Trademarks

Almost anything can be a trademark – a word or phrase, a sound, a scent, a color or combination of colors, a symbol, or a combination of items.

Transcript

Trademarks. Trademarks are kind of fun. I mean, trademarks are the face of the company to the marketplace. Your company will have a trademark almost certainly, a trade name and a trade mark.  You will use it on your products or services. Almost anything can be a trademark. It could be of course a word, Exxon or Pepsi‑Co. It can be a scent. There are some perfume scents that are registered as trademarks. You’re probably going to want to pick a trademark that somehow conveys to a marketplace what your product is all about or what your service is all about. The more distinctive your proposed trademark is, the more powerful it would be, the more likely it is to be registered.  

It’s typically analyzed that there is a series of protection levels from a purely fanciful term to a purely generic term. As you travel from highly fanciful to purely generic terms scope of protection is going to weaken. And your likelihood of getting registration will weaken.  

A purely fanciful term is certainly protectable, just below fanciful term such as Exxon are the arbitrary terms. Cadillac for a car. More frankly for dog food, is a fanciful term. It has nothing to do with dog food and so it’s a powerful trademark. Descriptive is not protectable without secondary meaning. Which is to say that the marketplace recognizes that trademark as yours, as designating some source. In that case, you can register it federally. Trademark terms that are a generic term for the product are not‑registrable as a trademark.  

There are benefits to registering your trademark, of course. These benefits include the evidentiary value of having a federal registration which is dated of your use of the trademark. Trademark registration gives notice to the world that you’re using it as a trademark in your particular area. U.S. trademark rights accrue when you use your mark on goods or services in the marketplace. In a lot of other countries, trademark is strictly a creature of a registration. But in the U.S. it comes from use.  

Now you would like to be able to have your trademark protected even before you use it. And you can do this. You can file what’s called an intent to use trademark application. It says to the patent and trademark office I intend to use this as a trademark in this field on these goods or services. And the examiner will determine whether or not your proposed trademark would qualify for trademark protection. If it does, you’ll simply have an opportunity over the course of some period of time to submit a statement saying that you have now finally started using it. At that point, of course, you’re already registered or it will be registered at that point and you’ll have your protection in place.  

Keep records of trademark development. It’s good to have. Its test marketing can go towards supporting your registration and your rights in a trademark first and subsequent sales through commercial through to commercial quantities. Also, keep records of your sales from prototype all the way through to full commercial production and sale. Also, keep documents that establish the accuracy of the dates that you will put down if you decided to file for a trademark registration in the U.S. or other countries. The trademark office is quite serious about this. You have to put down when you first started using it in commerce, when you first started using it in interstate commerce. Don’t guess. Put down dates that you can put back up with documentation.  

The test of infringement of a trademark is likelihood of confusion. So if you choose a trademark that your competitor thinks is likely to confuse the marketplace they are going to challenge you. You need to pick a trademark that is well enough away from those who are already out there in the marketplace so they don’t accuse you of infringement. Avoiding a problem is far better than solving a problem. Pick several potential trademarks before you settle on one and have them vetted by your counsel. There are searchs that can be done of public indexes. And they can find out whether anyone is using it or something similar to it.  

So once again, we have the perennial question, how much resource do I devote to trademark clearance in advance so I don’t have a problem down the road? What’s the risk? How important is your trademark to you? In some industries trademarks are crucial, consumer products for example. In others it may not be as important. In extreme cases private investigations have been used to find out whether there’s a trademark in use that’s likely to be a problem with yours.  

Well, what if you do turn up a trademark problem?  There are solutions. There’s always solutions. If you’re not so deeply embedded into the use of that trademark, the smart thing might simply be to cut and run.  Pick a different trademark and get going with that.  Let the other one go. You didn’t know it was a problem, turns out it is, cut your losses.  

If you don’t want to do that you might want to investigate whether the current trademark user is willing to license you. If it’s not a head‑to‑head competitor, chances are fair they might be willing to do that for a price that’s sensible to you, that’s reasonable. The price, of course, might even be less than what it costs you to redo your trademarks.  

You know, if you are accused of trademark infringement, just because they say it doesn’t make it so. Maybe you want to challenge their trademark. Maybe it’s really not trademark at all. There are lots of famous trademarks that have lost their trademark status by becoming the generic term for that product. Band‑Aid is still a trademark, but the truth is we all kind of use it as a generic term. Thermos was found not to be a trademark anymore after a time because everybody used it to refer to the vacuum bottles that we all use to keep beverages hot and cold.  

So just because you’re accused of infringement don’t give up. Maybe that trademark has become generic. And there are other problems too that you might be able to take advantage of. The key question is whether or not there’s likelihood of confusion. If their trademark is different enough from yours, or if their field of activity is different enough from yours, even the seeming similarity of their mark in yours may not justify stopping you from using your mark your way on your product.

Suggested Readings

Founders School || Intellectual Property || Trademarks || Impact Guide (PDF).

American Bar Association: What is a Trademark? Third Edition, 2009.

An overview of U.S. trademark law and links to other resources are provided by the Legal Information Institute of Cornell Law School at Trademark.

The United States Patent & Trademark Office has materials, links and information, including answers to frequently asked questions regarding trademarks (and service marks) and the process of applying for federal registration of a mark: Trademarks.

Have in mind that a word or phrase that is merely descriptive of the product or service is only protectable as a trademark if it has acquired a “secondary meaning” in the marketplace, that is, in the minds of the consumers of that product or service. Secondary meaning can be developed through advertising, long term use, etc. Establishing secondary meaning is also necessary for trademark protection for a personal name or geographic term.

Questions for You

Have I identified one or more candidate trade names for the business? Has it been cleared by trademark counsel? Likewise, have I considered the trademark aspects of any slogans, domain names and website design, and trade dress such as product packaging or configuration?

Will my planned product or service benefit from a strong, protect-able trademark (or service mark)? If so, have I identified one or more words, phrases, symbols etc. as candidate trademarks?

Where does it fall on the strength/protect-ability scale from fanciful to generic?

Has a strong candidate been cleared by trademark counsel?

Should I register it with the US Patent & Trademark Office? With state agencies? In foreign jurisdictions?

Do I understand the proper use of the trademarks of others, such as suppliers, customers or joint development partners? Does the company have contractual obligations or restrictions on using their trademarks?

Are there opportunities for co-branding to leverage the market strength of a supplier or customer?

Tools and exercises

The question of trademark infringement involves a determination of whether or not there is a “likelihood of confusion” by the reasonable prudent purchaser of the goods in question. Would purchasers, seeing the trademarked goods of the accused company (defendant) believe they are associated with the complaining trademark owner (plaintiff)? Here are some of the factors courts typically consider in making that determination:

Strength of the plaintiff’s trademark

Similarity between the trademarks

Proximity of the products in the marketplace

If the products are not the same, whether the plaintiff could reasonably be expected to bridge the gap

Evidence of actual confusion

Defendant’s good faith in adopting the mark (Note here the value of good company records showing the independent development and adoption of the accused trademark).

Quality of the defendant’s product

Care and sophistication of the buyers.

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