Sometimes, usually at a dinner party (after I politely give them the "this does not form an attorney-client relationship" disclaimer), someone will tell me they have come up with a great idea for a product or business name. Sometimes they have and sometimes they haven't. I often find that there are some common misconceptions about what a trademark protects, whether you have to register a trademark and what makes a "good" trademark.
What’s the difference between copyrights and trademarks?
First of all, I find people are often confused on what the difference is between copyrights and trademarks. Put very simply - ha! - copyright gives the creator of "original works of authorship in a fixed medium of expression" (I know, this legal mumbo jumbo is confusing, isn't it?) the rights to control the use of, copying of, and modification or those works. Blog posts, articles, drawings, books, videos, songs are all examples of copyrightable works. Trademark basically protects brand names and logos. Read more about the differences between copyrights and trademarks here and here.Trademark rights protect the use of a name in a particular area of goods or services.
Do I have to register my trademark?
On to the question of whether you have to register a trademark in order to use it. The answer is no. When people talk about "registration" of a trademark, they are referring to registering the trademark with the U.S. (or other country's) PTO (Patent and Trademark Office).Federal registration of a trademark gives you many benefits (namely, notice to the world that you are claiming this word or logo as your trademark and some advantages in bringing a suit in federal court for trademark infringement), but it is sometimes not the right (or only) answer. An attorney can help you determine what is right for your business. But you should know that before you register (and even if you never register) a word as a trademark with the USPTO, you can still claim it is a trademark. This is because trademark rights arise from use, not from registration. If you decide not to register your mark with the USPTO, you can use the "TM" symbol. You would actually use the "TM" symbol after your mark while you have an application for registration with the USPTO pending. The circle R symbol (®) may only be used once a registration from the USPTO has issued. Note that you should ALWAYS conduct a thorough search of your proposed name to make sure it is not already owned by someone else (whether you are registering it with the USPTO or not)! This should include an Internet search and a search with the USPTO's trademark database (which is free). A more comprehensive search can also be done, which can cover search terms that it would be difficult for you to do on your own - contact an attorney for more information on trademark searching.
How strong is my trademark?
The last thing I want to talk about today is levels of protection for trademarks. Not all trademarks are created equal - take a look at the graphic below.
On the right hand side are the strongest trademarks - aribtrary or fanicial marks. These are words that are basically made up. On the opposite side of the spectrum, the left side, are the weakest trademarks - however, in actuality, they cannot be trademarks at all. These marks are generic marks. Calling "soap" Soap as a brand name, obviously doesn't work, because it doesn't tell the consumer anything about the source. So generic marks are afforded no trademark protection. Note that a trademark may start out on the right side, being very strong and being completely made up, but due to the use of the mark by consumers (and sometimes by the owner), the mark can become generic and the owner can lose all protection once afforded by the trademark. Examples of this are words you can easily recognize - things like escalator, kleenex, rollerblades, xerox. Once strong brand names, these marks are now either entirely generic or the owners have invested a lot of marketing dollars to try to pull it back to the right side by advertising that this is a brand name, not a generic word. Read more about when a brand name becomes generic here. In the middle of the spectrum are 2 other levels. More towards the left hand side, just above generic marks, are descriptive marks. These are words the describe a feature or aspect of the product. Descriptive trademarks, like generic trademarks, cannot be protected as trademarks via federal registration, but there is one way to gain trademark protection of a descriptive mark and that is if the mark acquires "secondary meaning" - this means that cosumers begin to associate the decriptive mark with a particular source. What I often find is that companies choose descriptive marks, because they don't have to explain to their customers what the product is. Over time, this may be a winning strategy, if customers do begin to associate the product with only one source. In the meantime, you may be able to use the TM symbol to try to claim the mark as yours. The last type of mark are the suggestive marks. These marks require the consumer to use their imagination to figure out what the product is. They suggest, in some way, what the product could be. These are also strong trademarks.
Original Whereas post. Like any good lawyer, I have to let you know that this is not legal advice and that you should consult with an attorney in your jurisdiction for legal advice. Please see my site disclaimer for more.
