Well, Actually, Everyone Has Questions About IP

Nobody likes a ‘well, actually.’ Obviously, I don’t interrupt strangers when they’re having a nice time, but I sure would like to.  I overheard a man at a cocktail party say, “I really should trademark my songs.” Well, actually, you need to copyright those.  I overheard someone else comment on how much she liked a certain logo.  “I’d love to patent something like that.” Well, actually, you’d trademark that.

But even my inner monologue must give credit where it’s due: patents, copyrights, and trademarks all fall under the umbrella of intellectual property.  What’s the difference?  Well, actually…

Trademarks:

Trademarks are words, symbols, or a combination of the two that signify the source of goods and services.  You can also trademark sounds and scents.  In ancient days, a craftsman would sign the product he produced.  As technology and commerce advanced, those signatures became more sophisticated and evolved into trademarks.  Take the MGM lion, for example, or the Nike swoosh.  They indicate who made the product.  The public relies on the trademark the same way consumers used to rely on a craftsman’s signature.  United States trademark registrations are generally renewed every ten years.  Trademark owners have the exclusive right to use their marks in commerce for the goods and services named in their trademark registrations.  

If you are interested in filing a trademark application, or wish to enforce you trademark rights, we can help you.  Contact us at trademarks@fghwlaw.com, or by calling us at 214-361-5600.

Copyrights:

Copyrights protect the content of artistic works like songs, novels, poems, television shows, and movies.  Copyright owners also have the exclusive right to use, and permit others to use, the copyrighted material.  Distribution of copyrighted material without specific permission from the copyright owner can sometimes result in takedown notices, demand letters, and even substantial lawsuits. Further, incorporation of copyrighted material in your own content may have similar undesirable results.

If you have questions about how to copyright your original works, or how to use copyrighted materials, contact us at trademarks@fghwlaw.com, or by calling us at 214-361-5600.

Patents:

Patents protect inventions, like new products or new technical processes.  Inventors in myriad industries may patent their inventions for commercial use, from pharmaceuticals to software to shoes.  They protect the patent owner’s exclusive right to use the invention in commerce.  The patent owner decides who, if anyone, may use the invention for the protected period of time.  Some owners guard their patents closely, and some release their patents for others to use for a price or for free.  Patents usually last for 20 years before the invention becomes public domain.

Patents are the one thing we cannot directly assist you with, although we are happy to provide you with a referral to an appropriate patent attorney.  To determine if you need a patent, trademark, or copyright, contact us at trademarks@fghwlaw.com, or by calling us at 214-361-5600.

Think of it this way, Apple patents new cell phone technology.  It trademarks the name and logo for the new technology. And if Apple wants to use a song for the commercial, they’ll get permission from the band who holds the copyright to the song.

Why does it even matter?  Well, actually…

The Types of Trademarks

Not all trademarks are created equal, and not all trademarks make it to the Principal Register. The Principal Register is the primary register of trademarks maintained by the USPTO.  

The marks that make it to the Principal Register without additional administrative steps are fanciful marks, arbitrary marks, and suggestive marks.

Fanciful Marks

“Fanciful” in this context means the word is entirely made up.  The words in the mark were created to function as a mark.  The mark has no equivalent in language, but sounds nice.  Xerox is a perfect example.  You know exactly what company I’m talking about and the kinds of products they produce, but ‘xerox’ wasn’t a word you’d find in a dictionary before the business came to be.

Arbitrary Marks

“Arbitrary” marks are actual words that mean something in another context, but they don’t describe the goods or services offered.  The Amazon is a place, but you know I didn’t get my groceries from the rainforest when I say I placed an order with Amazon.

Suggestive Marks

“Suggestive” marks require a little imagination from the consumer, but provide an idea of what a company offers.  These marks indirectly identify the product.  Coppertone doesn’t describe the product, but does communicate a desired end result.

Descriptive Marks

Descriptive marks, on the other hand, may get to the Principal Register with a little help and some time.  A descriptive mark means the mark literally describes the goods or services.  For example, the USPTO rejected Coaster-Cards, which were postcards that also functioned as coasters.  Other merely descriptive marks include marks that identify the actual place the goods or services come from, or include a person’s surname.  While these marks may not immediately be added to the Principal Register, they may be eligible for the Supplemental Register.

Generic Marks

The USPTO will never register generic marks.  You may not register “laptop” for your laptop, or “car dealership” for your car dealership.

If you have any questions about how the USPTO may treat your trademark, do not hesitate to contact our attorneys for a consultation.

What is the USPTO?

The United States Patent and Trademark Office (USPTO) is the federal agency that grants patents and registers trademarks to individuals and organizations.  A patent protects an invention or process.  A trademark primarily protects a word, phrase, or design that identifies the source of a business’s products or services.  Protecting your business through USPTO trademark registration yields numerous legal benefits.

  • Registering a trademark with the USPTO gives you the legal presumption of ownership and the exclusive right to use the mark in connection with the goods or services your business offers.  The USPTO will not register another company’s mark if it is confusingly similar to yours.

    This exclusivity protects the public as it helps your company maintain its distinct identity and good reputation in the marketplace.  When consumers see your mark, they know where it comes from.  The general public associates your business with the product or service they purchased.  How many sportswear companies are called Nike?  How many fast food restaurants are called McDonald’s?  Ensuring that consumers can easily identify the source of their purchases has the dual benefit of protecting your brand.
  • Your mark will be included in all of the USPTO’s online databases.  Mere registration potentially deters other businesses from using identical or similar marks, further protecting your identity and reputation.
  • Registration strengthens your legal position against infringing parties.  The ® symbol serves as a notice to the public of your trademark rights.  It also serves as the basis for bringing suit against anyone who attempts to use your intellectual property for their own gain.
  • A registered mark gives your business the basis for international registration, if you wish to expand your business to foreign countries.
  • You may prevent counterfeit items from being imported into the United States by recording your trademark with U.S. Customs and Border Protection.
About Trademarks

About Trademarks

Whether you are an entrepreneur or an established business, registering and managing your trademark is critical to protecting your rights.  Your trademark is one of your most valuable business assets and we can help you protect it.

The Benefits of Federal Registration

The primary purpose of a trademark is to designate the source of a product.  Therefore, the goodwill and trust a company builds with the public is often embodied in its name and branding.  Registering your trademark with the USPTO provides you with nationwide protection of your mark. Federal registration puts the nation on notice of your ownership of the mark and can discourage others from attempting to use similar names or logos. 

Successful companies and products are often faced with knock-offs or third parties wishing to cash in on the success of others. A registered trademark provides numerous benefits when enforcing your rights, including access to federal court, a presumption of the validity of your mark, and in some cases, allows you to seek treble damages against infringers.

First Steps

An important consideration for a new brand should be the protectability of your planned mark.  A careful investigation at the beginning can save your company from significant trouble down the road.  It could be disastrous for a startup to invest heavily in a brand name only to promptly receive a cease-and-desist letter. 

An existing trademark that is similar to yours may prevent you from registering your mark.  We can help you make sure the coast is clear by performing a trademark availability search.  We will identify and evaluate any potential conflicts you may face when applying to the USPTO.  With this information, we can advise you on how to best to proceed with your plans.

Post-Registration Services

Registration is just the first step.  Once you have a federally registered trademark, you must maintain it.  Missing a renewal deadline could result in losing your registration.  We can help you manage your trademarks and keep track of the required maintenance filings.

Additionally, owners of registered trademarks must police and enforce their rights in order to preserve them.  If you learn of a possible infringer, we can evaluate the situation and advise you on the benefits and risks of taking legal action, and your options on how best to proceed.