Trademark Basics – Volume I

(This is the first in a series of posts that are going to focus on the basics of Trademark law. I'll have a similar series on Patent, Copyright, and Trade Secret law in the future. These are directed at non-lawyers as well as lawyers who don't practice intellectual property law, and will be consolidated on my website at www.kdtalcott.com.)

So your business is up and running – maybe for a couple of weeks, maybe for years – and one of your friends asks you “Did you trademark it?” Read this before you respond, because you might have 'trademarked it' without even knowing it. And even if you have, you might still want to register it.

What is a Trademark?

People confuse the three main types of intellectual property all the time. Patents, trademarks, and copyrights get conflated in the minds of people who have better things to do than to work in the intellectual property law field. So first, make sure you're clear about what a trademark is.

A trademark is usually a word or a logo that tells you something important about a product or service. (I'm generally going to refer to products from here on out, but understand that a trademark can relate to a service as well.) From a consumer's perspective, a trademark tells the buyer that a particular company is responsible for the product, and the product has certain qualities. Let's run through a a couple of examples.

My spouse will only purchase Tide laundry soap. Her mother always used Tide, she has always used Tide, and our family has always used Tide as a result. The trademark “Tide” on the box or bottle tells her that the laundry soap inside cleans clothes well and is of a type that no one in the family is allergic to. Her loyalty to the Tide brand extends across its product line, to both powder and liquid forms of the product, and to versions of both that add various extra ingredients such as bleach, fabric softener, or fragrance. In the words of trademark law practitioners, the mark “Tide” serves as a “source identifier” for her. To the people who make Tide, she is probably their dream consumer.

Let's talk about beer. In the trademark context, alas. Bass has been brewing beer since 1777. In 1875 its red triangle logo was registered as British trademark number 1. The red triangle is an example of a symbol that consumers, including yours truly, look for to tell them that the product inside came from the Bass brewery. As a result, they expect the beer to have certain characteristics – for the Pale Ale version, a balanced hop-malt taste, mild carbonation, caramel color, and a soft, cream-colored head (these are my tasting notes; yours may differ, but what's important is that it represents what this consumer has come to expect from a bottle of pale ale bearing the red triangle logo). The folks at Bass are very proud of that red triangle logo, and I'm sure work hard to make sure it consistently has the qualities that consumers have come to associate with the product.

That's not to say that every mark has to be unique. Depending on the mark, it's possible to have the same or very similar marks that can coexist because they cover different types of products or services. The mark “United,” for example, has been registered by different companies for shower enclosures, real estate franchise services, lighting ballasts, bicycle accessories, grocery stores, rolling mills, pool cue stick joints, fresh vegetables, transportation of goods by truck, transportation of persons, property, and mail by air, and dozens of other products and services. This is allowed because consumers are able to compartmentalize their perceptions about products and services. Most consumers who are looking for moving van services and see the name “United Van Lines” don't believe that “United Airlines” is provider of those services, and vice-versa. In legal terms, there is little “likelihood of confusion” between those similar “United” marks for those different types of services.

The Trademark Office requires a registrant to declare the types of goods or services that its mark is to cover when it decides whether to grant an application for a registration. We will talk about those “classes” of services and how different types of trademarks can get you broader or narrower protection a bit later. (“United,” you might guess, is on the narrower side of things.)

Other things besides words can serve as trademarks: the shape of a product or container (think the classic Coca-Cola bottle); the color of a product (think Owens-Corning's pink building insulation); even sounds (think the NBC television chimes). But ordinarily trademarks are either words (which can be in regular letter form or logo form) or symbols.

How do I get one?

There is a dirty little secret that many trademark lawyers won't tell prospective clients: if you've been using a word or logo in a trademark-y way, you may have already acquired some trademark rights. (And no, the phrase “trademark-y way” is not typical lawyer-speak.) That is because trademarks rights arise under common law, meaning they begin to build up as soon as you start using a mark “in commerce” -- basically, when you begin selling a product and using the mark to identify it.

You're not off the hook, however. There's a reason that so many companies go to the trouble to register their marks with the Trademark Office. The so-called “common law” trademarks only provide limited protection against infringement by others. In particular, the geographic scope of their protection is limited to the area in which the product has been sold. So if my “Acme” (to borrow Wile E. Coyote's favorite brand) hair gel is sold only in the New York metropolitan area, and I have not registered that mark for hair gel, I am protected under common law only in the New York metropolitan area. If I take my product to Los Angeles, and another Acme hair gel is already being sold in that area, the owner of that mark can prevent me from selling my hair gel under that name in that market. And if the Los Angeles Acme has registered its mark with the United States Patent and Trademark Office, and did so before I began selling my Acme hair gel, it might even be able to stop me from selling my product back in New York.

In many cases, however, keeping it local makes sense and the common law rights may be enough. If your market it fixed and you don't intend ever to expand your distribution or geographic scope, then you might be able to rely on your common law rights to protect you. This assumes you haven't picked a name that is already registered by someone else for a similar product (such as “David's Cookies” for your baked goods) or, for really famous products, almost anything (such as “Microsoft” for your line of tiny plush animals). We'll talk about selecting the right mark a bit later. If you think you want to stick with your common law rights, it might make sense for you to consult with an attorney who practices in this area about your particular situation.

So what do I get if I register my mark?

To increase the protection for your mark, you need to register it with the United States Patent and Trademark Office. The registration process is a fairly lengthy one, because each application is examined by the Trademark Office and compared against all of the marks that have already been registered, as well as against common law marks that the trademark examiner is able to find on her own (thank Google for vastly increasing the effectiveness of these common law searches). Registering a mark is not cheap, either. The total cost to register a mark – from application to registration – can easily exceed one or two thousand dollars, with Trademark Office fees accounting for about $500 of that and legal fees the rest.

So why go to the trouble? First, a registered mark can be protected throughout the United States, not just in the area in which it's been used. I once tried to secure a registration for a bakery in New York that was refused because a chain of three bakeries in the San Francisco bay area had registered the same mark for the same type of service. Other benefits of registration include:

• the ability to sue in Federal Court (something you might not be able to do otherwise if your opponent is from the same state as you)
• the ability to seek enhanced damages – up to three times your actual damages, where the infringement is deemed “willful” – plus attorneys' fees (this is rather rare, however)
• the ability to have your mark declared “incontestable” after five years' use (making it harder to attack your mark in court)
• the ability to use the ® symbol next to your mark – unregistered marks should only use the “TM” designation
• the ability to register your mark with US Customs, which can help stop importation of counterfeits
• providing ready notice to others of your mark – the Trademark Office's database is the first place people should look before adopting a mark
• making it more difficult for a cybersquatter to register your mark as a domain name (trademark owners have some benefits when seeking to have the domain name turned over to them)
• when you decide to go global, giving you the ability to use the registered US mark as a basis for securing foreign trademark registrations

So there are real benefits to registration. My next post will discuss the different types of registrations – for example, there is a way to “reserve” a trademark registration even before you begin to use the mark, by way of an “intent-to-use” application – and will go into some detail about how the registration process works.