As a tech lawyer, my clients frequently have questions about trademark law. Whether it's because they're launching a new SaaS, cloud computing service, or because they realize that exposing their trademark to the world on the Net means their trademark may get more scrutiny from competitors and others, they ask lots of questions. My goal this week is to provide you with a businessperson's overview of trademark law.
Let's start with a working definition. A "trademark" is any work, name, symbol, or device, or combination of these that you might use to identify and distinguish your goods for those manufactured or sold by others. Trademarks refer to goods. Technically, if you're referring to services, it's not a trademark, but rather a "service mark." Many people use "trademark" to loosely include "service mark" albeit that is not technically correct. At the risk of causing a Professor of Intellectual Property to lose a night's sleep (can they revoke my law degree?), I'm going to use "trademark" to include "service mark."
Choose Carefully
While even simple dictionary words like "Apple," as in the computer company can be trademarks, it's important to understand that not all trademarks are created equal. There is a continuum of strength for trademarks. You want to be thoughtful about the trademark you choose so that yours is a stronger one.
The strongest trademarks are "arbitrary or fanciful" ones. An "arbitrary" trademark is one that doesn't even suggest the goods or services you're labeling. A "fanciful" trademark consists of a word you make up to apply to goods or services.
Classic examples of arbitrary trademarks are "Apple" for computers and "BlackBerry" for those handheld email devices.
Other good examples of fanciful trademarks include "Xerox," "Ketchup," and "Lucent." These are powerful and easy to enforce trademarks. They were not in the dictionary when created and if you try to use a word that's even close, you may find yourself at the wrong end of a Federal judge's ire.
Next down in strength are "suggestive" trademarks. These indirectly describe or "suggest" whatever it is they identify. "LinkSys" is a good example of a suggestive trademark. It's a brand for networking equipment that "links your system" together. Cute - and it's a relatively strong trademark.
Next down in the continuum of strength are "descriptive" marks. These marks describe the goods or services. An example would be "The Weather Channel." Descriptive marks are not registrable as trademarks until they develop what's called a "secondary meaning." What that means is that you're going to have to prove that people really think of your product or service in connection with the mark. That's not easy.
The weakest kind of mark and one not entitled to registration as a mark are "generic" marks. Sorry, but you can't register "personal computer" or "television" to describe a personal computer or television.
Register Your Trademark
What's interesting about trademarks is they arise from use, not government registration. If you make up a word and apply it to goods, you have a trademark. It's that easy.
While it is true that you aren't required to register a trademark with the government, it's still an excellent idea for many reasons. For one, registration is strong evidence that you in fact own the mark. It's also a truism that a registered mark is far more valuable than an unregistered mark. So, if you ever dream of selling your company or bringing in outside investors, they'll be favorably impressed if your registrations are in order.
Another reason is that in the online world, if you have to battle a cybersquatter for taking a domain name that is based on your trademark, you'll be in a much stronger position if your mark is registered.
One more example of an advantage of registration is that you are then entitled to use the symbol "®" in association with your mark. That little symbol sends a powerful message to would-be trademark infringers that you have a registered trademark and can invoke all of the remedies provided by Federal trademark law.
If you choose not to register your trademarks (hold out your hand so I can slap your wrist), you still should tell the world that you claim a trademark, albeit an unregistered one. You do this by putting "tm" next to your trademark or "sm" next to your service mark. At the least, it takes away the "Gee wiz, I didn't know it was a trademark" defense. Moreover, in case you were wondering, "gee wiz" is a technical legal term, but that's for another column.
Bottom Line Business Advice
For the average businessperson, trademark law comes down to this: register your marks, and use a competent tech or intellectual property lawyer to handle it for you. Have no fear, your registration won't send a lawyer's kids through college because in the grand scheme of things, a trademark registration is not expensive to do. Just budget for it and get it done - today. It's an essential investment in your business.