1. What exactly is a trademark?

The federal statute on trademarks, known as the Lanham Act, defines a trademark as "any word, name, symbol, or device, or any combination thereof" used by someone "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods..." Interestingly, it's not even necessary that the public know the specific source of the goods, as long as the trademark lets them know that they come from a single producer.

For practical purposes, a trademark is anything that the public uses to identify your products as yours, and distinguish them from the products of everyone else. A word on your package? Sure. A logo used on your package or signs? Absolutely. The shape of your packaging? Yes, in some cases - if it's truly unique and not used for some reason related to function, and if customers use it to identify your products. The color of your packaging or of the goods themselves? Yes, in some cases. There even have been cases in which sounds (the distinctive chimes used by a TV network, for instance) and a product's distinctive scent have been registered as trademarks.

It is important to realize that rights in a trademark do not extend to any and all products and services. Instead, your rights in your trademark extend to the specific goods or services on which you use it, and in certain cases to other goods of a type so similar to yours that the public might mistakenly believe that they also come from you. So, for example, the party that owns the trademark CREST for toothpaste cannot stop another party from using CREST as a trademark for bulldozers.

2. What is a service mark and how does it differ from a trademark?

There is no functional difference between a trademark and a service mark. Basically, a service mark is a trademark that identifies services rather than goods. So, for example, TIDE is a trademark for laundry detergent, while TARGET is a service mark for retail store services. For the sake of simplicity in these FAQs, we will use the words "trademark" or "mark" to refer to both trademarks and service marks.

3. Is there anything I should do before deciding on a trademark?

Absolutely! It is always a good idea to have a trademark search conducted for the mark, to determine whether it is available for your use and registration. Basically, you need to determine whether anyone else is using the mark or a confusingly similar mark, and whether anyone else has registered or filed an application to register the mark.

Here is where an attorney experienced in the practice of trademark law can be of great value to you. That attorney can obtain the necessary searches for you, evaluate its results, and provide you with an analysis of the mark's availability and registrability. This unquestionably is a point where working with a lawyer who is highly experienced in this process of evaluation and analysis is of great value.

For obvious reasons, it is best to do this as early as possible, before you spend money on implementing or advertising the mark you're interested in using. That way, if the search identifies a problem with the mark, you will not have wasted time, money and effort on an unusable mark.

4. How can I obtain rights in a trademark?

You'll note that the word "used" appeared in the definition of a trademark in Question 1 above. As soon as you begin using a trademark to identify your goods or services, you begin to develop rights in that mark, within the geographic area of your use. Those rights will, of course, be overcome by the prior rights of someone who registered and/or used the same or a confusingly similar mark for the same or highly similar goods.

U.S. law generally follows a "first to use, wins" rule when it comes to disputes between competing trademark users. There is one important exception, however. Under U.S. law, it is possible to file an "intent to use" trademark application before beginning actual use of the mark. As long as that application matures into a registration, the owner's trademark rights will date back to the filing date of the application, and not the date of actual use.

5. Are some trademarks more protectable than others?

The short answer is yes, very much so. Generally speaking, the more naturally distinctive your mark is, the more protectable it will be.

There is a recognized "spectrum of distinctiveness" in the trademark world, which determines protectability. At the "most protectable" end of the spectrum are "fanciful" marks. These are words, such as OREO for cookies or NUPRIN for pain relievers, that did not exist until they were made-up by the companies who use them as trademarks. Fanciful marks are the most protectable because they have no significance, other than the ones created by their owners - as trademarks to identify their goods.

Next in terms of distinctiveness and protectability are "arbitrary" marks. These are words that have a recognized meaning, but are arbitrary or unexpected as used in connection with the goods in question. For example, "mustang" has a recognized meaning as a type of wild horse, but MUSTANG is arbitrary when used as a trademark to identify automobiles.

Next down the spectrum after fanciful and arbitrary marks are "suggestive" marks. These are marks that may provide a clue the nature of the goods, but don't directly identify them. Instead, you must use your imagination to realize what the goods may be. An example of a suggestive mark would be DRIZZLER for raincoats.

The least distinctive type of trademark is the descriptive mark. These are just what they sound like, marks that directly describe some aspect of the goods, their use, or the persons who use them. An example of a descriptive mark would be LONG-WEARING for a shoe sole that resists being worn down.

Unlike fanciful, arbitrary and suggestive marks which are deemed "inherently distinctive," descriptive terms cannot be registered as trademarks unless the applicant can show that the mark as developed acquired distinctiveness, also called "secondary meaning." Secondary meaning is developed through long-term, continuous and exclusive use of the descriptive mark in connection with the goods. The more descriptive the term is, the more difficult it will be to prove acquired distinctiveness.

Lowest on the distinctiveness spectrum is a class of terms that actually are not trademarks at all, because they have no ability to distinguish one producer's goods from any other's. These are generic terms, which tell you what the goods are in their most basic sense - "shoe" for footwear, "fork" for silverware. Generic terms are never registrable, nor are they protectable.

Unfortunately, it is all too possible for a once-distinctive trademark to become a generic term for its goods, if its owner or the public uses the mark as a common noun (identifying a type of goods) rather than as a proper noun (identifying the brand of those goods.) Terms like aspirin, cellophane and escalator originally were trademarks, but their owners allowed them to fall into common generic use and thus eventually lost exclusive rights in their marks. Marks like KLEENEX and ROLLERBLADE came close to genericness, but their owners were able to pull them back from the brink. Look here for a good article on how to avoid letting your mark become generic.

There is another factor besides protectability that flows from the distinctiveness of the mark you choose, which is worth considering. Fanciful marks are not only easier to protect, they also are easier to clear for use. This is because the chances are relatively slim that someone else will have made-up the same or a highly similar word to use for the same type of goods.

Unfortunately, a great many companies tend to choose highly descriptive marks because they want the marks to function as one- or two-word commercials describing their goods. This may be good marketing policy (probably not), but it undoubtedly is bad trademark policy. The more descriptive your mark is, the more difficult it will be to clear and protect because there usually will be a number of companies using the same or very similar descriptive terms.

6. Do I have to register my trademark?

YWhile you do not absolutely have to register your mark, you should read Question 7 below to learn the many important advantages a registration provides.

7. Why should I bother with the time and expense of registering my mark if I don't have to?

As noted above, you can begin developing rights in a mark simply by using it. But the amount of your rights, and your ability to enforce them, increase greatly when your mark is registered with the U.S. Patent and Trademark Office or "USPTO."

An unregistered mark is enforceable only in the specific geographic area where you have actually used it. So if you are a small business with a sales territory of only one or two states, your rights will end there.

Another company may later begin use of the same mark for the same goods in a different area of the country, or even a neighboring region. Without a registration, you would have no way of stopping that company from using the mark in its region, and in fact would be prevented from entering that region itself with your mark. Registering your trademark effectively "reserves" the entire country for you to expand your use. Obviously, if you have hopes or concrete plans to expand your use into regions you don't yet serve, you should strongly consider registering your trademark.

Registering your trademark provides other benefits as well. Registered marks appear prominently in availability searches conducted by other attorneys, and as a result your registration will serve as a strong discouragement to others adopting confusingly similar marks. This "chilling effect" may save you many thousands of dollars in infringement litigation costs, without you having to life a finger.

In addition, owning a registered mark usually makes it easier to litigate and to prevail against an infringer, should it become necessary. The presence of your registration on the USPTO register means that anyone who later adopts a similar mark automatically will be deemed to have been be aware of your rights in the mark - whether or not that party had actual notice.

The trademark registration also will provide you with an automatic legal presumption that you have a right to use your mark nationwide, dating from the date your application was filed. Additionally, it provides the federal courts with jurisdiction to hear your infringement claim, and allows you to register the mark with the U.S. Customs Service to prevent the importation of goods bearing infringing marks.

Another important benefit of registration is that, after five years of continuous use of the mark under the registration, you can make a filing which renders the registration "incontestable." Incontestability greatly reduces the defenses an infringer can assert against your rights in the registered mark.

Finally, if you think you may eventually want to sell your business, registration of your trademarks (and your other intellectual property, for that matter) often seems to help make the sale proceed more easily and in some cases even command a higher price.

An attorney who is experienced in the practice of trademark law is not an absolute necessity for the registration of your mark with the USPTO, but an experienced practitioner knows how to prepare an application and deal with the USPTO personnel in a way that helps ensure that the resulting registration will give you with the broadest rights possible.

8. Must I start using my mark before I can apply for a registration?

No. U.S. law allows you to file an "intent to use" application before beginning use. Filing an intent to use application is kind of like taking a number at the deli - it reserves your place in line and entitles you to register your mark over any later applicants. There are no "intent to use registrations," however - you must eventually use your mark before a registration can issue.

9. What is trademark infringement?

Trademark infringement occurs when a party uses a trademark that creates a likelihood of consumer confusion with the mark used by a senior (meaning earlier) user. Consumer confusion does not mean people actually buy the "infringer's" goods believing them to be those of the senior user, or even that they believe the infringer's goods are those of the senior user, though that kind of "actual" confusion is very potent evidence of infringement. Instead, the test for infringement is satisfied if the public is likely (due to the similarity of the marks and goods, along with other factors) to mistakenly believe that the defendant's goods come from (or are authorized by) you, or vice versa.

If you believe another party may be infringing your trademark rights, it is a good idea to waste no time before consulting with an experienced trademark attorney. Allowing any significant time to pass before bringing a challenge may result in a finding that you "sat on your rights" and thus prevent you from prevailing in an otherwise winning case.

10. Is expensive litigation my only option in the event my mark is infringed?

Not necessarily. Litigation is expensive for both parties, and no one would be well-advised to file a lawsuit without first exhausting other potential ways to resolve the matter. Many (in fact, most) infringement disputes are resolved without need for litigation. Often a well-drafted "cease and desist" letter will convince the other party to agree to stop using your mark. Again, an experienced trademark attorney can make a big contribution here because he/she knows how to prepare a letter that maximizes the letter's impact and credibility with opposing parties and their counsel. Such letters usually "hit harder" if your mark is registered.

Ultimately, however, an infringer may refuse to deal with the matter in a way that recognizes your rights. In that case, an infringement suit is the only way to obtain a court order forcing the infringer to cease its use. It may be some consolation to know that, again, most infringement lawsuits are resolved by settlement without going to trial.

11. What remedies can I get if I can prove someone infringed my trademark?

You can get an injunction, which is a court order that the defendant must stop using your mark. In appropriate cases you also can get money damages, and in some exceptional cases you can get an order that the defendant must pay your attorneys fees for the litigation.

12. I have a domain name - isn't that a trademark?

Usually, domain names do not function as trademarks but only as "addresses" for the public to find your website. Unless you use your domain name as a way for consumers to identify and distinguish your goods or services from those of others, your domain name is not a trademark. Some domain names (such as AMAZON.COM, for instance) probably serve as trademarks; the majority do not.

13. Is it possible to register my domain name as a trademark?

Bearing in mind the above discussion, if you believe your domain name functions as a trademark and thus qualifies for registration with the USPTO, it may be advisable to consult with an attorney who is experienced in the practice of trademark law before acting on that assumption.

14. How long does my trademark last?

Trademark rights have no set expiration date, and can last as long as you use your mark in commerce in connection with the pertinent goods. Theoretically, your rights can last forever.

Note that there is a distinction, however, between trademark rights on the one hand and a trademark registration on the other. While a trademark registration also theoretically could last forever, it requires periodic maintenance filings in order to renew it and keep it in force. If you fail to make those filings, your registration will expire. U.S. law, like that of many other countries, provides that trademark registration terms last ten years between renewals. Another filing demonstrating continued use of the mark is necessary between the fifth and sixth anniversary of the original registration date, in order to prevent cancellation of the mark.

15. Can I let someone else use my trademark?

Yes, but it should not be done without great care. Placing your trademark in another's hands creates the possibility that the value of your mark (or even your own commercial reputation) could be irreparably damaged if the other party fails to use the mark in an appropriate way.

You must authorize another's use of your mark through a license agreement that carefully reserves your rights to control the quality of the goods the other party sells under the mark, or you risk losing your own rights in the mark entirely.

Most trademark practitioners would strongly recommend that a detailed written license agreement be used. Engaging an experienced attorney who knows the "ins and outs" of trademark licensing to guide you through this process is usually money very well spent.

16. What is involved if I want to sell or transfer my trademark to someone else?

Transferring your trademark, whether registered or unregistered, to another party usually is a relatively simple undertaking. There are some important "watch-outs," however, that arise in specific fact situations. Again, an attorney experienced in trademark law can prepare the necessary assignment document at a relatively low cost, and also see that the assignment is recorded with the trademark office(s) where the mark is registered.


1. What rights does copyright provide?

U.S. copyright law provides the copyright owner the exclusive right to reproduce, distribute, perform, display, or license his or her work, and to authorize others to do any or all of these things. The copyright owner also has the exclusive right to create or authorize the creation of derivatives of that work.

2. What qualifies for copyright protection?

Copyright is available to "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Copyrightable works of authorship include:

  1. literary works;
  2. musical works, including any accompanying words;
  3. dramatic works, including any accompanying music;
  4. pantomimes and choreographic works;
  5. pictorial, graphic, and sculptural works;
  6. motion pictures and other audiovisual works;
  7. sound recordings; and architectural works.

An "original work" is simply one that was created by the person claiming to be the author ("author" is used in this context to mean, "creator") - so, any work that was not copied from another work is an "original work."

An important limitation to understand is that copyright law protects the specific expression idea, but not the underlying idea itself. By statutory dictate, copyright does not extend to "any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work."

3. What is a "work made for hire"?

If you employ or even occasionally hire people (such as independent contractors) to create writings, images, music or any other type of copyrightable works for use in your business, the "work made for hire" issue is an important one for you. Unless the works in question meet the statutory requirements to qualify as works made for hire, the copyrights for them are owned by others and you may be risking liability by using those works.

A work made for hire is:
  • (1) a work prepared by an employee within the scope of his or her employment; or
  • (2) a work specially ordered or commissioned for use as a contribution to certain specific types of works that are collective or collaborative in nature - for example, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, but only if the parties expressly agree in writing signed by them that the work shall be considered a work made for hire.

If the work fits these strict requirements, it is a work made for hire and the copyright owner will be the hiring party. In that case, the hired party has no rights in the work.

If, on the other hand, the hiring party does not meet the strict requirements to make it a work made for hire, the creator of the work is the owner. In that case, the work may only be acquired by the hiring party by if he/she obtains an assignment from the hired party, which probably will require additional compensation.

This is one of the areas where it may be wise to consult with an attorney experienced in dealing with copyright issues.

5. What is copyright infringement and how is it proven?

Copyright infringement occurs when a work is "substantially similar" to a preexisting work, as a result of copying by an infringer. In order to show copying, the plaintiff must be able to demonstrate that the accused party had "access" to the earlier work - in other words, an opportunity to see, hear or otherwise experience the infringed work. Thus, infringement requires both substantial similarity and access/copying.

This means that it is possible for two people to create identical works without infringement. For example, two photographers could take identical photographs and, if the second photographer had never seen the first photographer's image, there would be no copyright infringement despite the substantial similarity of the works.

Perhaps a more common example would be two songwriters who have written the same melody - some may remember that ex-Beatle George Harrison was found guilty of infringing the copyright in the song "He's So Fine" with his song "My Sweet Lord." The melodies in the two songs are indeed substantially similar, and the plaintiff was able to establish access by demonstrating that "He's So Fine" was a popular hit during a time when George Harrison was very active in the music business and thus undoubtedly would have heard it.

6. What remedies can I get if someone infringes my copyright?

In federal court, you can seek an injunction preventing further infringement, as well as money damages. In the case of money damages, you can get the actual damages to you from the infringement and/or the infringer's profits from the infringement - if you can prove these things. But those types of damages can sometimes be difficult to prove. On the other hand, if you qualify (see the registration discussion, below) you can request so-called "statutory damages," which don't require the same type of proof and can amount to as much as $150,000 per infringed work - the amount is at the judge's discretion. In addition, you may be able to have the infringer pay your attorneys' fees and costs for the lawsuit.

7. Do I have to register my copyright to get protection?

The copyright law provides that you own the copyright in your work as soon as it is "fixed in tangible form" - meaning, when your work is written down, recorded on a disc, painted on a canvas, etc. So, you don't need to register your copyright in order to "own" those rights.

From a practical standpoint, however, registration provides many advantages that make it worthwhile to register your copyright as soon as possible after you create the work. For instance, you cannot sue for infringement until the copyright is registered. In addition, the highly desirable statutory damages attorneys' fees remedies discussed above are not available unless your copyright was registered before the infringement began.

8. Can't I get a "poor man's copyright" just by putting my work in a sealed envelope and mailing it to myself through the U.S. mail?

No. First, as noted above, you already own your copyright as of the time you create the work and fix it in tangible form. So the best you could do with such a process is try to create evidence (through the dated postmark) establishing the date upon which you could claim copyright rights. But anyone can buy dated and postmarked "first day of issue" envelopes from the U.S. Postal Service, so the evidentiary value of your efforts would be questionable at best. Finally, this method would not provide any of the practical benefits of copyright registration, discussed above.

9. I created a story/song/etc. based on another story/song/etc. - does that violate the copyright laws? Can I get copyright protection in what I created?

The infringement issue will depend upon whether you have taken enough of the specific expression of the ideas in the other work for a court to find "substantial similarity" in the works.

It actually is quite common for parties to use preexisting works as a basis for their own new creations - an update to a computer program, for example, or a photo collage made of existing images. The law calls these "derivative works," and you can obtain copyright protection - even a copyright registration - for your own new and original contributions. Depending upon the circumstances, however, you may need to obtain the approval of the author of the original work or works before you can exploit (or even create) your derivative work.

10. I wrote a story/song/etc. with another person. Who owns the copyright in it?

You both own copyright rights. The law recognizes "joint works," which are works prepared by two or more authors "with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole." Unless there is an agreement to the contrary, joint authors are co-owners of the copyright in the work. applications allow for joint authors to be identified, along with a percentage of each author's contribution to the overall work.

11. Can I let someone else use my copyrighted work?

Yes. As with trademarks, copyrights can be licensed but it should be done with great care. Most copyright practitioners would strongly recommend that a detailed written license agreement be used. This is another area where enlisting the services of an attorney experienced in copyright law can be money very well spent.

12. What is involved if I want to sell or transfer my copyright rights?

Transferring your copyright rights, whether registered or unregistered, to another party usually is a relatively simple undertaking. There are some important "watch-outs," however, that arise in specific fact situations. Again, an experienced copyright practitioner usually can prepare the necessary assignment document at a relatively low cost, and also see that the assignment is recorded with the U.S. Copyright Office.

It is important to realize that copyright actually provides a "bundle" of rights, which are identified in Question 1 above, and it is possible to separate these rights out and transfer them individually (or even subdivide them), while retaining the other rights. This is another reason why you would be well-advised to consult with an attorney experienced in copyright law before transferring any copyright rights.


1. What is a trade secret?

A trade secret is any piece of information that derives value from being unknown to the general public, provided the owner of the information has taken reasonable steps to ensure that it remains secret. If you have any information that gives you a competitive edge because your competitors don't know it, you may have a trade secret provided you have taken steps to maintain its secrecy. Things like customer lists, product formulas, recipes, techniques, methods and the like, can all potentially be trade secrets. In some cases, even the knowledge of what doesn't work can be a form of trade secret, since you may realize an economic value by having that information when your competitor does not - particularly if that competitor would have to go to significant expense to learn it through trial and error.

2. If I have a trade secret, how do I protect it?

By its very definition, a trade secret must remain a secret. Thus, you must take reasonable steps to maintain the secrecy of your trade secret. Recommended steps include limiting disclosures of the trade secret to those with a need to know, requiring your employees and contractors to sign non-disclosure agreements if they may be exposed to a trade secret, as well as keeping all trade secret materials in a secure place and marking them "CONFIDENTIAL."

3. What is misappropriation of a trade secret?

If someone uses or discloses your trade secret as a result of improper means, that constitutes misappropriation. "Improper means" includes obtaining the trade secret as the result of a breach of someone's duty to maintain secrecy, through theft or "spying," or through bribery or misrepresentation. If someone learns your trade secret as a result of your failure to take reasonable precautions, that is not improper means. Similarly, if someone learns your trade secret by purchasing your product and taking it apart to learn how it works (called "reverse engineering"), that is not improper means.

4. If my trade secret is misappropriated, what relief can I get through a lawsuit?

If successful in your lawsuit, you can obtain a permanent injunction barring the misappropriating party from use or further disclosure of the trade secret; you may also be able to obtain a temporary restraining order and preliminary injunction while the lawsuit is pending, to prevent a threatened misappropriation or to prevent use of the trade secret until a judgment is rendered. It also is possible to seek money damages for your actual injury and/or the defendant's profits from the use of the trade secret, and in the case of willful misappropriation the court may double the award and/or award you attorneys' fees.