Intellectual Property Series: Trademark Registration
Welcome to part one of Creative On Call's mini-series on Intellectual Property. As a designer, creative, or marketing professional, we have the answers for you on how to protect your work legally. Questions? We'd love to hear from you.
One of the most important decisions for a young company to make is to determine how to brand itself in the marketplace. Choosing a name, a logo, or a slogan can require a significant amount of time and money to ensure that the company has a strong brand that is easily recognizable and conveys an important message as to the quality of the products or services offered. These are the core ideas behind trademark protection.
A trademark is anything capable of identifying the source of a product or service. Words, images, packages, colors, sounds, and even smells can be trademarked! However, it is extremely important to understand that not all trademarks are created equal, and not all marks get the same level of protection.
First, let us talk about trademark registration. It is true that a business may have trademark rights even if it has not registered the mark with the USPTO (United States Patent and Trademark Office). These are known as common law rights. Common law rights apply to the business that uses the trademark first but can typically only be enforced within the geographic area where the trademark is used. So, a common law trademark may allow a business to prevent others in the same city from using the same mark, but may not be enforceable throughout the state or in another region. That is why federal trademark registration is so important.
A trademark registered with the USPTO has significantly broader rights than a common law trademark. Federal registration creates a presumption that you are the owner of the mark and can use it throughout the United States. It puts the public on notice that you own the mark, and anyone else who tries to register a confusingly similar mark with the USPTO will be denied. If another business uses your registered mark, you will have the right to bring legal action in federal court. For businesses that intend to expand globally, federal registration provides a basis for filing for trademark registration in foreign countries. Finally, a registered mark allows the business to use the federal registration symbol. (R)
So you think you want to register? Your mark could be refused if the USPTO determines there is a likelihood of confusion with another registered mark. If the two marks are similar (they look alike, sound alike, have similar meanings, or create similar commercial impressions) and the goods or services are related (consumers mistakenly believe the goods and services come from the same source) the USPTO will issue an “office action” refusing to register your mark. This is the most common reason marks get rejected.
The good news is that you can conduct a search to determine whether your mark is confusingly similar to one that is already registered. Although all registered marks can be found in the USPTO database and anyone can search them, there are more than three million federally registered marks. The sheer volume can make it incredibly difficult to ensure that your mark is eligible for registration. A trademark attorney can conduct a thorough search (called a “clearance”) and analyze any potentially conflicting marks to determine whether your mark is likely to be approved, provide recommendations for changes that may resolve any potential problems, and assess the risk of infringement of a common law mark. A proper clearance search will not only include the USPTO database, but a broader search of databases that are likely to find if there are any conflicting marks that are not registered.
Failing to conduct a proper clearance prior to filing a registration application significantly increases the likelihood that a mark will be rejected and may create a nest of problems for the business. After all, if the business has already spent money developing a brand it cannot use or protect, that may be money down the drain.
But didn’t I just say you don’t have to register to have a common law trademark? Yes, I did, and a proper clearance search should find if another party has a common law trademark that you now want to register. Keep in mind, the USPTO will only review its own database for confusingly similar marks; so a mark may be approved and registered by the USPTO but then the owner of the common law mark could cause your registered mark to be cancelled. You could also find yourself in a legal battle for infringement that may result in your business being required to destroy inventory, marketing materials, or even pay monetary damages.
That’s why it is best to work with a trademark attorney from the beginning to obtain an opinion as to the likelihood of your mark’s successful registration and strength in the marketplace.
Strength of the Mark
As I have said before, not all marks are created equal. Some are names, some are logos, some are strong, and some are weak. Having a weak mark can be more difficult and expensive to protect than a mark that is inherently strong.
Marks that are fanciful or arbitrary are the strongest marks and are the easiest to protect. A fanciful mark is one that consists of a completely made up term with no other meaning: Xerox and Kleenex are good examples. These are terms that we only know because a business invested time, effort, and money to tell us what they are. Arbitrary marks are actual words that have no association with the underlying goods or services. Think about Apple or Brother. A company called Apple that sells apples, will not get the same level as protection as a computer company called Apple because the computer company has an arbitrary mark, but the apple company uses a generic mark – more on those later.
The next type of marks are suggestive marks. Appropriately, these are marks that suggest what the underlying product or service. Office Depot or Netflix are examples of suggestive marks because they tell us something about the underlying product, while leaving a bit to our imagination as to what it actually is. These marks are the next best thing to fanciful or arbitrary marks and get a great deal of protection.
Descriptive marks are those that make the connection for the consumer, without leaving anything to the imagination. These marks are inherently weak and may only be registered if they have acquired some distinctiveness as a source identifier. The Weather Channel, Brooklyn Brewery, or Kentucky Fried Chicken are examples of descriptive marks. These marks usually must show that they have been around for a long time and that they have invested in marketing in order to distinguish themselves.
Generic marks are not actually marks at all. They are common, everyday terms for goods and services and they are incapable of identifying source. The Apple company that sells apples cannot register a trademark because it is simply a generic term. A bicycle brand called Bicycle would be refused for the same reason, but a playing card brand called Bicycle would have a very strong mark.
So, just register a made-up word and you’re good to go right? Not so fast. Did you know that “escalator” and “yo-yo” used to be trademarks? That’s right, they used to be. Trademark owners have an obligation to protect their marks from becoming generic or they can lose their protection altogether. When a mark comes to identify the entire class of goods and services, rather than the source, it can no longer be protected. Once all moving staircases become known as “escalators,” then the mark is no longer fanciful and strong, it becomes weak and unprotected entirely.
That is why it is so critical for strong trademark owners to police their marks and ensure that infringing users do not weaken the mark and cause them to lose their protection.
This is a time for marketers to step up to the challenge and get creative in meeting current demands and behavior changes. Creatives On Call call support your business through this. Contact us here. We have Marketing professionals ready to start in areas including:
• Strategy & Advisory
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• Content Creation & Management
• Customer Engagement & Experience
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• Digital Technology & Transformation
Learn more at Creatives On Call.
Terry M Cannon, Esq. is the founder of Cannon Law in Covington, Kentucky. He graduated from University of Cincinnati Law and is a member of the Kentucky Bar Association. If you need further assistance with your trademark needs, you can learn more about Terry's practice at www.cannon.law.