As a business and intellectual property attorney, one of the most common questions I get is “Can I trademark this?” And they are referring to their business name or to a design they intend to use as a logo.
The problem with the above question is, that I don’t really know what you mean when you ask me that. Are you looking for permission to use it? Are you looking to register your trademark? Are you worried about infringement? Or are you concerned about all three? In reality, you never actually “trademark” anything, and trademark protection is more complex than people realize.
According to the USPTO, a trademark can be any word, phrase, symbol, design, or combination of these things that identifies your goods or services. You don’t “trademark” these items, you use these items such that they function as source identifiers, i.e. they function as trademarks.
For your name or logo to function as a trademark, you must use it in such a way that it identifies your business as the source of the goods or services that you provide to your customers. Over the course of time, continual use of your name and logo builds consumer recognition which strengthens your trademark protection.
Common Law Trademark Rights or Federal Trademark Registration?
In the United States, once you begin using your name or logo as functioning trademarks, (which you should identify by always using the TM or SM superscript), you begin to build and strengthen your common law rights to these trademarks. Determining the strength of your common law rights to a trademark is a fact-specific analysis that substantially depends on how much consumer recognition you have established within a given geographical area. And while common law rights to a trademark can grow to be strong, having a federal registration affords better trademark protection.
Often, when people ask me the above question, I come to understand that they do mean “can I register my trademark?” As an attorney, the first thing I need to know is “are you doing (or do you intend to do) business out of state?” To qualify for federal trademark registration, you need to be doing business “in commerce” meaning that you have sales across state lines.
If you are purely a local business, then you can only rely on common law trademark rights. If you do business out of state, then receiving a federal registration gives you “exclusive nationwide use” of your trademark for the goods and services listed in your registration. While there are many factors used to determine if your federal trademark application will receive registration, the biggest concern is whether your trademark is likely to be confused with another federal registrant’s trademark. This brings me to the last topic!!
Before you begin to use anything as a trademark and whether you intended that meaning in the above question or not, you should perform, as part of your business due diligence, a trademark search to ensure that you are not infringing on anyone else’s trademark. This applies whether they have a federal registration or just common law rights. Infringement is found where there is a likelihood of confusion between a junior user’s trademark and a senior user’s trademark (the junior user is infringing the senior user’s trademark).
The Federal Circuit utilizes the 13 factors listed in the case of In re E.I. du Pont de Nemours & Co., better known as:
The Dupont Factors
(1) The similarity or dissimilarity of each trademark which includes their appearance, connotation, commercial impression, and sound.
(2) The similarity or dissimilarity of the nature of the goods or services of the newer mark in connection with which a prior mark is in use.
(3) The similarity or dissimilarity of established trade channels for each trademark in use that are likely to continue.
(4) The type of consumer that makes the purchase and the conditions under which they do so, i.e. whether the consumers are sophisticated or impulse buyers for example.
(5) The prior trademark’s level of recognition and fame — based on sales, advertising, length of use, etc.
(6) How many similar trademarks are being used on similar products? What’s their nature?
(7) The nature and extent of actual confusion.
(8) How long has concurrent use occurred without evidence of actual confusion?
(9) The variety of goods or services that use the trademark.
(10) The market interface between the two trademarks.
(11) The extent to which an applicant has exclusionary rights of the mark on its goods.
(12) The extent of any potential confusion, whether de minimis or substantial.
(13) Any other probative fact that can show there’s been an effect due to concurrent use.
As you can now see, trademark is not a verb, and whether you can build trademark protection through common law rights or federal registration involves a number of factors and fact-specific analyses.
Pittsburgh Intellectual Property Attorney
Kathleen Kuznicki works with her clients to determine their best path to trademark protection, whether through common law rights or through federal trademark registration. If you have questions about registering a trademark for your business or other intellectual property matters, please reach out to her via email at firstname.lastname@example.org or call our office at 724.776.8000.