Trademark/Trade Dress

Trademark/Trade Dress

Trademark law was developed to protect the public against deception and confusion regarding the origin, or source, of a particular product. It is a kind of “source indicator” and can be very valuable in the marketplace. Trademarks can be words (e.g., a name), symbols (e.g., a logo) and/or, in certain instances, a distinctive design or packaging (called a “trade dress”). Service marks are trademarks for services.

Ways to Obtain Protection

In the U.S., there are two ways to obtain trademark protection: (1) by use of the mark in connection with the product or service in commerce; or (2) by filing an "intent-to-use" or "use based" trademark application with the U.S.P.T.O. Some trademarks are not as distinctive as others, and therefore require a period of actual use in commerce before the courts will recognize any exclusive right to use them. Other trademarks are very distinctive and trademark rights attach immediately upon their adoption and use. Trade dress of a product design is treated like a non-distinctive trademark and one can obtain protection for trade dress once the public has come to associate the features of the design with a particular source of the product. When this happens, it is said that the trademark/ trade dress has acquired "secondary meaning."

One does not have to register a mark with the U.S.P.T.O., but registration provides additional benefits. A registered mark is presumed to have been used throughout the entire U.S., and constitutes "constructive notice" to latecomers who might adopt a confusingly similar mark. A registered mark is recognized as having the necessary secondary meaning.

Length of Protection

Trademark/trade dress protection lasts as long as the mark/design continues to be in actual use in commerce. In the case of some famous designs, it can last even beyond the time the design is being sold.

A registered make is good for 10 years, and may be renewed for successive 10 year periods again as long as the mark is still being used. Trademark protection can last forever as long as the it continues to be renewed and remains in use.

The test for infringement is that the owner of the trademark/trade dress must prove that the infringing mark/design is likely to create confusion in the marketplace as to the source or origin of the product.


One difficulty in registering a mark is the time and effort it takes to "clear" it (i.e. make sure no one else is using it, or a confusingly similar mark, for the same class of goods/services) because there are so many trademarks already in use, and because there is no single, central data base for searching trademarks. But it is advisable to clear a new trademark before adopting it, because changing the name of a product/service two years after your first use can be very expensive.


There are various costs associated with obtaining trademark, service mark, or trade dress protection. To register a mark with the U.S.P.T.O., the applicant must file and application, pay fees, and respond to any examiner objections (if they arise).

U.S.P.T.O fees vary depending on whether or not the applicant qualifies for “small entity” status. The U.S.P.T.O. fees are listed on their website.

Attorneys fees depend on the type of mark, the prior art, and whether or the examiner raises objections that require a written response. Applications and responses are generally done on an hourly basis, but fixed fees or “not to exceed” fees are also available depending on the client’s needs and the particular project.

It may be necessary to promote the product to the point where it achieves secondary meaning prior to filing and this can make registration costly. Usually, expensive consumer surveys are required to prove secondary meaning in a court room setting.

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