Nearly every business has a trademark, but few know what a trademark is. Even fewer take the steps necessary to protect what for many companies is their most valuable asset. A little knowledge can not only help you choose between "good" and "bad" trademarks, but can help steer your company clear of a trademark lawsuit costing hundreds of thousands of dollars. Here are some of the most frequently asked questions I am asked about trademarks:
So what is a trademark?
A trademark is a mark that identifies goods or services coming from a particular source. The mark may be a word, name, phrase or symbol. By identifying goods or services as coming from a particular source, consumers can go back to that good or service time and again, relying on the quality they have grown to trust.
How do I "get" a trademark?
You cannot obtain trademark rights unless you actually USE the trademark in commerce in association with goods or services. Without use, there is no trademark. Even if you have a trademark, if you stop using it, it will go abandoned after a period of time.
What are the different types of trademark protection?
Once you start using your trademark in commerce, you obtain what are known as "common law" trademark rights. Common law trademark rights can be effective in obtaining an injunction or a judgment against someone infringing your trademark, but they do not provide all of the benefits associated with state or federal trademark registration.
Every state provides for both registration and enforcement of trademark rights. While these state protections involve a small cost, they typically offer little more protection than common law rights. Accordingly, most companies opt for either free common law protection or much more valuable federal law protection. Federal trademark registration involves governmental and attorney fees of approximately $1,200 and about an eighteen month wait.
What are the advantages associated with federal trademark registration?
Federal registration provides several advantages over common law and state law trademark protection. Like common law and state law protection, federal trademark registration allows you to recover the damages a trademark infringer has caused your company. Unlike those two weaker types of protection, however, federal registration allows you to recover your attorney fees and up to three times your actual damages if the infringer of your federal registration is found to be "willfully" infringing your trademark.
Federal registration also allows you to use the ® symbol as a warning to would-be infringers and constructive notice to everyone in the country of your ownership of the trademark. Federal registration provides several other benefits, including incontestability, and prima facia evidence of the validity of the trademark and your ownership thereof. Unlike patents and copyrights, trademarks can last forever, as long as you keep using them.
Are some trademarks easier to register than others?
Yes. How easy it is to register a trademark depends in large part on how descriptive the trademark is of the particular product or service provided in association with the trademark. For example, if the product is bananas the trademark "Banana" would be deemed “generic,” and would not be protectable at all. Similarly, the trademark "Yellow" would be deemed “descriptive,” and would also not be protectable. The trademark “Monkey Stick” however, would merely be “suggestive,” and would, therefore be protectable. Suggestive trademarks do not provide enough information to determine what the good or service is, but trigger that mental "Ahhh" after you find out what the good or service is.
What are the easiest types of trademarks to register?
Not surprisingly, the easiest types of trademarks to register are the ones least preferred by marketing departments. "Arbitrary" and "fanciful" trademarks are the easiest to register because they do not describe or suggest the goods or services. This is the exact reasons marketing departments shy away from them. The trademark “REGAL” for bananas would be “arbitrary,” whereas the trademark “Baaan” would be “fanciful.” Both arbitrary and fanciful marks are protectable and registrable.
The question to ask in determining whether a prospective trademark is likely to be registrable is “Would my competitors likely use the word in their marketing of the product?" If so, the trademark is probably protectable, if not, then the trademark is probably not protectable.
While arbitrary and fanciful marks may seem initially less attractive, once the public associates the trademark with your goods or services, as in the case with eBay, the trademark can become extremely valuable with a broad scope of protection.
Can things other than words be trademarks?
Yes. Logos, symbols, colors, sounds and smells can all be protectable trademarks if they are not descriptive and uniquely identify your goods or services.
Should I register my trademark?
To determine whether you should register your trademark, you should examine several factors.
- How much is the trademark worth to the company?
- How likely is it that someone may infringe the trademark?
- How likely is it that a competitor will obtain rights in the trademark by using the trademark in a different geographic region?
- How much would it cost your company to have to change trademarks?
- How much value would a trademark registration add to your company’s intellectual property portfolio?
Once you have the answers to these questions, visit with an intellectual property attorney to determine whether a federal trademark registration would be right for your company. Many intellectual property attorneys offer a free consultation to determine whether or not a federal trademark registration is warranted.
Even if the decision is not to proceed with a registration, it will not have cost you anything and at least you have the piece of mind knowing what you have and where you stand at when it comes to trademarks.
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