top of page
Law Books


Essential insights into U.S. trademark registration and protection strategies.

In the United States, are trademarks only protected after registration?


Both registered and unregistered trademarks can be protected, but the types of protection differ.


Unregistered trademarks: In the United States, trademark rights can be established through the actual use of the mark in commerce without registration. This is often referred to as "common law" trademark rights. Protection here is generally limited to the geographic area where the trademark is used. However, proving rights to a "common law" trademark is more complex and difficult than proving rights to a registered trademark.


Registered trademarks: Registering a trademark with the United States Patent and Trademark Office (USPTO) provides several advantages to the owner, including:

  1. National notice: Registration notifies the public nationwide of your claim of ownership of the trademark, not just the specific geographic area where you use the mark.

  2. Presumptive legal ownership: Registration gives you a legal presumption of ownership of the trademark in disputes.

  3. The right to use the "®" symbol: Registration allows you to use the federal registration symbol "®". Using this symbol can deter potential infringers.

  4. Use of U.S. registration as a basis for foreign registration: If you plan to do business overseas or protect your trademark, U.S. federal registration can serve as a basis for applying for trademark registration in other countries.

  5. Trademark owners can register their USPTO-registered trademarks with U.S. Customs and Border Protection (CBP). This enables the CBP to enforce and prevent infringing goods from entering the United States. Once registered, the CBP will inspect imported goods to ensure they do not infringe the rights of the registered trademark. If CBP finds goods that may infringe on a registered trademark, it can seize the goods and notify the trademark owner.


Therefore, although trademark protection does not exist solely after registration, the registration process grants more powerful and extensive protection. (Note: U.S. Supreme Court case law indicates that plaintiffs with registered trademarks outside the United States have the right to sue for unfair competition under sections 14(3) and 43(a) of the Lanham Act for unauthorized use of a foreign trademark that the plaintiff has never used in the United States. For the relationship between trademark infringement and unfair competition, see below.)

How to determine if trademark infringement exists: The Polaroid Test


The "Polaroid Test" comes from a case in the United States Second Circuit Court of Appeals, namely Polaroid Corp. vs. Polarad Elecs. Corp., 287 F.2d 492 (2d Circuit 1961). In this case, the court outlined eight factors to determine whether there is a likelihood of confusion between two trademarks, which could constitute trademark infringement:

  1. The strength of the plaintiff's trademark: This factor considers the distinctiveness and renown of the plaintiff's mark. Strong and well-known marks are more likely to cause confusion when other parties use similar signs. The strength of a mark is determined by its distinctiveness and the degree to which consumers associate it with the plaintiff's goods or services.

  2. Similarity of the marks: This factor compares the appearance, sound, and overall impression of the plaintiff's and defendant's marks. The greater the similarity between the marks, the greater the likelihood of confusion.

  3. The proximity of the goods or services: This factor assesses the similarity between the goods or services offered by the plaintiff and defendant. When products or services are closely related or complementary, consumers are more likely to believe they come from the same source, thus increasing the likelihood of confusion. (For example, trade channels, target markets, the public's perceived similarity of the goods' relationship)

  4. The likelihood that the plaintiff will bridge the gap: If it is likely that the plaintiff will expand their business to offer goods or services similar to the defendant's, there may be a higher risk of confusion among consumers.

  5. Actual confusion: Evidence of actual consumer confusion strongly suggests a likelihood of confusion. This may include instances where customers mistakenly believe the defendant's goods or services are associated with the plaintiff. (The length of time before this evidence appears: If there is a longer time without actual confusion, it may indicate that the marks are distinctive enough that the market can accommodate both without causing confusion.)

  6. Defendant's intent in adopting the mark: This factor considers whether the defendant adopted its mark in order to capitalize on the plaintiff's reputation and goodwill. Malicious or deceptive intent can strongly support a finding of trademark infringement.

  7. The quality of the defendant's product or service: This factor compares the quality of the defendant's product or service to that of the plaintiff. If the quality of the defendant's goods or services is lower, it could harm the reputation of the plaintiff's brand: this could lead to the plaintiff losing potential customers and future sales. Although this does not directly result in confusion, it is an important factor when assessing the potential negative impact on the plaintiff's brand and may influence the court's decision in trademark infringement cases.

  8. The sophistication of the buyers: This factor considers the knowledge, experience, and attentiveness of consumers purchasing the goods or services in question. If consumers are more discerning or knowledgeable, they may be less likely to be confused by similar trademarks. (Generally, the higher the price of the goods, the more careful the consumers.)


What is the relationship between trademark law and unfair competition?


The relationship between unfair competition and trademark law is that both are concerned with protecting businesses and consumers from deceptive or dishonest practices in the market. While trademark law specifically targets the use of unauthorized marks that may cause consumer confusion, unfair competition law covers a broader spectrum of actions that harm fair competition and mislead consumers.


In the United States, the Lanham Act is the primary federal statute governing trademark law and unfair competition. Section 43(a) of the Lanham Act deals with unfair competition related to false designation of origin of goods and services, false or misleading descriptions, and false or misleading representations. This section provides protection for both registered and unregistered trademarks, allowing businesses to take legal action against competitors who infringe on their trademarks or engage in other deceptive practices.

Key Differences between Patents, Trademarks, and Copyrights

bottom of page