May 16, 2024




What is a trademark?

A trademark associates goods (products) and/or services with a particular source (the trademark owner) in the mind of a consumer.  Trademarks may be called brand names; however, while all brand names are trademarks, not all trademarks are names.  A trademark can be a name, a design, a shape, a slogan, a color, a series of numbers, and, at times, sounds, or smells.

Securing trademark rights:

A trademark can be common law, issued by a state office, and/or registered on a federal level for much broader protection through application to the United States Patent and Trademark Office (USPTO), which is more complex and more expensive.  We will focus on USPTO filings. While you do not need a lawyer to file an application with the USPTO, having a lawyer is highly advisable to address legal issues that arise during the registration process since a different set of laws apply to registration on a federal level.  It is desirable if you plan to introduce goods in interstate commerce (crossing state lines).   A federal registration covers use of the trademark through the entire United States, and it provides you with the sole/exclusive rights to use a particular name (or other mark) in association with the designated goods and services.

Getting ready:

Before filing to protect your trademark, identify what it is that you want to protect.  Do you want to protect a name? a phrase? a slogan? With what goods or services do you want consumers to associate with your trademark and ultimately you as a source? Do you want to utilize the trademark for food, apparel, shoes, hats, novelty items, sporting goods, training camps, counseling, advising, etc.? Registration of a trademark does not give you rights to exclusive use of the trademark for every product (good) or service. On the federal level, trademarks are registered in classes specific to certain goods and services.  Fees must be paid for each class.  You can start with one class and later file for any additional goods or services that you want associated with your trademark.

Legal Assistance – Should you hire a lawyer?

Regardless of whether you want to protect a name, slogan, phrase, design, etc., take early steps to ensure that what you choose to protect is eligible for registration. This is most important for federal registration.  If you can do so, have a lawyer check on your proposed trademark prior to filing. Investing the time and money early on will yield dividends later, both in marketing and enforcement.  A lawyer will also be able to advise you on trademark strength, one of the factors that determine whether a trademark will be registered.  


 NILegally Speaking™ is written by PowerNIL/Ken Feinberg, attorney, in collaboration with other expert attorneys focused on employment, labor, contract, and intellectual property law.                                                                                                                               

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