Intro to IP Law – Part III – Trademarks

More from the ideas2money lectures.

Trademarks

What do they protect?
Trademarks protect brand names, logos, taglines, and other marks that
identify the source of goods and services in the marketplace.

How you get them?
Trademark rights begin to accrue just by using the mark in commerce, but
only in the geographic places where the mark is meaningully used.  Federal
trademark registration at the U.S. Patent and Trademark Office (PTO)
provides stronger protection that covers the whole country.

How long do they last?
Trademark rights last for as long as the underlying brand is continuously
used in commerce.  Periodic renewal is required to maintain registration.

How do you infringe them?
Trademark infringement can arise by using a similar mark on similar goods in a way that is likely to confuse the consuming public as to the source of those goods.  The infringement needn’t be purposeful; you can sue anyone who’s confusing your consumers whether they know about you, your products, or your trademark.

Any limitations on what can be owned?
Lots, but here’s a big one.  Some trademarks cannot be owned.  Brands that describe the goods they are used with, for example, are out of bounds.  It is perfectly ok to own trademark rights in the word “Apple” if you’re selling records or computers; it is not ok if you are selling apples, however, because other apple sellers need to use that word too.  The strongest trademarks, therefore, are so-called fanciful marks – words that are made-up or have no rhetorical relationship to the underlying goods.
“Kodak,” “Xerox,” and “Google” are oft-cited favorites in the fanciful
department.

Is this really necessary?
Brands are very powerful assets, representing your company’s reputation in the minds of its real and potential customers.  Whatever you might think about IP law in general, using trademark law to own and control your brand is a conservative, perhaps fundamental, business practice.

Before committing significant resources to developing a brand, it is always a good idea to at least run a trademark search to ensure that someone else doesn’t already own the trademark in that brand for similar goods or
services.  You would be surprised to learn how often people neglect to clear trademark rights before they name their company, purchase a domain name, print business cards and letterhead, and even begin selling products, all under a new brand.  They are often shocked when the cease & desist letter arrives from the senior owner of the trademark claiming the inevitable likelihood of consumer confusion.

Finally, keep in mind that ministerial activities such as obtaining an internet domain name or reserving a company name while forming a corporation or LLC with your secretary of state do not grant you any trademark rights or insulate you from claims of infringement.