What is a Trademark and Why Should I Care?
Nicole M. Deforge
Quite simply, a trademark is typically a name or design that identifies your company or its products. It’s your branding. Your trademark sets you apart from everyone else out there. Think of the Coca-Cola name, the Mercedes emblem, the Nike swoosh. When a consumer sees one of these trademarks on a product, they instantly know which company is the source of that product. They also should know what to expect from that product in terms of quality and style.
A trademark cannot be generic or merely descriptive of the goods or services it identifies. It should be suggestive, fanciful, or even arbitrary. For example, an apple seller couldn’t claim the word “apple” as a trademark for his apples. But when we refer to apples in the context of computers, we all know exactly which company we’re talking about, even though apples have nothing whatsoever to do with computers. That’s the sign of a great trademark.
So, why should you care? Intellectual property, including patents, copyrights, and, yes, trademarks, is often one of the most valuable assets of a company—if not its most valuable asset. Think of Ralph Lauren. How many of us would be willing to pay a premium for one of his ubiquitous white button-down shirts if not for that jaunty little polo pony on the front? Or back to the Apple computer. Would we really love the iBook so much if it didn’t have that luminous Macintosh logo glowing through the cover for those across the room to admire and envy as we type?
The reputation of your company is inextricably connected to your trademarks. Trademarks can represent and reflect a tremendous amount of good will among the consuming public. It is critical to protect this good will from those who would trade off on it to their advantage and at your expense. Many companies have leveraged the good will in their trademarks to expand into areas well outside of their original territory. Harley Davidson sells a lot of merchandise completely unrelated to its expertise with motorcycles simply because its trademark has come to be associated with stylish, quality products.
Being sensitive to trademark issues could also save you a lot of pain and suffering down the road. Many a business owner has unhappily discovered that the name of his company or signature product is already being used by someone else—often after receiving a cease-and-desist letter from an attorney. Years of effort and investment can be lost when one is forced to give up a business name or face a lawsuit for trademark infringement.
So what can you do to protect your trademark investment? First, pick a name for your new business or product that is fanciful or suggestive, rather than one that simply describes your product or business. It can be very difficult, if not impossible, to claim ownership of a name that is merely descriptive. Remember, “apple” works for computers, not for apples.
Second, before settling on a new name or logo, carefully scan the horizon to find out what else is out there. The Internet can be an invaluable resource in this regard. Search databases of trademarks registered at both the federal and state level and also check popular search engines. But beware. A name need not be identical to another trademark to create a conflict. It only has to create a likelihood of confusion to infringe. Given this gray area, trademark attorneys can be particularly helpful in identifying potential dark clouds on the horizon.
Third, register your trademarks. Although it is not necessary to register your trademarks to claim trademark rights, it can be much easier and less expensive to enforce your trademark rights with a registration. Registration also serves as notice to others to steer clear from your territory and provides you with the possibility of treble damages should they fail to do so. A trademark can be registered at the state level, if your use is limited to that state, or at the federal level, if you use the mark in interstate commerce. You can also reserve a new trademark before you even begin using it.
Finally, keep your registrations up to date. A trademark attorney can also be helpful in this regard to ensure that the necessary documents are filed in a timely manner. Periodically review your current and proposed business and product names with counsel to maximize your protection
These few simple and relatively inexpensive steps will go a long way towards helping you protect your business and your investment.
Nicole Deforge is an intellectual property attorney with the law firm of VanCott, Bagley, Cornwall & McCarthy. She can be reached at ndeforge@vancott.com or 801.237.0282.
A trademark cannot be generic or merely descriptive of the goods or services it identifies. It should be suggestive, fanciful, or even arbitrary. For example, an apple seller couldn’t claim the word “apple” as a trademark for his apples. But when we refer to apples in the context of computers, we all know exactly which company we’re talking about, even though apples have nothing whatsoever to do with computers. That’s the sign of a great trademark.
So, why should you care? Intellectual property, including patents, copyrights, and, yes, trademarks, is often one of the most valuable assets of a company—if not its most valuable asset. Think of Ralph Lauren. How many of us would be willing to pay a premium for one of his ubiquitous white button-down shirts if not for that jaunty little polo pony on the front? Or back to the Apple computer. Would we really love the iBook so much if it didn’t have that luminous Macintosh logo glowing through the cover for those across the room to admire and envy as we type?
The reputation of your company is inextricably connected to your trademarks. Trademarks can represent and reflect a tremendous amount of good will among the consuming public. It is critical to protect this good will from those who would trade off on it to their advantage and at your expense. Many companies have leveraged the good will in their trademarks to expand into areas well outside of their original territory. Harley Davidson sells a lot of merchandise completely unrelated to its expertise with motorcycles simply because its trademark has come to be associated with stylish, quality products.
Being sensitive to trademark issues could also save you a lot of pain and suffering down the road. Many a business owner has unhappily discovered that the name of his company or signature product is already being used by someone else—often after receiving a cease-and-desist letter from an attorney. Years of effort and investment can be lost when one is forced to give up a business name or face a lawsuit for trademark infringement.
So what can you do to protect your trademark investment? First, pick a name for your new business or product that is fanciful or suggestive, rather than one that simply describes your product or business. It can be very difficult, if not impossible, to claim ownership of a name that is merely descriptive. Remember, “apple” works for computers, not for apples.
Second, before settling on a new name or logo, carefully scan the horizon to find out what else is out there. The Internet can be an invaluable resource in this regard. Search databases of trademarks registered at both the federal and state level and also check popular search engines. But beware. A name need not be identical to another trademark to create a conflict. It only has to create a likelihood of confusion to infringe. Given this gray area, trademark attorneys can be particularly helpful in identifying potential dark clouds on the horizon.
Third, register your trademarks. Although it is not necessary to register your trademarks to claim trademark rights, it can be much easier and less expensive to enforce your trademark rights with a registration. Registration also serves as notice to others to steer clear from your territory and provides you with the possibility of treble damages should they fail to do so. A trademark can be registered at the state level, if your use is limited to that state, or at the federal level, if you use the mark in interstate commerce. You can also reserve a new trademark before you even begin using it.
Finally, keep your registrations up to date. A trademark attorney can also be helpful in this regard to ensure that the necessary documents are filed in a timely manner. Periodically review your current and proposed business and product names with counsel to maximize your protection
These few simple and relatively inexpensive steps will go a long way towards helping you protect your business and your investment.
Nicole Deforge is an intellectual property attorney with the law firm of VanCott, Bagley, Cornwall & McCarthy. She can be reached at ndeforge@vancott.com or 801.237.0282.
Copyright 2006. Published for general informational purposes only, and should not be construed as legal advice. If you need legal advice please consult with your attorney.