Trademarks: A Primer for Colorado Business Owners

A trademark is any word, name, slogan, symbol, or combination thereof, including packaging, configuration of goods or other trade dress, which is adopted and used to identify goods or services, and to distinguish them from goods or services offered by others.

The primary goal of trademark law is not to establish an exclusive property right in the mark, but rather, to protect consumers from confusion in the marketplace. Thus, your trademark rights are violated if someone else is using your mark (or a mark confusingly similar to yours) in a way that is likely to cause confusion to existing or potential customers.

Technically, “trademark” is the term to use for tangible goods and products and “service mark” or “servicemark” is for non-tangible services, but nearly everyone, even trademark attorneys, use “trademark” for both categories.

“Common Law” Trademark Rights

Many people believe you can only have a trademark if you file for a registration, but this is not true!

Trademark rights can be established under common law simply by being the first to use a mark for a business endeavor. Your common law trademark rights extend as far as the geographic area in which you use your mark.

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Federal Trademark Registration

Registering your trademark, even if you have established strong common law rights to the mark, is always advised. This allows you to provide notice to the world that you are using the mark, and affords you certain statutory rights and protections as well.

Generally, in order to file for a registration with the U.S. Patent & Trademark Office (USPTO), the trademark’s owner first must use or plan to use the mark in “interstate commerce.” This means the mark is used on a product or service that crosses state lines or that affects commerce crossing such lines (for example, an Internet business that caters to interstate or international customers).

Your potential registration also needs to clear certain hurdles, including:

  • Whether there is a likelihood of confusion between your trademark and one that has already been registered
  • Whether your trademark is inherently distinctive (for example, you cannot trademark “banana” if you plan to use the mark to sell bananas – it is a “generic” term)
  • Whether your trademark includes immoral or scandalous matters, or is deceptive, or uses the name or portrait of a living individual without his consent
  • And more!

Trademarks and the Internet

Having a federal trademark registration (as opposed to common law trademark rights or a state registration) is becoming invaluable in the world of e-commerce, online marketing, and domain name disputes.

For example, Amazon’s Brand Registry system requires you to have “an active registered trademark for your brand that appears on your products or packaging.” For those in the U.S., this means a registration with the USPTO. Without such protection, you may be at a high risk for counterfeits of your products or other seller’s being able to impersonate your presence on the site!

State Trademarks

The U.S. has a two-tiered system of trademark protection: federal and state. A federal registration issued by the U.S. Patent & Trademark Office (USPTO) gives the registrant rights through the entire United States. A state registration will grant rights within that state’s boundaries only.

Each state has their own system of trademark management. Some states do not have a registration system at all; some only have a “notice” process – once you have establish your common law trademark rights within state boundaries, you can file a form to let people know.

If you are interested in state trademark issues, it is advised to research the particular laws, regulations and case law in every single state!

If you have questions about trademark law, how to register your trademark with the U.S. Patent and Trademark Office, need guidance on how to transfer your trademark or on general branding strategies, or what to do if you think someone is violating your trademark rights, contact our Intellectual Property team today.

Colorado Trademark Attorneys

Dealing with trademark law and intellectual property can be very confusing. We are here to eliminate that confusion for you. If you are interested in speaking with one of our attorneys about registering your trademark or stopping someone else from using your mark, give us a call. We are experienced in this area and will be able to answer any questions you may have.