Are All Trademark Names Legally Protected?

By River Braun, J.D.

Are All Trademark Names Legally Protected?

By River Braun, J.D.

Not every name, word, symbol, or device is protected under trademark law. Trademark law only protects qualifying marks. A mark can consist of a descriptive brand, company name, logo, title, and/or slogan. In some cases, a trademark may even consist of a color, sound, scent, or trade dress (a product's visual appearance or packaging).

Person using desktop computer with the word "trademark" displayed on the screen

The purpose behind trademark law is to protect consumers from confusing uses of a mark in commerce by someone other than the trademark owner. Trademarks are protected under both federal and state law.

Qualification for Trademark Protection

To qualify for trademark protection, a mark must distinguish the source of the trademark owner's goods and services from those of competitors. In other words, consumers must be able to distinguish your products from another seller's products through the mark.

For example, Nike has a number of protectable trademarks including the company name "Nike," the Nike "swoosh" sign, and the phrase "Just Do It." These marks are distinctive, or capable of distinguishing the trademark owner's goods and services, because they identify shoes and athletic wear that Nike makes as distinct from shoes and athletic wear that other companies make.

To qualify for trademark protection, a mark must also be in use in commerce. For goods, the mark should be shown on the goods or their containers, on product tags or labels, or documents or webpages associated with the goods. For services, the mark should be shown on materials used to advertise or sell the service, such as webpages, brochures, and billboards. The mark should be visible when a consumer is purchasing or considering purchasing a good or service.

If your mark is not yet in use, you can seek certain trademark protections by filing an "intent to use" trademark application to protect your mark while developing your products or services.

Marks Not Protected Under Trademark Law

Examples of marks that are not protectable under trademark law include:

  • Marks that are likely to be confused with another existing registered mark. This may occur if your mark is too similar to another mark and consumers would mistakenly believe your goods and the other mark's goods come from the same source.
  • Marks that are deceptive. For example, the mark "SILKEASE" was found deceptive as used for clothing that was not made of silk.
  • Marks that disparage or falsely suggest a connection with a person, institution, belief, or symbol.
  • Names, likenesses, and signatures that identify living persons without their consent.
  • Generic marks, or marks that are merely descriptive of the good or service, such as the mark "APPLE" registered for apples.
  • Certain regional or geographically descriptive names.
  • Marks that merely consist of a surname, such as "SMITH'S."

Additionally, even if your mark initially meets the requirements for registration, your mark will lose its trademark protections if it is not maintained through actual use in commerce. This nonuse of a mark may result in abandonment of the mark. You may also lose your rights in a mark through misuse or if you fail to take appropriate action against third-party infringers.

Trademark Registration

If your mark qualifies under the requirements of trademark law outlined above, you do not necessarily have to register your trademark to use or protect it. Your mark is protectable solely by nature of your use of the mark in commerce.

However, registering your mark is a good idea because registering with the United States Patent and Trademark Office affords trademark owners additional protections against unauthorized uses, and it is easier to protect marks registered through the office. Additionally, it is a good idea to register your mark early to put others on notice and prevent subsequent users from attempting to use your mark.

Federal registration is valid for 10 years with the option to renew for additional 10 year periods. You can complete the registration application yourself or have an attorney or online service provider register your trademark for you.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.