A Look at the Law: Trademark Tips
What Batman, Feldenkrais and Planned Parenthood have in common.
—by Barry Scholl
The Coca-Cola contour bottle is a trademark. So is the iconic Batman logo. Likewise, Geico’s talking gecko and the Tarzan yell. The Feldenkrais and Planned Parenthood names and the slogan “Built Ford Tough” are trademarks, too. A trademark is a word, phrase, symbol or design. It might help to think of a trademark as a brand that designates the origin of a product or service and distinguishes that mark from competitors. Here’s what these things have in common, and why small business owners and creative types might care.
What’s eligible for trademark?
Trademark registration can be granted on distinctive names, logos and slogans. A character, catchphrase or business name can all be trademarked. Sometimes colors, sounds or fragrances are also eligible for protection.
What is the difference between a registered and unregistered trademark?
You might have seen the ® and ™ symbols and wondered about the difference between the two. Put simply, the ® symbol designates a trademark that has been registered with the US Patent and Trademark Office (USPTO), while the ™ symbol indicates either a common law trademark that is unregistered or a mark that is pending.
So how do I register my trademark?
To register a trademark, you file an application, which costs $275-325. You’ll also need to conduct a detailed search for prior-existing marks, and identify the “goods and services” category or categories in which you want to register your mark. If this sounds daunting, consult an experienced intellectual property attorney before filing the application.
Why might I want to turn a ™ into a ® ?
Suppose I’ve been using my registered trademark, Float Rage®, to market a line of fighting kites for the past 10 years. Now another user has come along and begun marketing its kites under the same name and is even attempting to register that mark. Can I stop them from doing so? And, to ask a slightly different question, can I prevent another party from using the Float Rage trademark for an entirely different class of goods or services, for example, frozen root beer concoctions?
The answers are yes and no. Your prior use of the mark will prevent a later user from using the same or a confusingly similar mark for a class of offerings that is either identical or similar to your offering. However, your use of the mark for kites generally does not prevent a later user from legitimately using the same mark or a similar mark for something unrelated (for example, a root beer float).
But if we change the facts of the hypothetical so that my trademark, Float Rage™, is unregistered, that changes the outcome. If I can show prior use, my use does confer certain rights, even if another party registers the mark. However, those rights are limited to the territorial scope of my prior use. So if I was the first to use the mark anywhere, and the territory where I have used the mark is in all of Utah, then I retain the right to use my unregistered mark anywhere in Utah, even if someone later registers the same or a similar mark with the USPTO.
All of which should help to illustrate why registering your mark is so important.
What rights do I gain if I register my mark?
Registering your mark in the USPTO provides several benefits, including:
• Public notice of your claim of ownership of the trademark
• The right to use the ® symbol in your trademark
• The right to use the mark nationally on or in connection with the goods or services listed in the registration
• Significantly stronger protection than common law marks (i.e., unregistered marks), which, among other things, allows you to bring an action in federal court in the event a third party infringes on your mark.
What else can I register?
Suppose I have designed a new Float Rage™ fighting kite with hollow braces that emit a screeching sound like a raptor when the kite is in the air. Can I register the sound?
If the sound is distinctive and designates origin, the answer is yes. The NBC three-tone chime is a registered trademark. So is the MGM Lion’s roar and Homer Simpson’s “d’oh” catch phrase. So in theory there’s no reason the screech emitted by your kite cannot be registered.
Other things that can be registered include colors (like the distinctive pink shade of Owens Corning fiberglass insulation) and certain fragrances that serve as source identifiers, such as the scent of plumeria for sewing thread.
A former CATALYST associate editor, Barry Scholl is an attorney with Kruse Landa Maycock & Ricks, LLC, in Salt Lake City. The contents of this column are not legal advice. Consult with an attorney prior to embarking on any legal matter.
The USPTO site provides good basic information on trademarks and registration, including a video tutorial: http://www.uspto.gov/trademarks
Editor’s note: In the 1990s, fresh out of college, Barry Scholl was a writer and editor here at CATALYST. He eventually left us and became a lawyer, cofounded the Entrada Institute (a nonprofit supporting artists, writers and scholars whose work focus on the Colorado Plateau) and in 1997 opened Robber’s Roost Bookstore in Torrey, Utah. We’re thrilled to have him back for this series of legal topics, ranging from intellectural property and elder law to estate planning and reviewing contracts, because he will make these important but often tedious topics digestible. In a creative, proactive life, legal issues occasionally emerge. Knowing some basic ins and outs can promote a modicum of comfort and ease.