Now, how do I Mark my Trade?
Trademarks are designed to do one thing: protect the goodwill generated by your company and protect your consumer’s ability to distinguish your products/services from your competitor’s. Your trademark will cause a consumer to associate certain qualities and recollections with your business - in other words, the meaning of the mark to the mind of your customers. Thus the economic value of a trademark can be enormous. A good example is the Nike Swoosh, which is recognized all over the globe and therefore Nike gets the benefits of people recalling what company the Swoosh represents. Certification and Collective marks, those used by trade associations and commercial groups, can also be protected as they, too, reflect qualities and recollections of patrons.
A protectable trademark must be distinctive (to a degree) from all others in the marketplace. Generic, descriptive, and commonly used terms are not enough. Trademarks that are “fanciful” are protectable. For example, Kodak or Exxon - the terms themselves lack inherent meaning, but were created to brand a company’s products. “Arbitrary” terms are also protectable. Examples include Amazon.com and Apple Computer - the terms do have inherent meaning, do not describe the products offered, but have acquired secondary and unique meaning to the public. You can also protect “suggestive” terms, those terms that suggest but don’t describe the product or the product’s characteristics. Suggestive terms can be tougher to distinguish than other protectable trademarks because they require the consumer to use their imagination to connect the goods/services to the appropriate use (thus a good deal of proof is necessary to support protectability). For example, Greyhound is a suggestive trademark because it implies that the bus service is fast, like a greyhound.
A business does not need to register a trademark to get protection from infringement. First use of the mark and continual use of the mark are enough to establish rights to the mark. However, registration is always important to formalize rights and let the world know the mark is yours. In Wisconsin, trademarks are registered with the Secretary of State for a nominal fee. Protection is effective for ten years, but renewal applications must be received by the Secretary of State within 6 months of the expiration date. Protection of the trademark through the state is limited. Better protection is offered through the U.S Patent and Trademark Office, although the process is more costly and complicated. USPTO protection announces to the whole world that you own the mark and secures protection across the U.S.
Aside from registration, it’s important for your attorney to verify nobody else uses your mark or a mark that is very similar. This is where the real costs of trademarks appear. Good trademark research is not cheap, but as usual, it’s imperative to the protection of your work. You don’t want to start using a mark and build up a customer base only to get sued two years down the line and have to alter your now well-known mark.
As a trademark holder, you have some specific rights. One is the ability to sue for infringement. Infringement means that someone is, in some form or another, interfering with the use of your mark - they are potentially tapping into your customer’s goodwill. In infringement cases, courts usually look at factors such as whether your opponent uses its mark in the same geographical area, if goods/services are similar, and the strength of each mark (uniqueness). Another right is the option to sue for trademark disparagement - basically, another entity is ripping on your trademark and goods/services under that mark through misrepresentations of fact. Finally, you also have the right to remedy trademark dilution should your mark be “famous” (it’s not always clear what constitutes a famous mark) - if a competitor is devaluing your mark by using their own, you might be able to recover damages.
Trademarks, in my personal opinion, are the most valuable intellectual property you can own. Trademarks are signs of quality or experiences that stick in the minds of your customers for a very, very long time - they are marketing at its finest. As a quick experiment in the value of trademarks, think back to your childhood…now, think about places you and your family would eat out…I’ll bet that burger chain is still something you think of fondly…and I will also bet you can recall imagery about that restaurant….and at least some of that imagery contains a trademark, like McDonald’s golden arches. What’s more, trademarks accumulate value of time and that value can be sold with a company - all your years of hard work in customer service can yield volumes of extra cash when a business is finally sold. Trademarks are a worthwhile investment.
June 20th, 2008 at 3:16 am
[…] and other misappropriation of another business’s IP. I’ve written a bit about these areas here, here, here, and here, so I won’t go into detail on them. Suffice it to say that it is a prudent […]