Trademark Protection

Although the importance of protecting your invention through the patent process has been stressed time after time here at Idea Marketplace the ultimate goal of many inventors is to eventually market their patented invention, and this requires a general understanding of trademark law. Indeed, the protection of an established trademark to help market your invention can be as important as the initial step of protecting your invention via a patent.

A trademark is any identifying features used to designate the source of a product or service. A trademark can be a name, a logo, a design, or anything else used by consumers to identify a particular product.

Trademarks have their origin in medieval England, where craftsmen would stamp their mark on their craft to identify their goods to consumers. Their stamp stood for the quality that consumers expected from goods bearing that particular mark. Their reputation depended on the integrity of the mark. The English Common Law protected the craftsmen from disreputable merchants who might have tried to confuse consumers by stamping the craftsman’s mark on their own products.

Today, trademarks are also used to distinguish the source of goods. When consumers buy a package of film with a label that says “Kodak” they know that the film will be of the same quality as the film they purchased previously which had the “Kodak” label. Trademarks protect consumer expectations.

One develops trademark rights in a distinctive name by using that name in conjunction with a good or service. When you come up with a distinctive name for a product and then introduce it into commerce, you develop trademark rights in that name. However, the name will not receive protection if it is generic or descriptive. For example, while the names “Vaseline” and “Kleenex” were once protected trademarks, they have become such generic terms for “petroleum jelly” and “tissues” that they are no longer protectable trademarks. Furthermore, a name will not receive protection if it is merely descriptive, such as the name “red licorice”.

As you can see, the broadest protection can be obtained by staying away from words which might be deemed descriptive or generic, and by instead trying to use words which are “arbitrary” or “coined”. The more distinctive the name, the greater the protection that trademark is given. For example, if you operate a photocopy store called “Impact Copiers”, this is likely to receive broad trademark protection because it is “arbitrary” (the word “impact” generally has nothing to do with the photocopying business). If you were to call your copy shop “Gnarf Copiers” this would also likely receive the broadest protection since it is a “coined” term (the sword “Gnarf” was made up by you and is not a word in common usage).

By simply using a permissible type of name in business or trade, you will automatically develop state “common law” trademark rights. Even though common law trademark rights come into existence simply by using the mark in commerce, you might also wish to register your trademark in the United States Patent and Trademark Office (PTO). Registering a trademark gives it nationwide effect. While your “common law” trademark rights will prevent your competitors from using your trademark in geographical areas where you have been selling your products bearing the mark, a registered trademark will provide protection across the entire United States.

A trademark qualifies to be registered federally in the PTO as long as the mark is used across state lines. A great advantage of going this route rather then relying simply on state common law protection is that you can use the federal courts to enforce your trademark. If a mark is properly registered, it creates a presumption in court that the registered owner has the exclusive right to use that mark. This will make it much easier for the holder of a federally registered trademark to prevail in the event that he or she sues or is sued for trademark infringement. Also, you can record your registered trademark with the U.S. Customs Agency, and they will stop any unauthorized products bearing your trademark from entering the United States.

For a new business, it is important to perform a trademark search of your intended business and product names. First, it will help determine if your name is protectable. Second, it will help determine if your intended business or product name might infringe someone else’s trademark. You should not, however, that even if the mark is not identical to another registered mark, there might still be infringement if your mark creates a “likelihood of confusion” with the other mark. If you conduct your trademark search at an early point, you might avoid further investment in a problematic trade name, and avoid a potentially costly legal problem.