Pick the Right Trademark... And Protect It
By Gregory K. Jung
[Originally published in the Oakland Business Review, September 2008.]
If you can recognize Apple Computer logo or the silhouette of a Coke bottle, you know that a trademark is an essential and powerful part of your business. A trademark is any word, symbol or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from another. Trademarks serve two functions: to indicate the origin and quality of a product and to protect the manufacturer’s or seller’s investment in its brand. Both federal and state laws protect trademarks, including the general “look and feel” of a product.
What’s at stake?
Violation of trademark laws incurs serious consequences. You might need to change the name of your business or be liable for damages (which could include all of your profits) to the “rightful” trademark owner.
What can you do?
Pick a name or trademark that does not already belong to someone. While there is no way to be 100 percent certain, there are several methods to check for availability. Start with an Internet search, since most businesses will have some Web presence. The United States Patent and Trademark Office (USPTO) offers a free “Trademark Electronic Search System” on its Web site. Finally, there are companies that will search databases for trademarks. Once you are confident that your name or trademark is available, file a trademark application with the USPTO.
When deciding on a name, keep in mind that a trademark must be distinctive and identify your product or business. When evaluating trademark disputes, courts distinguish between four categories with varying degrees of protection: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.
Arbitrary, fanciful or suggestive marks have a high degree of protection. Arbitrary marks have no relation to the underlying product (“Camel” cigarettes). Fanciful marks are coined words or words not in common usage (“Exxon”). Suggestive marks evoke or suggest a characteristic of the underlying product (“Coppertone” suntan lotion).
Descriptive marks tend to describe the underlying product (“Clear Eyes” eye drops). Descriptive marks are not protected unless they have acquired “secondary meaning” or a strong consumer association. To protect this kind of mark, you’ll need to prove, likely through consumer surveys, that consumers identify the mark with your specific product. This is not a simple task.
The final trademark category, and one that won’t be protected, is generic marks (pizza sold under the name “Pizza” won’t receive protection).
The best route is to pick an “arbitrary or fanciful” name. While suggestive marks are protected, you may have to argue why your mark is suggestive rather than descriptive.
What if my trademark is my name?
There is no absolute right for you to use your name in your trademark. Even if your name is “McDonald,” it is unlikely that you may open a fast-food restaurant under your name.
What if I have been using an unregistered mark?
While registration with the USPTO will give the strongest protection, you are still protected by California’s state trademark law. This will provide some protection if you were the first in your area using your mark, but it has limitations. If a company with a USPTO trademark plans to expand into your area, then you may be precluded from using your mark going forward.
What is the risk of not protecting a mark?
A trademark owner has a duty to police its marks, otherwise it risks losing the mark due to it becoming “generic” (“aspirin”), for example. A trademark owner will typically send a “cease-and-desist” letter to those violating or infringing on the trademark. The business receiving such a letter has the following options: stop using the mark, negotiate with the trademark holder to get limited use of the mark, continue using the mark and risk being sued, or initiate legal proceedings to settle who gets to use the mark.
When you introduce a new product or business, give serious thought to the name, as well as the “look and feel” of the logo, label, décor and other aspects of the trademark. A strong trademark will help build your brand and keep others from trying to profit at your expense.