traverselegal - March 21, 2012 - Protecting Your Trademark from Infringement, Trademark Basics, Trademark Law
Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.
Welcome to Trademark Law Radio. My name is Trademark Attorney Enrico Schaefer and today we are going to be talking about name and brand protection.
If you are going to start a new company, launch a new product, a new service, a new slogan or new logo, you are going to need to protect that. And what I mean by protect the logo, the name or the mark, is that you want to be the only one in the world that can use that brand that you have picked for your company or product or service. You want to be the only one in the world that gets to use that for your goods and services. So, if you are a faucet company and you are manufacturing kitchen sinks and similar things, you want to be the only one who gets to be Delta Faucets. If you are an airline, you want to be the only one that gets to be Delta Airline. Now, Delta Faucets and Delta Airline could co-exist in the trademark world because no one is likely to be confused about who is who.
In terms of name and brand protection, there are two levels of protection. One, there is common law protection. Two, there is trademark registration which gets you some super protection.
There are two different types of marks you can protect. There is a trademark. And a trademark is for goods, products, tangible things that you can sell. This is what we normally think of when we talk about brand protection, but you should know that if you happen to sell services, then you actually would be getting a service mark as opposed to a trademark. So, if you are a consultant, an accountant, a lawyer, or a doctor or you sell your own intellectual property, your own ideas, your own assistance and help in the service market, then you are going to be service mark.
Now, what you want to do is make sure that you tell the world that you are claiming exclusive use over this particular mark, whether it is a trademark or service mark. So, if it is good (a product), you are going to use the TM for trademark and you are going to add that to the right and top of your word, symbol or logo. So, in the case of Microsoft, you would add TM to the right of Microsoft™. That would tell the world that that you are Microsoft and you are claiming trademark rights in this word, in this design, in these colors, in this logo, etc. So, TM designates trademark and it designates essentially a common law trademark, meaning you have not achieved the circle R (®)yet. You are not registered, but you still are claiming trademark rights. The goal is to get registered and get that circle R, but you got to get through the trademark registration process with the USPTO or a foreign trademark service in order to get there. So, always add the TM to your trademark while you are going through the registration process. And even if you are not going to get registered, you should add a TM for your trademark in order to tell the world you are claiming exclusive rights to this word.
If you happen to be a service company like Quicken that offers consulting services for loans or loan service, then they would use an SM for service mark and telling the world that they claim exclusive rights over this mark and we provide services. So, Quicken would use the SM. Now, obviously, all of these companies, Microsoft, Intel, and Quicken have a registered trademark, so they would go directly to the circle ® to tell people that they have a registered trademark, and they would put that ® in place of the TM or SM (Microsoft®, Intel®, and Quicken®). So, that is what you need to be thinking about in terms of telling the world, and providing notice to the world, that you are claiming trademark rights.
Understand that if you get registered, you get a number of tremendous benefits that provide you the leverage you are going to need in order to protect your trademark. That really is the Holy Grail of name and brand protection, to get the circle ®. The registration process usually takes around 12 months. A good trademark attorney can get your trademark through the trademark registration process in about 12 months and you can then start using the circle ®, after registration, next to your trademark telling the world I claim exclusive rights and, in fact, I am registered.
So, let’s talk about some of the benefits you get if you are registered. You get a presumption of validity that people can’t necessary attack your trademark. You get a presumption that you are first. You get super rights for anyone who engages in intentional infringement. You definitely get a lot of benefits. If you are going to send someone a trademark infringement threat letter, you want to be registered.
Before you file for trademark registration, you need to understand that you already have common law rights. Now, common law trademark rights allow you to claim first use, allow you to send a trademark infringement threat letter. If you put the TM in there, you are providing notice; all that is good. But, understand that before you file, you still have trademark rights. And in the United States, under the USPTO law, it’s still the first person to use the mark in commerce that is the one that is going to have the first common law trademark rights.
Now, let’s talk about picking a name. Picking a name is always an extremely challenging thing because you’ve got to pick a name for your brand or pick a name for your company. So, go to your partners and start brainstorming. Try to think of things that are non-obvious. An arbitrary or suggestive trademark is much better than a descriptive one. Everyone always wants to name their company after what they do, for example, Jones Consulting Service or Car Parts, those are terrible trademarks. You want something that is arbitrary that could only mean you. Find at least three names that you can all agree on that sound like they would be a good brand. Is it pronounceable? Is it something that people will remember? Is it easy to spell? Then, after you pick your three names, you are going to have to go back to your trademark attorney and you’re going to have to have them do a trademark clearance for those three names to see which, if any of them, is available in the market in your goods and services. It could very well be that someone else is already out there using something similar, so let’s talk about that.
Trademarks are not literal. That is to say, that just because you pick a trademark and no one else is using that exact trademark, does not mean that there is not a trademark infringement problem. If you were to pick Apple Fences for your trademark, chances are you could do that even though there is an Apple Computer, because no one is going to think that Apple Computers is selling fences, so there’s no likelihood of confusion. So, if you were to pick Apple, and you were to say, “Well, I looked at Apple Fence and I didn’t see any other companies that are named Apple selling fences.” But the trademark office – the examining attorney – is going to look at all kinds of variations of the word Apple. He’s going to do Aple, Apel, Appal, and all kinds of variations because anything that is phonetically similar or sounds like it might be the same, might potentially infringe.
So, a good trademark registration attorney will know how to conduct a trademark clearance search in order to tell you what the risk is if you should pick that trademark for a brand. You do not want to pick a word, a symbol or design only to find out three years later that someone else has prior use rights, prior trademark rights in that word, and now you have to rebrand. You lose your entire investment in your brand and the cost of repackaging and rebranding is incredible. So, the USPTO.gov is the website where you can learn a lot about trademark law, it’s certainly going to have a lot of guidelines and there are online forms. One of the questions we always get is “do I need a trademark registration attorney in order to file my name?” and the answer is no, technically, you don’t. But it sure is a good idea because there are a lot of fields that have to be filled out and a lot of things that have to happen. For instance, your trademark clearance, none of that happens at the USPTO level. If you don’t do a trademark clearance before registering, you could have a problem
My name is Trademark Attorney Enrico Schaefer and that’s all for today on Trademark Law Radio.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.