Trademark use, protection and enforcement are key components to any enterprise, whether startup, growth stage or Fortune 100. Here are some key points that decision makers over marketing should keep in mind.
#1 – Trademark law protects the brand.
Trademarks are intellectual property. The different categories of intellectual property can be confusing, and as you are identifying and evaluating the different legal issues your business faces, you should seek to understand the role that each category plays. That way you can determine where you should focus your resources to cover the organization’s greatest needs.
Every business has trademark issues. Trademark law gives exclusive rights to providers of goods and services to use the company’s distinctive marks in connection with the company’s goods and services. A trademark (or a service mark, collectively “marks”) identifies the source of goods and services. So while the company is the one that may claim rights in the trademark, it is useful to remember that the ultimate reason for trademark protection is to keep members of the consuming public from being confused about where the goods or services come from.
Trademarks differ from other forms of intellectual property. Copyright protects the organization’s creative output. Patents protect inventions. Trade secrets protect commercial know-how that is kept confidential by the company.
#2 – Registration is not necessary, but it is a good idea.
At least in the U.S., trademark rights arise from using the mark in commerce. This means a couple of different things. For one, the law will provide your company with exclusive rights to use a certain mark in connection with certain goods or services by virtue of your having used the mark in commerce in connection with those goods or services. But there are limits to this protection — you can only claim that exclusivity in the geographic area in which you’ve actually used the mark.
Getting a registration with the United States Patent and Trademark Office (USPTO) helps you in this area. Once the USPTO awards your company a registration certificate for the mark, you are the presumed owner of the exclusive rights to that mark in connection with those goods and services anywhere in the United States, regardless of where you have actually done business. A registration carries with it other benefits as well — you can use the “circle R” designation with the mark, and your registration serves to help give notice to (i.e., warn) other companies who might consider adopting the same or similar mark.
#3 – Descriptive words and phrases generally cannot be trademarks.
Trademark law does not allow a company to claim exclusive rights on words or phrases that merely describe the product or some characteristic of it. This is a common issue that companies face when deciding on a mark for adoption and registration. Descriptive terms are good in that they convey to the consuming public what the product is all about. But descriptive terms are to be avoided in that they are not distinctive. Unless a mark is distinctive, the trademark laws do not recognize it as a trademark or service mark. A mark can be “inherently distinctive” in a number of ways. It may be a made up word (e.g., Kodak), “arbitrary” in that the original meaning of the word does not correspond with the products (e.g., Apple for computers), or “suggestive” – sort of describing the product but requiring a step in imagination (e.g., Beautyrest for mattresses). Or the mark can be a design. Descriptive words and phrases can become distinctive over time (usually after 5 years of use). This is known as “acquired distinctiveness.” Generic terms can never serve as trademarks.
#4 – Smart business owners do trademark clearance.
Trademark clearance is the process that a company goes through before actually using or seeking to register a mark. The goal is to become reasonably sure that the use of the proposed mark will not put you at high risk of infringing someone else’s mark. Clearance also helps prevent wasting resources on a trademark application that will get rejected by the USPTO because there is already a similar mark that someone else has applied for or registered.
Clearance usually has a couple steps. Many companies have their trademark counsel perform “knockout searches” to identify any obvious risks of conflict. This can be as simple as doing a web search and a search of the USPTO database for marks that look and sound the same and are for similar goods or services. Before going all out on adopting and seeking to register a mark, however, it is a good idea to have trademark counsel perform a comprehensive search and advise on the results. A number of parties offer comprehensive search services. The key question in trademark clearance is likelihood of confusion. A mark owner needs to be reasonably sure that using the proposed mark in commerce will not cause confusion among the confusing public as to the source of the goods or services offered under the mark.
#5 – Trademark fair use is a thing.
In some circumstances a company can use another company’s trademark without much risk of infringement. Generally this falls under the heading of “fair use.” Classic fair use is when one company uses another’s mark in just a descriptive sense. For example, a laundromat may say in the text of its advertising that it is next door to Wendy’s. In that case, the use of Wendy’s is probably not an infringement. Nominative fair use occurs when a company uses another mark to describe some characteristic of that mark. A commercial for Toyota, for example, may use the Honda trademark for purposes of comparing the two product lines.
#6 – Use it or lose it. Protect it or lose it.
Trademark rights come from the company’s use of the mark, and there is always a risk that those rights might be abandoned. If a company stops using a mark, a court may find that the organization has abandoned its rights, and another company would be free to adopt and use the mark. The USPTO requires that documents be filed every few years to ensure that marks that are listed as registered remain in use. If a company does not take appropriate steps to ensure its mark is distinctive in the marketplace, it can similarly be found to have abandoned its rights. So mark owners should do some “policing” to see that there no one else uses a confusingly similar mark on similar products. If the company discovers such use, it must be diligent in seeking to get the other party to stop, through sending a cease and desist letter or through litigation when appropriate.