Logo & Trademark Rules in the US

By David Carnes

The U.S. Patent and Trademark Office defines a trademark as "a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others." A logo is a distinctive graphic design element that may be included in a trademark. Trademarks are governed by both state and federal law.

Trademark Requirements

A trademark must be original, which means that it was never used previously with respect to a particular class of goods. A trademark must also be distinctive, in two ways: First, it cannot generically describe the product it represents. "Apple Computers" is sufficiently distinctive, for example, but "Apple Apples" is probably not. Second, a trademark must be sufficiently unique to distinguish it from other trademarks. Above all, a trademark must be actually used in commerce to enjoy protection.

Registration

Although you can register your trademark with the U.S. Patent and Trademark Office, you don't have to register it for protection. Without registration, however, your trademark is only valid in the geographical areas where it is actually used -- and you cannot sue for infringement in federal courts. Trademark registration, by contrast, offers nationwide protection and access to federal courts. It also notifies potential infringing parties that you claim ownership of the mark.

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Loss of Trademark Rights

Theoretically, a trademark can last forever; however, certain rules apply. To continue to protect your rights to your trademark, you must continue to use it in commerce, file an affidavit with the U.S. Patent and Trademark Office between the fifth and sixth year after registration, and pay renewal fees between the ninth and tenth year after registration and every 10 years thereafter. Even if your registration lapses, you will lose only your registration rights, not your trademark. If you stop using your trademark in commerce with an intent not to resume use, you will lose your trademark rights through abandonment. You can also lose trademark rights by licensing your trademark without restrictions.

Protecting Your Trademark

In addition to registering your trademark, you should mark your goods with the symbol "TM" (if the trademark is not registered) or "®" (only if it is registered). Marking is not a legal requirement, but it may deter infringement and help you prove that an infringement was intentional. Once you discover an infringement, you should send the infringing party a "cease and desist" letter, demanding that the party stop the infringement. This is also not a legal requirement, but if the infringement continues, it will be difficult for the infringing party to prove that the infringement wasn't intentional.

Filing a Lawsuit

If your trademark was not registered at the time of the infringement, you may file a lawsuit in a state court in the state where the infringement occurred. If it was registered, you may file a lawsuit in a federal district court in the judicial district where the infringement occurred. A state court decision is only enforceable within the state, while a federal court decision is enforceable nationwide.

Litigation

If ownership of the trademark is in dispute, the party who first used the mark in commerce will win, even if the other party registered the trademark first. If the issue is whether the defendant's use actually constituted infringement, it will depend on whether the defendant's use of the trademark could result in a likelihood of confusion in the minds of consumers between your trademarked product and the defendant's product. If your trademark is famous enough, you can win simply by showing that the defendant's use is likely to tarnish the mark's reputation.

Remedies

If you win a trademark infringement lawsuit, the court will likely issue an injunction restraining the defendant from further use of your trademark. The court is also authorized to award you the amount of damages that you can prove. If the defendant's infringement was intentional, however, the court may award you the defendant's profits if they were greater than your damages. If the defendant infringed your trademark intentionally and also took advantage of your business goodwill, the court might even award you triple damages.

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Enforcing A Trademark
 

References

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Related articles

Trademark vs. Service Mark

Trademarks and service marks serve essentially the same purpose, but there are slight differences in how they're applied and communicated to your market. Both are administered by the United States Patent and Trademark Office. This agency processes registrations for trademarks as well as service marks. Registration isn't mandatory, but it provides additional legal protection in certain situations.

Can the Owner of a Registered Trademark Be Sued for Infringement?

Trademark law is derived from common law that was intended to prohibit companies from competing in the market using unfair and unethical business practices. Trademark law prevents the unauthorized use of a mark in commerce that might cause confusion among consumers as to the true source of goods and services. It also prevents competitors from diluting the reputation and "good will" the product or service has gained with consumers. A business can sue another business for trademark infringement, even if the trademark is registered, if the business bringing suit can prove an earlier date of "first use" of the mark and that it has suffered some sort of damages as a result of the infringement.

Breach of Trademark Effects

A trademark is a brand name -- and includes any word, symbol, device, or combination thereof that distinguishes the goods or services of one owner in the marketplace. You hold exclusive rights to a trademark once you establish it in the marketplace or register it with the trademark office. Once you register your trademark, only you have the authority to use it to identify your product. If another seller uses your trademark, that person infringes on your trademark rights and breaches the trademark restrictions; you can then take legal action.

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