After reading about another local trademark infringement case, I thought I would provide basic facts and information on how to trademark a logo, brand name or business name. So I listened to a presentation by the United States Patent and Trademark Office (USPTO), and have posted my notes below. But first, here’s a little background on the local case.
In November 2015 Jerry Cunningham, the owner of Q Publishing, the parent company of a 40-year-old magazine, OUT FRONT, filed suit against Outfront Media, Inc., a billboard company. The name and the logos look very similar. Although OUT FRONT magazine has been using the name for 40 years, Outfront Media recently trademarked the name “OUTFRONT” but Q Publishing never did.
Shown below are my notes from the USPTO’s presentation “Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later.” You may watch a 42-minute video of this presentation on the USPTO’s website.
What is a trademark?
A trademark is the face of your business; a brand for goods and services. It represents your goodwill and your reputation. A trademark makes the distinction between your business and someone else’s business. The legal definition is: “Any word, slogan, symbol, design or combination of these that 1) identifies the source of your goods and services and 2) distinguishes them from the goods and services of another party.” Did you know a trademark can also be a sound, color, or smell?
Every business owner should have a trademark component in their business plan. For the maximum legal protection, a trademark should be registered at the federal level. This is a complex process—and technically a legal proceeding. That’s why many business owners choose to hire an attorney to lead them through the process.
The trademark for a particular word (i.e. Coca-Cola) is called a “trademark.” The particular distinctive script of that word and any associated graphics used with that word (i.e. the logo design) is called a “mark.”
What’s the Difference Between a Trademark, Patent and Copyright?
A trademark identifies the source of goods. A service mark identifies the source of services, but is often referred to as a trademark. A patent protects inventions. A copyright protects original artistic and literary works such as illustrations, songs, movies and books.
Sometimes all three of these are used together. For example, if Samsung invented a new type of vacuum cleaner, they would apply for a patent for the invention, they would have trademarked “Samsung” for the brand name, and have a copyright on the TV commercial to market the product.
Domain Names, Business Names and Trademark Registrations
Having a domain name doesn’t give you trademark protection. The domain name is simply a website address, but it also can function as a trademark, (i.e. Amazon.com), only if it is also registered as a mark and must be used as a trademark to identify goods and/or services.
What’s the Difference Between a Trademark and a Business Name?
A business name is the entity name under which you do business in a particular state. Many states require you to register your business name with the state, but that does not grant trademark rights. A business name can be a trademark if you use your business name to identify your goods and services, and file an application and receive a trademark registration with the United State Patent and Trademark Office (USPTO). This will give you nationwide rights. Some states also offer a similar application process and trademark protection but rights are limited to only to that particular state.
Helpful Links Will Show You How to Trademark a Logo, Get a Patent, Copyright and More:
Domain Name: www.internic.net
Business Name: Your state’s Secretary of State’s website
Federally Registered Trademarks
Federal trademark registration is not required, but it will enhance your rights. Keep in mind that common law rights associated with state-registered trademarks are limited to a geographic area (i.e. within the borders of a particular state), so it would be more difficult to enforce and you would have to prove you are the owner of the mark.
Benefits of a Federally Registered Trademark
- Legal presumption that you are the owner of the mark
- Legal presumption of exclusive right to use the mark nationwide
- Puts the public on notice that you are the owner of the mark
- The mark is listed in the USPTO’s online database. This discourages others from registering marks that are too similar to yours
- A federally registered trademark may be recorded with U.S. Custom & Border Protection to prevent counterfeit goods
- You have the right to bring legal action concerning a trademark in federal court
- You can use the registration as a basis for filing legal action in a foreign country
- You will be able to use the federal registration symbol: ® (The R in a circle) on your mark AFTER your trademark has been registered. Note: you may put a “TM” on your mark while you are in the process of applying for the registered trademark, but that does NOT provide any protection.
This is the first part of a two-part series. Here is the link to next month’s post which will cover the steps to registering a trademark, the trademark selection consideration, and getting help from trademark attorneys and other sources.