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Christopher Smedley
This article was developed by the Kentucky Bar Association (KBA) Intellectual Property (IP) Section. To learn more about the KBA IP Section, visit https://www.kybar.org/page/intellectualproperty.
Can I Trademark my Name or Logo?
You may have asked the question, “Can I trademark my name or my logo?” This can be a difficult question to answer without knowing some of the basics about what, exactly, is a trademark.
The simplest way to describe a trademark is that it can be any word or words, phrase, logo, design, or combination of these, that identifies the source of your goods or services. Beyond that, a trademark gives you rights in and to your trademark that allow you to protect it from infringement, protects against counterfeiting and watering down (or diluting) your goods or services, and can be a valuable intangible asset for your business. As your trademark develops good will, it becomes a signifier of not only the source of your goods or services, but of the quality of those goods and services.
A frequent example of how confusing these definitions can be is experienced by many practitioners who work with new and small businesses without prior experience in trademarks. We often see clients confused by the distinction between the entity name they may choose for their new corporation or limited liability company, and whether it is actually serving as their trademark. For example, let’s say you want to set up a Kentucky LLC, Acme, LLC, but plan to provide a dynamite delivery service to coyotes under the name Speedy’s Dynamite. Acme, LLC remains the entity’s name, but the trademark in this example is “Speedy’s Dynamite”. Of course, you could use your LLC name as the trademark… Acme, LLC could always provide those dynamite delivery services simply as Acme. In that case, the entity name is Acme, LLC, and the trademark is Acme.
Common Law Rights vs. Federal Registration
Another confusing aspect of trademarks involves common law rights versus additional rights you may acquire by registering your trademark under federal law. One misconception is that either you have to obtain a federal registration to “have a trademark” or that having a federal trademark registration gives the owner unlimited rights over the registered words or logo. However, you actually begin to have some level of common law rights in a trademark when you start using the trademark commercially. Granted, these common law trademark rights are limited, and are often limited geographically to where you have used the trademark or limited to very narrow goods or services. Further, a common law trademark is also entitled to protection from infringement. The senior user of a common law trademark has substantial ability to enforce their trademark even against a federally registered trademark, at least to some extent based on their common law rights. Just as a senior user has priority rights over junior common law users, a senior user’s rights may trump the rights of a federally registered mark if the senior user has continuously used the common law trademark within a specific geographic territory.
Whether you have a plan for a new trademark for your business that you have not used, or have an established common law trademark, it is recommended to consider the additional protection afforded by a trademark registration under federal law. The Trademark Application is filed in the name of the person or entity who intends to use or is using the trademark “in commerce”. As noted above, trademark rights flow from the actual use in commerce.
What is Use in Commerce?
Generally, use in commerce means the date you first offer for sale, or sell your goods or services. To demonstrate use in commerce in a Trademark Application, you will want to have more than one or two remote sales of your product or service. However, if you have not started using your trademark yet, you can still file what is known as an Intent to Use Application. In an Intent to Use Application, you are declaring under oath that you, as the Applicant, have a bona fide intent to use the trademark in the future. By filing the Application prior to having use of the trademark in commerce, you can still secure an earlier priority date in front of other potential filers at the U.S. Patent & Trademark Office.
As part of the Trademark Application, you will claim the goods and services the trademark will be used with. There are forty-five (45) broad categories of goods and services that encompass a variety of products and business. Each class of goods or services claimed requires payment of a separate government fee ($250 for a “TEAS Plus” Application, which requires selection of certain standard descriptions of goods or services, or $350 for a “TEAS Standard” Application, which allows you to provide more detailed descriptions). If you have multiple types of goods or services you use (or will use) your trademark with, and want your registration to cover each good or service, you will need to budget accordingly.
Registration Basics
If you successfully register your trademark with the U.S. Patent & Trademark Office, you gain significant additional protection from infringers that protects you throughout the 50 states instead of a perhaps geographically limited area and allows you to file suit in an appropriate federal district court against infringers. Damages for infringement of a federally registered mark can be significantly greater than for a common law, unregistered mark, and can include disgorgement of the defendant’s profits from infringing sales, actual damages to the plaintiff, a reasonable royalty for sales of infringing items or services, and in some cases, attorney fees.
Other protections provided under federal registration of your trademark include; protection from the use of a similar trademark diluting the value of your trademark, (dilution involves a different legal analysis than infringement, but is ), inclusion in the USPTO’s online database, easier online enforcement, the ability to use the federal trademark registration symbol “®” to deter copying, collateral for securing a loan, incontestability after 5 years, the ability to combat the importation of counterfeit products through the U.S. Customs and Broder Protection, and U.S. registration being used as a basis to obtain registration in many foreign countries, including possibly claiming priority.
There are numerous advantages to developing your names, logos, and designs as trademarks, and to taking the additional steps to register them as federally registered trademarks. If you have more questions or want to learn how to start, we recommend contacting an attorney with experience in trademark law to learn more.