A trademark is used to distinguish products or services from a particular source and distinguishes that particular brand from competitors. A trademark indicates the source of goods to a consumer, even if that source is initially unknown. For example, while shopping for a new shirt, a consumer may choose a shirt to their liking, but may not initially know the manufacturer. Upon closer examination of the shirt, a hang tag or printing inside the collar can identify the source of the shirt, e.g., Ralph Lauren.

Trademarks can be in the form of words (Sony, Pepsi), names (Hugo Boss), phrases (“Just Do It”), symbols (Target bulls-eye logo), designs (Coca-Cola bottle (also known as trade dress)) or any combination of the above. A trademark can be associated with goods such as Nike sneakers or services such as Burger King for restaurant services. The strongest trademarks are those that are arbitrary when used in association with goods or services. By way of example, the trademark Apple for computers would be considered arbitrary since the term has no relationship to the goods. Other strong trademarks are those that are made up words such as Xerox for photocopiers or Kodak for film. Generic terms can never become a trademark since it is the commonly used word to describe those products and cannot be associated with a single source for such goods.

Once a trademark is used in commerce in association with particular goods and/or services, the user begins to establish rights. In the U.S., a federal registration is not required to establish rights in a trademark. Rather, “common law” rights arise from actual use of the trademark. Prior to use, rights can also be established by filing an application in the U.S. Trademark Office along with a good faith intent to use the mark.

The first party to establish trademark rights through use of the trademark in commerce or by filing an application in the U.S. Trademark Office has superior rights over subsequent users of the trademark. The rightful owner of a trademark has the exclusive right to use a mark and can stop subsequent users from using the same or similar trademark that would be likely to lead to confusion among customers regarding the source of the goods and/or services associated with the trademark.

Trademarks are often identified with either a ™  symbol or an ® symbol. The ™ symbol is used by trademark owners who do not own a federal registration for their trademark. The ™ symbol places others on notice that the owner is claiming trademark rights. The ® symbol is only to be used once a trademark owner has been granted a federal registration issued by the U.S. Trademark Office. The ® symbol provides notice to others that the particular trademark is a federally registered trademark.

Having a registered federal trademark can help a business protect its brand from competitors attempting to trade off on the good will of the brand. Federal registration of a trademark provides broader, nationwide rights and protection when compared to unregistered trademarks. Thus, if you have a brand which is growing in popularity, filing for a federal registration is recommended.

Originally Published 31 August 2022

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.