Trademarks: What Are They Good For (Absolutely Something!)
I talk with many people who are unsure about what trademarks are and how they can use them. Some people even confuse trademarks with other types of legal protections like patents and copyrights. That might be a simple enough mistake because trademarks (like patents) offer exclusivity to the owner and they protect something that has value to the owner. But the fundamental purpose (and the mechanics of obtaining) trademarks are significantly different from that of patents. So what are trademarks and what are they good for? (that old song “War!” by Edwinn Star comes to mind). So with that, let’s dive in.
I. Trademarks – What Are They?
A trademark is any word, name, symbol, or device that a person either uses to identify goods or services to a consumer or intends to use in connection with goods or services. This is a pretty expansive definition because it recognizes the fact that any type of product identifier can be a trademark, so long as it identifies the trademark owner as the source of the product. Sounds (NBC tri-tone sound), smells, colors (UPS brown trucks), product packages (contoured Coke bottle), even store designs (the Apple Store) are all types of trademarks because they identify the source of the trademark. The bottom line is that a trademark is any type of indicator that tells the consumer something about where the product came from.
II. Trademarks – Why Use Them?
Trademarks communicate something about you to the consumer, and they communicate rather effectively. Imagine trying to encapsulate the 50 year history of your company or the essence of the customer experience in a way that causes a consumer to want to buy your product. Trademarks are kind of like billboards that broadcast your message to consumers. Upon seeing your trademarked product on a shelf, a consumer will instantly know something about the product. In a world where so many other products call out for attention, a trademark is a way for a consumer to differentiate your product from all the rest.
You could use a series of words to identify your product (for example, Mac & Cheese, packaged in a generic box with neutral colors), but this product will have no way of standing out from the sea of other Mac & Cheese boxes sitting on the shelf.
III. Trademarks – What Are The Requirements?
A. A word, symbol, or other identifier that is distinctive
Because a trademark can consist of any type of word, symbol, or other identifier, the potential pool of trademarks for any given product is large. After all, you could come up with virtually any name or combination of symbols for your product. A word, symbol, or identifier must be distinctive in order to serve as a trademark. Distinctive is a legal term of art that basically means that the symbol chosen for the trademark must be attributable to the source and not simply descriptive of the underlying goods. There’s more about how you can make your mark distinctive on this page.
In general, if your word or symbol merely tells a consumer about what the product does or a feature of the product, you cannot claim such identifier as a trademark. SPEEDY for a delivery service or KLEEN for carpet cleaning are both examples of words that lack distinctiveness and which could not serve as trademarks.
B. Use of the word, symbol, or other identifier on a product or service in the marketplace
Besides being distinctive from other trademarks that are used on similar products or services, your mark has to be in use. Getting a trademark is a lot like getting other things in life: you have to go after them. There is no magical trademark deity that drops trademarks out of the sky like rain. This is not to say that you have to jump through hoops to get a mark (at least not that many hoops). Trademarks are only useful to the extent that you decide to make something of them. Nike’s trademark perfectly illustrates the concept: JUST DO IT.
So to convert a word, symbol, or identifier to a trademark, you have to make something of them, you have to use the trademark on the actual product or in connection with the service. Use on the product does not mean that the trademark is imprinted onto the product. You can use tags, stickers, booklets, or put the trademark on the side of the box that the product comes in. Just so long as a consumer can clearly see the trademark being used somewhere with the product.
Also, unless you have registered your trademark (see immediately below), the scope of your trademark rights will be limited to the area where your product is actually being sold or marketed. This means that somebody else outside the immediate area that your business reaches can adopt the same trademark for the same products and services and still be OKAY under the trademark laws. If you are not OKAY with this, you may want to pay close attention to the next section.
IV. Trademarks – Is Registration Necessary?
Do you have to officially register your trademark with some government office before it is protected? Not exactly, but registration can be a strong benefit in the long-run and ultimately make your trademark much more valuable to the company. As was discussed above, trademark rights are obtained the moment you use a word, symbol, or other identifier on the goods or services themselves. Registration with the Federal Government (through the United States Patent and Trademark Office, or USPTO) brings additional protections for your trademark that might not apply if you don’t register your trademark. Even registration of a trademark with a state government (while bringing some additional rights than no registration) cannot give you the same type of rights as a federal registration gives.
What does federal registration add to your trademark?
1. Priority: Registration with the USPTO is the equivalent of a placeholder. It puts your mark on the record and projects it across a wide geographic area, beyond even the limited geographic area that your product or marketing may reach. What this means is that if somebody else tries to use the same word, symbol, or identifier (or one that is even remotely similar in appearance) and they try to apply for a trademark, their quest will fail. Priority of trademark rights means your rights are superior to anyone else who comes along and wants to use a similar mark. For this reason, registration also allows a brand owner to expand the potential geographic range where their identifier will be recognized as a trademark.
2. The Ability to Expand the Geographic Area For Your Mark: When your business is growing and your product goes national, you want to ensure that your trademark scales up with the product. Nothing is more embarrassing (and cost prohibitive) than getting ready to scale up your national sales operations only to find that somebody else is already using the trademark. The trademark registration process has a way of minimizing the potential for this embarrassment. You see, when applying for a trademark, you (or your attorney) often do some grunt work before filing the trademark application, like running a search for other companies that are using the same mark. Knowing that your trademark is available, that it can be used across multiple states, and having the registration to lock up these rights will strengthen your confidence using the mark nationwide. In the process, you’ll save quite a bit of money and enhance your business’ reputation by not having to change a name during a nationwide push.
3. Additional Rights When You Go To Court: As much as people hate thinking about, going to court is sometimes required to stop other people from harming your business. A trademark registration gives you easier access to federal courts, where you stand to benefit from the prospect of higher awards (i.e. more money). A registration also makes it easier to demonstrate that you have a claim to a particular trademark and that the person injuring your business knew about this trademark when they first started using a similar name.
These are valuable, substantive rights (and not mere formalities) that can add some real teeth to your trademark. Plus, after 5 years of being registered with the USPTO, your trademark becomes incontestable, which means the trademark itself cannot be challenged as a competitor. Challenges to trademarks often occur when a case goes to court and the competitor who is accused of trademark infringement is trying to weasel out of an allegation that they did something wrong. Incontestability, which is easier to prove if a trademark has been registered, therefore removes a potential defense to a competitor’s trademark infringement.
I. Trademarks – What Are They?
A trademark is any word, name, symbol, or device that a person either uses to identify goods or services to a consumer or intends to use in connection with goods or services. This is a pretty expansive definition because it recognizes the fact that any type of product identifier can be a trademark, so long as it identifies the trademark owner as the source of the product. Sounds (NBC tri-tone sound), smells, colors (UPS brown trucks), product packages (contoured Coke bottle), even store designs (the Apple Store) are all types of trademarks because they identify the source of the trademark. The bottom line is that a trademark is any type of indicator that tells the consumer something about where the product came from.
II. Trademarks – Why Use Them?
Trademarks communicate something about you to the consumer, and they communicate rather effectively. Imagine trying to encapsulate the 50 year history of your company or the essence of the customer experience in a way that causes a consumer to want to buy your product. Trademarks are kind of like billboards that broadcast your message to consumers. Upon seeing your trademarked product on a shelf, a consumer will instantly know something about the product. In a world where so many other products call out for attention, a trademark is a way for a consumer to differentiate your product from all the rest.
You could use a series of words to identify your product (for example, Mac & Cheese, packaged in a generic box with neutral colors), but this product will have no way of standing out from the sea of other Mac & Cheese boxes sitting on the shelf.
III. Trademarks – What Are The Requirements?
A. A word, symbol, or other identifier that is distinctive
Because a trademark can consist of any type of word, symbol, or other identifier, the potential pool of trademarks for any given product is large. After all, you could come up with virtually any name or combination of symbols for your product. A word, symbol, or identifier must be distinctive in order to serve as a trademark. Distinctive is a legal term of art that basically means that the symbol chosen for the trademark must be attributable to the source and not simply descriptive of the underlying goods. There’s more about how you can make your mark distinctive on this page.
In general, if your word or symbol merely tells a consumer about what the product does or a feature of the product, you cannot claim such identifier as a trademark. SPEEDY for a delivery service or KLEEN for carpet cleaning are both examples of words that lack distinctiveness and which could not serve as trademarks.
B. Use of the word, symbol, or other identifier on a product or service in the marketplace
Besides being distinctive from other trademarks that are used on similar products or services, your mark has to be in use. Getting a trademark is a lot like getting other things in life: you have to go after them. There is no magical trademark deity that drops trademarks out of the sky like rain. This is not to say that you have to jump through hoops to get a mark (at least not that many hoops). Trademarks are only useful to the extent that you decide to make something of them. Nike’s trademark perfectly illustrates the concept: JUST DO IT.
So to convert a word, symbol, or identifier to a trademark, you have to make something of them, you have to use the trademark on the actual product or in connection with the service. Use on the product does not mean that the trademark is imprinted onto the product. You can use tags, stickers, booklets, or put the trademark on the side of the box that the product comes in. Just so long as a consumer can clearly see the trademark being used somewhere with the product.
Also, unless you have registered your trademark (see immediately below), the scope of your trademark rights will be limited to the area where your product is actually being sold or marketed. This means that somebody else outside the immediate area that your business reaches can adopt the same trademark for the same products and services and still be OKAY under the trademark laws. If you are not OKAY with this, you may want to pay close attention to the next section.
IV. Trademarks – Is Registration Necessary?
Do you have to officially register your trademark with some government office before it is protected? Not exactly, but registration can be a strong benefit in the long-run and ultimately make your trademark much more valuable to the company. As was discussed above, trademark rights are obtained the moment you use a word, symbol, or other identifier on the goods or services themselves. Registration with the Federal Government (through the United States Patent and Trademark Office, or USPTO) brings additional protections for your trademark that might not apply if you don’t register your trademark. Even registration of a trademark with a state government (while bringing some additional rights than no registration) cannot give you the same type of rights as a federal registration gives.
What does federal registration add to your trademark?
1. Priority: Registration with the USPTO is the equivalent of a placeholder. It puts your mark on the record and projects it across a wide geographic area, beyond even the limited geographic area that your product or marketing may reach. What this means is that if somebody else tries to use the same word, symbol, or identifier (or one that is even remotely similar in appearance) and they try to apply for a trademark, their quest will fail. Priority of trademark rights means your rights are superior to anyone else who comes along and wants to use a similar mark. For this reason, registration also allows a brand owner to expand the potential geographic range where their identifier will be recognized as a trademark.
2. The Ability to Expand the Geographic Area For Your Mark: When your business is growing and your product goes national, you want to ensure that your trademark scales up with the product. Nothing is more embarrassing (and cost prohibitive) than getting ready to scale up your national sales operations only to find that somebody else is already using the trademark. The trademark registration process has a way of minimizing the potential for this embarrassment. You see, when applying for a trademark, you (or your attorney) often do some grunt work before filing the trademark application, like running a search for other companies that are using the same mark. Knowing that your trademark is available, that it can be used across multiple states, and having the registration to lock up these rights will strengthen your confidence using the mark nationwide. In the process, you’ll save quite a bit of money and enhance your business’ reputation by not having to change a name during a nationwide push.
3. Additional Rights When You Go To Court: As much as people hate thinking about, going to court is sometimes required to stop other people from harming your business. A trademark registration gives you easier access to federal courts, where you stand to benefit from the prospect of higher awards (i.e. more money). A registration also makes it easier to demonstrate that you have a claim to a particular trademark and that the person injuring your business knew about this trademark when they first started using a similar name.
These are valuable, substantive rights (and not mere formalities) that can add some real teeth to your trademark. Plus, after 5 years of being registered with the USPTO, your trademark becomes incontestable, which means the trademark itself cannot be challenged as a competitor. Challenges to trademarks often occur when a case goes to court and the competitor who is accused of trademark infringement is trying to weasel out of an allegation that they did something wrong. Incontestability, which is easier to prove if a trademark has been registered, therefore removes a potential defense to a competitor’s trademark infringement.