10 trademark questions to consider so you won't have to change your name or fight for it
Facebook's recent trademark actions - one concerning the word face and the other with the format - 'blank-plus-book' - are probably making a number of entrepreneurs nervous about the future of their trademark applications, and in particular, any name that may include the words "face" or "book."
In an effor to help startups avoid unpleasant consequences, such as the situation Teachbook found itself in, we thought it would might be helpful to put together a trademark primer.
To that end, I sat down with John Kim, founder of IP Legal Advisors, P.C., to get you the 411 on trademark law. While this primer is no substitute for a conversation with a trademark lawyer, it may help answer some simple questions.
1) What's a trademark?
For most types of trademarks, it is "...the only legal monopoly in the United States," said Kim. A more formal definition, courtesy of Princeton University, says it is,"a formally registered symbol identifying the manufacturer or distributor of a product."
2) What can you trademark?
According to the Lanham Act (15 U.S.C. section 1051 et seq) of 1946, you can trademark:
- A word or phrase
- A symbol or design
- A combination of words, phrases, symbols or designs
The only catch is that the goods or services you try to trademark must be distinguishing.This means it must be a unque mark. You won't be trademarking a square anytime soon. A square of specific ratio, and color, with your company name inside it, stands a much better chance.
3) What are the limits of a trademark?
Kim went on to explain that the limitations of that monopoly include the rights to your category of products, which means that if you choose to use the same word then the industry or product have to be substantially different. So if you want to start a modeling agency or a night club named Face, the odds are that you will not run into legal problems. Anything in the online world, however, would run the risk of creating a problem.
4) Why you can't call a hair salon Coke?
The only exception is a trademark that qualifies as famous, such as Coca-Cola. You won't be opening a Coke hair salon anytime in the near future. (NYU has a fun interactive tool for famous trademarks.)
5) Why Companies like Facebook care about their trademark?
You may be wondering why a site like Facebook, with its army of users and market dominance, would worry about a small site with a similar name. As it turns out, US trademark law actually encourages these types of suits. This is important becasue after enough time and misuse the trademark can be lost. That means that if they allow the word to be used improperly, or copied, they run the risk of it becoming a generic word. Facebook would run this risk if they failed to protect their mark. If you have ever used the word escalator, then you are familiar with a trademark that has lost its rights.
6) What happens when a trademark is not defended?
If a trademark is not defended, then it can be lost forever either by becoming generic or through a slow erosion of trademark rights. Genericize trademarks are terns that lose their distinctive mark and become a common word in the language. This is an issue that Xerox has been fighting against for quite some time now, as the public continues to use the term "xerox" as synonym for "photocopy." One of the ways this happens is when a word makes its way into the public domain by being used as a noun or a verb instead of as it should be, as an adjective.
7) How does common speech change the meaning of a trademark?
If you have ever asked someone to "Google it" for you, or told a friend you will "Facebook them later" then you have contributed to adding a trademark to the public domain. If you fail to defend your trademark rights and allow similar or identical marks to be used without objection, then your rights will slowly erode away over time.
8) How do you use a trademark?
Facebook has already, in their brand-usage statement attempted to prevent their mark from becoming generic. Rule No. 6 tells users: "You may not combine our Brand Assets, or elements of our Brand Assets, with your own name or mark or generic terms."
As a trademark owner, you do not want consumers to confuse your trademark with another trademark.
9) How are trademark suits determined?
Let's say you have an obligation to stop third parties from using a trademark that may be confused by consumers with you trademark. The issue of infringement is one that is determined by several different factors which can be broken down into eight major factors. Copy law summarized them neatly as
- "Similarity of the conflicting marks;
- Relatedness or proximity of the two companies;
- Strength of the senior users mark;
- Marketing channels used;
- Degree of care likely to be used by purchasers in selecting the goods;
- The "second comers" intent in selecting its mark;
- Evidence of actual confusion;
- Likelihood of expansion in product lines"
If you want more detail on the different factors and their application you can find it at the IP Law Blog.
10) When do you need a trademark lawyer?
While you do not need a lawyer to file a trademark, the US Patent and Trademark Offices think it's a good idea to have one. You will also need one if you are already in legal trouble.
If you want more official dirt on everything trademark you can get it from the official FAQ.
In another interesting case into trademark law, consider Cisco's suit against Apple, the tech titan that has seemingly monopolized the letter 'i' with its products - iPad, iPod and iTunes, etc. In 2007 Cisco sued Apple over the iPhone name to defend a trademark it acquired in a buyout, which was originally filed for in 1996. The suit was eventually settled for an undisclosed amount.
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