Trademark Basics
A service mark is a trademark 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 Association ) are examples.
A certification mark is a mark that is used in commerce to verify that goods or services meet specific standards set by a certifying body. ENERGY STAR , GOOD HOUSEKEEPING SEAL OF APPROVAL, and UL LISTED are examples.
A common law trademark is a trademark that has not 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 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 consumers about the source of the product or service.
A trademark comes into being when all five of these criteria are met.
AI-generated output can serve as a trademark, even if it is entirely AI-generated. Unlike copyrights, 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 in 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, does 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 prototype models 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 product or service is actually available 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 availability of the service to the public is necessary to establish use in commerce.
A business name is not necessarily a trademark. 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 for a product or service 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 functions 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, however, use in intrastate commerce alone is not enough. There must also be use in interstate or foreign commerce.
The 5-tier distinctiveness pyramid developed by Minnesota attorney Thomas James is a conceptual and visual aid for understanding the different levels of distinctiveness a trademark may have. The five levels, from least to most distinctive, are:
- Generic
- Descriptive
- Suggestive
- Arbitrary
- Fanciful.
Generic marks are words, symbols, etc. that describe an entire category of products or services rather than identifying a particular source of a product or service. Milk, if used as a trademark for milk, is an example. It identifies a product, not the source of it. Trademark rights cannot be claimed in generic terms for a product or service. Permitting people to claim rights in a generic term would give them monopolies on those products or services. A person with an exclusive right to use the 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.
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 genericide include ASPIRIN, 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 genericide exist.
While there is nothing a trademark owner can do to guarantee that the trademark will never be lost through genericide, there are things a trademark owner can do to lessen the risk of genericide. Always using a trademark as an adjective to describe a particular brand of a product or service rather than as a noun or verb for the product or service itself can help prevent genericide. 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.
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. “International” is descriptive. It describes a quality or feature of these machines, namely, that they are marketed and/or used internationally. Descriptive marks may not be claimed as trademarks unless they have acquired distinctiveness, i.e., secondary meaning as a brand identifier.
A suggestive trademark is like a descriptive mark in that it describes a quality or feature of the product or service. The difference is that it does not do it directly. It requires an additional step in the thinking process to make the connection. JAGUAR as a brand identifier for a motor vehicle 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 jaguar!” 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.
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 similar 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 preparation services, because it would very likely confuse consumers about the source of your tax preparation 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 distinguish 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 punctuation mark, putting a circle around it, etc. is not likely to remove or lessen potential consumer confusion about the 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 it is not identical to it.
Using the same or a similar trademark for similar products or services may be likely to confuse consumers about the source of the products or services even if they are technically different kinds of products or services, so this kind of use may result in liability for trademark infringement. Likelihood of confusion may exist if similar trademarks are used to market similar products or services. For example, DOLE is currently 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 kinds of products and services. This is why DOVE can be used by one company to sell soap and other bath products , and by another company to sell chocolate , for example. Using the same or similar trademark for completely different 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 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 lead consumers to think it comes from the same company.
Example: Consumers could reasonably expect a company that sells computers to expand to 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 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 through cancellation of the registration by the USPTO. Abandonment or cancellation of the registration, however, does not necessarily terminate the trademark. 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) functions 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 discontinuation of use is abandonment. A temporary, short-term interruption of use is not “abandonment” of the trademark 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 shifts 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 may be rebutted by proof of intent to resume use. Simply asserting an intention to resume use at some indefinite time in the future, however, probably will not be enough to overcome the presumption. The presumption may be overcome by providing a valid excuse for nonuse (illness, business hardship, etc.) and a concrete, specific plan to resume use in the near future.
It is possible to lose trademark rights by failing to enforce them. Failure to enforce trademark rights 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, similar or related goods and services from a different source. If you allow your trademark to be used on competing 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 limitations has not expired yet, a claim might be time-barred by the equitable doctrine 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.
Trademark Searches
A trademark clearance 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 conducted prior to applying to register a trademark, to ensure that time and expense are not wasted trying to register a mark that is confusingly similar to an existing 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 “knockout search ” is a quick, preliminary search of the USPTO’s database for exact matches, to eliminate obvious conflicts.
A federal trademark search (also called a “USPTO search”) is a search of the United States Patent and Trademark Office (USPTO) database. The USPTO provides search tools that facilitate searching its database for potentially conflicting marks.
The USPTO trademark database includes federally registered trademarks (both the Principal and Supplemental Registers), trademarks for which federal registration has been applied, and trademarks that were formerly 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 registration or application is one that is active (on either the Principal or Supplemental Register), or pending (one that has been applied for and is undergoing examination.) A “dead” trademark registration or application for registration is one that has been abandoned, withdrawn, or cancelled. The distinction is important because the USPTO will only deny registration of a mark if it is 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 application 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. Making that determination will require research using resources external to the USPTO
A common law trademark search is a search for trademarks that are not federally registered.
A comprehensive trademark search is one that is intended to discover conflicting and potentially conflicting trademarks of any kind, including both federally registered trademarks and common law trademarks. In includes both a USPTO search and a common law search. Sources searched include:
- USPTO database;
- State trademark databases;
- Business directories;
- Trade journals;
- Social media;
- The Internet (such as by performing a Google search).
A “comprehensive federal search” or “comprehensive USPTO search” checks the USPTO database using advanced search methods to detect potentially conflicting marks beyond what would be uncovered in a “knock-out” search.
Yes. It is possible to conduct an image trademark search without using design codes. Historically, it was necessary to use design codes and/or descriptive phrases to conduct a search for logos, designs, and other images. In April, 2026, the USPTO rolled out USPTO Image Search , an AI-powered search tool that searches for images that are similar to the one the user uploads. This tool 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 search codes (sometimes referred to as “design codes.”) Design search codes are numerical values that the USPTO has assigned to categories and subcategories of sets of kinds of images. They are found in the USPTO’s Trademark, In April, 2026, the USPTO enabled AI-assisted image searching for 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. The system uses artificial intelligence 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 obtained 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.
Trademark Registration
No. Registering a trademark is optional, not mandatory. In the United States, a trademark arises from use, not registration, so it is possible to own a valid trademark without registering it. 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 that state. Federally registered trademarks have nationwide protection.
The primary benefits of 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 trademark;
- Presumption of the registrant’s exclusive right to use the trademark in connection with 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 spurious 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. Customs and Border Protection to stop counterfeit goods from entering the United States.
- “Incontestability.” 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 lawsuits filed in federal court.
- Lends more strength and credibility to a cease-and-desist letter.
- Entitles the registrant to use the encircled-R symbol (®).
Yes. Although a registration certificate will not be issued until the trademark is in use in commerce, an application to register one with the USPTO may be filed before use begins. An application 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. Before a registration certificate will be issued, however, you will need to demonstrate that use of the trademark in commerce has begun. This is done by filing a Statement of Use or an Amendment to Allege Use with the USPTO within the applicable timeframe.
Trademark applications may be based on either use or intent to use. A trademark application 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 logically possible to include) in an intent-to-use application. It is filed later, when the applicant files a Statement of Use or Amendment to Allege Use.
An intent-to-use trademark applicant must file a Statement of Use or Amendment to Allege Use within six (6) months of the mailing date of the Notice of Allowance. If more time is needed, a six-month extension may be requested. 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 Extension of Time must be made within the time allowed for filing the Statement of Use.
Here is an example that illustrates how extensions work: 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 application being deemed abandoned, and it will be necessary to start the application process from scratch. If, on the other hand, the applicant timely requests an extension within the six-month period, and it is granted, then the applicant 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 will need to begin again from scratch.
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 between 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 Notice of Allowance is issued.
The essential elements of a federal trademark application are:
- Completed application form;
- Specimen of use; and
- Filing fee.
Depending on the circumstances, additional information or documents may be needed. For example, 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 word(s) or letter(s) in Latin character(s). Your application also must include a statement 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, 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 real-life sample showing how the mark is being used in commerce as a trademark. It might include a photograph of a product tag or a screenshot of a web page where a service is being sold. It cannot be a mock-up, digitally-altered image, artist’s rendering, etc. A specimen of use must depict actual, real-life use of the mark, such as a photograph of an actual label on an actual product.
As of April 25, 2026 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 charges for his services. Filing fees change from time to time. Check the USPTO website for current fees.
As of April 25, 2026, 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. Filing fees change from time to time, and there may be additional fees associated with an application in some circumstances. Check the USPTO website for current rates.
Additional fees are charged if you provide insufficient information in your application. There is also an extra 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 up to 1,000 characters will require the payment of additional fees.
If you file an application to register a trademark with the USPTO based on intent to use rather than use, it will be necessary to pay an additional fee per class to file a Statement of Use or an Amendment to Allege Use.
A request for an extension of time to file a Statement of Use requires the payment of an additional fee per class.
A request to divide an application requires the payment of an additional fee per new application created.
Each request for an extension of time to file a response to an Office Action requires payment of a fee.
In addition to basic and additional USPTO filing fees, an attorney normally will require the payment of a fee for his or her services.
Yes. A citizen of a country other than the United States may register a trademark with the USPTO, as may a foreign corporation or business. Foreign companies and citizens of other countries must use a U.S.-licensed attorney.
An Office Action is a communication from the USPTO, normally from the Trademark Examiner assigned to your application. It can address a wide variety of matters related to an application. These range from minor errors to a problem serious enough to prevent registration of the trademark. The appropriate response to an Office Action will vary depending on the nature 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 determination that you have abandoned the application (and therefore denial of registration), it is important to take it seriously and respond to it promptly, carefully, and intelligently. If you have not engaged the services of a competent attorney to file and prosecute an application for registration already, it can be a very good idea to retain one when 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 from the date an application is filed to the date a registration certificate is issued. Office actions and oppositions can lengthen the processing time considerably.
A trademark registration can last forever, in theory, if the maintenance requirements are satisfied and the USPTO or a court does not cancel it. Put another way, a trademark registration endures until the earlier of: (a) failure to timely renew or comply with a filing requirement; (b) cancellation of the registration by the USPTO; or (3) cancellation of the trademark or the registration by a court.
To maintain a trademark registration and avoid a finding of abandonment, the trademark owner must file the necessary renewal documents at specified intervals. Renewal documents must be filed between 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. If a trademark registration is not renewed during the required period or within the 6-month grace period, then the registration is deemed abandoned.
Yes. The USPTO can cancel a registration for a particular class or classes of goods or services while leaving the registration intact for another class or classes of goods or services. The Trademark Modernization 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 was being used at one time but is no longer being used, or is not in use by the required date, it is called reexamination.
Alternatively, a cancellation petition 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 basis 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.
Yes. A trademark may be transferred at any time. It may be transferred before an application for registration is filed, while an application is pending, or after registration. If the transfer occurs after filing an Intent-to-Use application, then it may be necessary to wait until an Amendment to Allege Use or a Statement of 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.
There is a 6-month grace period after a trademark renewal deadline is missed, but additional fees must be paid. If a trademark registration is not renewed before the deadline or during the grace period, then the registration is deemed abandoned.
Trademark Infringement and Dilution
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 a product or service that is identical, similar, or related to the product or service for which the other trademark is being used. The core element of an infringement claim is a 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 like 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 business might expand into other product lines and markets, among other things. In re duPont de Nemours is a leading case describing the kinds of things a court takes into consideration when deciding likelihood of confusion issues. No single factor is decisive.
Remedies for trademark infringement can include:
- Injunction;
- Monetary damages;
- Disgorgement of profits;
- Impoundment 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 weakening of the distinctiveness of a trademark.
Dilution by blurring occurs when the distinctiveness of a mark is reduced. This can occur when a person uses a famous mark to market 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 trademark owner’s reputation, by linking the mark to inferior or unsavory products or services. Example: Using the Barney the Dinosaur character to market sex toys.
No. It is not necessary to prove likelihood of confusion to prevail on a trademark dilution claim. The harm caused by dilution is loss of distinctiveness or damage to reputation, not consumer confusion.
The principal remedy for trademark dilution is an injunction. Historically, that was the only remedy available for dilution. Under the Trademark Dilution Revision Act of 2006, monetary damages may be available, but only if the defendant willfully intended to trade on the owner’s reputation
Trademark Fair Use
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 same way as copyright fair use .
The two kinds of trademark fair use are (a) descriptive fair use and (b) nominative fair use.
Descriptive fair use means the use of a word or phrase to describe a product or service, not as a source identifier. For example, a seller of pillows might use the word “soft” to describe them even if someone else is using SOFT as a trademark for pillows. 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 or services marketed under the trademark, not as an identifier 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 protected as nominative fair use, provided the use is not misleading. Reviews, commentaries, and parodies are usually nominative fair use. Parody might not be fair use, however, if it creates a likelihood of confusion as to the source of a product or service. In Jack Daniel’s Properties v. VIP Products , the United States Supreme Court held that if a trademark is used in parody goods as a source identifier, it may not be protected as fair use. Minnesota attorney Thomas James explains the First Amendment ramifications of this decision in “Balancing the First Amendment on Whiskey and Dog Toys ” (Cokato Copyright Attorney, May 4, 2023).
Yes. Section 43 of the federal trademark law (the Lanham Act) prohibits false or misleading representations that are “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” Section 43 is worded broadly enough to reach many forms of false or misleading advertising practices. A false statement or suggestion that a company or a person (such as a celebrity) endorses, sponsors or is associated with a company, product or service could violate the Lanham Act, whether or not it also amounts to common law trademark infringement. This kind of conduct can also give rise to state-law causes of action for unfair competition, appropriation of personality, fraud, etc.
Nominative fair use, by the way, is subject to the condition of truthfulness. For example, saying that the Trump Organization endorses 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 statement that the products are endorsed by the Trump Organization is not true.
Trademark Transfers and Licenses
Yes. Trademark ownership may be transferred and trademark rights may be licensed to others.
A trademark 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 license does not transfer ownership of the trademark to the licensee. An exclusive trademark license transfers the exclusive right to use the trademark. A non-exclusive trademark license does not. In both cases, the trademark owner retains ownership of the trademark.
While recordation of a trademark assignment is not mandatory, it is strongly recommended because it puts potential users and acquirers 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 ownership with the USPTO . While an unrecorded transfer may be valid and enforceable between the parties, failing to record an assignment within three months can make the assignment void against subsequent purchasers for value who did not have notice of the transfer.
Naked licensing is not a form of adult entertainment. It is the licensing of a trademark without 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 deemed a naked licensing arrangement.
Here are some examples of naked licensing:
- A trademark owner licenses it to a manufacturer but does not review the products, instead allowing the licensee to use it on shoddy, inferior goods.
- A contract grants a license but fails to include quality standards or guidelines.
- A franchisor licenses its trademark to the franchisee but fails to inspect the franchisee’s location and operations.
- A trademark owner allows another person to use the trademark without any contract specifying how the mark must be displayed or used.
Yes. Trademark rights can be lost through naked licensing. If a trademark owner fails to exercise reasonable control over the licensee’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 purchasing decisions. They develop an understanding of the nature and quality 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 protect the rights and interests of trademark owners. They are also intended to protect consumers from being misled 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 finds 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.
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. They are deemed necessary to prevent consumer confusion. The assignment in gross doctrine helps ensure that a trademark, serving as a source identifier, 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 cooks up 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 substantially 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 application for registration is filed, while an application is pending, or after registration. If the transfer occurs after filing an Intent-to-Use application, then it may be necessary to wait until an Amendment to Allege Use or a Statement of 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.