Reasons to Register a Trademark at the USPTO – Part 1

What is a trademark?

A trademark in the United States is a plain word for a brand name, a slogan, a logo, a sound, a color, a scent, a trade dress, (two-dimensional packaging, labeling, and three-dimensional packaging), a cattle brand, and certification marks or any other similar device.  Trademark rights vest in the owner when the mark is cast into the stream of commerce.  This occurs when the product bearing the mark is advertised for sale or is sold within the United States. Trademarks do not have to be registered to be protected, however federal registration offers key advantages, and generally reduces all costs associated with defending or enforcing the mark.  The owner of a federal trademark certificate enjoys the following advantages.

  • Offers the legal presumption of ownership and authority to use the mark, thereby eliminating the need to spend lots of money producing evidence of ownership and authority;
  • Locks in a priority date of first use as stated in a registration certificate, which asserts prior use rights;
  • Allows easier access to federal courts to enforce marks;
  • Provides a streamlined process for registering a trademark in other countries through the Madrid Protocol that covers 124 different countries; 
  • Delivers statutory damages for willful counterfeit marks ranging from $1,000-$200,000 per counterfeit mark; 
  • Specifies that federal court damages may amount to treble (x3) damages, attorneys fees, court costs, and monetary value of lost profits, unlawful gains, or the fair market value of a license;
  • Facilitates easier enforcement when taking down domain name squatters when filing complaints under the Uniform Domain-Name Dispute-Resolution Policy;
  • Puts the world on notice that an owner owns this brand associated with specific products of goods and services;
  • Affords streamlined social media takedown complaints for trademark infringement;
  • Prevents federal registrations of confusingly similar marks that would lead to consumer confusion about the source of the product;
  • Solidifies the existence of a brand to outside venture capitalists and investors, who will be relieved that they are not investing in a company that will be sued or need to sue for trademark infringement;
  • Increases the goodwill associated with the brand, notoriety, and well-known status in the lens of trademark offices in other countries where you are yet to register;
  • Possible designation as a well-known mark offers advantages when canceling or nullifying mark registrations owned by trademark squatters in other countries;
  • Develops brand exclusivity nationally and internationally on e-commerce sales platforms.
  • Secures monies invested in promoting and marketing the product;
  • Alleviates the possibility of forced rebranding because of a third party’s prior trademark registrations with the USPTO;
  • Supports registration with Customs and Border Protection at each USA point of entry to prevent counterfeit products from importation to and exportation from the USA

 

Federal or state registration?

Trademarks can be registered at the state and federal level with the secretary of state where the mark is used or the United States Patent and Trademark Office (USPTO), respectively. Federal trademarks offer nationwide protection, whereas state marks offer state-level protection. Federal marks are stronger, however, when combined with a state mark registration, in unison they both wield more power together than when alone.  State mark registrations can be pivotal when asserting jurisdiction in a particular court, state mark registrations offer some, but limited, value when asserting prior use of a mark in USPTO trademark application prosecution or in an action in front of the USPTO Trademark Trials and Appeals Board (“TTAB”). However, if the choice is between federal and state trademark registration, federal is superior and the only real option in a world with the internet.

Is my product a good or a service?

Trademarks come in two varieties— trademarks and service marks. “TM” is the abbreviation for an unregistered federal trademark, whereas “SM” is the abbreviation for an unregistered federal service mark. Only registered federal trademarks can bear the ® symbol, whereas state registration cannot. An example of a good would be a hamburger, and an example of a service would be food preparation. This example highlights that a restaurateur would need multiple trademarks and service marks for maximum protection. Many other businesses sell both goods and services; there are 45 distinct classifications for both:  35 for goods, and 10 for services.  Many times, goods and services are patently distinguishable by the naked eye; however, some products are blurred as to whether they are goods or services, and ultimately their designation as to goods or services depends on how complete the product is when sold.

For example a social media influencer’s products of prerecorded downloadable media is classified as a good, whereas live streaming online content, or providing non-downloadable media online, would both be considered services. Specific industries need to take affirmative steps to ensure that their brands are protected, below is a list of common professions and industries that require comprehensive copyright and trademark portfolios.  Below only discusses commonly registered trademarks for goods in services in specific industries.

Stay tuned for Part 2 of Trademarks where we discuss what does actual use and use in commerce mean in US trademark law?  And Part 3 of Trademarks which will discuss why any logo or stylized trademark should also have a copyright registration application filed concurrently or prior to filing a trademark registration application.

Industry Specific Marks

Industry

Goods

Services

Restaurateur

Food items, signature cocktails, premade sauces, signature dishes, signature beverages, prepacked food, ready-made food, 

Restaurateur services, staff training, restaurateur consulting, food menu design for others, education services, food critic services, food preparation services

Social Media Influencer

Downloadable media

Live media broadcasts, non-downloadable media online, product critic services, training, and educational services, marketing and promoting brands owned by others, public relations services, brand ambassador services, 

Professional Athlete

Apparel, sports equipment, shoes, video games, sports drinks, health, wellness and beauty products, educational videos, 

Live broadcasts online, radio or television, training camps, sports competitions, signature moves 

Singer, Musician, DJ, Music Producer, Radio Personality

Prerecorded performances, prerecorded non downloadable media, books of lyrics, apparel, alcohol, cannabis accessories, vape products, books

Entertainment services, song writing, live performances, philanthropy services, training services, ringtones, video games, streaming media, retail sale of prerecorded media.

Actor, Screenwriter, Producer, Set Design

Prefabricated sets, completed scripts, prerecorded downloadable media, books, 

Entertainment services, script drafting, editing, set design, educational training, live performances, philanthropy services, video games, board games

Designers

Premade designs such as logos, apparel, shoes, jewelry, furniture, architectural blueprints, 

Graphic design services, design services, custom furniture design and manufacture, architecture services, car design, apparel design, landscape design and irrigation system design

Ranchers

Brands for livestock, processed and unprocessed vegetables, fruit, nuts, livestock meat, 

Husbandry services, breeding services, animal training, livestock and agricultural training and education services, meat and poultry processing

Professional Service Providers

Completed information packets, books, guides manuals, 

Accounting, legal, journalist, engineer,  admissions counseling, psychotherapy counseling services, speech pathologist services, mechanic services, plumbing services, snow removal services, electrician services, training services, event planning, chauffeur services, personal security services, bodyguard services

Healthcare

Medical devices, medicine, healthcare booklets, health & beauty products, 

Hospital, clinic and hospice service, emergency care, medical education services, services, medical imaging services

Professional Associations

Training manuals, office supplies, office furniture, online newsletters, 

Continuing education, training, certifications within the association, retreats, event planning, collective mark as members