I think it’s safe to assume that most practicing attorneys never took a trademark law course in law school. It’s not a topic on the bar exam. It’s not a topic that comes up in family law, criminal law, real estate (usually), or estate planning. Most lawyers never have to deal with any trademark law issues, so I can’t blame people for not understanding the basics.
However, if you deal with entrepreneurs or other business people, you need to have a basic feel for trademark law issues, because trademark law is really about branding, and branding is critical to every small business. For the purpose of this post, I’ll use the terms “trademark,” “mark,” and “brand” interchangeably and know that almost anything that can indicate the source of goods or services might qualify as a trademark – name, logo, color, sound, smell, shape, etc.
For those of you who have trademark law experience, please give me the benefit of understanding this post is an incredible oversimplification. For those who know nothing about trademark law, please understand that there are nuances and exceptions lurking just under the surface and you shouldn’t use this article to make decisions, but rather just to frame the questions. And for the entrepreneurs reading this, consult your attorney before investing your money, time, and spirit into a brand.
Here are my top four tips about trademark law & branding:
Not all brands are protectable.
1Brands have to reach a certain minimum level of “distinctiveness” to qualify for trademark protection. “Lame names” (my classification; not a legal distinction) are products, services, or company names without a spark of creativity. These names are either the generic name of the product classification such as “beer” or “bread” or they are “merely descriptive” of the goods and services. At a policy level, we cannot let one company own the label of a product classification or the words used to describe the goods or services because allowing such exclusivity would stifle commerce. The attraction to use these names comes from the ease with which one can market the goods or services. You don’t have to spend any money connecting your product with your brand. You don’t have to invest a lot of effort telling me what “Fort Collins Heating & Air Conditioning” does. The name says it all. But from a trademark perspective, it merely describes the goods and services, so is not protectable (again, generally). When someone comes in and says another company is using “Heating & Air Conditioning,” in its name, I can’t do anything to stop the competitor, at least using trademark law.
To be protectable, a mark has to move into the realms of “suggestive,” “arbitrary,” or “fanciful.” This is a spectrum. The best way I’ve found to recognize when you’ve entered into this protectable (distinctive enough for protection) realm is to notice what happens if you say “I’m [founder name], President of [company name].” If people have to ask “what’s that” or “what do you do”, then you’ve probably moved out of the generic and merely descriptive realm over to the protectable side of the trademark equation.
This requires more investment in marketing. To connect what you do with who you are will require some investment of time and money. That investment of time and money to create good-will associated with your brand is exactly what trademark law is intended to protect.
I always advise clients to shoot for “suggestive” names because they are protectable as trademarks, but do not require as much investment of marketing resources as do arbitrary or fanciful brands. Yes, a completely made-up word is highly protectable from a trademark perspective, but it also costs a lot more money to build the brand connection in the mind of the consumer. Why do you think pharmaceutical companies create such strange names? Because they have the money to invest in marketing, and when they do, they need strong, distinctive trademark awareness and protection.
Most small businesses would do well to come up with a suggestive brand that triggers the emotion felt by a satisfied customer and work with that. Suggesting the right emotions is a powerful branding & marketing tool because it gives one’s designers and writers something to work with and leaves the customer thinking “this is a clever name, and these are clever people.”
Trademark law is about consumer confusion
2People fall in love with their ideas for product or service names, and then log on to get the domain name they would like to use—and it’s taken. So, they change a couple letters in the string to get the domain name, and think they’ll be OK. They progress to spending thousands of dollars on marketing campaigns and other brand-building activities. A little time later, they get a letter on legal stationery telling them to stop using the brand they’ve just spent a lot of money and time launching. They don’t know what to do. They thought by just changing a letter or two they would be fine.
They were wrong.
The brands don’t have to match. Matching may be the test for securing a domain name, or even a company name in many states, but it’s not the test for trademark infringement. The test for trademark infringement is:
Whether the defendant’s use of her trademark is likely to cause an appreciable number of consumers to be confused about the source, affiliation or sponsorship of the goods or services.
Does the use create a likelihood that consumers will associate the defendant’s goods or services with the plaintiff, and think that the goods or services are produced or endorsed by, or otherwise affiliated with, the plaintiff? If so, there will be trouble.
Make sure your clients understand this point. It could save them thousands of dollars.
It’s a race to use the brand, not to register the brand
3Finally, I’ve had people come in and say “We’ve come up with this brand we want to use, but someone is already using it for something kind of like what we have in mind. We checked the database at the United States Patent & Trademark Office and they haven’t registered the brand. We want you to file this right away so that we can use it and make them stop.”
It doesn’t work that way. Nor should it. Trademark rights vest in the person who is first to use the distinctive mark in commerce, not who registers it first. So, I let the client know this and we go back and dig deeper for what usually ends up being a more suggestive name.
The next question is what counts as “use in commerce.” Briefly, for goods, it’s when the product is actually ready for a transaction under the brand—goods on shelves. For services, it’s when one makes a bone fide offer to provide the services—which usually manifests as a website offer.
In either case, one can race to file an “intent-to-use” application and establish a “constructive” first date of use at the date of application filing for brands that will take a while to develop and get into the stream of commerce. Intent-to-use applications are beyond the scope of this post, but should be a real consideration when there are either extremely quick development cycles with low barriers of entry for competitors, or very long and extremely costly development cycles. Think iPhone apps or coaching packages on the short extreme, or food/medical products on the timely extreme.
Use the TM superscript right away
4The TM superscript stakes your claim that you intend something to be your brand—the indicator of you as the source of this product or service. It doesn’t cost anything to use. It doesn’t really do much of anything, but most people do not understand it, so it works.
The TM superscript is much like the home security sign in someone’s yard. It will keep the honest people out, but who knows if there really IS a security system in the house or if that security system is turned on or monitored.
Finally, let clients know that they can only use the ® mark after their certificate of trademark registration from the United States Patent and Trademark Office has issued.
Obviously, I’ve not covered everything someone should know. So, I encourage all of you trademark lawyers out there reading this and writing down notes like “you should have told them about . . .” to post comments.