Skip to main content
Technology Transfer

Entrepreneur's Toolkit - How to Protect Your Trademarks

Two Avenues for Protection

There are two main avenues used for protecting trademarks, both of potential value, and both intertwined for most people.

  • The first and most important avenue to protect your mark is using the trademark on and in advertising for your goods or services. If you never use your mark, it can't serve as a source identifier and thus has no real value. Hence the requirement in the United States that use in commerce be shown before a trademark application can proceed to a registration. Additionally, for trademark registrations to remain in force, use must be ongoing. One of the main ways trademark registrations are canceled and one of the primary defenses to trademark infringement is showing lack of use.
  • The second avenue to protect your mark is by seeking registration by filing a trademark application. Trademark applications can often be filed before use has begun (called an intent-to-use application in the U.S.), allowing you to establish priority to your selected trademark as long as you eventually begin to use the trademark. Accordingly, you can choose your trademark and file an application, then begin use while the application is pending, thus preventing a competitor from adopting a confusingly similar mark in the time between when you choose your mark and your product goes to market.

Protection Based Solely on Use (Common Law)

The vast majority of trademarks are not the subject of a trademark application or registration. In the U.S. alone, approximately 5.38 million new businesses were started, but only 943,928 trademark applications were filed in 2021. These numbers only relate to business names as trademarks, but trademarks include more than business names. Why aren't more trademarks registered?

  • Cost — many businesses don't plan for or don't have the money to file trademark applications. Understandably, a small business operating in a small town with no plans to expand might not need nationwide trademark protection.
  • Mark weakness — due to the natural tendency to select marks that say something about the product or services to make marketing easier, many selected trademarks are relatively weak and would not be successful if the subject of a trademark application.
  • Lack of understanding — many mark owners are unfamiliar with the benefits of trademark registration.

Fortunately, the law provides for protection of distinctive trademarks even absent registration. Seeking registration need not be the default for all trademarks. Such protection, however, is limited to the geographic area in which the trademark is used. In the age of products marketed over the Internet and shipped nationwide (or worldwide), the geographic area of use can encompass the entire country. Formal enforcement occurs through litigation in state or federal court. The primary costs associated with common law trademark rights are those of using your trademark in a way that associates it with your products and the costs of any enforcement efforts.

Protection Based on Registration

Federal registration provides benefits over relying upon common-law rights:

  • Presumption of nationwide rights
  • Presumption of ownership in litigation
  • Trademark is listed in the database of registered and pending marks, providing notice and deterrence to others
  • Right to bring a trademark lawsuit in federal court
  • Right to use the federal trademark registration symbol, ®, helping to deter others
  • Ability to rely on registration in seeking protection in other countries
  • Can record registration with customs to stop importation of goods bearing an infringing mark

These benefits are attractive to sophisticated businesses and provide additional value to your business. In fact, a recent study shows that the number of trademarks registered by a company correlates to that company's near-term profitability and stock returns. Learn more about filing an application to register your mark.

Use Your Trademark Correctly

Improper use of your trademark can harm the protection for your mark or lead to its death entirely. The International Trademark Association (INTA) publishes a handy guide to help you use your trademark correctly. Some points to keep in mind include:

  • Use your mark as an adjective, never as a noun or verb, unless you are referring to your business (not its products or services) by the name of your business.
  • Use your mark consistently. Don't change capitalization from use to use, don't add or remove punctuation in some cases, don't switch between singular and plural (remember, it's an adjective), don't leave part of the mark out of some uses, etc.
  • Use identifiers with your mark, at least for the first or most prominent use in each piece (packaging, web page, advertisement, etc.). Before it is registered (or even if you never register it), you can use the "TM" symbol for goods and the "SM" symbol for services. After it is registered, you can use ®.
  • Use your mark in a distinctive fashion. Use a larger font or distinctive color, use capitalization or italics to set it apart, use the appropriate identifier as mentioned in the previous point, use it followed by the generic noun, etc.
  • Use your mark in a trademark sense. Marks on goods should be placed prominently on packaging and/or the product itself, or on display materials where the product is sold. Marks on services should be used in advertising that clearly identifies the services being sold. Many trademark applications are rejected or face issues because the owner can't show the mark actually being used in a trademark sense with the associated goods or services.