Commonly Asked Trademark Questions

Below is a list of commonly asked trademark and copyright questions and their answers:

Does Obtaining a Corporation or LLC Name with the Minnesota Secretary of State Mean I also Have a Trademark for that Name?

No. In order to obtain any type of common law trademark protection (federal protection requires filing for a trademark), you must actually use the mark in with your goods or services.

Do I Have Trademark Protection Once I Start Using My Mark with My Goods and Services?

Yes. Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow a common law user to successfully challenge an alleged infringing mark.

What Do I Have to Do to Get Federal Trademark Protection?

Once you have a mark selected you should do investigation to see if the mark you have chosen will potentially infringe on another’s mark. If you do not believe there will be a “likelihood of confusion” (the standard to determine if a mark is infringing on another mark, see Number 7, below), then you can proceed with a federal application through the United States Patent and Trademark Office.

What if I Do Not Want to Use My Trademark Yet, But Want to “Reserve” It for the Future?

This can be done if you file what is called an “Intent to Use Application.” After an Intent to Use Application is filed, the applicant must submit a statement of use within six months of that date showing using of the mark in commerce (you can also request an extension).

If I Obtain Federal Registration, Does that Protect My Mark Outside the United States?

No. However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.

When Can I Use the ® Symbol?

You can use the ® symbol can only be used after the mark is federally registered and NOT during the application process. Further, it can only be used in connection with the goods or services you identified in your federal registration and only while the registration is still “alive” (registrations can expire).

If My Mark is Not Identical to Someone Else’s, Can I Still Be Liable for Trademark Infringement?

Yes. The standard for trademark infringement is “likelihood of confusion,” not whether the marks are identical. To determine if a likelihood of confusion exists, a court weighs the following factors:

  1. the strength of the mark
  2. the proximity of the goods
  3. the similarity of the marks
  4. evidence of actual confusion
  5. marketing channels used
  6. the type of goods and the degree of care likely to be exercised by the purchaser
  7. defendant’s intent in selecting the mark
  8. likelihood of expansion of the product lines

Can I Assign My Federal Trademark Rights to Someone Else?

Yes. An assignment can be recorded for a fee. Note: there are some restrictions with Intent to Use Applications.


This article was written by Maureen A. Carlson.

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