Protecting Your Intellectual Property: Trademarks
Often times, the last thing that entrepreneurs consider when forming a business is the valuable intellectual property that the business owns. For example, a wedding photographer may account for a lot of lovely and expensive equipment, but never consider the true value of the company’s name or the brand it is creating. The goal of this article is to change that. With respect to any business, however big or small, knowledge is power.*
What is a trademark?
A trademark is commonly defined as a word, phrase, symbol, or design that identifies and distinguishes the source of the goods of one party from those of others. Some well-known trademark examples include Nike, Google, and the famous Coca-Cola scripted font logo. However, a trademark is really anything that a business uses to symbolize goodwill and tell consumers, “I am the source of this product or service!” Many companies use non-traditional trademarks like a particular color—think Tiffany blue—product design, sound, or even smell (Verizon Wireless owns a trademark for a “flowery musk” scent for its stores).
A trademark must be distinctive
When considering trademark protection or adopting a new trademark, there are a few important things to keep in mind. First, in order to be protectable a trademark must be distinctive. Trademark distinctiveness is a sliding scale, ranging from strong marks that are fanciful, arbitrary, or suggestive terms, to weaker or unprotectable marks that are descriptive or generic.
The easiest way to obtain this distinctiveness is to choose a strong trademark from the onset. A strong trademark is one that does not immediately describe the goods or services at issue. For example, “Wedding Planner” would not be protectable for “wedding planning services,” because it is a generic term that all individuals and businesses should be able to use to accurately describe their services. On the other hand, “Wedding Planner” would be a perfectly fine trademark for yoga pants, because it is not the generic term to identify the goods, and it does not simply describe what the goods are. Distinctiveness can also be acquired in time, if a trademark owner is able to prove that it has been using the trademark for an extended period of time (usually more than five years) in connection with the relevant goods or services.
A quick search of the U.S. Patent and Trademark Office records indicate that the following trademarks have been found protectable for “wedding planning services”: “Engaged & Confused,” “Wedding Doctor,” and “Where Wedding Happens.” These trademarks are considered distinctive and protectable because they do not describe wedding planning services per se, but simply suggest what the nature of the services might be.
Make sure your trademark is not being used
Once the business has the perfect trademark in mind, the next important step is to make sure that no one else has already claimed rights to your proposed mark. If someone is already using your trademark or something confusingly similar to your trademark in connection with identical or similar goods or services, this could open the business up to significant risk. In the legal context, this type of risk can be identified and mitigated by having a trademark attorney conduct a clearance search to see what potential issues may be in marketplace.
How geographics figures into the equation
Another important thing to consider is the scope of the potential business. In order to obtain a federal trademark registration, a business or individual must be doing business in interstate commerce. In most instances, simply having a website or social media page and advertising online is not sufficient to meet this requirement. However, while owning a federal trademark registration provides many important benefits, it is not required. If the business is specific to a certain city or area, the trademark owner can obtain a certain level of common law protection to that geographic area by simply using the trademark in connection with its goods or services.
Protecting your trademark
Once a trademark is adopted, cleared, and in use, common questions are, “How do I protect my trademark rights or enforce them against others?” or “What happens if someone else adopts a trademark is identical or confusingly similar to mine?”
The test for trademark infringement is generally whether or not the use of a trademark by a junior party is likely to cause confusion among consumers based on the senior trademark owner’s rights. Likelihood of confusion is a subjective test that includes various factors including the similarity of the two trademarks in appearance, sound, and meaning, the similarity of the goods or services, the number of other people using similar marks, and other factors to show how the public views both marks.
Many trademark issues can be resolved via letters or written agreements, but sometimes the issues result in expensive and prolonged lawsuits. It is important to engage an experienced trademark attorney before making decisions regarding trademark enforcement. The subject matter can seem straightforward, but just as with many things in life, looks can be deceiving.
* Did you know over 15 different companies or individuals claim federal trademark rights that include the term “knowledge is power”?!
- Caitlin R. Byczko, Barnes & Thornburg, LLP, Indianapolis, Ind.
