What are the Requirements for Obtaining a US Trademark?
There are three primary requirements for securing US trademark rights; using your trademark in interstate commerce as a trademark, priority over competitive trademarks, and having the right format.
Trademarks are all about use in commerce. That’s the whole point. A trademark is anything used in interstate commerce to associate goods or services with the source or origin of those goods or services. In other words, anything used in commerce that identifies with the company that makes the product or delivers the service you’re thinking about buying. With this in mind, you can appreciate that it’s not enough to merely have an idea for a cool name. To secure protection, you must then apply that cool name to a product or service. So, while a formal trademark registration with the US Patent and Trademark Office (USPTO) can be advantageous, it is not a requirement to secure trademark rights. In fact, with use in commerce, you can have common law trademark rights without ever filing for a formal trademark registration. To punctuate this point, use of the trademark in interstate commerce is a prerequisite to either common laws rights or a formal trademark registration. Simply, to secure US trademark rights (via a trademark registration or common law trademark rights), you must use your trademark in interstate commerce in connection with your product or service. This means you must sell or advertise your product or service bearing your trademark on the product, packaging, or advertising material in interstate commerce. Years ago, this requirement was harder to achieve. Then, it meant that you had to sell or send marketing material to businesses in other states. Today, though, with the Internet, that requirement is much easier to achieve.
Now, to make it obvious to the marketplace that you’re using your trademark as a trademark, you should include the TM symbol in close proximity to your trademark each time you use your trademark. While the USPTO has not created a specific requirement for where that symbol must be located, it’s common to place the TM (or Circle R if you have a formal trademark registration) immediately to the right of the trademark (slightly above or slightly below).
Another requirement for trademark rights is priority. Simply, if another company secured common law or registered trademark rights before you, you will be legally prohibited from using that trademark. Why? Well, again, a trademark is anything used in interstate commerce to associate products or services with the company that makes or delivers those products or services. I mean, that’s the whole point, right? If trademarks are so similar in terms of their look and feel and if the products or services are so closely related that consumers are confused about who they are buying from the trademarks are no longer doing what they were intended to do. Worse yet, this confusing similarity could cause one the products associated with one product to diminish the brand of the other. Or, it could enable the weaker company to trade off the brand of the stronger company. So, if another company has trademark priority over you, you are legally prohibited from using that trademark. For example, if a sneaker company called Great Sneakers, Inc. went to market with a brand of sneakers bearing the Nike Swoosh, consumers would likely be confused and think they were buying shoes made Nike. Then, not only would Nike lose a sale, but if the Great Sneakers sneakers are lower quality, the Nike brand would be diminished…people would think Nike sneakers were low quality.
Now, the third requirement is format. This can be pretty broad since a trademark can be anything used in interstate commerce to associated products and services with the source of those products and services. Traditionally, anything means words and images or combinations of words and images. But, depending upon where you are in the world, anything can also include the shape of the product (Coca-Cola bottle shape trademark), the color of a product, the scent of a product, the sound associated with a product, and even the theme or design of a restaurant can be given trademark protection.