A detailed discussion of trademark basics may seem like an odd title. With trademarks, however, the devil is in the details. If you don’t understand each step of the process, you will either end up with the mark being rejected or infringing on the rights of others. Neither is a good result!
What is a trademark? There are different types, but one can say a trademark is an identifier for a product, business or service. The identifier must be something consumers associate with a product, business or service in the flow of commerce. You cannot just file random trademarks. They must be associated with something being offered or sold to consumers.
Trademark examples are an excellent way to understand this legal concept. If I show you a picture of a logo of an apple with a bite out of it, you should associate it with the Apple business that makes iPads, iPods, and iPhones. When you see the logo, you associate it with a certain type of product, level of innovation and standard of quality. In short, we are talking about a trust factor.
Another classic trademark example is the Nike Swoosh. When you see it, you immediately associate the Swoosh with a particular company. You also have a certain expectation level for the products produced by that corporation.
Interestingly, these trademarks are for business brands. Most trademarks are product-oriented. The iPad is a textual trademark, which is to say it is merely the word “iPad.” If someone uses this term, you can picture the product in your mind.
Trademark vs. Copyright
It can be easy to confuse a trademark and a copyright. A trademark is a product, business or service identifier, but a copyright is merely the right to copy a creative work. An example can help explain the difference.
Let’s assume I write a book called “Those Sexy Trademarks.” [Yeah, probably not going to sell too well!]. I would trademark the name of the book because it identifies the product, to wit, the book. I would copyright the actual textual content of the book since it is the creative work.
Let’s look at another example – software. Assume I create a new operating system for smartphones called BlueBerry. The name “BlueBerry” identifies the software, so I would file a trademark for the name. The source code, however, is a creative work so I would copyright it.
Copyrights and trademarks can overlap. In general, just keep in mind that a trademark identifies something while a copyright protects a creative work.
Trademark vs. Patent
A patent is another form of intellectual property. It is very different than a trademark. While a trademark identifies something, a patent protects a novel invention. Let’s go back to an Apple example to explain how this might work. If we take the first iPhone, the company should have filed a trademark for the name “iPhone”, a patent for the invention of the processing method, and a copyright for the actual code.
Perhaps a clearer example would be the patent for the automobile engine. When the internal combustion engine was invented, a patent was filed for the process by which gasoline was introduced to a piston chamber, sparked to create combustion and so on. The process was patentable because it was an invention. A trademark can also be filed for the name of the engine, but there would be no copyright because no creative work existed.
The Patent and Trademark Office is the controlling entity for trademark registration in the United States. Oddly, the Agency does not handle copyrights. That is the role of the Copyright Office at the Library of Congress.
The “PTO” has come a very long way the last decade when it comes to trademark filings. The process used to be very slow and agonizing. Now it is just very slow. The PTO is undermanned and overworked, so having patience is critical when dealing with the agency. Count on the process taking a minimum six months if everything goes smoothly.
Trademark registration is not technically required to protect a mark. A trademark exists as soon as it is used in the stream of commerce. That being said, proving such a date can be very difficult. Nearly everyone files a trademark because it creates a clear start date for the mark as well as confers a host of legal preferences to the owner, which makes preserving the mark much easier.
Most businesses form a business entity to protect themselves from litigation threats. The question then becomes is it smarter for the business entity or the person who started the business to own the mark? If the founder owns the mark, they can lease it to the company. The answer to this question depends on the tax situation at the time, so a CPA should be consulted.
Trademark vs. Service Mark
What is the difference between a trademark and a service mark? A trademark identifies a product while a service mark identifies a service. HR Block would receive a service mark because they provide a service [tax preparation] to consumers. Apple would secure a trademark for the iPad because it offers a product to consumers. Both marks are provided the same protection once they are registered.
Trademark A Phrase
Can you trademark a phrase? Absolutely. A mark must just be an identifier. That identifier can be a sequence of words. Just consider the Nike slogan “just do it.” It is an iconic trademark.
Trademark A Name
Trademarking a name is a bit trickier. The issue boils down to the name of what? Can you trademark the name of a product? Almost always. Can you trademark the name of a person? Almost never. The trademark possibilities with names are highly dependent upon the particular situation, so feel free to contact me for a consultation.
The trademark application process involves a significant amount of dead time. The first step is to create your mark. The second is to have a professional trademark search done to make sure the mark does not infringe on a mark already in existence. The third step is to file the application. After this, you wait between four and six months to hear back from the PTO. The examining attorney at the PTO will usually send you a letter asking for clarification on certain issues. Once you respond, another four to six months passes before acceptance or rejection occurs. If there is acceptance, the mark goes on a published list, and people have a certain time to object. If the PTO will approve the mark if no objections are received. Overall, the process can take a year or more.
Trademark Filing Basis
The filing basis refers to the status of the mark in commerce. You can file with an “intent to use” it in the near future or with a statement that you are using the mark now. “Intent to use” filings more or less reserve the mark, but do little else.
Trademarks are filed in classifications. Each one covers a different niche of business and the filing only applies to that classification. An example can help explain how this might work.
Amazon is a well known online consumer site. As a result, it has a trademark filing for its name in the classification of computers. Does this mean nobody else can use the Amazon name? No. It simply has to be in another classification. For instance, a site providing tours to the Amazon rain forests could be called “Amazon Rain Forest Tours”. The name would not be likely to cause confusion among consumers, so there would be no problems from a trademark perspective.
The PTO charges hefty trademark fees. A paper filing will run you between $375 and $325 depending on the specifics. An online filing is $50 less. Mind you, these are just the application fees. They do not include trademark search costs or attorney’s fees.
Let’s assume I start a smart phone company. I call my lead product the iTelephone. Do you think this might cause confusion with consumers? They might think it is an Apple product instead of my cheesy version. My mark would infringe on the Apple iPhone mark. As a result, Apple would sue me and, in this case, win. Suing for infringement is the primary method to protect a trademark.
Dilution refers to a trademark that should receive less or no protection because it has become a common term that does not necessarily reflect a product or service. Google faces this potential problem. People refer to “searching” for something by saying just “Google it” now. The phrase doesn’t really refer to just the Google search engine specifically.
Another mark that has this problem is Coca Cola. When was the last time you called a soda a soda? Most people call it a Coke, even if they want a Pepsi or some other brand. The term refers more to sodas than the specific product in question, thus the mark is diluted. Fortunately, Coca Cola has a herd of attorneys to protect the mark, but it is an issue many businesses can run into.
Do you need to worry about the dilution of your trademark? It is a rare problem for most businesses.
The real value of a trademark is the niche it carves out in a consumer market. I can’t launch my iTelephone product because Apple has exclusive control of the iPhone market. Having said that, I could theoretically license the right to use the trademark from Apple or buy it. The transfer of the rights associated with the mark is known as an assignment and it usually costs a pretty penny in the form of a one time payment or ongoing royalty. When a business is sold, the intellectual property it owns must be assigned and this includes trademarks.
This refers to a trademark application or mark itself that the owner is no longer claiming. A trademark that is valuable today may lose its value. This is particularly true with the web where things evolve quickly. It wasn’t that long ago that AOL was an incredibly valuable mark. Now? You could get it very cheap. AOL hasn’t been abandoned as a mark, but that day isn’t far off.
Trademarks can last forever. You have to file certain documents from time-to-time to keep the PTO apprised as to whether you are actually using the mark. The first filing typically must be done five years after the original approval of the mark. Filings must be made from time-to-time because the law puts an emphasis on the actual use of the mark in the stream of commerce. Marks that are not being used quickly lose their registration with the PTO and the benefits that come from being registered.
Do trademarks expire? Yes, but only if the owner doesn’t follow through and file renewals. If you stay up on the filings, the mark could technically last forever.
This article on trademark basics is intended to give you an introduction to this form of intellectual property. Trademarks are tricky beasts, but can be very valuable. Make sure you always use an attorney to file them to avoid problems down the road with infringement issues.
Richard A. Chapo, Esq.