Trademarks are a type of intellectual property that is used to identify and distinguish one source of goods from another, and make it easier for a consumer to quickly discern who has produced a particular product or object. Both federal and state laws protect trademarks, but federal protection has expanded over the last century, preempting much of state common law. The primary law related to trademarks is federal:  the Lanham Act. Federal trademark law is derived from the Constitution’s Commerce Clause.

Trademarks are usually words, phrases, symbols, designs, or a combination of these. A consumer can quickly look at a shoe and, rather than carefully read a product sheet to figure out who produced the shoes, see a “swoosh” symbol and understand this to mean that Nike, not one of its competitors, produced the shoe.

In some cases, trademark protection extends beyond words, symbols, or phrases to include another physical aspect of a property, such as its unique shape or color. Such features can be trademarked as “trade dress.” They can only be protected if consumers associate the feature with a specific manufacturer and not with that product in general. A manufacturer cannot receive trade dress protection for a feature that gives its products a functional competitive advantage. For example, a feature that makes an object easier to hold is a functional advantage.

The mark used as your business’ trademark needs to be distinctive to be owned. There are four classes of mark with different requirements and varying degrees of legal protection:  arbitrary or fanciful marks, suggestive marks, descriptive marks, and generic marks.

How to Get the Benefit of Trademark Protection

If your trademark qualifies for protection, you can obtain rights to the trademark either by being the first person to use the mark in commerce or by being the first to register the mark with the U.S. Patent and Trademark Office (USPTO).

Using a mark in “commerce” usually means that you have sold a product to the member of the public with the mark attached to it. If you are the first to do this, you will have priority to use the mark in the geographic area where the sales take place as well as geographic areas where your business would be expected to expand or where the reputation of your mark is established. There is a variation for descriptive marks, which can only be trademarks or be registered after they acquire secondary meaning.

Registering the mark with the USPTO with the bona fide intent of using it in commerce also allows you to acquire priority in the trademark. Registering gives these advantages: notice to the public that the person or entity that registered has ownership of the mark, a legal presumption of ownership of the mark, and the exclusive right to use the mark in connection with goods or services.

You will be able to use a registered trademark around the country, even if you are selling in a small area. However, you will not be able to use it in geographic areas where it is already being used by other individuals or businesses engaged in commerce.

The Loss of Trademark Rights

Trademark owners usually need to keep close watch over their marks in order to make sure the rights are not infringed, diluted, or lost. You can lose a trademark in a variety of ways.

You can lose a mark through abandonment. A mark will be considered abandoned if you stop using it for three consecutive years and you have no intent to resume its use.

You can also lose a mark through improper licensing or improper assignment. Trademarks can also be lost if you license a trademark without specifying adequate control or supervision, or if you assign a trademark to someone else without also selling that person or entity the corresponding assets.

Some trademarks become generic as time passes. This means that most members of the public think the word means a type of product, rather than a product from a specific manufacturer. Trademarks that become generic in this way are lost due to “genericity.” For example, “aspirin” became generic over time.

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