Trademark 101: Choose it, own it, protect it, police it
You’ve probably heard the word “trademark” before, or seen the ™ symbol. But do you fully understand its significance, or importance to your business and your brand?
By Sally F. White
Published in The Wenatchee World
For business-owners and entrepreneurs, this subject is critically important. You can help ensure your brand’s strength and vitality by protecting it from unfair competition through copycats or dilution, and by adequately communicating to consumers that your goods or services originate from your business, not someone else’s. Trademark law is an essential tool for all of these purposes.
Or, you may not even be aware that you actually own a trademark, which can occur even if your mark is not formally registered. Unfortunately, failure to adequately protect, police, and enforce your trademark can make the mark essentially worthless.
This article is intended to assist business-owners and entrepreneurs in better understanding how to effectively choose, own, protect, and police their trademarks.
WHAT IS A TRADEMARK?
At its basic level, a trademark is a source indicator. It is a word, slogan, symbol, design, color, sound, or a combination of these things, that tells consumers that particular goods or services originate from a particular source. A trademark also helps distinguish the goods or services of one party from those of another.
Some very well-known trademarks are “Apple” (for computers), “Pepsi” (for soda), and “Lush” (for cosmetics). These companies also have well-known logos associated with their products and their brand, and those logos are trademarks as well. Other companies have sound trademarks, such as the NBC three chimes and MGM’s roaring lion. Still others have a trademark in a color, such as Tiffany Blue, Target Red, and Home Depot Orange.
HOW DO I PICK A STRONG AND PROTECTABLE MARK?
Not every mark is strong and protectable. Trademarks fall along a spectrum of “distinctiveness” – the more distinctive the mark is to consumers vis-à-vis the goods or services it covers, the stronger and more protectable that mark is.
On the weakest side are “generic” marks. A generic mark is the same exact term as the goods or services that it covers. For example, you cannot trademark the term “beer” to cover the beer you are selling; and you cannot trademark the phrase “retail clothing store” to cover the retail clothing store services you are providing. This is because, for example, others in the beer industry need to be able to market their beer using the generic term “beer,” and those in the retail clothing store industry need to use the phrase “retail clothing store” to market their services.
“Descriptive” marks are also weak and generally are not protectable or registrable. A descriptive mark literally describes an essential element of the goods or services it covers; for example, “cold and creamy” for ice cream, or “soft” for pillows.
Descriptive marks are only protectable and registrable if they acquire a “secondary meaning” based on “acquired distinctiveness” in the minds of consumers, usually achieved through at least five years use in commerce and a large advertising budget by the mark’s owner.
“Suggestive” marks are strong and eligible for protection and registration. Such marks suggest a quality or characteristics of the goods or services, but they do not literally describe the goods/services. Some examples are “Microsoft” for software for microcomputers, “Coppertone” for suntan oil, or “Java City” for coffee bar services.
The strongest and most protectable type of mark is “arbitrary or fanciful.” These marks either do not exist in language or have nothing to do with the goods or services they cover. Some examples are “Google” for the online search engine, “Starbucks” for coffee bar services, or “Exxon” for petroleum.
As a hypothetical, if you wanted to open a retail children’s clothing store, a strong and protectable mark would be the name “Fluffy Kitten,” since that mark has nothing to do with the goods or services you are providing under the name.
WHAT ARE TRADEMARK RIGHTS?
“Trademark rights” are the legal interest in a protectable trademark that may permit the trademark owner to preclude others from unauthorized uses of the trademark.
HOW DO I GAIN TRADEMARK RIGHTS?
In the United States, trademark rights arise from use of the mark in commerce. It is very simple. The minute you associate a protectable mark with your goods or services and begin marketing or selling those goods or services to the public, you are establishing rights in that mark. This is true even if you have not formally registered your mark.
Common law trademark rights exist, but are limited.
Absent formal registration, use of a protectable mark in commerce grants the owner of the mark “common law” trademark rights. Such rights are limited geographically to the specific area where the mark is being used in commerce.
As an example, let’s say that since May 2013 you have owned and operated a brick and mortar retail children’s clothing store named “Fluffy Kitten” in Wenatchee, Washington. Let’s say that you were the first person anywhere to ever use that mark (or any similar mark) to cover those (or any similar) services.
But you have never formally registered your trademark “Fluffy Kitten” with any state or federal trademark office. Here, you would still have exclusive rights to use that mark to sell children’s clothing in at least Wenatchee — and potentially as far geographically as your advertising, goodwill, and good reputation extends—from May 2013 until the date you decide to stop using the mark. A competitor cannot start selling children’s clothing under the name “Fluffy Kitten” in Wenatchee; but a competitor might be able to start selling children’s clothing in a brick and mortar store under the name “Fluffy Kitten” in California.
FORMAL TRADEMARK REGISTRATION CONFERS BROAD RIGHTS
Common law rights based on use are helpful to the extent that they protect your brand in the limited geographic area in which you are marketing and selling it; but they are not as broad as those you would gain by formally registering your mark with a state trademark office or the United States Patent and Trademark Office (“USPTO”).
How do I police my mark?
Whether trademark rights exist only at common law, or via state or federal registration, a mark is only as strong as the owner’s efforts to police and enforce it. As owner of a trademark, you will want to monitor the business activity in the region in which you are doing business, including online, for uses in commerce of marks that may generate a likelihood of consumer confusion with your protectable mark.
If you find a potentially infringing use, you will want to notify the owner of the challenged mark of the existence of your mark, the basis of your claim to have the exclusive rights to use that mark, and request that they stop using the challenged mark. If they do not stop using the mark, you may want to consider a lawsuit for trademark infringement.
During all of the above steps—choosing, filing an application to register, and policing and enforcing your trademark—it is recommended that you consult a trademark attorney. Trademark law is complex. A trademark attorney will be able to advise you on how you can best protect your interests and your brand.
Sally F. White is an intellectual property attorney practicing with JDSA Law
[Content provided in this article should be used for informational purposes only and is not intended to be a substitute for professional advice. Always seek the advice of a relevant professional with any questions about any legal decision you are seeking to make.]