IP Essentials: Q&A Series


How long will my trademark registration last?

Q How are trademark strengths determined? A The strongest trademarks are made of words that are not descriptive of the goods or services being offered under that particular trademark. • Made up words (such as Google for search services, or Rolex for watches) provide the strongest trademark • Words that are taken out of context (such as Apple for computers). • Words that are not descriptive but are suggestive of the good or service can generally be registered, but they are not quite as strong (such as LinkedIn for networking community or Netflix for streaming services). • Words that are descriptive of a product or services that are being offered may receive trademark protection only if it acquires secondary meaning (Burger King for burgers, Coca Cola for a cola drink made from coca leaves). • Generic words are not registerable to trademark for those goods or services associated with that particular generic word (e.g. “Apple” for a business selling apples is too generic). Q Why should I register my trademark? A Under the common law, a trademark may be protectable, locally, as soon as it is adopted by the user (assuming there are no prior users). However, federal registration of a trademark gives the owner a nation-wide right of priority in the trademark, access to federal jurisdiction, and provides the owner a presumption of trademark validity. Registration requires an application and examination to confirm that there are no prior, confusingly similar uses of the trademark.

Q My business has one physical location— should I register my trademark federally? A Federal registration is only available for trademarks that have been used in interstate commerce (across state or national boundaries). However, an applicant who intends to use a trademark in interstate commerce may apply for registration. You may apply for a federal registration, if you are conducting your business online. The application is examined and may become registered once the mark has been used in interstate commerce. Q What is trademark infringement? A Trademark infringement occurs when another party uses the same or similar trademark


A common law trademark will last as long as the trade- mark continues to serve as a source identifier to the relevant population. A trademark reg- istration is po- tentially per- petual as well, but it must be renewed every ten years.

in a manner that causes a “likelihood of consumer confusion.” Courts look at several factors to assess the




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