Trademark Toolkit: An Educational Resource
It's no secret that trademark is one of my favorite topics. Trademarks are everywhere we look — from your Apple TV home screen to your Pinterest feed. In this trademark toolkit, we’ll talk about what exactly is a trademark, the nitty gritty on trademark searches, and things like domain names and trademark registration. Of course, this is educational. If you have a specific legal question, please reach out to a trusted attorney before making a decision.
What is a Trademark
What good is a trademark toolkit without a primer on what a trademark is? A trademark is a word, symbol, or phrase that identifies the source of a product or service. It can even be a non-traditional thing like a sound — you know, like that NBC chime that’s popping into your head just because of this sentence.
The NBC chime is a registered "sound mark" trademark.
When a consumer sees a particular trademark, she automatically associates a certain quality with that brand. That association is based on her experience with the brand. Trademark law ultimately exists to protect the consumer from confusion. How could you make an accurate purchasing decision if there were more than one Jeni's in the ice cream section, or more than one Better Made in the snack section?
{Trademark Toolkit Checkpoint: What trademarks are reflected in my business?}
Trademark Search vs. Google Search
A Google search is not the same as a trademark search. (Although, it is better than nothing!) A trademark clearance search is a process that looks into similar trademarks used in connection with similar products or services. Yes, S-I-M-I-L-A-R. That means it could be the same word, but spelled differently. Or a related, but not identical, industry.
A thorough search should include the U.S. Trademark Office database and the broader Internet. Remember, a mark doesn’t have to be a “direct hit” to be a problem. If two products are kinda-sorta related, but travel in the same marketing channel, those could be considered too likely to “cause confusion” in the marketplace to coexist.
When I conduct a trademark search, it's about a 3-ish hour process. I pull all of the results and do an analysis with three main questions in mind:
Does the mark seems likely to be registered without any issues (like rejection by the USPTO)?
Are there risks posed by other trademark owners if my client were to proceed in using her mark, even if it's unregistered?
Is the mark protectable?
By the way, How Do Domain Names Fit In With Trademark Availability?
It’s a good sign if a top-level domain name is available! But searching for and purchasing your domain name are not the same as a trademark search.
{Trademark Toolkit Checkpoint: Have I had a thorough trademark search done for my brand name?}
The Benefits of Registration
There are a ton of benefits to registering a trademark.
First, only the owner of a federally registered trademark can use the ® symbol. (So, that’s cool).
Federal registration creates a public record of the information in the trademark application.
Owners of federally registered trademarks also benefit from certain remedies. (Think of a remedy as something you ask for because of the harm that’s been done to you, like money or an injunction).
Owning a federally registered trademark entitles you to special damages. Those include a) the ability to block imports that infringe upon your mark (a great one for fashion brands), b) the potential to recover triple or “treble” money damages for infringement, and c) the ability to file a lawsuit in federal court.
{Trademark Toolkit Checkpoint: Is trademark registration right for my brand?}
Post-Registration
Nobody likes to be a bad guy. I get it. The words "cease and desist" can sound scary and official. But policing a trademark is important to maintaining your rights. In other words, registration is not the end-all, be-all. You have to be diligent in making sure others aren’t getting all up in your business (literally) by using a trademark similar to yours in connection with their similar business. Trademark monitoring provides you with an update on any newly-filed applications or new websites (depending on the package you select). At the very least, you can set up a few Google alerts using your brand name and your industry.