- Posted by Holmes Weinberg, PC
- On October 31, 2014
I’ve always been fascinated by the disconnect experienced by so many branding professionals and legal professionals over the term “trademark.” Many branders and marketers believe that trademark is a verb, as in “can you trademark ….” Many legal professionals believe that a brand is no different than a strictly legal thing. So here’s some clarity: a trademark is a noun. It is the legal term for what most people think of as a brand. It can be a word, a design, a combination of a word and design, a slogan, a scent (really!), a sound, a color, a combination of colors and designs and words, and just about anything that is used to identify and distinguish a product or a service from those of others. The most elegant statement of what a trademark is and its value, in my opinion, was stated by Justice Frankfurter or the Supreme Court in a 1942 case involving a red circle on the bottom of a shoe:
“The protection of trademarks is the law’s recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trademark is a merchandising shortcut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same — to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trademark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.”
Commercial magnetism. The drawing power of a congenial symbol. A merchandising shortcut. These phrases cut to the chase of what every brander and marketer knows: A brand is a symbol, a shortcut, representing all of the imagery, context, messaging, communication, emotions, need fulfillment, and loyalty that the brand wants to represent and be known by. In the dense fog of a crowded, undefined, constantly shifting marketplace, a brand is the light of the lighthouse and the clear path to the safety it is meant to represent. A safe harbor for consumers. A brand is all of these things, and to that extent is broader than the legal trademark, which is the actual word or other symbol that embodies all of these sensations and emotions and memories, etc.
The easiest way to differentiate a brand from a trademark is to think of the trademark as the legal representation of the brand. It is this legal representation that is protected by trademark law. It usually consists of a name (sometimes called the “brand name”), such as APPLE, and often a logo such as and often a combination of the word and a logo, and sometimes a slogan too. A brand is more extensive than this. It consists of all of the divergent elements that make-up the commercial magnetism of the brand — customer service, the architecture of the stores, its advertising and promotion, online presence, financial reputation, its leadership, its coolness or lack of cool, music and images associated with the brand, quality of its products and services, consumer likes and dislikes, its relevance, its integrity (or lack thereof) and so on. The trademark is a “merchandising shortcut” for all of these elements. And all or many of these elements is what a consumer experiences when she or he sees the name or the logo. A trademark is considered to be a symbol of a brand’s reputation, reputation being the end result of how a consumer who has experienced the many elements of a brand thinks about a brand. Trademark law protects that reputation, good or bad.
A trademark, the legal noun, unlike a brand, can be registered, which is what most branders and marketers are thinking when they ask if a name or symbol can be “trademarked.”
The actual law of trademarks is quite complex and varies from country to country. I’ve been a trademark lawyer for 30 years, and find that there’s always something new to learn about and apply. But here are some basics that will help you safely being to navigate through this legal fog:
1. You can develop legal rights in a trademark just by using it in a way that people understand to be a trademark use. Registration is not mandatory for protection in the U.S. But registration is the best way to get national protection and to prevent others from getting those rights before you. A very good primer about trademark registration in the U.S. is on the website for the U.S. Patent and Trademark Office at http://www.uspto.gov/trademarks/basics/BasicFacts.pdf.
2. Just about every country has its own trademark law, and in most countries outside of the U.S., unless the trademark is registered, it’s not protected. And in most countries, anyone can register a trademark whether or not they have any intention of using it. So before you decide to do business with a licensee, distributor, co-marketer or partner, outside the U.S., file an application for the trademark in that person’s country. If you don’t, they might, and they don’t have to give it back.
3. Trademark law in the U.S. protects against the use of a similar — not identical — trademark for commercially related products or services. And similarity can be similarity not just in visual appearance, but in sound or meaning. For example, in one case, representing PLAY DOH, I was able to prevent FUN DOUGH from being registered for a competitive product because to a child “fun” and “play” are similar in meaning. And really well known trademarks get more protection than others, which helped in this case because PLAY DOH was so well known. There are lots of examples of this. GALLO wines was able to stop a playing card company from marketing GALLO playing cards, and we recently stopped a company from using EL GALLO for an energy drink. For AMERICAN IDOL, we have stopped lots of people from using names containing the word IDOL for a wide assortment of products and services. What this means is that searching the Patent and Trademark Office trademark database for identical names is not enough to clear the use of a new trademark.
4. Owning a domain name does not mean that you have acquired trademark rights in a brand name incorporating the domain name. In other words, owning ABC.com doesn’t give you trademark rights of any kind in ABC.
5. Getting state approval to use a name as a corporate name or fictitious name does not give you any trademark rights in the name. For example, a company in Denver years ago got permission from the Colorado Secretary of State to use the name Haircrafters for its business, but we were able to stop it from using the name because our client owned a federal registration of Haircrafters that predated the Colorado state approval.
6. The only way to have a high degree of confidence that you can use a name as trademark/brand name in the U.S. is to obtain a full trademark clearance search. The same is true in most countries. There are professional trademark search companies that can be hired to do these searches.
7. Made up names (XEROX) and names that have no relationship to the product or service they identify (APPLE for computers; GOOGLE for a search engine) get the broadest protection under trademark law. Names that are descriptive of a quality or characteristic of a product or service are very difficult to protect. Generic names get no protection.
8. Having rights in a trademark doesn’t mean you have rights for every kind of product or service. APPLE for computers and APPLE MUSIC for a music label/publisher have different owners. Same for DELTA faucets and DELTA airlines, ROLLING STONES rock group and ROLLING STONE magazine, etc. As a general rule, rights in a trademark extend to those products and services that are commercially related and the rights may be broader or narrower depending upon the type of mark. For example, celebrity and designer names, which can be used for all kinds of products and services, and famous brand names, like GOOGLE and IDOL have more extensive rights than non-celebrity, non-famous brands. So the better known you can make your brand known, the stronger the trademark rights.
9. Trademarks are not copyrights and are not patents. They all fall under the general heading of “intellectual property,” but they are very different.
As the blogging continues, I’ll delve deeper into the interplay of brands and the laws. Feel free to post questions. I can’t give legal advice on a blog (there has to be an attorney-client relationship for me to give legal advice), but I can provide some general guidance.