It’s the moment many of you have been waiting for. Today, we’re diving into the fascinating world of trademark law.
This post is about basic trademark principles. For some of you over-achievers, this will be review. Regardless, I think this primer is necessary before we can really tear into the subject with ferocity. And we will. Oh yes, we will.
But first we're going to start at the beginning and answer the following important questions:
⇒ What is trademark law?
→ Product marks versus service marks
⇒ Where does trademark law come from?
⇒ Isn’t trademark the same thing as copyright?
⇒ Do I have any trademarks? How do I get some?
→ Be first in your market
→ Be distinctive
⇒Trademark law's guiding principle: don't confuse the consumer
⇒ Limitations on trademark rights
→ Trademark does not protect disparaging or lewd marks
→ Trademark holders do not “own” the words, logos, or slogans themselves
→ Parodies of trademarks are permissible
→ Non-commercial uses are permissible
→ News reporting and product comparisons are permissible
⇒ Caution! The very famous marks exception!
⇒ Should I register my trademarks?
This is the part of the post where I remind everyone that this post is not legal advice and I am not your attorney. If you have a trademark issue, you should consult a qualified attorney to give you custom-tailored advice.
Okay. I can’t wait any longer. Let’s talk trademark.
This post is about basic trademark principles. For some of you over-achievers, this will be review. Regardless, I think this primer is necessary before we can really tear into the subject with ferocity. And we will. Oh yes, we will.
But first we're going to start at the beginning and answer the following important questions:
⇒ What is trademark law?
→ Product marks versus service marks
⇒ Where does trademark law come from?
⇒ Isn’t trademark the same thing as copyright?
⇒ Do I have any trademarks? How do I get some?
→ Be first in your market
→ Be distinctive
⇒Trademark law's guiding principle: don't confuse the consumer
⇒ Limitations on trademark rights
→ Trademark does not protect disparaging or lewd marks
→ Trademark holders do not “own” the words, logos, or slogans themselves
→ Parodies of trademarks are permissible
→ Non-commercial uses are permissible
→ News reporting and product comparisons are permissible
⇒ Caution! The very famous marks exception!
⇒ Should I register my trademarks?
This is the part of the post where I remind everyone that this post is not legal advice and I am not your attorney. If you have a trademark issue, you should consult a qualified attorney to give you custom-tailored advice.
Okay. I can’t wait any longer. Let’s talk trademark.
⇒ What is trademark law?
A trademark is any word, sound, symbol, slogan, or design that serves to identify a specific product or service brand.
Trademark law is a type of intellectual property, like copyright or patent. Because it was developed to protect businesses, trademark law does not protect your non-commercial, personal sites or projects. You don't have any trademarks for your non-commercial, personal projects.
→ Product Marks versus Service Marks
In your independent research, you may read about "product marks" and "service marks." For our purposes, they are the same thing. The only difference is that "product marks" identify specific products whereas "service marks" identify services. It's not rocket science, but I don't want anyone to have a panic attack when they read about these things on other sites.
⇒ Where does trademark law come from?
Both federal and state governments craft U.S. trademark laws. There are also several international treaties and organizations governing international trademarks. [See Registration, below, for some helpful links]
Federal and international laws are quickly supplanting state regulations now that so much commerce is national, if not international in scope. Regardless, if you get yourself in a spot of legal trouble regarding U.S. trademark issues, your attorney should consult relevant state laws in case there is a state law remedy or claim that may help your case.
⇒ Isn’t trademark the same thing as copyright?
Trademark is not the same thing as copyright. They have similarities and differences that lead people to frequently confuse the two. Both trademark and copyright are legal regimes that protect intellectual property. However, copyright protects your creative content (written words and graphics) from illegal unauthorized use.
Trademark, on the other hand, protects all of the little things that comprise your brand, including your product name, your logo, your slogans, your domain name, and your product dress. (In this context, “dress” can include packaging and website designs.) When you think "trademark," you should think "I'm branding my content." When you think "copyright," you should think "my content is my product."
⇒ Do I have any trademarks? How do I get some?
If you're brand savvy, and most of you probably are, then you may already own some trademarks. In order to trademark an element of your brand, such as your business name, slogan, product dress, you need to (1) be the first in your market to use the mark, and (2) make sure the mark is distinctive. Let's take a closer look at these two necessary elements of a protectable trademark.
→ BE FIRST IN YOUR MARKET
Trademark operates on a finders-keepers basis. If you use a distinctive mark first, you own it. No registration is necessary. An unregistered trademark is often called “common law trademark.”
You do not have to be the first person in the whole world to use the trademark, but you do have to be the first in your market. Your "market" is limited by the service and products you offer, as well the geographic area you serve.
→ BE DISTINCTIVE
In order for your mark to be a protected trademark, it must be distinctive. Generally, either a mark is "inherently distinctive" or it "acquires distinction over time." So long as your mark ends up distinctive, it doesn't matter which way you get there. Let's look at each method more closely.
1. The mark can be inherently distinctive. This means that the mark is so unique, a customer would recognize it immediately. It also means that your mark is not purely descriptive. It must do more than accurately identify the kind of product/service it is branding. It’s very difficult and probably impossible to trademark a name or slogan that is purely descriptive of your product.
2. Alternatively, the mark can acquire distinctiveness through continued use over time. If your marketing and branding campaign is sustained and pervasive enough that your business become synonymous with an otherwise unremarkable [ha ha. It’s a play on words!] mark, it qualifies as a protectable trademark.
In sum, if you are the first in your market to use the mark and your mark is distinctive, then it is your trademark and you have limited abilities to control its use.
⇒ Trademark Law's Guiding Principle: DON'T CONFUSE THE CONSUMER
Burn this principle of trademark law into your brain: trademark law is intended to prevent customer confusion.
Thus, if one of your marks (e.g., domain name, product name, logos, slogans, etc.) is too similar to a competitor, it may lead to customer confusion and may not be eligible for trademark protection. Alternatively, if your mark is too boring or descriptive, consumers won’t be able to tell your product from something else and you can’t trademark that. The prevention of consumer confusion is the founding principle of trademark law. From this guiding principle, all else flows. Zen.
Whenever you are confronted with a trademark issue, it's a good idea to ask whether the questionable conduct may lead to customer confusion. The courts are definitely going to ask that question.
⇒ Limitations on Trademark Rights
If you were the first to use a distinctive mark, you have the limited ability to prevent other people from using that mark. You only have "limited" ability because you can prevent other people from using it in order to prevent consumers from getting confused. But there are competing interests (for example, free speech). Thus, there are some limitations on your trademark rights. They are not absolute. Let's take a closer look:
→ Trademark law does not protect disparaging or lewd marks
That’s right. You can’t trademark “MySpaceSucks.” It’s disparaging and the trademark office doesn’t want to get in the middle of fights. Note: You can still register MySpaceSucks.com as a domain name, but you can’t claim any trademark rights to it. You also can’t establish trademark rights to lewd names, slogans, or logos. I’m sure I don’t have to give you examples here. Use your imagination.
Also, if someone is saying bad things about your products, it is not a trademark violation. It may be other things, such as libel, etc., but that is beyond the scope of this post.
→ Trademark holders do not “own” the words, logos, or slogans themselves
They only own the right to use them in connection with commerce in the relevant industry. Thus, UPS doesn't own the color brown; it just owns the right to use it in connection with commerce in its industry.
→ Parodies of trademarks are permissible
Parody is a legal defense to claims of dilution and infringement. Yay! Viva free speech! Viva satire!
→ Non-commercial uses are permissible
Trademark protects businesses. If a trademark is being used in a truly non-commercial context, there is no infringement.
→ News reporting and product comparisons are permissible
Some businesses have a defense to infringement claims, namely, journalists and product reviewers.
⇒ Caution: The Very Famous Mark Exception!
Okay. Everything I have told you thus far is subject to this very important exception. Thus, I hope people have kept reading. Remember how I said a minute ago that the most important thing is customer confusion? Well, I sort of lied because that is not true for very famous marks.
For some reason, if your mark is very famous, you get extra protection. You don't have to prove that someone else's use of a similar mark confuses customers. You only have to show that either (1) the other person is 'diluting' your brand, or (2) the other person is 'tarnishing' your brand. "Dilution" means that the secondary trademark holder lessens the ability of the primary trademark holder to distinguish her goods and services. "Tarnishment" occurs when the secondary holder negatively impacts the primary holder's reputation, usually in an unsavory way.
My favorite tarnishment case is the one where Hasbro sued an adult entertainment company that was running the website candyland.com. Obviously, this wasn't a customer confusion issue. Men were not stumbling around the site searching for their favorite children's game. Instead, this was a case of tarnishment. The site negatively impacted Hasbro's brand reputation.
Do not under any circumstances use a very famous mark, even if your products and markets are very different. In other words, do not sell Google Truffles or Microsoft Aquariums. Even though the products and markets are very different, super famous trademarks get extra protection under the law. Microsoft doesn’t have to prove confusion to force you to stop using “Microsoft” as the trademark for your aquarium business. They are so big that they can just accuse you of "dilution." If you want to know more about dilution and tarnishment, the law is codified in 15 U.S.C. 1125(c).
⇒ Should I register my trademarks?
Even though trademark rights are somewhat 'automatic,' there are many good reasons to go through the trouble of registering your trademarks. The pros, cons, and how-tos of registration deserve their own post. Suffice it to say that registration increases your chances of winning any disputes that develop and entitles you to greater monetary awards if you win. Thus, anyone serious about his or her business should consider registration on the national level, and perhaps the international level too.
→ Links for National Trademark Registration:
If you can’t wait until my post on registration, you should acquaint yourself with the United States Patent and Trademark Office (“USPTMO”) for further information about registering trademarks in the U.S. For my U.K. friends, check out the UK Intellectual Property Office. The standards for registration are pretty similar to U.S. standards. My Australian friends can consult the Australian government intellectual property office. And my dear Canadians (viva Vancouver!) should consult the Canadian Intellectual Property Rights Office (“CIPO”).
→ Links for International Trademark Registration:
If you’re considering registering your trademarks internationally, check out both the Office for Harmonization In the Internal Market and the World Intellectual Property Organization’s sites for information to get you started.
A trademark is any word, sound, symbol, slogan, or design that serves to identify a specific product or service brand.
Trademark law is a type of intellectual property, like copyright or patent. Because it was developed to protect businesses, trademark law does not protect your non-commercial, personal sites or projects. You don't have any trademarks for your non-commercial, personal projects.
→ Product Marks versus Service Marks
In your independent research, you may read about "product marks" and "service marks." For our purposes, they are the same thing. The only difference is that "product marks" identify specific products whereas "service marks" identify services. It's not rocket science, but I don't want anyone to have a panic attack when they read about these things on other sites.
For example, the rainbow apple with a bite chunk missing is a product mark for Apple, Inc. The red placard with white letters spelling “Wendy’s” and a drawing of a pasty white girl with red pigtails is a product mark of the fast food restaurant, Wendy's. The color brown with a gold crest containing the capital letters UPS is a service brand for United Postal Service.You’re all accomplished marketers. You get the picture.
⇒ Where does trademark law come from?
Both federal and state governments craft U.S. trademark laws. There are also several international treaties and organizations governing international trademarks. [See Registration, below, for some helpful links]
Federal and international laws are quickly supplanting state regulations now that so much commerce is national, if not international in scope. Regardless, if you get yourself in a spot of legal trouble regarding U.S. trademark issues, your attorney should consult relevant state laws in case there is a state law remedy or claim that may help your case.
⇒ Isn’t trademark the same thing as copyright?
Trademark is not the same thing as copyright. They have similarities and differences that lead people to frequently confuse the two. Both trademark and copyright are legal regimes that protect intellectual property. However, copyright protects your creative content (written words and graphics) from illegal unauthorized use.
Trademark, on the other hand, protects all of the little things that comprise your brand, including your product name, your logo, your slogans, your domain name, and your product dress. (In this context, “dress” can include packaging and website designs.) When you think "trademark," you should think "I'm branding my content." When you think "copyright," you should think "my content is my product."
⇒ Do I have any trademarks? How do I get some?
If you're brand savvy, and most of you probably are, then you may already own some trademarks. In order to trademark an element of your brand, such as your business name, slogan, product dress, you need to (1) be the first in your market to use the mark, and (2) make sure the mark is distinctive. Let's take a closer look at these two necessary elements of a protectable trademark.
→ BE FIRST IN YOUR MARKET
Trademark operates on a finders-keepers basis. If you use a distinctive mark first, you own it. No registration is necessary. An unregistered trademark is often called “common law trademark.”
You do not have to be the first person in the whole world to use the trademark, but you do have to be the first in your market. Your "market" is limited by the service and products you offer, as well the geographic area you serve.
For example, let's assume you operate a search marketing firm for businesses in the United States. Let's also assume that you are using a green star as your logo. In order to rightfully claim the logo as your trademark, you need to be the first search marketer in the U.S. to use the mark. You can't prevent other kinds of businesses in the U.S. from using a green star. For example, a laundry detergent manufacturer could use the green star as a logo and there is nothing you could do about it. Also, a search marketing firm in China could use green star as its logo even though it is in the same industry because it is outside of your geographic market area. [Note: this hypothetical assumes that you did not internationally register your logo.]Being the first to use the mark in your market is only one of two requirements necessary for a protectable trademark. The mark must also be sufficiently distinctive in order for it to qualify for trademark protection.
Here's a real life example: Delta Airlines and Delta Faucets are both legal and non-infringing trademarks because they are separate industries with separate markets. The airline can’t prevent the faucet company from using “Delta” and vice versa.
→ BE DISTINCTIVE
In order for your mark to be a protected trademark, it must be distinctive. Generally, either a mark is "inherently distinctive" or it "acquires distinction over time." So long as your mark ends up distinctive, it doesn't matter which way you get there. Let's look at each method more closely.
1. The mark can be inherently distinctive. This means that the mark is so unique, a customer would recognize it immediately. It also means that your mark is not purely descriptive. It must do more than accurately identify the kind of product/service it is branding. It’s very difficult and probably impossible to trademark a name or slogan that is purely descriptive of your product.
For example, branding your SEO services “Best SEO” creates a purely descriptive mark. You are merely describing what you do. You can't trademark "Best SEO." It is descriptive and not distinctive.[Note the difficult business decision: Do you choose a name that is distinctive and can be trademarked? Or do you choose a name that describes what you’re selling and can more quickly grab the attention of consumers looking for products like yours?]
In contrast, good luck charms have nothing to do with breakfast and were a good choice for General Mills to brand its Lucky Charms cereal. And while “American Search Engine Optimization” is probably not trademarkable, SEOmoz [what the schmee does SEOmoz mean?!] has trademark written all over it.
2. Alternatively, the mark can acquire distinctiveness through continued use over time. If your marketing and branding campaign is sustained and pervasive enough that your business become synonymous with an otherwise unremarkable [ha ha. It’s a play on words!] mark, it qualifies as a protectable trademark.
I think one of the best examples of "acquired distinctiveness" is UPS’s success in trademarking the color brown. I mean, it’s a color. How can someone own certain rights to a color? Well, you can if you persist long enough (since 1929, in this case) and your business becomes synonymous with the color (“What can brown do for you?”).The more distinctive your mark is, the easier it is to convince a court to stop others from using it. Think of trademark protection as a continuum. There are weak marks and there are strong marks and everything in between. “Strong” marks are distinctive marks. The stronger your mark, the stronger the protection.
Don’t flip out. Take a deep breath. This does not mean that we are all forbidden from using the color brown. But it does mean that FedEx better steer clear of that particular shade of UPS brown!
In sum, if you are the first in your market to use the mark and your mark is distinctive, then it is your trademark and you have limited abilities to control its use.
⇒ Trademark Law's Guiding Principle: DON'T CONFUSE THE CONSUMER
Burn this principle of trademark law into your brain: trademark law is intended to prevent customer confusion.
Thus, if one of your marks (e.g., domain name, product name, logos, slogans, etc.) is too similar to a competitor, it may lead to customer confusion and may not be eligible for trademark protection. Alternatively, if your mark is too boring or descriptive, consumers won’t be able to tell your product from something else and you can’t trademark that. The prevention of consumer confusion is the founding principle of trademark law. From this guiding principle, all else flows. Zen.
Whenever you are confronted with a trademark issue, it's a good idea to ask whether the questionable conduct may lead to customer confusion. The courts are definitely going to ask that question.
⇒ Limitations on Trademark Rights
If you were the first to use a distinctive mark, you have the limited ability to prevent other people from using that mark. You only have "limited" ability because you can prevent other people from using it in order to prevent consumers from getting confused. But there are competing interests (for example, free speech). Thus, there are some limitations on your trademark rights. They are not absolute. Let's take a closer look:
→ Trademark law does not protect disparaging or lewd marks
That’s right. You can’t trademark “MySpaceSucks.” It’s disparaging and the trademark office doesn’t want to get in the middle of fights. Note: You can still register MySpaceSucks.com as a domain name, but you can’t claim any trademark rights to it. You also can’t establish trademark rights to lewd names, slogans, or logos. I’m sure I don’t have to give you examples here. Use your imagination.
Also, if someone is saying bad things about your products, it is not a trademark violation. It may be other things, such as libel, etc., but that is beyond the scope of this post.
→ Trademark holders do not “own” the words, logos, or slogans themselves
They only own the right to use them in connection with commerce in the relevant industry. Thus, UPS doesn't own the color brown; it just owns the right to use it in connection with commerce in its industry.
→ Parodies of trademarks are permissible
Parody is a legal defense to claims of dilution and infringement. Yay! Viva free speech! Viva satire!
→ Non-commercial uses are permissible
Trademark protects businesses. If a trademark is being used in a truly non-commercial context, there is no infringement.
→ News reporting and product comparisons are permissible
Some businesses have a defense to infringement claims, namely, journalists and product reviewers.
⇒ Caution: The Very Famous Mark Exception!
Okay. Everything I have told you thus far is subject to this very important exception. Thus, I hope people have kept reading. Remember how I said a minute ago that the most important thing is customer confusion? Well, I sort of lied because that is not true for very famous marks.
For some reason, if your mark is very famous, you get extra protection. You don't have to prove that someone else's use of a similar mark confuses customers. You only have to show that either (1) the other person is 'diluting' your brand, or (2) the other person is 'tarnishing' your brand. "Dilution" means that the secondary trademark holder lessens the ability of the primary trademark holder to distinguish her goods and services. "Tarnishment" occurs when the secondary holder negatively impacts the primary holder's reputation, usually in an unsavory way.
My favorite tarnishment case is the one where Hasbro sued an adult entertainment company that was running the website candyland.com. Obviously, this wasn't a customer confusion issue. Men were not stumbling around the site searching for their favorite children's game. Instead, this was a case of tarnishment. The site negatively impacted Hasbro's brand reputation.
Do not under any circumstances use a very famous mark, even if your products and markets are very different. In other words, do not sell Google Truffles or Microsoft Aquariums. Even though the products and markets are very different, super famous trademarks get extra protection under the law. Microsoft doesn’t have to prove confusion to force you to stop using “Microsoft” as the trademark for your aquarium business. They are so big that they can just accuse you of "dilution." If you want to know more about dilution and tarnishment, the law is codified in 15 U.S.C. 1125(c).
⇒ Should I register my trademarks?
Even though trademark rights are somewhat 'automatic,' there are many good reasons to go through the trouble of registering your trademarks. The pros, cons, and how-tos of registration deserve their own post. Suffice it to say that registration increases your chances of winning any disputes that develop and entitles you to greater monetary awards if you win. Thus, anyone serious about his or her business should consider registration on the national level, and perhaps the international level too.
→ Links for National Trademark Registration:
If you can’t wait until my post on registration, you should acquaint yourself with the United States Patent and Trademark Office (“USPTMO”) for further information about registering trademarks in the U.S. For my U.K. friends, check out the UK Intellectual Property Office. The standards for registration are pretty similar to U.S. standards. My Australian friends can consult the Australian government intellectual property office. And my dear Canadians (viva Vancouver!) should consult the Canadian Intellectual Property Rights Office (“CIPO”).
→ Links for International Trademark Registration:
If you’re considering registering your trademarks internationally, check out both the Office for Harmonization In the Internal Market and the World Intellectual Property Organization’s sites for information to get you started.
Conclusions
Thank you for reading this very lengthy post. I know that trademark is not universally considered sexy material. More's the pity. For those of us in business, we must protect trademarks. This has never been more true as the global market becomes reality through the promise of the internet.
Now that you’ve worked hard to develop your brand, learn how to protect it. We’ve only scratched the surface today.
I also regret to inform you that I will be out of the country for the next several weeks. Thus, Legal Mondays will be on a temporary hiatus until after SMX West. I will be speaking at SMX West's Legal Developments session on the 26th and would love to meet as many mozzers as possible. Please come up and introduce yourself. You guys make my job possible and I'd like to thank you in person.
As always, please let me know your thoughts and feedback.
Very truly yours,
Sarah
P.S. Future trademark posts include the following:
- The Ying and Yang of Domain Name Disputes: How to Handle Cybersquatters; How to Respond to Accusations of Cybersquatting
- Trademark Registration: Why Should I Bother and How Can I Do It?
- ACPA or UDRP? What are the advantages and disadvantages of the Uniform Domain Name Dispute Resolution Policy versus the Anti-Cybersquatting Consumer Protection Act?
- Creative Use of Keywords and Broad Matching: Trademark Violation or Smart SEM?
- How Screwed Am I? Another Business Has the Same Name As My Business
Presumably - the copyright protects words in tags as well - as those tags are not "only" for search engines but also often disabled users (alt image tags) thus presenting someother companies terms there would be the same as presenting it on your homepage.
correct?!
Great post nonetheless Sarah - a little too long to read at work but definately something to digest at home!
In reply to my post - would this about cover it?
Basically, yes, use of third party trademarks in tags is wrong, but it wouldn’t fall under copyright infringement. Although it’s a fairly curly one, and hasn’t been tested much by the courts (I don’t think!) it’s trademark infringement: it is the use of a third party’s mark with the intention to confuse and distract consumers into thinking that the sites are in some way associated. How? you might ask, as it’s not visible to the consumer. And that’s why it’s a bit curly.
The use of the mark in the metadata isn’t visible, but the effects of its use are as it influences SE results. So, if, for example, Pepsi were to plug their site full of “Coca Cola”, it will appear higher up the organic search rankings in searches for “Coca Cola”. Do it enough (and I bet you’d have to do it a load to beat coke) and they’d appear at the top. This activity could be interpreted as having the intention to distract, divert and confuse consumers away from Coke’s site, and towards Pepsi, thus infringing the Coke’s TM rights.
My friend is a bit shy ;) sorry tom!
Thanks Rob! ;o)
On a related note: betraying my past as a former English teacher and a former editor, I'd like to share this link with those of you who have an interest in the proper use of the © ® ™ and SM symbols.
Also, there are keyboard shortcuts for three of the symbols that some of you may find handy. Holding down the ALT key, and using your number keypad (not the numbers above the QWERTY keys) type 0169 for copyright, 0174 for registered trademark, and 0153 for trademark. And you can find the correct HTML entity name here for when you are typing in code view.
I confess that I'm one of those annoying few who worry about the Internet's contribution to the utter breakdown of the English language to include spelling, usage, grammar, punctuation and definition, although I practice a lot of restraint so as not to annoy ;-)
Sarah, this is a very useful post for entrepreneurs. It is info that they should know before they start naming their products and services. Even for the company’s name.
I wrote a post (in Spanish) about the importance of researching the online and offline competition before branding any business or product and I used the example of Dove. The trademark Dove is registered by both Unilever and Mars, two different companies and for different kind of products. Mars Inc. uses it for Dove Chocolate and Unilever for the soap and skin care products. When you go online searching for Dove, Unilever is on top of course, with the domain dove.com and Dove chocolate uses dovechocolate.com but I am not sure if Mars could have had registered the domain dove.com before Unilever did.
I don’t think it is a smart move to go for a brand that already exists even if the industry is not related. The company could have to deal with a lot of implications and costs based on SEM strategies to get more exposure online.
Insightful and interesting post! It's so clear that branding or using of trademarks requires some analysis and understanding. An entrepreneur must know the trademark law and the do's and dont's of this particular issue since it's about business
Excellent post, as always.
When you discuss distinctive trademarks, I get the impression that US laws favour the brand more than European law?
Generic terms over here can include such subtlties as i-noun or e-noun, where I understand that Apple are able to trademark such terms on the basis that they will acquire distinction over time.
Presumably this is why gMail and iPhone were overconfident that the association with their famous brand would outweigh other concerns?
Is there truth to the rumor that if you plan on using a trademark, you should immediately claim intent by placing 'TM' at the end of it? My attorney is fairly new at the online aspect, and this was one of his recommendations. He also wasn't sure if I could get "SEO Columbus" registered, and from your post, I'm guessing I'll be denied but will wait for an answer from the USPTO.
My main question for him was if it can be enforced, say to stop other firms from using this in their title tag if it were approved, and if so, would it be worth the effort financially?
From what I've passionately learned, there's some truth to it. The more important one is being RAW (Ready, Able, Willing) to demonstrate you're indeed using the term/s as a trademark.
As your last question goes, it places a sometimes heavy financial responsibility on mark holders to protect such or risk losing them. Whether it's worth it or not is up to you.
At the end of the day, though, don't forget that trademarks aim to prevent consumer confusion, not necessarily grant carte blanche use for any and all other uses for the term/s.
David
I wish I had licensed by online handle, UtahSEOpro, as a DBA or something cuz now some poser asstard is blogging on UtahSEOPro.com. I don't use that I use my name, JordanKasteler.com.
here is one for you. I was a managing member of a LLC and had direct input in the design of the logo. I questioned the legalities of some of business practices the acting CEO was practicing and within 3 day's I was removed from the LLC papers. The trademark was never filed and I would like to register the mark. What rights do I have and can I register the mark without worrying about any legal issues?
"Note the difficult business decision: Do you choose a name that is distinctive and can be trademarked? Or do you choose a name that describes what you’re selling and can more quickly grab the attention of consumers looking for products like yours?"
That's a great question. I think that unless you're a giant with deep marketing pockets, the best answer is "both". (i.e. SEOmoz) Short of that, I would say - distinctive over descriptive.
For SEOmoz it's both distinctive and descriptive. That's what I looked for when I chose the name 360SELL for my current business and DataStar for my previous business. When you're small, the descriptive part is helpful, but even small businesses can build a strong brand through repetition and in the long term I think it's most important that you have a distinctive name that's short and sweet.
Interestingly enough, if you look at the top 100 brands, very few are descriptive in nature.
Another great article Sarah. Enthusiastic thumbs up!
Speaking as a recovering attorney: Great overview!!!!
Distinctiveness is important. I can speak from experience: "Conversation Marketing", my blog, spawned "Conversational Marketing" etc..
Since I built my idea from the ClueTrain Manifesto, I'm OK with it. But if you think you might not be, make sure it's sufficiently unique that it's defensible.
We have been using a business name, "WhiteGyr, Web Page Design and Web Hosting" for over ten years. So now that I have decided on a distinctive / descriptive business name, what is my next move? I went to the United States Patent and Trademark Office (“USPTMO”) but got immediately lost in the jargon. Is there a step by step guide available to apply for a trademark or is an attorney a requirement?
Whitegyr,
You've pretty much hit the nail on the head in terms of where to go. You may want to review the Where Do I Start page and then you can file an application online.
I think the real questions are whether you really want to and if it will have value for you. You already have a "trademark". It's just not "registered". To do so, it will cost you about $300 for the application and it can be submitted without the services of an attorney.
Thanks for the information seanmag and I am mulling over the $300 and the value (or lack of) of a "registered" trademark. I guess I'll think about it a bit more.
Thanks for your comment and question Whitegyr!
Off the top of my head, I don't know of any step-by-step guides for Trademark registration. However, one of my goals is to put one together.
I am also planning a more complete post about the value of registering your copyright. But in the meantime I thought I would point your attention to the USPTO's list of reasons why people go through the trouble and cost of registering their trademark:
You do not need an attorney to register, but some people may find an attorney useful. The most intensive part of the process is doing your due dilligence to make sure that you are in fact entitled to the TM. It requires searching the relevant market high and low for other uses of the same or similar TM.
Despite the hassle, federally registering your TM serves has tremendous benefits, including preventing others from using the mark in the future. In the tragic event that you do end up in a lawsuit your attorney is going to pray to god that had your mark registered. That's because registering your trademark creates a legal presumption that you own the mark. Thus, you won't have to prove that you own the mark; The infringer will have to prove that you don't own the mark. This significantly increases your chances of winning in court.
AND whenever you increase your chances of winning in court, you also deter people from ever taking you to court! Thus, it has a valuable deterrent effect that should not be overlooked.
I rambled on much longer than I expected here! Anyway, we'll dig into this further in the future.
Thanks again for your question.
Best Regards,
Sarah
Very interesting... I was particularly excited by the 'popular trademarks' concept. What if both of the fighting parties are popular (best example I can come up with right now is Mariah Carey v. Mary Carey dispute, yep, from my 'celebrity' past)? The definition 'popular' seems too fuzzy in this case. How can these disputes be handled in this case?
Ms. Ann, Thank you for bringing this case to my attention. It's my new favorite Famous Trademark example!
I agree that the definition of 'famous trademark' is vague. Basically, if the mark is 'generally' known and associated with your business, then it is famous. Thus, even if you're really well known in a niche market, you're not a 'famous trademark.' There is a lot of wiggle room in the definition.
I wonder if Mariah Carey is 'generally known?' If so, then she was certainly using the famous mark first since the porn star didn't start making films until 2002. Mariah Carey may have both a dilution and a tarnishment claim.
Very interesting!
Yep, very interesting. And I guess Mariah Carey is 'generally known'.
Thank you for the clarification!
Popular brands can certainly have their difficulties as well.
Another very interesting case...
It was. What was most interesting was that this was not a simple trademark case, but a contract was agreed whereby Apple would not contest Apple Computers' right to use the trademark so long as they did not use it within the music industry.
When the case was heard after the launch of iTunes, the breach of contract was largely ignored and the case was heard on an almost exclusive trademark basis.
It seems that one can acquire enough distinction to outweigh other legal concerns.
A good example of a "sound" that is trademarked is the Intel Inside chimes.
Ok I have one for you. Has anybody applied this to title tags, or is there any case study on it yet? For example: what if I had an seo firm and used the title tag
"ABC. Search Engine Optimization | Read ABC, Rank Better."
(just a hypothetical :)
this could actually be pretty important because you could block out competitors from using keywords in certain orders.
Awesome post - lot's of useful resources. I was particularly interested in the "very famous brand" trademark protection...it seems that regardless of the industry in those "famous mark" cases, the acquired distinctiveness trumps all markets - would that be a correct assumption?
How about Domino Sugar vs Domino's Pizza? They're both food.
It's also important to defend your mark. Otherwise, you could end up like the Escalator people. Or people might start Xeroxing things when they really mean photocopy.