The Life Cycle of a Trademark: How Brand Rights Arise Strengthen and Disappear

78 questions on the life cycle of a trademark, answered and cited by the UpLaw editorial team.

• Besides avoiding a lawsuit, why is a clearance search worth doing?
• Can a “generic.com” domain name be registered as a trademark?
• Can I get trademark rights by advertising a service I have not yet delivered?
• Can I reserve a trademark by shipping a few units as “token use”?
• Can occasional token sales keep a trademark from being abandoned?
• Can the same word be a strong mark for one product and generic for another?
• Do customer inquiries asking whether two companies are related count as actual confusion?
• Does a trademark plaintiff still have to prove irreparable harm to get an injunction?
• Does dilution require proof of actual dilution or only a likelihood of it?
• Does using a trademark as a verb make it generic?
• Do I have to prove the infringer intended to copy my mark?
• Do I have to prove willfulness to recover an infringer's profits?
• Do trademark rights in the United States come from using the mark or from registering it?
• How do courts tell a suggestive mark from a descriptive one?
• How does an intent-to-use application eventually mature into a registration?
• How does the Nice Classification system affect trademark filing costs and scope?
• How do I stop my brand from becoming generic?
• How do trademarks, copyrights, patents, and trade secrets differ?
• How famous does a mark have to be to qualify for dilution protection?
• How much sales activity is needed to establish trademark rights?
• How should a brand owner monitor for infringement?
• If I redesign my logo, do I keep my original trademark priority date?
• Is a descriptiveness refusal the end of my trademark application?
• Is a written quality-control clause enough to avoid naked licensing?
• Someone is using a similar name in a completely different industry. Can I stop them?
• What advantages does federal registration on the Principal Register provide?
• What are the different types of trademark confusion?
• What are the elements of a trademark infringement claim?
• What are the load-bearing principles of trademark law for a business owner?
• What are the risks of sending a trademark cease-and-desist letter?
• What counts as “use in commerce” for trademark purposes?
• What defenses survive against an incontestable trademark registration?
• What did Jack Daniel's v. VIP Products decide about trademark parody?
• What does a comprehensive trademark clearance search cover?
• What does a well-built cease-and-desist letter accomplish?
• What extra remedies apply to trademark counterfeiting?
• What factors do courts weigh in a likelihood-of-confusion analysis?
• What happens if I do not police infringers of my trademark?
• What happens when a trademark application is published in the Official Gazette?
• What is a common-law trademark and what are its limits?
• What is an assignment in gross and why is it invalid?
• What is a trademark knockout search?
• What is a trademark under the Lanham Act?
• What is a USPTO Office Action and how long do I have to respond?
• What is channeling in intellectual property law?
• What is genericide in trademark law?
• What is naked licensing and why can it forfeit a trademark?
• What is secondary meaning and which marks need it?
• What is the Abercrombie spectrum of distinctiveness?
• What is the best evidence of likelihood of confusion?
• What is the difference between a trademark and a service mark?
• What is the difference between a use-based and an intent-to-use trademark application?
• What is the difference between dilution by blurring and dilution by tarnishment?
• What is the difference between the ™ and ® symbols?
• What is the functionality bar in trade dress law?
• What is the owner's job at each stage of a trademark's life cycle?
• What is the primary significance test for genericness?
• What is the Supplemental Register and when should I use it?
• What is the Tea Rose-Rectanus doctrine?
• What is trade dress and when is it protectable?
• What is trademark abandonment and how quickly can it happen?
• What is trademark dilution and how does it differ from infringement?
• What is trademark incontestability and what does it actually do?
• What is “use analogous to trademark use” and can it establish priority?
• What kinds of things can function as a trademark?
• What maintenance filings keep a federal trademark registration alive?
• What monetary remedies are available for trademark infringement?
• What should I do if I have to stop using a mark temporarily?
• What should I do the moment I spot an infringer?
• What standard applies to likelihood of confusion, and who bears the burden?
• What statutory bars can keep a distinctive mark off the federal register?
• What tools protect a brand against cybersquatting?
• What uses are exempt from a trademark dilution claim?
• Which Lanham Act registration bars have been struck down on First Amendment grounds?
• Who bears the burden of policing counterfeits on online marketplaces?
• Why can generic terms never be trademarks?
• Why does product design trade dress always require secondary meaning when packaging does not?
• Why is a coined or invented brand name legally stronger than a literal one?