Trademarks are used across different industries to distinguish goods and services from other goods and services. Companies and individuals can also use trademarks to help customers differentiate between competitors, such as two dry cleaners in the same area.
There are many examples of things that can serve as trademarks, including:
- Words
- Scents
- Phrases
- Symbols
- Images
- Combinations of things listed above
Identifiable trademarks can also help a company build its reputation and brand awareness among its customers. A company can also have more than one type of trademark, such as their company name, slogan, and logo.
It is also important to be aware that there are different categories of trademarks, including:
- Service marks: Companies use these to identify services.
- Collective marks: These are used to identify an organization and what they provide or who they are.
- Trade dresses: This is a unique packaging or “dress” of the goods.
- Certification marks: This informs customers that a company or product meets specific standards, for example, cruelty-free.
A registered trademark is one that has been approved as an official trademark by the United States Patent and Trademark Organization (USPTO). It is important to note that the application process may differ between service trademarks and product trademarks.
It is important to have an understanding of industry-specific trademark usage, as the same trademark name can be used in different industries. It is important for an individual to understand industry-specific trademark usage because:
- It helps consumers differentiate between goods and services
- Trademarks can indicate quality, origin, and consistency
What Are Strategies for Using Trademarks in Different Industries?
Conduct a trademark search
Before an individual or business registers a trademark, it is very important that a trademark search is conducted. This will help make sure that the trademark is not already in use and is not too similar to a trademark that already exists.
Conducting a thorough trademark search also helps avoid future issues with trademark infringement. It is possible for someone to do their own trademark search in the USPTO database but it is also important to have an attorney conduct one as well to make sure it is thorough.
This is because there may be details, tips, and nuances that someone without experience may not be aware of. There may also be common law trademarks that are not registered with the USPTO.
These can include trademarks that are created by using a service or logo in commerce but they only have limited protections. There are also other ways an individual can search for trademark use, including:
- Conducting a Google search
- For web-based businesses, searching for domain registrar names at Internet Corporation for Assigned Names and Numbers (ICANN)
- Checking the state trademarks through the Secretary of State Office
Seek legal advice
A trademark lawyer can help with any questions or issues related to trademarks, including choosing and registering a trademark. A lawyer will also be able to conduct an in-depth and thorough trademark search to help ensure the trademark will not have to be changed in the future.
This will save time and resources because the business will not have to change its name and advertising in the future if the trademark was already in use. Also, when a business uses a trademark that is the same or similar to one that already exists, they can be held liable for damages as well as the owner’s attorney’s fees.
In trademark cases, courts presume that non-registered users of trademarks were aware of the registered use of trademarks, even if they were not. Having an attorney help a business with its trademark will ensure that the trademark and the profits the business earns are protected.
Can LegalMatch Help?
Yes, LegalMatch can help with any questions or issues related to trademarks. No matter what stage a business is in related to their trademark, such as choosing, searching, or resolving a dispute, it is essential to have professional legal assistance with trademark usage across industries.
LegalMatch trademark attorneys can help with industry-specific trademark usages. Each category of trademark has its own unique requirements and protections.
A lawyer can help a business choose the proper type of trademark for their needs and industry.
Trademarks can be things other than works or two-dimensional designs, including, but not limited to:
- Sounds
- Scents
- Motions
- Video clips
- Colors
An experienced trademark attorney can assist with choosing the proper trademark for a business’ needs as well as help create a unique trademark they may not have considered. To see how LegalMatch has helped millions of clients with their legal needs, including trademark needs, see the customer testimonials.
What Are the Key Laws and Regulations Governing Trademarks?
There are laws, regulations, and agencies that govern trademarks. The Lanham Act is a federal law that protects trademarks in the United States.
The United States Patent and Trademark Office (USPTO) is the federal agency that administers trademark registration. There can also be state laws in addition to the federal laws that protect trademarks.
What Factors Determine If a Trademark Can Be Registered?
Eligibility: The USPTO uses a set of criteria known as the DuPont factors in deciding whether to register a trademark. Of course, registration gives the registered owner the exclusive right to use the registered name, slogan or symbol to identify their products and services in the marketplace.
After an individual or business applies to register a trademark, the USPTO must decide if there is a “likelihood of confusion” between the proposed trademark and other existing trademarks. The USPTO uses the DuPont factors in making this decision. Three of the 13 factors are primary as follows:
- Similarity of the Marks: This factor assesses how closely the trademark resembles other marks visually, orally, and/or in meaning or connotation. If two marks are too, then a new trademark might not be registered.
- Similarity of Goods and/or Services: If the products and/or services the mark represents are too similar, registration may be refused.
- Similarity of Trade Channels: If the trademarked products are marketed and sold in channels of business that are similar to an existing trademark, again, registration might be refused.
The USPTO does not decide on the basis of any one factor. Each factor must be considered as part of a whole case. A trademark attorney can help determine if a mark meets the criteria for registration.
What Are the Steps Involved in Registering a Trademark?
Process/Steps: The trademark registration process typically involves conducting a comprehensive search to ensure the mark is available. Next, an application is prepared and filed with the USPTO, with details about the mark and the goods/services it will represent. The USPTO assesses the proposed trademark using the DuPont factors. If the USPTO approves the mark, it is published for opposition. If no opposition is filed, it proceeds to registration.
How Long Does the Trademark Registration Process Typically Take?
Timeline: The timeline for trademark registration can vary, but it currently takes from 4 to 11 months. The USPTO filing basis for the trademark affects the time it takes. Also, whether there is opposition can affect the duration. Consulting with a trademark attorney can also provide more specific information about current processing times.
What Are the Typical Costs Associated with Registering a Trademark?
Costs/Fees: The USPTO charges a basic application filing fee for each class of goods or services in a Section 1 or Section 44 application of $350, if the application meets the base application filing requirements.
Additional fees are charged if the application does not include required information, contains custom identifications of goods or services or has lengthy identifications. Detailed information about the exact amount of possible additional charges is available on the USPTO’s website.
Additional costs may include attorney fees for conducting searches, preparing the application, and responding to USPTO inquiries. Maintenance fees are also required periodically to keep the trademark active. These costs can vary widely depending on the complexity of the case and attorney’s fees.
What Documents Are Required for a Trademark Application?
Evidence/Documents: A trademark application typically demands much detailed information about the applicant, the trademark itself (including a clear depiction), the goods or services the trademark represents and other items. The information is provided on the application. A specimen showing how the trademark is used in commerce is also usually required.
If the application does not claim standard characters as part of the mark, a digitized image of the mark must be provided.
If the applicant claims priority based on a foreign application, relevant documentation from the foreign filing is needed. Consulting with a trademark attorney can ensure that all necessary information is provided. Again, the USPTO website provides much detailed information about application requirements..
What Is Industry-Specific Trademark Usage?
Trademark classes
A trademark class is a classification that is used to:
- Organize goods and services in trademark applications
- Assess fees in trademark applications
- Search the database of pending and registered trademarks
All services and products are organized, or classified, into broad categories under the Nice Classification (NCL). Categories, or international classes, are numbered from 1 to 45.
Even though there are many different items in each class, products and services are not included in the same class. The NCL system was established by the 1957 Nice Agreement.
The Nice Agreement is an international classification of products and services that is applied to the registration of trademarks. The NCL is recognized in numerous different countries.
This makes the process for obtaining international trademarks more streamlined. The NCL system is specified by the World Intellectual Property Organization (WIPO). It is important to note that a new edition is published every five years.
Using trademarks for different products within the same class
Trademarks can be registered in more than one class, so long as it is used when selling the product or service. The trademark only has national protections in the class or classes under which it is registered.
There can also be identical trademarks in different classes as long as there will not be a likelihood of confusion among consumers. If a product falls into multiple classes, its owner can apply for a trademark in each class.
What Are the Permissible Uses of Trademarked Names for Different Industries?
Sometimes, trademarked names can be used for different products. For example, one trademarked name may be used for multiple products if the second product is in a separate class from the registered one.
Generally, trademarks are not considered to infringe upon another if the underlying service or goods does not compete and is not distributed in the same trade channels or in the same locations.
What Are Prohibited Uses and Potential Trademark Infringements?
Trademark laws are laws that are meant to help prevent consumer confusion and trademark infringement. Trademark infringement occurs when a mark is used that is confusingly similar to or the same as an already registered trademark.
The test for determining the likelihood of confusion is whether a reasonably prudent consumer would be confused by the use of similar marks on competing goods or services. If the reasonably prudent consumer would think that the two marks are affiliated, that is evidence of potential confusion.
The case, Polaroid Corp. v. Polarad Elecs. Corp., provides factors, called the Polaroid factors, that are reviewed by a federal court in order to determine the likelihood of confusion, including:
- How similar the product or services are
- The strength of the senior user’s mark
- The more distinctive or stronger it is, the more likely there will be confusion
- The similarity of the marks
- The quality of the products or services of the junior user
- The likelihood that the senior user will expand into the junior user’s product area
- The intent of the junior user when adopting the mark
- If there is any evidence of actual confusion
- The sophistication level of the purchasers
In cases where no consumer confusion occurs, there can still be trademark infringement. This category is referred to as trademark dilution, which occurs when using a trademark blurs or tarnishes the distinctiveness of an already famous trademark.
There are legal remedies available for both trademark confusion and trademark dilution. Because they are both subcategories of trademark infringement, the damages are typically monetary damages that are paid by a defendant to a plaintiff.
Monetary damages in these types of cases are intended to compensate the plaintiff for their losses, which may include:
- Lost clientele
- Lost profits
- Reputational damage
In certain trademark infringement cases, punitive damages may also be ordered. This may occur when a defendant intentionally violated intellectual property laws and protections.
It is important to be aware that trademark infringement cases may also result in federal charges, leading to prison time or other additional penalties.
Do I Need Legal Assistance?
If you are considering registering a trademark in your industry or if you have already begun the trademark application process, a trademark lawyer can help make sure you properly register your trademark and are afforded protections under the law.
Having a lawyer handle your trademark will ensure that you have taken the necessary steps to avoid liability for trademark infringement, especially if there is another similar trademark in a different industry.
LegalMatch is a convenient place to find help with using trademarked names in different industries. Simply submit your trademark concern for free on the website and you will quickly receive responses from member lawyers who are pre-screened and licensed and ready to help secure the success of your trademark and business.
