecutive 6-month extensions may be requested. This means that the absolute maximum amount of time to file a Statement of Use is a total of three years from the Notice of Allowance date. A Request for an Extenion of Time must be made within the time allowed for filing the Stateent of Use. 

Here is an example that illusrates how exetnsions operate: If the Notice of Allowance issues on January 1, 2026, then the applicant has six months from January 1, 2026 to file a Statement of Use or an Amendment to Allege Use. During those six months, the applicant must either make the required filing or obtain an Extension of Time. Failing to do so may result in the applicatoin being deemed abandoned, and it will be necessary to start the applicatoni process from scratch. If, on the other hand, the applicant tiimely requests an extention within the 6-month period, and it is granted, then the applicatn has another six months in which to either file the Statement of Use or request another extension. If neither one of those things is done, then the trademark application may be deemed abandoned, and the applicant wil lneed to begin agaiin from scratch. And so on.

A Statement of Use and an Amendment to Allege Use accomplish the same objective: notifying the USPTO that an intent-to-use applicant is now in compliance with the “use in commerce” requirement for a valid trademark. The difference is in when the filing occurs. An Amendment to Allege Use can only be filed betwen the date the application is filed and the date the examining attorney approves the mark for publication. If the applicant misses that window, then s/he must wait until after Notice of Allowance is issued and file a Statement of Use. Neither an Amendment to Allege Use nor a Statement of Use may be filed in the period between the time an application is approved for publication and the the Notice of Allowance is issued. 

The essential elements of a federal trademark applicatoni are:

• Completed applicatoin form;
• Specimen of Use; and
• Filing fee.

Diepnding on the circumstances, additional information or documents may be needed. For eaxmple, if you are applying to register a trademark in a foreign word or phrase, you must file an English translation of it. If your mark includes non-Latin characters, you must provide a transliteration (spelling out the characters in Latin characters.) Your applicatoin almost must include a statment explaining if the foreign word or phrase has a specific meaning in English or a statement that it has no meaning if that is the case. If you are using a person’s name, image, voice or likeness in a trademark, then you will need to file the person’s written consent to the use. There may be other statements or documents that may be necessary to file, depending on the circumstances.

A specimen of use is a sample shwoing how the mark is being used in commrece as a tardemark. It might include a photograph of a product tag or a screenshot of a web page where a service is being sold. 

The filing fee for a paper application to register a trademark with the USPTO is 850.00 per class. 

This is in addition to any fees an attorney chages for his services. 

The base application fee to apply to register a trademark with the USPTO electronically is $350.00 per class. 

These fees are in addition to the fee an attorney charges for his services. 

Additional fees are charged if you provide insufficient informatoin in your application.

There is also an extra $200 charge if you use the free-form text box instead of the Trademark ID Manual to identify goods and services.

If you use the free-form text box instead of the Trademark ID Manual, you are allowed up to 1,000 characters. Each additional group of 1,000 characters will cost you an $200 per affected class.  

In addition to basic and additonal USPTO filing fee, an attorney will normally require the payment of a fee for his services. 

If you file an applicatoin to register a trademark with the USPTO based on intent to use rather than use, it will be necessary to pay an additional $150 fee per class to file a Statement of Use or an Amandment to Allege Use

A request for an exension of time to file a Statement of Use requires the payment of an additonal fee of $125 per class. 

A request to divide an application requires the paymnet of $100 per new application creqated.

A request for an extension of time to file a response toa pre-registration Office Action requires payment of a $125 fee.

Yes. A citizen of a country other than the United States may register a trdemark with the USPTO, as may a foreign corporation or business. They must use a U.S.-licensed attorney, though.

An Office Action is a communicatoin from the USPTO, normally from the Trademark Examiner that has been assigned to your application. It can address a wide variety of matters related to an application, from minor errors to a problem serious enough to prevent the registration of your trademark. The appropriate response to an Office Action will vary depending on the naure of the Office Action and all the facts and circumstances in your case. Because the failure to timely respond to an Office Action can result in a deermination that you have abandoned the applicatoin (and therefore denial of registration), it is important to take them seriously and repond to them promptly. If you have not engaged the services of a competent attorney to file and prosecuet an applicaion for registration already, it can be a very good idea to retain one if you receive an Office Action. 

The time it takes for the USPTO to process a trademark application can vary significantly. The time frame usually ranges from 6 to 12 months. Office actions and oppositions can lengthen the proceesing time considerably. 

A trademark registration can last forever, in theory, if the maintenance requirments are satisified and the USPTO or a court does not cancel it. Put another way, a trademark registration ensures until the earlier of: (a) failure to timely renew or comly with a filing requirment; (b) cancellation of the registration by the USPTO; or (3) cancellation of the trademark or the registration by a court. 

To keep a trademark registration in force, and avoild a finding of abandonment, the trademark owner must file the necessary renewal documents. Renewal documents must be filed betwen the 5th and 6th year after registration, between the 9th and 10th year, and every 10 years thereafter. Renewal requires the payment of filing fees. 

There is a 6-month grace period after a trademark renewal deadline is missed, but extra fees must be paid.

Yes. The USPTO can cencel a registration for a particular class of goods or services while leavin the registration intact for another class or classes of goods or services. The Trademark Modernizatoin Act allows the USPTO to expunge or reexamine specific classes of claimed use that lack evidence of actual and continuing use in commerce. The registrant may also voluntarily surrender particular classes if the trademark was never used, or is no longer being used, for those classes of goods or services. If the mark was never used for that class, the proceeding is called “expungement.” If it is no longer being used, or not in use by the required date, it is called “reexaminatoin.” Alternatively, a petition to cancel may be filed by the USPTO or an interested party with the Trademark Trial and Appeal Board (TTAB) to challenge a registration on the grounds of non-use or abandonment for specific class(es). Cancellation may be of the entire registration or it may be a partial cancellation applicable only to a particular class or classes of goods or services. Non-use is not the only grounds for cancellation. Genericide, loss of distinctiveness, and likelihood of confusion as to a particular class of goods or services may also furnish grounds for cancellation. 

Trademark infringement is the unauthorized use of a trademark in a way that is likely to confuse consumers about the source of a product or service. It occurs when an identical or similar mark is used to market identical, similar or related goods or services. The core elements of an infringment claim is likelihood of confusing consumers about the source of a product or service. 

Courts consider a variety of factors to determine whether a likelihood of confusion exists. Similarity of the marks and the similarity or relatedness of the goods or services are the most important factors. Courts also look at things lke the similarity of marketing channels, the strength (distinctiveness) of the original mark, intent to deceive, actual confusion, the level of sophistication of the target market, likelihood that a party might expend into each other’s product lines and markets, among other things. No single factor is decisive.

Remedies for trademark infringement can include:

• Injunction;
• Monetary damages;
• Disgorgement of profits;
• Impoundmnet and/or destruction of infringing goods;
• Attorney fees and costs.

Monetary damages may be actual damages or statutory damages. If the infringement was in bad faith (willful), treble damage may be awarded. 

Trademark dilution is the weaking of the distinctiveness of a trademark. 

Dilution by blurring occurs when the distinctivess of a mark is reduced. This can occur when a person uses a famous mark to marker different, unrelated goods or services. Example: Using ROLEX as a trademark for restaurant services. 

Dilution by tarnishment occurs when a person uses another person’s trademark without permission for different, unrelated goods or services, in a way that damages the repuation, by linking the mark to inferior or unsavory products or service. Example: Using the Barney the Dinosaur character to market sex toys. 

No. It is not necessary to prove likelihood of confusion in order to prevail on a trademark dilution claim. 

The principal remedy for trademark dilution is an injunction. Historically, that was the only remedy available for dilution. Under the Trademark Dilution Revision Act, monetary damages may be available, but only if the defendant willfully intended to trade on the owner’s reputation . 

Fair use is a potential defense to trademark infringement, in some cases. It does not have the same meaning, and it is not assessed in the say way, as copyright fair use.

The two kinds of trademark fair use are (a) descriptive; and (b) nominative.

“Descriptive fair use” means the use of a word or phrase to describe your product or service, not as a source identifer. Foe example, a seller of pillows may use the word “soft” to describe them even if someone else is using SOFT as a trademark for pillows. In this example, saying, “Our company’s pillows are soft” would be fair use because in this context the word is being used as an adjective, not as a source identifier. The company probably could not invoke the fair use defense,however, if it were to affix “Soft Pillow” labels to them, if another company is using SOFT as a trademark for pillows. 

Nominative fair use, in trademark law, refers to the use of another person’s trademark solely for the purpose of referring to the products marketed under the trademark, not as an identfier of the source of one’s own products or services. Using another company’s trademark in this way is not likely to confuse consumers about the source of a product or service. Referring to a competitor’s product in comparative advertising is an example of nominative fair use.

Parody generally is allowed as nominative fair use, provided the use is not misleading. Reviews, commentaries and parodies are usually nominative fair use. Again though, the question is likelihood of confusion as to the source of a product or service.

No. Nominative fair use does not apply if another person’s trademark is mentioned for the purpose of falsely stating or suggesting that the owner of the other trademark endorses another company’s product or service. It also cannot be invoked as a defense against falsely stating or suggesting an affiliatoin between the trademark owner and another company or its products or services. For example, saying that the Trump Organization endorces your company’s cryptocurrency products would be nominative use of the TRUMP trademark. You do not get the benefit of the nominative fair use defense, however, if the statemetn that the products are endorsed by the Trump Organization is false. 

No. A false or misleading representation or suggestion of endorsement, sponsorship or affiliation is not fair use. This is why websites that mention other companies or their tratemearks often include disclaimers of endorsement, sponsorhip and affiliation.

A trademark search is a check to see if a particular brand name, logo, slogan or other source identifier is already being used as a trademark. It is typically conduct prior to applying to register a trademark, to ensure it is not confusingly similar to another one. 

Trademark searches are conducted to ensure that a brand or proposed trademark is not confusingly similar to an existing one. Ideally, a trademark search should be conducted prior to investing in developing a brand, or spending money on marketing and legal fees. A competently conducted trademark search can also reduce the risk of a cease-and-desist letter and liability for trademark infringement. 

A “knock-out” search is a quick, preliminary search of the USPTO’s database for exact matches, to eliminate obvious conflicts. 

A federl trademark search (also called a “USPTO search”) is a search of the United States Patent and Trademark Office (USPTO) database. The USPTO provides serach tools that facilitate searching its database for conflicting or potentially conficting marks. 

The database includes federally registered trademarks (both the Principal and Supplemental Registers), trademarks for which federal registration was applied, and trademarks that were federally registered at one time but no longer are. Common law trademarks for which federal registration has never been sought are not in the USPTO database. A search for such common law trademarks must be performed in other ways. 

A “live” trademark registratoiln is one that is active (on either the Principal or Supplemental Register), or pending (one that has been applied for and is in the process of undergoing examination.) A “dead” trademark registration or applicatoin for registration that has been abandoned, withdrawn, or cancelled. The distinction is important because the USPTO will only deny registration of marks that are confusingly similar to a “live” mark. Confusing similarity to a “dead” mark will not prevent registration. 

It is important to understand that the USPTO’s classification of a registration or applicatoin for registration as “dead” does not mean that the trademark does not exist. A trademark listed as “dead” in the USPTO database may nevertheless be valid and enforceable as a common law trademark. Makinjg that determination will require research using resources external to the USPTO. 

A commn law trademark search is a search for trademarks that are not federally registered.

A comprehensive trademark serach if one that is intended to discover conflicting and potentially conflicting trademarks of any kind, including both federally registered marks and common law marks. In includes both a USPTO search and a common law search. Sources searched include:

• USPTO database;
• State trademark databases;
• business directgories;
• trade journals;
• social media;
• The Internet (such as by performing a Google search). 

A “comprehensive federal search” or “comprehensive USPTO search” checks only the USPTO database but uses advanced search methods to detect similar, potnetially conflictin marks beyond what would be uncovered in a “knock-out” search.

Yes. In April, 2026, the USPTO rolled out USPTO Image Search, an AI-powered search engine that searches for images similar to the one the user uploades. This tools is intended to supplement, not replace,, the traditional image search method using design codes and descriptive word searches. Combining methods ensures more comprehensive search results. As with any USPTO trademark search, the search is limited to trademarks that are in the USPTO database. 

Historically, the only ways to search for logos and images (as distinguished from standard character marks) was to search within the Description field of a trademark record and/or to use design codes. Design codes are numerical values that the USPTO has assigned to particular kinds of images and subsets of images. They are found in the USPTO’s Trdemark Design Search Code Manual, In April, 2026, the USPTO enabled AI-assisted image searching to users who have established an account with the USPTO and are logged into it. To access it from the USPTO’s trademark search page, you click on the camera icon at the right end of the Search bar. Clicking on the camera icon will cause a popup to display. There, you can either upload an image or paste an image URL. The system will then use artificial interlligence to search for images in the USPTO’s database that are similar to the one you’ve uploaded or to which you have pasted a link.

basic information about the status of a registration or application (live vs. dead) is displayed in the results of a federal trademark search. More detailed information about the status of a trademark registration or application for registration can be obtainedd using the USPTO’s Trademark Status & Document Retrieval (TSDR) system. You can search TSDR by serial number, registration number, international registration number, or reference number.