Author: Joshua Kushner

Trademarks 101

What can I trademark?

You, either as an individual or as a business, may trademark any available word, slogan, symbol, design, or combination of these elements, which identifies and distinguishes your goods or services from others. Availability depends primarily on how distinctive and/or unique your intended mark is as applied to the specific type of product or service your business offers.

Trademark law provides the greatest protection to the marks which are distinctive, that is, out of the ordinary. Types of inherently distinctive marks include: unique logos (e.g. the Adidas logo); invented words (e.g. Google®); fanciful or suggestive marks, i.e. words that suggest the quality or nature of the products or service, but don’t directly describe itself because it requires the consumer to use his or her imagination, or perception to understand what the product is (e.g. Netflix® or KitchenAid®).

Words that are common or ordinary receive less protection unless they have developed public recognition due to their long use in the market place. These type of marks are said to have acquired a secondary meaning.

Generic marks are common words that describe the product itself and can not be protected by trademark laws. For example, the words Blue and Jeans could not be protected by trademark if used on a clothing product consisting of blue jeans.

Why would I want to seek trademark protection?

The primary purpose of a trademark is to prevent unfair competition by giving product owners and service providers a means to help their consumers identify and distinguish their product/service from market competitors. The value is apparent in a brand like Rolex®, which has become so notarized for high quality watch-making that it invited fake Rolex manufacturers into the market-place. The “Folex” manufacturers however were infringing on Rolex’s trademark by creating similar-looking products, but with materials and functional quality substandard in comparison to that of Rolex®. Trademark registration gives trademark owner’s like Rolex rights and remedies against these Folex makers and other competitors that attempt to infringe on the trademark owner’s rights.

The rationale here is that if Rolex®, for example, has spent time and money in presenting its high quality watch product to the consumer, Rolex® should be able to protect its investment by being allowed to prevent others from using the trademark and profiting from the owner’s investment. The value of the trademark is determined by the strength, or goodwill, of the association between the trademark and its source, which is determined ultimately by the consumer ie in this example the millions of people worldwide who vouch for the quality of Rolex® watches.

What is the difference between copyrights, trademarks and trade names?

Trademarks are identifiers of commercial products or services; business names, or trade names, identify a business for non-marketing purposes; and copyrights protect individual, original works of expression.

The non-marketing uses of trade names include uses on bank accounts, company letterhead, web domain, contracts, ie uses which identify the entity. Trade names can also be trademarks when used to identify specific goods and services, however just because you filed your “Molly’s Cookie’s LLC” in California and secured www.mollycookies.com web domain, this does not mean you now have trademark protection for “Molly’s Cookies”. Trademark protection is separate from trade name protection. Smart new business owners, if they want to trademark their trade name, will first ensure availability of the trade name as a trademark BEFORE registering their company (as it is often much easier to obtain a trade name vs. a trademark, even for the same words and in the same jurisdiction).

Copyrights do not generally protect individual words or slogans but will protect creative designs. Therefore, a logo design could be protected by both copyright law and trademark law.

A copyright does not exclude others from developing similar or even the same design as long as the creation is independent from and the creator has not had prior access to the other design. Similar trademarks, however, might not be permitted if the public would be confused or if the value of a strong mark would be diminished or tarnished if the similar (but not identical) mark was also registered (dilution).

The owner of a trademark is the first to use the mark in interstate commerce and requires continuous use in commerce to retain ownership. The owner of a copyright, depending on the circumstances, is either the creator or the employer and no publication, use or distribution is required.

The copyright owner has rights for a term of 50, 75, or 100 years depending on the entity owning the copyright. The trademark owners rights are indefinite as long as the trademark is properly used and protected by the owner.

How do I protect my trademark?

Preventing infringement is the best defense in protecting a trademark. Preventative measures which can be taken include:

• Federal and State Registration: A trademark does not need to be registered for the owner to prevent others from using a trademark or from using a confusingly similar mark. However, federal registration provides certain legal advantages to the owner when pursuing infringers like the Folex manufacturers. One advantage is that trademark registration provides a constructive notice to the public which prevents Folex, for example, from claiming that they did not know the Rolex mark existed. It is important to note however, a trademark can be federally registered only if it was first used in interstate commerce (i.e. you have already started conducting business using the mark you wish to register). Also note that when you register the trademark, the trademark is registered only in the class of goods or services for which it is used. So while Rolex® enjoys trademark protection for watches and similar products, it is possible that a software company selling IT services may trademark “Rolex Software” or a similar name, that is if the USPTO (U.S. Patent and Trademark Office) determines that the public would not be confused by the use of the mark in this distinct class of goods or services. That said, it is possible to have multiple owners for similar trademarks as long as 1) the goods and services are not related, 2) there is no consumer confusion as to the source of the goods and services, and 3) there is no dilution of a strong mark (i.e. if Rolex Software has a bad, or even no reputation, the trademark application will still be denied, as USPTO is likely to determine that approval would diminish the already established Rolex® brand).

Proper use of the trademark by the owner is also important to its protection. The quality of the goods and services must be maintained for consumer confidence and for strengthening the trademark. The owner should not weaken its own trademarks by using many alterations and blurring its distinctiveness. If, for example, Rolex® began producing cheap metal watches under the same brand name, this would be considered a weakening of their trademark. To the contrary, if Rolex® began distributing high-quality bracelets or other fashion wear of the same standard and quality already established by their watches, then Rolex® could create a family of marks which keeps certain elements common among the additional product lines. If these common elements become recognizable by the public as trademarks of the owner, then it is possible for the owner to have broader protection for other marks that incorporate these same common elements.