What Every Marketer Needs to Know about Trademarks

Every marketer needs to know some basic facts about trademarks to ensure the brand she is building has protection. Here is a short course in trademark law that will allow you to understand some basic concepts.

Q. What is a trademark?

A. A trademark is a brand identity that serves as a destination of origin for goods and services. It lets the marketplace know that certain goods and services came from a single source. The following may all function as trademarks:

• Words, phrases, taglines
• Symbols
• Logos
• Package designs (container shapes—Heinz ketchup bottle–or packaging styles—Tiffany blue box)
• 3D shapes/images
• Scents
• Sounds

Q. Are there different kinds of trademarks?

A. Trademarks may be identified as:

• Trademarks
• Service Marks
• Trade Names
• Trade Dress
• Domain Names
• Hashtags

Q. How do I know my trademark is protectable under the law?

A. The more fanciful the mark, the more easily it can receive protection. Examples of fanciful marks are: Kodak, Google, Zappos. These are terms that are not in common usage or completely made up. Arbitrary terms are those that are in common use but do not describe or suggest any quality of the goods or services. Examples are: GAP/Amazon. These are also worthy of protection. Next, on the spectrum of protectability are suggestive marks that suggest but do not merely describe the qualities of the underlying goods/services. Examples: Coppertone/7-11. Other kinds of names cannot function as trademarks because they are merely descriptive, meaning they directly and immediately convey characteristics of the products or services. Examples: oatnut bread; chocolate candy. In addition, generic words that are the name of a product or service cannot be protected. So you cannot protect Apple for apples because it is generic, but when applied to computers, it became an arbitrary mark, capable of functioning as a trademark. Mere geographic indicators and people’s surnames also would be difficult, but not impossible, to protect.

Q. Can I change my trademark’s spelling or appearance?

A. Fluid trademarks have grown in popularity, engaging consumers with creativity and energy. So, marketers may ornament their designs, move them around, change their backgrounds, but still retain enough of the underlying trademark to be recognized. A famous example of a fluid trademark is Google’s ever-changing logo. Before embarking on a fluid trademark campaign, marketers should consult with the legal team to ensure they are not jeopardizing their trademark rights. For more about fluid trademarks, click here.

Q. Can hashtags function as trademarks?

A. Yes, so long as they are not descriptive or generic and identify your goods or services. When creating hashtags that you intend to use for the long run, discuss with your legal team whether you should clear the hashtags with marketplace searches and protect them with registrations. For more about using hashtags in sweepstakes and contests, click here.

Q. Can I lose my trademark?

A. Yes, trademarks must be in use consistently for rights to exist. After three years of non-use, a competitor may successfully challenge your trademark rights. Always use the mark as an adjective, not a verb or noun to ensure it does not slip into the public domain. Make sure your marketing team has trademark guidelines for the appearance of the trademark.

Q. How do I know if I’m infringing someone else’s trademarks?

A. You need to conduct a full trademark search, not just a Google search or USPTO search, and have an attorney opine on the results. The number one contributing factor to receiving a cease and desist letter is that the user did not properly clear his marks, including hashtags and domain names. Remember that registration is not required for someone to acquire trademark rights. A full trademark search will show unregistered uses. In addition, the test for trademark infringement is not actual confusion but likelihood of confusion. Only a full search will show marks that could be likely to cause confusion.

Q. How do I avoid infringing someone else’s trademarks?

A. Aside from searching the marketplace and understanding the risks associated with your proposed mark, here are four rules:

• Don’t copy third party trademarks or logos.
• Don’t use others’ marks to imply affiliation or sponsorship.
• Don’t use others’ marks in domain names, user names, keyword advertising.
• Give appropriate credits when using others’ trademarks; your legal team can help you determine what those are and when you need to use them.

Q. Why should I register my mark? Isn’t it an expensive and lengthy process?

A. Registration affords you: statutory rights, a presumption that the mark is yours and valid, an ability to preclude others from using it. A registered mark will become incontestable after five years of consistent use if the appropriate paperwork is filed with the USPTO. The process for registering a mark may take ten-twelve months on average, but a trademark attorney can ensure that your mark moves as quickly and efficiently as possible through the government’s system. The process is relatively inexpensive compared with the costs of starting a business. And if you are thinking about filing on your own without an attorney, click here to read about the dangers of do-it-yourself trademark applications.

To learn about filing social media trademarks, click here.