Trademark Registration, Infringement, And Enforcement

Now that you have started your business and launched your brand, what comes next? Should you register your trademark? What makes a trademark protectable? What happens if someone else uses it?

This article addresses the strategic and legal decisions that follow brand adoption, including trademark distinctiveness, the USPTO registration process, infringement analysis, and enforcement options. It is designed for business owners who are actively using a trademark, expanding into new markets, or facing potential conflicts with competitors.

By focusing on registration, risk, and dispute resolution, this guide builds on the foundational concepts from Part 1 and explains how trademark rights are protected, challenged, and enforced.

When Should You Apply for a Trademark Registration?

Consider filing a federal trademark registration with the United States Patent and Trademark Office (USPTO) if:

1.  You are using or plan to use a trademark in commerce;
2.  Your trademark is distinctive;
3.  You are concerned about third parties using the same or similar trademark; and
4.  You conduct business beyond a small geographical area, especially nationwide.

Benefits of Federal Trademark Registration

Registering your trademark with the USPTO provides significant legal advantages, including:

• Presumptions of validity, distinctiveness, and exclusive rights, which you would otherwise need to prove when enforcing a common law trademark.
• A national priority date, which is the date you are deemed to have first begun accruing trademark rights, even before actual use has started.
• A nationwide priority, as opposed to common law trademarks, where you may only have rights in limited geographical areas.
• The right to use the ® symbol next to your registered trademark.

These advantages make a federal trademark registration more powerful in enforcement actions than relying solely on common law rights.

What Makes a Trademark “Distinctive”?

A distinctive trademark effectively distinguishes your goods and services from others. Generally, the more distinctive a trademark is, the stronger the legal protection.

Categories of Trademark Distinctiveness (listed from strongest to weakest)

Fanciful Trademarks
The strongest type of trademark is a “fanciful” trademark. A fanciful trademark is a made-up word that has no other meaning except as a trademark. That is why they are the most distinctive. Examples: Pepsi®, Rolex®, or Adidas®

Arbitrary Trademarks
An arbitrary trademark is a word or phrase unrelated to the relevant product or service. Arbitrary marks are also very distinctive because consumers are more likely to associate an arbitrary mark with a particular good or service than the actual dictionary meaning. Example: Apple®, Dove®, or Dominos®

Suggestive Trademarks
Suggestive trademarks suggest, hint, or insinuate a certain quality or characteristic of a particular good or service. Suggestive trademarks are distinctive because they require consumers to use their imagination to connect the mark with the nature of the related good or services. Example: Netflix® is suggestive of ‘internet flicks,’ Greyhound® suggests fast and sleek travel, and Jaguar® suggests the speed and elegance of the animal.

Descriptive Trademarks
A descriptive trademark merely describes a certain quality or characteristic of specific goods or services. Descriptive trademarks are not inherently distinctive because consumers initially perceive the mark as a description rather than a brand identifier. Example: Barbell™ for a gym or San Francisco Bar and Grill™ for a restaurant.

However, descriptive trademarks can become distinctive over time if consumers come to recognize the mark as a distinctive brand rather than a description. A descriptive trademark may acquire distinctiveness through:

1.  Exclusive use for over five years and/or
2.  Extensive advertising and marketing.

Example: Super Cuts®, Cup Noodles®, and Chipotle®

Generic Terms
Finally, the weakest trademark, which in fact is not a trademark at all, is a “generic” term. Generic terms are common or dictionary names for a particular product, service, or category of product or service. Generic terms cannot function as trademarks because they cannot distinguish one product or service from another. Example: Soda for soda or Restaurant for restaurants.

How To Apply for a Trademark Registration

To register a trademark, you must submit an application with the USPTO, which includes:

• The trademark
• A description of the goods or services being sold (or that are planned to be sold)
• The name and address of the owner

There are two types of application that may be submitted to the USPTO.

• “In-Use” applications require proof of use of how the trademark is used in commerce. For example, a photograph of your trademark on a tag or label, or a screenshot of your website advertising your services.
• “Intent-to-use” applications allow you to reserve rights before use begins, with proof of use submitted after the application has been approved.

Trademark Clearance Searches

Before applying for a trademark registration, you should consider conducting a trademark clearance search to help identify whether a conflicting trademark already exists. A clearance search involves two primary steps:

1.  Searching the USPTO database: https://tmsearch.uspto.gov/search/search-information
2.  Searching the Internet for unregistered (common law) trademarks

USPTO Examination and Office Actions

Once you have conducted a clearance search and filed a trademark application, a USPTO examiner reviews the application and may issue an “office action” if problems are found. The most common issues include:

1.  Likelihood of confusion. An existing registration for the same or a similar trademark for the same or similar goods or services. You will have an opportunity to argue that the cited trademark is not confusingly similar to yours. If the USPTO examiner is convinced, they will withdraw the refusal.
2.  Mere descriptiveness. Your mark is viewed as descriptive rather than distinctive. You may argue that your mark is distinctive and if the USPTO is not convinced, you can amend your application to the “Supplemental Register,” which is a separate register for descriptive trademarks. Once your trademark has become distinctive, you can reapply to the Principal Register.

You generally have three months to respond to the office action to correct any identified issues.

If the application is approved, it will be published for 30 days to allow third parties to oppose registration. If no opposition if filed:

• An “in-use” application will register
• An “intent-to-use” application will receive a “Notice of Allowance,” and you will have six months to submit the proof of use. Extensions may be granted up to five times.

What is Trademark Infringement?

Trademark infringement occurs when a third party uses a mark that is likely to cause consumer confusion regarding the source of goods or services. Consumers may mistakenly believe that the infringer’s product or services comes from you, or your product or services comes from the infringer.

How Courts Determine Trademark Infringement

Courts consider several factors, including:

1.  Similarity of the trademark
2.  Similarity of the goods or services
3.  Strength of your trademark
4.  Evidence of actual consumer confusion
5.  Channels used to sell each party’s goods or services
6.  Consumer sophistication and degree of care
7.  The alleged infringer’s intent
8.  Likelihood of market expansion

If a third party is using your trademark but for unrelated goods or services, infringement is less likely.

How To Enforce Trademark Rights

You can enforce your trademark rights by:

1.  Monitoring the marketplace by periodically searching the internet and the USPTO database. Many companies offer watch services to notify you if any new trademark applications for similar trademarks have been filed.
2. Sending a cease-and-desist letter. If you find a person or company using the same or similar trademark as yours for the same or similar goods or services, you can send them a cease-and-desist letter before filing a trademark infringement lawsuit.
3.  Filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). If you find a new application for the same or similar trademark as yours for the same or similar goods or services, you can file a notice of opposition against the application once it has been published. A notice of opposition if filed with the Trademark Trial and Appeal Board (TTAB) and is an administrative proceeding that is procedurally similar to a lawsuit, but where the TTAB only decides if an opposed mark should register or not. No damages are awarded in TTAB proceedings.
4.  Filing a Uniform Domain Name Resolution Policy (UDRP) complaint for infringing domain names. If you find a person or company using your trademark as part of a domain name, you can file a UDRP complaint against the domain name. A UDRP proceeding is filed with an approved arbitrator, most commonly the World Intellectual Property Organization (WIPO), against a disputed domain name. A UDRP complaint must prove:

• The domain name is confusingly similar to your mark;
• The registrant lack rights or legitimate interests in the domain name; and
• The domain name was registered and used in bad faith.

If you prevail, the disputed domain name will be transferred to you.

Maintaining Your Trademark Rights

You can lose rights if you do not properly maintain your mark. To protect your trademark, you must:

1.  Enforce your trademark consistently. The more you allow third parties to use the same trademark, the less distinctive it becomes because it will identify multiple sources instead of one. If a trademark loses its distinctiveness, then you can lose your trademark rights.
2.  Avoid “naked licensing” by maintaining quality control. If you license your trademark, you must ensure that you have the ability to control, and that you actually do control, the quality of your licensee’s products or services. If you allow your licensee to sell products or services that are of different quality than yours (what is called “naked licensing”), the trademark can lose its distinctiveness. That is, consumers may no longer think that all of the products or services sold under a trademark come from the same source because of the differing quality.
3.  Maintain your registration(s) with the USPTO. Within six years following your registration date, you must file a declaration with the USPTO that you have used the trademark continuously for the prior five years. You must also renew your trademark every ten years after that.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.