TRADEMARK

What is the first thing I need to do?

Stop! Don’t make signs, don’t create packaging or labels, don’t create a website or set up a social presence. You must first know that your FANTASTIC name is one that you can use and protect! Chat with me when you want to talk this through, or read on to Learn Even More.

Just what is a trademark, anyway?

A trademark is your intellectual property and it’s yours BECAUSE YOU USE IT.

You spend a lot of time, money, and effort generating a reputation and good will with your customers and clients, a trademark is the perceivable element (words, an image, a jingle or sound, etc.) that allows current and potential customers to find you and benefit from that wonderful reputation.

Because that is the REASON for a trademark, all evaluations of potential conflicts between similar marks are done from the perspective of the purchasing public (how you feel about it doesn’t matter much to the court).

So, it’s not a copyright?

No, copyright is different.

If you write, paint, photograph, compose, record, mix, sculpt, etc. then you are likely producing something that needs copyright protection.

PLEASE don’t share, post, offer for sale, etc. anything you create without talking to someone about copyright protection. It is VERY easy to lose tremendously valuable rights if you don’t. (AND it isn’t hard or expensive to secure those rights, either) You should go here to Learn Even More about Copyright.

I want to pick a defendable trademark, are they all the same?

Nope — not even close.

Some trademarks are naturally strong from the moment they appear. Think of made-up words or unusual names applied to products that have nothing to do with the word itself.

Other trademarks start out much weaker.

Trademark law often describes this as a spectrum of distinctiveness, ranging from descriptive marks on the weaker end to arbitrary or fanciful marks on the strongest end.

Marks based on descriptive language or personal names fall on the weaker end of the spectrum. They can absolutely function as trademarks, but the law tends to look at them more carefully.

Why? Because the law tries to avoid giving any one business exclusive control over words that others may reasonably need to describe their own goods or services.

The good news is that weaker marks can become much stronger over time as customers begin to associate the mark with a specific business.

How do weaker marks become stronger over time?

Through time, use, and increased exposure, a weaker mark can acquire what trademark law calls “secondary meaning.”

Secondary meaning is what happens when the public starts to connect a word or name with a particular business instead of its ordinary meaning.

For example, a surname by itself is just a name. But if that name is used long enough, consistently enough, and prominently enough in connection with a business, customers may begin to recognize it as a brand.

At that point the name has developed secondary meaning — a trademark significance beyond its everyday meaning.

This concept becomes especially important for businesses built around personal names.

How strong can they get? Can they become INCONTESTABLE?!

Well, for a certain definition of “incontestable” they absolutely can.

“Incontestable” is a term used in U.S. trademark law to describe a registration that has reached a higher level of legal stability.

After certain requirements are met, a trademark owner can file a declaration stating that the mark has been in continuous use for several years and has not been successfully challenged.

Once accepted, the registration becomes incontestable, which limits the types of legal arguments that can be used to challenge the mark.

It doesn’t mean the trademark can never be disputed. But it does remove several of the arguments that are sometimes raised against younger trademarks.

I want my trademark to become incontestable! … uh, how?

When the time comes, you will file a Section 15 declaration of incontestability with the USPTO. (the name comes from Section 15 of the Lanham Act, specifically 15 USC § 1065)

A Section 15 declaration is the filing that allows a federal trademark registration to become incontestable.

It can generally be filed after a mark has been continuously used for five years following registration, assuming there has been no successful legal challenge to the mark.

Once accepted, the registration becomes incontestable, which limits the types of legal arguments that can be used to challenge the mark. This status arises under Section 15 of the Lanham Act (15 U.S.C. § 1065).

For certain types of marks — especially those that started life as descriptive terms or personal names — this can significantly strengthen the legal position of the trademark.

For a deeper discussion of how this works in practice, see our Insight on Section 15 Declarations.

There’s a cost to these filings, right? Do I have to do it?

No, but it is often a very good idea.

Many trademark owners are focused on obtaining the initial registration and assume that the process ends there. In reality, trademark rights evolve over time, and certain opportunities to strengthen a registration appear only after years of use.

Filing a Section 15 declaration when it becomes available can make it much harder for others to challenge the foundation of the trademark later.

How do I find out if it’s reasonable for me to use my trademark?

Honestly, searching the internet isn’t a bad place to start, BUT it won’t really answer the question.

What if you find something that looks a lot like what you were planning to use? Perhaps you don’t use it only to discover later that it wouldn’t have been a problem! WORSE, you may not find a trademark that IS in use, protectable, and protected and get a stern letter from an attorney telling you to stop after you’ve invested a lot of time and money!

(there is NO requirement to be on the internet to have a valid trademark!)

This is where a trademark clearance search comes in.

Often called a “knockout” search it is an extensive, if limited, search of applicable databases, websites, domain name registrations, business registrations, phone books, etc. to find those trademarks in use that a court may find confusingly similar (remember, the evaluation of confusion is from the customer perspective!). I provide trademark search services that are easy to budget for!

Alright, it looks reasonably safe to use my trademark, what’s next?

PROTECTION! Or, at least, priority.

Perhaps you aren’t quite making sales just yet, or perhaps those sales are only local (federal, or nation-wide, registration is only an option when your work affects something the federal government can regulate), that’s ok! Let’s chat about registration at the state level.

Remember, trademark rights stem from use. You HAVE TO BE USING IT to have protection!

Federal registration applications can be done with an “intent” to use, and with the right handling of the application you can have up to three years to show that you are using the trademark “in commerce,” as they say. The value of this option is the priority date that you get with the filing of the application. So let’s talk about it.

Again, state level protection is also available and a very good idea if you won’t be going interstate, or if you just don’t know when.

I provide trademark registration services that will get you the important protection your brand needs.

So, is that it?

NO, SORRY.

Perhaps nothing worth having is free of maintenance. The up side is that as long as you are using it without an inexcusable interruption the trademark is YOURS! But don’t let your AWESOME trademark slip away from you for lack of diligent care.

I provide services that will make sure you stay on top of required filings, get warnings should someone else be seeking to register a trademark that is potentially confusing with yours, and guidance on how to use your trademark correctly so you maintain your protection!

That’s MY trademark, what about someone else’s?

GREAT QUESTION! How you use your trademark is important, but how you use someone else’s trademark is also important.

This occurs most commonly in advertising efforts such as, “Compare our brand to Brand X!” Notionally, this is a completely reasonable thing to do, but it shouldn’t be done without some understanding of unfair competition law.

Legal support in this area is often provided during marketing plan reviews, by joining planning meetings, or just through question-and-answer sessions.

Don’t play this one by ear; you are NOT the only go-getter out there jealously defending their brand and related trademarks!

If my trademark is so valuable, can I sell it?

Why yes you can! But, not by itself (this is called an “assignment in gross” and it just doesn’t work).

However, if you are getting out of the wheelbarrow manufacturing business and you are selling it, do NOT just give away your “Sasquatch Wheelbarrows” trademark! People love your wheelbarrows, and that’s because of the care you’ve put in to your business.

Your trademark represents the good will you’ve built. The people who want to buy your business should NOT get that good will transferred to them for free!

Let’s chat about how to make this assignment effective and lucrative. Go here to Learn Even More about licensing.

So, what about that little ™ or ® thing? Do I have a trademark if I use those?

No, you don’t. Trademarks rights stem from use, not cute superscripts.

If you are using something AS a trademark (let’s chat to make sure you are actually doing that) then you have the rights. The “TM” superscript is just a way to let people know that you mean for that term, phrase, or image to be a trademark. It’s not mandatory, but it is a good idea. For bonus points use the “SM” superscript (Service Mark) if what you are selling is a service. These are registrable in the “same manner” as trademarks.

The “R-ball” is different. That means that you have a federal trademark registration issued by the USPTO. Do NOT use this unless that is the case. It’s a violation of federal law (YIKES). However, once you do have this registration be SURE to use the R-ball symbol as any infringer must have notice before your enforcement will be effective (in essence, using the federal registration symbol keeps you from having to call everyone on the planet and tell them in person).

What about other countries?

We’ve been talking about state and US federal level registration which extends your rights to those respective borders. Depending on the circumstances you may have some rights that transcend these boundaries … but not many.

Do you have a particular country in mind? Do you have dreams of world domination and want to protect your brand everywhere? Perhaps you will be working with a manufacturing company in China (this is a very common circumstance). Think about where you exist or may exist in the future and let’s chat about a strategy for extending the protection of your trademark as necessary; there are options.

Now that I’ve registered my trademark the government will protect it, right?

Well, no. YOU will have to be vigilant and watch for infringement. YOU will have to enforce your rights.

For the most part the government won’t do this for you (but I can help). One exception is the U. S. Customs and Border Protection. You can record your federally registered trademark with them and they have the authority to “detain, seize, forfeit, and ultimately destroy” infringing product. (so dramatic!). I can help you get and maintain this excellent service from the US CBP!

Got it! I’m merciless! None shall use my trademark!

I appreciate your passion, but some use can’t be stopped.

In fact, the protections provided your trademark are quite narrow! As Mattel found out. Chat with me about watching out for use that CAN and SHOULD be stopped!