Part 1: Trademark Basics
A trademark is anything that identifies and distinguishes the provider of the goods or services with which it is used from the provider of other, similar goods/services, such as a word, phrase, symbol, design, and even colors (think UPS brown). Think of a trademark as a “brand:” it tells consumers that the goods or services they are purchasing come from the same source as the last goods/services they purchased showing the same mark and thus they can expect similar quality as other items offered under that same mark.
A service mark is a trademark that is used for services as opposed to tangible goods. It’s confusing, but sometimes people use “trademark” to mean a trademark used on tangible goods, and sometimes as an umbrella term for any kind of trademark, whether it’s used with tangible goods or with services.
A business name, or “trade name,” is simply the name of your company, partnership, sole proprietorship, or other entity. Sometimes, the words making up a business name are also used as a trademark (i.e., brand), which leads to some confusion. Even if the words are exactly the same, legally, a business name and a trademark are completely different. When used as brand, it’s a trademark; when referring to the business itself, it’s just a business name.
Business names and assumed names (d/b/a’s) should be registered with the state in which the business was formed; this system is entirely separate from trademark law and registration.
These are all types of “intellectual property.” Each protects a different thing, and the law is different for each. Sometimes, they overlap; for example, a logo may be protected as a trademark and by copyright, and software may be protected by both copyright and patent.
Here are the basic differences:
- Trademark protects brands.
- Copyright protects original creative expressions, such as books, artwork, and music.
- Patent protects novel, “non-obvious,” and useful inventions, such as a machine, formula, or process.
- Trade Secret protects information that is kept secret from the public, like the recipes for Coca Cola and Pepsi.
You accrue trademark rights in your brand simply by using it, even if you don’t register the trademark. Unregistered rights are called “common law” rights, and they are limited to the geographic area in which the trademark is actually being used. Registering your trademark significantly expands your rights.
™ indicates use as a trademark on tangible goods. It is usually used with unregistered trademarks.
SM stands for Service Mark and indicates use as a trademark for services. It is usually used with unregistered service marks.
® signifies that the trademark is registered with the U.S. Patent & Trademark Office.
Registering a trademark expands and strengthens your rights in your trademark. If you rely on your “common law” rights (acquired through use but not registration), those rights will be geographically limited to the area in which you have actually used the trademark, such as a single town.
If you are using your trademark only within one state, you can apply to register it with that state. If you are using your trademark across state lines (in “interstate commerce”), you should register it with the U.S. Patent & Trademark Office, which gives you stronger and broader rights than even multiple state registrations.
When you register your trademark with the U.S. Patent & Trademark Office (“PTO”), you obtain the rights to use your trademark across the entire U.S, with carve-outs for any pre-existing conflicting common-law uses (uses of unregistered trademarks). Registration also enhances your ability to protect your trademark against infringements and, in some cases, entitles you to greater damages and attorneys’ fees.
Trademark infringement occurs when, regardless of their intensions, someone uses a mark in a way that is likely to cause consumers to mistakenly believe that their good/service comes from or is somehow associated with those of an owner of another mark. Determining whether a “likelihood of confusion” exists is based on both the similarity of the marks and the similarity of the goods. The more similar the two marks, the less similar the goods/services need to be in order to find a likelihood of confusion and thus infringement, and vice versa.
Examples of trademark infringement include:
On the other hand, even the exact same trademark can be used on completely different products, such as DOVE for soap and DOVE for chocolate, because consumers aren’t likely to think that the soap maker also makes the chocolate or is otherwise connected with the chocolatier.
Many people search google for the trademark they wish to use and when they don’t find an exact match, assume they can legally use the mark. Unfortunately, assessing the likelihood that your trademark is infringing, or would infringe, someone else’s is not that simple. For one thing, a trademark that is similar but not the same as another could infringe that other trademark.
Our law firm conducts “availability” (or “clearance”) searches to determine whether any trademarks currently in use are likely to conflict with your trademark (although they cannot guarantee availability).
We strongly recommend ordering a search before you begin using a trademark, or, if you’re already using it, before you file an application to register. This can avoid wasting a lot of money, time, and energy on developing and building a reputation around a mark that you’ll ultimately have to change.
For additional information about trademarks, see the U.S. Patent & Trademark Office’s Trademark Basics. This resource provides a great introduction to trademarks and includes a series of instructional videos titled Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later.
Since 2001, our team has helped clients safely use and protect their company names, brands, logos, and taglines. We have represented:
- Family-owned businesses
- Entrepreneurs and individuals
- International companies
- Educational institutions
Our clients come from a range of industries, including
- Brick-and-mortar retailers
- Online retailers
- Consultants and other service providers
- Software and video-game companies
We appreciate that each client’s needs, goals, and resources are unique, and we work with each client to assist them in choosing the options that are right for them.
Among other things, we help our clients:
- Vet the trademarks and other identifiers they want to use and assess any risks in using them
- Strategize and secure the optimum protection available for the client’s trademarks
- Stop others from infringing the client’s trademarks
- Defend against charges of infringement
- Negotiate co-existence and licensing agreements when necessary to protect the client’s rights
In one brief, free phone call, we will:
- Explore your situation and discuss your goals
- Point out any risks you may face
- Identify the options available to you
- Discuss the pros and cons of those options
- Help you make the decisions that are best for your business
- You gain trademark rights simply by using a trademark. Registering your trademark with the Patent and Trademark Office broadens your rights, but it’s not a requirement to obtaining rights.
- Therefore, not finding the mark you want to use in the Patent & Trademark Office database doesn’t mean your mark is safe to use; if someone else is already using it (or a mark similar to yours), they may be able to prevent your use, even without a registration.
- Minor variations in someone else’s trademark probably aren’t enough to keep you from infringing on their mark.
- It is difficult, and may be impossible, to protect a trademark that describes your product.
- Failing to find a particular trademark with a Google search doesn’t necessarily mean it’s safe for you to use the mark.
- Registering your company name with the Secretary of State does not ensure your right to use the company name as a brand or trademark (or to prevent others from doing so).
- Registering a domain name does not give you the right to use that name as a brand or trademark (or to prevent others from doing so).
- Registering your trademarks does give you much broader and stronger rights in them.
Gretchen McCord advises our company on global matters of trademark strategy, registration, disputes, and negotiations, with a focus on litigation avoidance. Gretchen has consistently demonstrated mastery of her practice of law in these areas and has been artful and successful in resolving matters ranging from addressing investor representations and warranties to resolving international trademark disputes. Additionally, Gretchen delivers real value for the price, not just because she competes by charging rates below those of large law-firms, but because interacting with Gretchen is fast, easy and reliable, thereby reducing her billable time (the primary cost of engaging legal counsel).