by John Kharouf
What is a Trademark and the Three Types of Protection?
A trademark protects words, phrases, names, sounds, logos, symbols, designs, or a combination of these elements used to identify or distinguish the goods and services of one company or individual from that of another. Trademarks should not be confused with copyrights. Copyright protects original artistic and literary works like music, books, art, poems, etc. Trademarks are associated with the goods or services in commerce. There are three types of trademark protection: trademarks registered at either the federal or state level, or sometimes registered in both, and common law trademarks. There are advantages and disadvantages associated with federal and state trademark registration.
What is a Common Law Trademark?
Common law trademarks exist as trademarks with limited protection through usage, or being used in commerce. These marks are not registered and are not governed by statute. Common law rights may allow the trademark user to challenge competing registered trademarks or the applications of such trademarks. Common law marks have limited protection in the geographic area where they are in use, similar to a state trademark. Because these marks are not registered, they contribute to the difficulty and high cost in performing a thorough search for competing marks as required for registering a state or federal mark.
What is a State Registered Trademark?
Registering a trademark with the state provides protection for that mark only within that specific state. State trademarks offer less protection geographically than a federal trademark. However, state trademarks may be the better option for small or local businesses that operate in only one state and have no intention of operating across state lines. Registering for a state trademark is considerably simpler, faster, and less expensive than registering for a federal trademark. The benefits to state registration is that it can establish prior use of a mark should a conflict with another mark arise either within or outside the state where it is registered. Minnesota trademarks are subject to MN Stat. 333.
What is a Federally Registered Trademark?
Registering a trademark federally with the United States Patent and Trademark Office (USPTO) will protect the mark nationally in all states. Businesses conducting interstate commerce may find a federal trademark more useful than a state registered mark so to protect their trademark in any state their business operates in. Federal trademark registration can take 10-16 months and is more expensive and complex than state trademark registration.
Federal trademark protection is retroactive to the filing date of the trademark application upon final approval and registration. In the event you have not begun, using your mark in commerce as required for final registration you may simply file an intent to use trademark application. This designation allows a business to ensure retroactive protection for a mark they will begin to use in the next two years. It simply requires submission of an amendment to the application once the mark is in actual use.
How can I Register a Trademark?
The process for registering a trademark, which can be done by any person or business, is relatively the same for both levels of registration.
- Conduct a search for the same or similar marks
- Register the mark:
- At the state level with Sectary of State
- Or at the federal level with the USPTO
Because of the complexity of searching for conflicting marks, particularly common law marks, an attorney should be used in conducting the search. For any trademark registration, a search must be conducted at both the state and federal level. This is to prevent future issues that could arise should a registered state mark conflict with another registered trademark.
Who wins if there are Conflicting Marks?
Rights to a trademark can either be acquired by being first to use the mark or by being the first to register the mark. The United States allows protection of first to use because most marks starts as a common law mark. As the first user of a mark, the creator is afforded the opportunity to develop the mark. This applies to conflicting marks if the marks are on the federal level or the state level. Most countries outside of the US give rights to a particular mark to the first person to register a mark or “first to file.”
If there is an issue of conflicting marks the law generally considers who used the mark first and in what market the mark is used. If two trademarks are conflicting, each may continue to be used by the respective party only if the marks are used in different markets dealing with unrelated goods or services. If there are conflicting marks between state and federal levels, the Lanham Act provides that should a federal trademark which is used before the same or confusingly similar state trademark was registered, then the federal trademark will prevail. However, because the federal trademark has a nationwide right to use the mark, it must show the likely hood of entering the geographic market of the state trademark to prevent the state trademark from using it. Thus, the junior mark may be used so long as use of the federal mark remains outside of the market area of the junior state trademark. If the state trademark is registered before the federal trademark is first used, the state trademark has the right to maintain use in the state where it is registered.
Service Mark (SM) Symbol: Is a trademark specifically for a mark that relates to services, yet trademarks can relate to either goods or services.
Trademark (TM) Symbol: Is used to claim any trademark, even prior to registering the trademark. Registration is not required to use this symbol. However, this is the symbol used by state registered trademarks.
Copyright ® Symbol: Is placed next to valid U.S. federally registered trademarks. The federal registration process must first be successful to use this mark. This is not used for state registered trademarks.