Kauffman Founders School, Peter D. McDermott,
Intellectual Property, Trademarks

>>Trademarks. Trademarks are kind of fun.
I mean, trademarks are the face of the company to the marketplace. Your company will have
a trademark almost certainly, a trade name and a trade mark. You will use it on your
products or services. Almost anything can be a trademark. It could be of course a word,
Exxon or Pepsi‑Co. It can be a scent. There are some perfume scents that are registered
as trademarks. You’re probably going to want to pick a trademark that somehow conveys to
a marketplace what your product is all about or what your service is all about. The more
distinctive your proposed trademark is, the more powerful it would be, the more likely
it is to be registered. It’s typically analyzed that there is a series
of protection levels from a purely fanciful term to a purely generic term. As you travel
from highly fanciful to purely generic terms scope of protection is going to weaken. And
your likelihood of getting registration will weaken.
A purely fanciful term is certainly protectable, just below fanciful term such as Exxon are
the arbitrary terms. Cadillac for a car. More frankly for dog food, is a fanciful term.
It has nothing to do with dog food and so it’s a powerful trademark. Descriptive is
not protectable without secondary meaning. Which is to say that the marketplace recognizes
that trademark as yours, as designating some source. In that case, you can register it
federally. Trademark terms that are a generic term for the product are not‑registrable
as a trademark. There are benefits to registering your trademark,
of course. These benefits include the evidentiary value of having a federal registration which
is dated of your use of the trademark. Trademark registration gives notice to the world that
you’re using it as a trademark in your particular area. U.S. trademark rights accrue when you
use your mark on goods or services in the marketplace. In a lot of other countries,
trademark is strictly a creature of a registration. But in the U.S. it comes from use.
Now you would like to be able to have your trademark protected even before you use it.
And you can do this. You can file what’s called an intent to use trademark application. It
says to the patent and trademark office I intend to use this as a trademark in this
field on these goods or services. And the examiner will determine whether or not your
proposed trademark would qualify for trademark protection. If it does, you’ll simply have
an opportunity over the course of some period of time to submit a statement saying that
you have now finally started using it. At that point, of course, you’re already registered
or it will be registered at that point and you’ll have your protection in place.
Keep records of trademark development. It’s good to have. Its test marketing can go towards
supporting your registration and your rights in a trademark first and subsequent sales
through commercial through to commercial quantities. Also, keep records of your sales from prototype
all the way through to full commercial production and sale. Also, keep documents that establish
the accuracy of the dates that you will put down if you decided to file for a trademark
registration in the U.S. or other countries. The trademark office is quite serious about
this. You have to put down when you first started using it in commerce, when you first
started using it in interstate commerce. Don’t guess. Put down dates that you can put back
up with documentation. The test of infringement of a trademark is
likelihood of confusion. So if you choose a trademark that your competitor thinks is
likely to confuse the marketplace they are going to challenge you. You need to pick a
trademark that is well enough away from those who are already out there in the marketplace
so they don’t accuse you of infringement. Avoiding a problem is far better than solving
a problem. Pick several potential trademarks before you settle on one and have them vetted
by your counsel. There are searchs that can be done of public indexes. And they can find
out whether anyone is using it or something similar to it.
So once again, we have the perennial question, how much resource do I devote to trademark
clearance in advance so I don’t have a problem down the road? What’s the risk? How important
is your trademark to you? In some industries trademarks are crucial, consumer products
for example. In others it may not be as important. In extreme cases private investigations have
been used to find out whether there’s a trademark in use that’s likely to be a problem with
yours. Well, what if you do turn up a trademark problem?
There are solutions. There’s always solutions. If you’re not so deeply embedded into the
use of that trademark, the smart thing might simply be to cut and run. Pick a different
trademark and get going with that. Let the other one go. You didn’t know it was a problem,
turns out it is, cut your losses. If you don’t want to do that you might want
to investigate whether the current trademark user is willing to license you. If it’s not
a head‑to‑head competitor, chances are fair they might be willing to do that for
a price that’s sensible to you, that’s reasonable. The price, of course, might even be less than
what it costs you to redo your trademarks. You know, if you are accused of trademark
infringement, just because they say it doesn’t make it so. Maybe you want to challenge their
trademark. Maybe it’s really not trademark at all. There are lots of famous trademarks
that have lost their trademark status by becoming the generic term for that product. Band‑Aid
is still a trademark, but the truth is we all kind of use it as a generic term. Thermos
was found not to be a trademark anymore after a time because everybody used it to refer
to the vacuum bottles that we all use to keep beverages hot and cold.
So just because you’re accused of infringement don’t give up. Maybe that trademark has become
generic. And there are other problems too that you might be able to take advantage of.
The key question is whether or not there’s likelihood of confusion. If their trademark
is different enough from yours, or if their field of activity is different enough from
yours, even the seeming similarity of their mark in yours may not justify stopping you
from using your mark your way on your product.