Common Business Misperceptions about Trademarks
Trademarks is an area of confusion as many businesses file their own trademarks finding that their registration is refused as only about 1 in 3 trademark filings make it to registration, being much lower than patents, this article summarizes these issues.
1.) WHAT IF I JUST START USING A TRADEMARK WITHOUT REGISTRATION
If someone else has a confusingly similar trademark in relation to sight, sound, meaning, or spelling associated with a good or service that travels through similar marketing channels as your good or service, or if the other trademark is famous the good or service association is not relevant, you could be liable for infringement and have to discontinue the use of your trademark and go through the cost and your customer confusion by rebranding with a different trademark.
2.) I SEARCHED THE U.S. TRADEMARK OFFICE WEBSITE AND DIDN’T FIND ANYTHING LIKE MY TRADEMARK, SO I CAN USE IT RIGHT?
At best this is a preliminary search as the above defined “confusingly similar” standard is not entirely covered in the search engine, also you are only searching federal registered and pending trademarks which is not at all dispositive of all the trademarks in use nationwide, see the disclaimer prominently displayed on the U.S. Trademark Office website trademark search page “…do not assume that your mark can be registered at the USPTO. After you file an application, the USPTO must do its own search and other review, and might refuse to register your mark”. Thus, there is a clear warming that the U.S. Trademark Office website search is only preliminary. Anywhere in the U.S. that a trademark is in commerce whether registered or not can be used against your registration, thus the above defined U.S. Trademark Office website search does not cover areas such as state registrations, common law uses (unregistered), business entity names, publications (newspapers, magazines, trade journals, phonebooks, etc). Additionally, if your trademark is other that a single word mark, i.e. a four word slogan, the confusingly similar standard is more complicated and if your trademark is a graphic logo, or a color, or a sound, or a smell there is really no way to search for it online with standard search engines.
3.) OK THEN, I SHOULD DO A GENERAL INTERNET SEARCH RIGHT?
Again, the same problems, general internet search engines are not designed to handle the trademark “confusingly similar” standard, also your search is confined to the internet, which does not contain information on everything you would be interested in, i.e. a geographically local business without a website, thus a general internet search still falls far short of informing you of confusingly similar trademarks. Also, as above if your trademark is other that a single word mark, i.e. a four word slogan, the confusingly similar standard is more complicated and if your trademark is a graphic logo, or a color, or a sound, or a smell there is really no way to search for it online with standard search engines.
4.) I’VE GOT THE DOMAIN NAME I WANT REGISTERED, SO I CAN GET A TRADEMARK ON IT RIGHT?
The point to keep in mind on domain name registrations is that they may or may not be in “use” trademark wise by others who have not previously registered your domain name and thus others may have existing trademark rights on your registered domain name, even if it is not exactly the same. Thus, your domain name registration may not even be used by you and you could be forced to surrender your domain name to the trademark owner. What this results in is that you need to do a name clearance search trademark wise for your desired domain name to see if you can even use it, also it is a good idea to try to trademark your domain name to help prevent others from registering a domain name similar to yours. Many others also register multitudes of domain names that do not have websites or businesses while attempting to sell popular or commonly desirable domain names, you must exercise caution on acquiring these domain names as they may not be useable as others may already have trademark rights associated with a domain name that is confusingly similar, registering a domain name that is confusingly similar (by typo or otherwise) to a trademark is typically called cyber squatting or typo squatting.
The reason for this problem is that a domain name is simply an electronic address, much the same as a phone number, resulting in a number of very similar domain names that are only different by one letter, or the domain extension, or a dash, or a dot which would most likely be confusingly similar trademark wise, also these very close domain names can lead to customer confusion problems, wherein people could go to the wrong website very easily. Thus, you could approach the owners of very similar domain names to yours purchase them, and then have these names link to your potential site so that your customers will find your site if they make typical misspellings or typos of your desired domain name. As a more advanced strategy you could also purchase slang derivatives of your domain name to preclude flaming or roasting sites.
5.) I JUST COMPLETED A STATE TRADEMARK REGISTRATION IN MY OWN STATE, SO I CAN USE MY TRADEMARK RIGHT?
What you have are common law rights to use the trademark in a specific geographic area of use of the trademark, much the same as if you just started using the trademark without federal registration, thus you are in the same position as item 1 above. The state registration basically adds nothing to your trademark as the state does no examination of the trademark for anything confusingly similar, as the most a state will do is to check a database for an exact match only, which is far short of the examination for confusingly similar trademarks. Thus results in many state registrations that are only one letter apart and thus cannot function as trademarks at all, also state registration of slogans, graphic logos, or colors, or sounds, or smells cannot function as trademarks either for the same reasons as they are only put into a state database with nothing relating to trademark rights coming from the state registration.
6.) I FOUND ANOTHER TRADEMARK I LIKE; CAN I JUST CHANGE ONE LETTER IN IT AND USE IT?
Probably not, referring again to confusingly similar standard above, just changing one letter is not enough of a difference to not be confusingly similar to the consumer of the associated goods and services. Trademark similarity and the associated goods or services similarity typically have an inverse relationship. This means that two very like or even exact marks could co exist on their having highly legally dissimilar goods or services associated with them, such that the consumer would not see the highly dissimilar goods for instance within close proximity at the retail level. Converse to this if the associated goods or services are similar, then their associated marks must be more legally dissimilar to prevent consumer confusion.
An exception to this would be if the mark is “famous” being known nationally or across multiple types of goods and / or services which allows the famous trademark owner to preclude others from using a confusingly similar mark on any good or service, thus you cannot have a trademark that is confusingly similar to a famous trademark.
7.) I FOUND SOMEONE ELSES TRADEMARK THAT I REALLY LIKE; CAN I ASK THEM TO USE IT?
Maybe, but this is a long shot as you would be trying to license (for a fee) the use of the others trademark, however, they would be controlling your use of their trademark, if they even allowed you to, besides it is usually better for you to establish your own unique trademark that will have more value to you in the long run.
8.) WHAT DOES FEDERAL TRADEMARK REGISTRATION GIVE ME?
Once registered, your federal trademark gives you nationwide trademark rights, even where you haven’t put your good or service into commerce. Plus your federal registration gives public notice to others of your trademark rights to others and gives you presumptions in court as to ownership and validity all leading to less likelihood of others infringing your federally registered trademark. Also, you have the ability to reserve the trademark prior to your putting it into use, thus putting off the larger investment in promoting the trademark and putting it on your product, documents, etc. until you know that your trademark can be federally registered.
9.) SHOULD I FILE THE FEDERAL TRADEMARK REGISTRATION MYSELF?
Not unless you are highly experienced in the legal issues surrounding trademark prosecution and litigation. How you structure the trademark itself, whether it be initials, a word, a slogan, a logo, a sound, a smell, or a color, or any combination of these is important to the ease of federal registration, the trademark’s legal strength, and the trademark’s value to you in your market. Also, the drafting of the associated goods or services description is similar to a patent claim, which should be broadly written to maximize the legal protection of your trademark. Ultimately in the very long term a trademark will be one of your company’s most valuable assets as its customer recognition increases, as opposed to patent and copyright which both expire in time, the trademark’s life is perpetual as long as your goods or services remain in interstate commerce.