Trademarks are an essential part of every business. They help your customers distinguish between what you offer and what is offered by your competitors. Trademarks are the foundation of your brand. When a customer recognizes your trademark, it means they know what to expect when they spend their money with you. That instant recognition sets you apart from the crowd and increases the value of your business.
The importance of trademarks as business assets cannot be overstated. In 2018, the top 100 global brands are worth a collective $4.4 trillion, an increase of 21% over 2017. Every business sector has seen growth in the value of its brands. A strong brand strategy with solid trademarks leads directly to wealth for you and your company.
Trademark Use by Creative Professionals
Creative professionals make extensive use of trademarks to protect their creative property.
J.K Rowling has registered her name, her signature, and her pen name (Robert Galbraith) in the United States Patent and Trademark Office (USPTO) in order to add trademark protection to her business asset empire. The mark "Harry Potter" is registered as a book series as well as for all the different types of merchandise that flow in the wake of the series' success.
Matt Skillman, an artist/craftsman, has filed an application for registration of the mark "Fire Globe" for his backyard fire bowls. It's brilliant branding for his creative work and builds on the copyright protections he already has in place. Note the use of "TM" after the words Fire Globe. The "TM'' in superscript is used to tell the world that he is claiming trademark rights in that phrase. When his trademark application clears all the hurdles and his trademark registration issues, he will change that to an "R" in a circle.
For individual writers, artists, or photographers, their name or signature may be their trademark. Other examples of creative professionals doubling down on protection for their work with trademark registrations include publishing companies, jewelry makers, textile designers, book cover design services, editing services, writers of fictional characters for merchandising purposes, the list goes on . . . .
What are trademarks?
There’s a lot of confusion about what trademark law protects and what copyright law protects. They both protect creative work and both use letters in a circle, but they are different.
Copyright law protects the creative expression of an idea. Trademark law protects words, phrases, logos or symbols that act as source identifiers for goods and services. At the most elemental level, copyright protects creativity and trademark protects commerce.
There are some creative works that are protected by both copyright and trademark: like Disney characters.
When you look at Mickey Mouse, you think Disney, that’s where Mickey comes from. Mickey is a source identifier for Disney. That’s what a trademark is, a source identifier.
But Mickey is also a creative expression of the idea of a mouse, and that’s a copyright concept. So, Mickey has trademark protection and copyright protection.
As a creative professional, you make you living selling creative services or creative products, or both. Your work often lives at the intersection of copyright and trademark.
A trademark is a word, phrase, symbol, or design used to identify and distinguish a particular manufacturer’s or seller’s goods and services from the products of others.
Trademark protection extends beyond words, symbols and phrases and can include colors or packaging like the shape of a Coca-Cola bottle, or the Crayola chevron on a box of crayons. Consumers connect brand names, logos, packaging, and even color to the goods or services that come with them.
Trademarks can elicit strong emotional responses in consumers. Businesses invest heavily in marketing and branding to encourage what they hope will be a positive association between their trademark and their goods.
Because of the time and money that's been spent, businesses go to great lengths to protect their marks from unwanted and inappropriate use.
Trademark owners enforce the rights in their trademarks by challenging other marks in the marketplace that they believe will cause consumer confusion. Consumer confusion is the standard for measuring trademark infringement.
Distinctiveness Makes a Strong Trademark
A trademark must be distinctive which means it must be capable of identifying the source of the product. The more distinctive a trademark is, the more protection it is afforded. The greater the protection, the stronger the mark.
There is a spectrum of distinctiveness that is used to measure the strength of trademarks.
- Fanciful marks, coined or made up words, that become equated with specific products or services, are the strongest trademarks. Think Häagen Dazs, Kleenex, Kodak, or Google.
- Arbitrary marks are real words that have nothing to do with the goods or products being sold under the mark. Arbitrary marks are also strong. Think Amazon, Apple, or Nike.
- Suggestive marks require the consumer to make a mental leap between the mark and what is being sold. Because they suggest a quality or characteristic of the goods or services, they are not as strong as arbitrary or fanciful marks. Think Microsoft, 7-11, or Q-tips.
- Descriptive marks cannot be registered unless they have acquired secondary meaning (they've been used for a while and people identify the mark with specific goods). The law does not permit someone to have a monopoly on common words that describe a category of goods or services. Think Neighborhood Tree Services.
- Generic marks cannot function as trademarks. The words fully describe what is being sold. Think Daily Diary.
The Supreme Court recently added a twist to the spectrum of distinctiveness by deciding that adding ".com" to a generic word can make the entire combination eligible for trademark protection. This is interesting because you can't add "Inc." to a generic word and get trademark protection.
The decision in USPTO v. Booking.com makes clear that it's all about consumer perception. That's the essence of trademark. If the consuming public understands that BOOKING.COM means booking services available at that particular domain, then the name is not generic, it's descriptive.
A descriptive mark is one step higher on the spectrum of distinctiveness. Descriptive marks can't function as trademarks unless people identify the mark with a specific source of the service. That's what secondary meaning is . . . the identification or connection of a mark to a particular source. When a mark has secondary meaning, it can be registered.
The flood gates for generic.com trademarks are not likely to open too soon though. Evidence of what the consuming public understands certain names to mean is expensive to develop. Booking.com probably spent a great deal of money on rigorous consumer surveys. The cost of consumer surveys puts generic.com trademarks out of reach for most [dot]com businesses.
Benefits of Trademark Registration
Registration gives you the right to use your trademark nationwide. That right is limited if someone else was using the same mark in a particular geographic area before you applied for registration. In that case, the person who was using the mark first has priority over your registration, but only in the geographic area in which he sells his goods or services.
A federal registration puts everyone else on notice that you are the owner of the mark and control its use nationwide. This is called constructive notice. The other person may not actually know you're the owner of the mark, but they should have known because your mark is listed in the federal database of registered trademarks at the USPTO.
Registration allows you to bring a lawsuit in federal court for infringement. It also gives you a great deal of power to curb infringing uses in extra-judicial ways. For example, Google, Amazon, and Facebook have their own systems for controlling infringing uses of trademarks on their services. If you send a copy of your federal trademark registration to Google, Amazon, or Facebook and claim infringement, you can expect a take down of the infringing material sometimes in as little as 24 hours. The speed and efficiency of these extra-judicial enforcement actions beats a federal lawsuit hands down.
If you do bring a lawsuit for infringement of your mark, having a federal registration may entitle you to recover treble damages (that's damages times three), attorneys' fees, and other remedies like injunctive relief. Getting to the end of the litigation road to achieve those benefits is a dark and dirty trip.
How Long Do Trademarks Last?
Trademarks can last forever which makes them distinctly different from copyrights.
Trademark owners can acquire rights in two ways. The first is by using the mark in commerce. The second is by applying for a federal trademark registration.
Offering products or services for sale with the trademark on the packaging or in the advertising is "use in commerce." If you are the first to sell your book editing services using the trademark "Mountaintop Manuscript Repair," you have acquired priority to use that mark in connection with editing services. Your rights are limited to the geographic area in which you sold your services, however.
If you apply for and are issued a federal registration for "Mountaintop Manuscript Repair" with the USPTO, you gain the right to use the mark nationwide, even if you have only sold your services in a limited geographical area.
Trademark rights last for as long as you use the trademark. Trademark is a “use it or lose it” law. You can’t protect a trademark unless you are actively using it to identify the source of your goods and services.
Using Trademarks to Protect Ideas
There is an exception to the "use it or lose it" concept. It's the Intent to Use application. If you have a great idea for a brand that you want protect while you are developing the concept, you can file an ITU application with the USPTO. You can protect your concept for up to three years with an ITU application. Once you begin using your mark, you file a Statement of Use. Until you're ready to use it, you must request an extension every six months (and pay a fee of $125).
Intent to Use applications can come in handy for those middle of the night brainstorms. You know it's a great idea, but you're not ready to act on it yet.
Branding Builds Businesses
That's a thumbnail sketch of the beauty (and law) of trademarks. If you're building a creative business, branding with strong trademarks is your best friend.
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