no need to leave your home to receive legal consultations and services - Call or click to learn more about phone and videoconferencing with our attorneys

Trademark Law Explained | Illinois Intellectual Property Law

Article written by Illinois & Iowa Attorney Kevin O'Flaherty
Updated on
December 30, 2019

What is a Trademark?

A trademark is any word, symbol, or other device used to distinguish a business’ products or services from those provided by others.  

What Law Governs Trademarks?

Trademarks are governed by both state and federal law.  The Trademark Act of 1946 (15 USC 1051, et. seq.), also known as the “Lanham Act,” is the operative federal statute.  On a state level, trademarks are governed by each state’s trademark, unfair competition, and deceptive trade practices statutes.  The operative statutes in Illinois are the Trademark Registration and Protection Act (765 ILCS 1036/1, et. seq.), the Counterfeit Trademark Act (765 ILCS 1040/0.01, et. seq.), and the Consumer Fraud and Deceptive Practices Act (815 ILCS 505/1, et. seq.) 

What Types of Trademarks are Protectable?

Brand names, logos, and trade dress (meaning the appearance of a product), are all protectable through trademark. In order to be protectable, a word or logo must be “distinctive,” meaning that the mark distinguishes the owner’s goods or services from the owner’s competitors. Trade dress is protectable when it is both distinctive and non-functional.  

Is my Trademark Distinctive Enough to be Protectable?

Word and logo trademarks are categorized based on how distinctive their content is.  Whether the mark is distinctive enough to be protectable depends on which category the mark falls into:

  • Coined Words are artificial words made up by the owner of the mark.  “Google” is an example of a coined word.
  • Fanciful Words, like coined words, are words that are invented by the owner for the purpose of the trademark.  However, unlike a coined word, they may resemble another word or may be a an obsolete word. “Cheez Whiz,” for example.  
  • Arbitrary Words are words that are actually used in language, but do not describe the product or service in question.  For example, “Apple Computers.”  
  • Suggestive Words do not directly describe the product, but imply a quality of the project.  For example, “Greyhound Buses” imply speed, but are not merely a description, as “Fast Buses” would be.
  • Descriptive Words simply describes a quality of the product.  An example would be “Comfy Slippers.”
  • Generic Words are simply the english word for the product.  An example would be if a television company called itself “TVs.”   

Coined, fanciful arbitrary words are generally distinctive enough to be protectable.  Suggestive words may be protectable based on the situation.  

‍Descriptive words, on the other hand are not protectable unless the owner uses them in the marketplace significantly enough to obtain a secondary meaning, such that the public thinks of the owner of the mark, not the product itself, when seeing the descriptive word.  Surnames are treated like descriptive marks, such that secondary meaning must be established before the surname will be protectable as a trademark. 

Domain names may be protected if they appear prominently in advertising or on the website itself.  

How to Find Out if a Trademark is Available?

Before you begin branding your business and using a word or logo, you should work with an attorney to determine the availability of the trademark in question.  The last thing you want to do is spend time and money establishing a brand only to find out that someone else holds the trademark. 

‍Your attorney should review federal registrations and applications, state registrations, trade directories, and publicly available business records to ensure that the mark you want to use has not been previously applied for, registered, or used in business.  A database of federal registrations and applications can be found at

Priority of Trademark Rights

The first person to do one of the following has the right to a trademark:

  • Continuously use the mark in commerce; or
  • Apply to register the mark, followed by continuous use in commerce.

A prior user of a mark who has not filed a trademark application will have superior rights to the mark over someone who subsequently files a trademark application, at least with respect to the geographic area in which the prior user is actually using the mark.  When you obtain your trademark rights through use in commerce without filing, these are called “common-law” rights.  Common-law rights are limited to the geographic area in which the mark is actually used, and possibly the zone of natural expansion into which the owner is likely to extend use of the mark. 

What Constitutes “Use in Commerce” of a Trademark?

A mark is “used in commerce” with respect to goods when:

  1. It is placed on the goods or their containers, displays, tags, or labels, or (when these methods are impracticable based on the nature of the good) on documents associated with the goods for their sale; and  
  2. The goods are sold or transported in commerce. A mark is “used in commerce” with respect to services when:
  • it is displayed in the sale or advertising of the service; and
  • the services are rendered.

What is the purpose of a ™ symbol or an ® symbol?

Use of ™ and ® symbols do not confer any legal rights and the use of the symbol is not required, but may be beneficial to provide notice that the words are intended as a trademark and not merely a description of the product or services in question.  However the ® symbol, unlike the ™ symbol, may only be used if your mark is federally registered.  

Why Should I Register My Trademark?

Although trademark registration is not necessary to enforce trademark rights, federal registration does confer many benefits:

  • A federally registered mark has nationwide priority as of the date of the application.  “Common-law trademark” rights are limited to the geographical area of actual use.  
  • Federal registration provides prima facie evidence of the registrant’s ownership of the mark, preventing litigation based on factual disputes.
  • Federal registration provides notice of the registrant’s ownership claim, which is effective whether or not competitors actually search the registry.  This eliminates the “good faith defense” for other businesses that use your mark.  
  • In some cases, such as counterfeiting, federal registration provides additional remedies, over and above “common-law” trademarks.
  • After registering the mark and using it for 5 continuous years, you have the right, upon proper filing of an affidavit, to make the trademark incontestable;
  • Federal registration provides a bar to claims of trademark dilution.  

Additional Financial Considerations
from Financial Experts

From Financial Experts

For many years, financial institutions have been creating a disservice to clients and the industry as a whole for years.
View More Professional Considerations

Presented By O'Flaherty Law

overview of trademark law

Need Legal Help? 

Schedule a

What to Expect From a Consultation

The purpose of a free consultation is to determine whether our firm is a good fit for your legal needs. Although we often discuss expected results and costs, our attorneys do not give legal advice unless and until you choose to retain us. Although most consultations are complimentary, some may carry a charge depending on the type of matter and meeting location.

Leave a Comment With Your Questions

Read more about

Business, Corporate & Contract Law

We offer free, paid & Online CONSULTATION in:

Business, Corporate & Contract Law

Schedule a consultation with our Illinois & Iowa Attorneys

We offer free, paid & online consultation in nearly every area of law throughout Illinois and Iowa. We have a range of options to assist you with your legal needs.

What happens at a legal consultation?
Meet with an attorney for a free consultation to discuss what type of matter you need to discuss with an attorney.
Over the Phone Legal Consultations
Similar to In-person consultations, you discuss your legal needs with our attorneys to discuss your matter.
An online consultation is like an in-person and an over the phone online Consultation. You meet face to face with our attorneys through our online portal.
Paid Legal Consultations
While a free consultation allows us to discuss what we can do in general terms for your legal matter, a paid consultation allows us to answer direct questions.

More Illinois Trademark & Copyright Law Episodes

contact us

Monday to Friday
9am - 5pm

Contact Us
Disclaimer: Our articles and comment responses do not constitute legal advice and are not intended to create an attorney-client relationship.

Please contact us to schedule a free consultation for legal advice specific to your situation.

Here are some articles that may interest you
Schedule a

Contact us for a Free Consultation

Schedule a free consultation

O'Flaherty Law is happy to meet with you by phone or at our office locations in:

Who We Are
We are your community law firm. Our Illinois & Iowa Attorneys are committed to providing exceptional client service in a cost-effective manner in the areas of Family Law, Probate, Estate Planning, Civil Litigation, Guardianship, Criminal Defense, Corporate & Contract Law, Bankruptcy and Real Estate.

Some of Our Accomplishments

Best Child Support Lawyers in Chicago
DuPage County Probate Attorney
Kevin P. O'Flaherty
Rated by Super Lawyers

loading ...
Naperville attorney
DuPage County Probate Attorney

Subscribe to our mailing list

* indicates required