Intellectual property law can be a bit confusing. This is made even more true by the unfortunate fact that so many people think they understand it but don’t. When you’re launching a new company and bringing your product to market, or when you’re looking to protect your new invention, it’s important to understand the differences between patents, copyrights, and trademarks.
The three things are actually quite different, though they are frequently confused. Most people understand that you need to apply for a patent. But many people don’t realize that the same is not exactly true for copyrights and trademarks. Whereas patents are all about protecting your invention and copyrights pertain to creative work, trademarks are all about branding.
What Trademarks Are
One of the bigger misconceptions pertaining to trademarks is that, unlike patents, they are not a form of protection awarded to an applicant to protect them from infringement. While a patent is issued to protect an invention from being misappropriated, a trademark itself doesn’t protect anything. Actually, the trademark is the intellectual property, not a document protecting it or the exclusive rights. Rather than being the thing which prevents infringement, a trademark is the thing which could be infringed.
This might seem confusing. It’s really common for people to talk about “trademarking” something, like saying that Stephanie has her “trademarked hookshot”. This implies that if you have something that is unique or characteristic to you, you can protect it’s uniqueness by getting the thing ‘trademarked’. This is wrong, though: “trademark” is an adjective, not a verb!
What a trademark actually is is an easily recognizable sign, logo, expression, or design that helps consumers readily identify the marked products or services as coming from a specific supplier. We can all recognize examples of trademarks because we’re surrounded by them all the time. This practice goes back a long way, to merchants and craftspeople who needed their products to be recognizable, and so each would have their own unique mark that they would display.
The same is more or less true today, though the legally accepted scope of trademarks has extended to include things like sayings or expressions and sometimes even sounds and arrangements of color. The fact that Skittles have established their rights to use the phrase “taste the rainbow” as a trademark, though, doesn’t mean that no one else can say those words without fear of bringing down a torrent of angry lawyers. This is because trademarks are only valid within the context that they are used. Unlike patents, they aren’t universal.
Trademarks can be protected, however, and infringing on a trademark does make one liable for legal damages. In the United States, Canada, and most other countries, trademark rights are asserted by registering your trademark with the patent and trademark office (the USPTO in the U.S). The encircled R symbol,® , is available only to those who have registered their mark with the UPSTO.
The U.S and Canada are different from most countries though in that they recognize common law trademarks as well. This means that you can act to prevent infringement of your trademark even if you haven’t registered it, though common law protection is generally less reliable than that afforded by registration.
Common law trademarks are established simply through the prolonged use of a trademark for business purposes. That is, your rights to use a trademark and to prevent others from using it to market similar products are established just by you having a demonstrable history of using the mark in your day to day business. The longer you’ve been using it, the stronger your claims when it comes to blocking its use by others. And, on the flip side, the stronger your claim to continue using it if someone else accuses you of infringement.
Use It or Lose It
Because trademark rights can be established through common law, the onus is on the user of a trademark both to make sure they are actively using their mark, but also to be proactive in asserting their rights if they wish to maintain them. If another company is able to get away with using your mark long enough, they can establish their own competing common law claim, and therefore prevent you from being able to challenge their continued use of it. Registering your trademark with the USPTO gives you an advantage here, and prevents someone else from sweeping in and registering a mark you were using first.
Of course, there are other ways that one might lose their exclusive trademark rights. As a brand, the last thing you want is for your trademark to become a verb. Terms that are considered a generic part of a language are not eligible for trademark protections and companies can lose trademark rights if they misuse them. Remember: a trademark is an adjective, not a verb. This is why you will never see Google talk about ‘googling it’ and why CrockPot will always refer to their products as CrockPot slow cookers: they don’t want their terms to become generic terms.
What Can be Used as a Trademark
Today, nearly anything that can be used to uniquely identify your brand or product can be used as a trademark. Common sorts of things used for trademarks are:
- A unique word or name
- A slogan or phrase
- A logo (a unique symbol or drawing)
- A specific way of representing a word
- Characters (like the Mr.Clean guy or Lucky the Lucky Charms leprechaun)
- Characteristic architectural features (think of the way most fast food chain restaurants are designed)
- Packaging design
There are also rare instances of other sorts of things being trademarked, including sound effects, spoken phrases, musical jingles, or even specific uses of color or color patterns. These are very difficult to successfully establish trademark rights over, however, and the few exceptions are usually well-established international brands.
How to Use a Trademark Properly
If a company ever uses their trademark as a generic term, they risk losing their exclusive rights to the trademark. Xerox has a long history of using marketing campaigns to remind the public that you can’t xerox something or make a xerox with a photocopier. And did you know that escalator used to be a registered trademark of the Otis company? That was until they claimed in one of their ads that they had “the latest in elevator and escalator design”. Since they had used the term escalator as a generic, the courts ruled that they could not, therefore, prevent their competitors from doing the same. And now we call every automatically moving staircase an escalator!
In order to maintain your rights, it’s important that you always use your trademark properly in your marketing material and on your packaging. Here’s a number of simple tips you can follow to make sure you aren’t letting your mark succumb to genericization through improper use.
- Always specify the proper generic term when you use your mark. For example, you might ship a package using FedEx courier service, or take pictures using a Canon digital camera.
- Never use your trademark term as a verb. For example, you would look things up using the Google search engine, instead of googling it.
- Don’t use your trademark as a collective or plural term. For instance, CrockPot would never say that their products are the best CrockPots in the world. They might instead say that CrockPot makes the world’s best slow cookers.
- Always use proper capitalization. A trademark or brand name should always be capitalized. Fender instead of fender, Ford instead of ford, etcetera.
- Always provide proper notice. Registered trademarks can employ(®). Unregistered trademarks can use (™). Make sure that the symbol appears next to the trademark, and not next to the generic term. Ie. Fender® guitars, instead of Fender guitars ®
Trademark Electronic Application System (TEAS)
Much like the patent application system, the USTO provides an online system for companies and individuals to register their trademark electronically. It’s called TEAS, for the Trademark Electronic Application System. This tool makes it much easier to register your trademark and saves a lot of the old-fashioned hassle of dealing with paper documents and snail mail. Additionally, registrations through the TEAS are $50 cheaper than paper filings and may be eligible for significant discounts on the registration cost through either the TEAS-plus or TEAS Reduced Fees programs. You can read more about the costs of registration here.
Trademark Electronic Search System (TESS)
In addition to the online application system, the USPTO offers an online tool allowing users to search the database of existing trademarks. It’s called TESS, which is short for the Trademark Electronic Search System. This is something you should definitely make use of before forking over the money to register your own trademark. The primary reason that a mark will be refused registration by the USPTO is if there is a significant likelihood of confusion between it and another already registered mark.
We’ve got plenty more information on trademark law on the Cad Crowd website. We also provide information on patents and copyrights, and we offer professional USPTO patent services to our clients. It’s all part of our aim to make Cad Crowd the best one-stop-shop for all your new product design services for innovators and inventors. Whether you’re looking for expert CAD design services or contract manufacturing, Cad Crowd has got you covered!
