Trademark Basics

Trademarks are one of the oldest buyer protections in the world, dating from the late 14th century, when beer brewers Stella Artois and Löwenbräu got their marks. Bread-maker marks date from about the same time.

The idea is that a supplier builds a good reputation by making good goods, and their exclusive mark prevents others from making competing goods and passing them off. Now in almost all countries, the law prohibits passing off your stuff with a mark similar or identical to someone else’s when their mark is registered.

Let’s break down these concepts and see what the supplier and buyer get, how and for how long. In the US, the federal government operates a system of registering trademarks and has since 1881, with the current Lanham Act dating from 1946. This system largely superseded the state-by-state “common law," which prohibited “passing off” your goods as someone else’s, but was chaotic because it was so divided by state.

You can get some federal protection free, by marking your trademark (or trade name) with “TM” (or with “SM” when what you supply is services). There is no charge, since you are not registering. But under federal law you cannot enforce your mark in court without registering. So, commonly suppliers register and pay the fees.

To register you fill out a form and deposit it with the Trademark Office in the Department of Commerce. You pay a fee, attach a computer file holding the mark, and certify that you are actually using the mark in commerce, or plan to within six months. The mark is examined by the Office to see if it is acceptable under the law. Whether your registration will be accepted depends on where it lies on a scale from generic through descriptive and then suggestive to fanciful. An “Apple” brand for apples, for example, will fail for being generic, while it is fanciful for computers. The geography of your commerce compared with others’ who use a similar mark will also affect whether your mark gets registered.

If the mark is acceptable as a mark, the Office publishes it in a Gazette to see if anyone in the public objects (generally based on their own use of a similar or identical mark).

Trademarks are divided in commercial classes, 35 for goods and 11 more for services. You register by class, so at $275 per class it can mount up. By the way, a “trade name” is just a kind of trademark that does not use a specially fashioned or –chosen font. Also, a distinctive color or other scheme for a product or package can be trademarked, as “trade dress.”

If all goes well, you get your registration in about 18 months. It applies only to those classes of good or services you have specified when you applied, and you have to renew every few years or “abandon” your registration. As long as you keep using the mark in commerce, you can keep renewing. There are some marks now in steady registration in the US over 100 years.

You can successfully stop (“enjoin”) an infringer from using your mark or a similar one if you can prove either that theirs will cause potential buyers to confuse theirs for yours, or that theirs tends to “dilute” your famous mark and its selling power. Infringement suits when successful can result in an injunction against the infringer, and a money judgment for lost profits and other monetary damages.

One other thought is this: if the brand or mark you want to protect is a pure graphioc or a graphic plus a word or phrase in fanciful font, you may be better off using a “design copyright.” Take a look at my online article Protecting your logo.

The trademark protection designed primarily to serve buyers also protects suppliers from knockoffs.

More information: http://www.negotiationpro.com/IP.html or toll free 877-934-4766