Trademarks Part 1 – Four Considerations

Clients often ask us: “should I get a trademark” for my business? The answer is usually “yes”, but the analysis is complicated, and it is important to discuss the underlying considerations with an experienced attorney. This is not a comprehensive explanation of trademarks, but since there are many misconceptions about what a trademark is, and about what registration means, here is a brief overview of four considerations of whether you should get a trademark for your business.

 

  1. A trademark is a word, phrase, symbol, design, or color used by a business to identify its goods or services and to distinguish itself from entities selling or providing similar goods or services. A trademark is different from a patent, which provides protection for inventions, and from a copyright, which provides protection for literary or artistic works.
  2. Owning a trademark effectively gives you, the owner, the exclusive right to use the mark where you have been using it, regardless of whether you have registered it. Trademark rights are created through use, not registration, and such use establishes a business’ common law and state law rights in the mark.  
  3. Trademark law protects the overall distinctive look of a trade or service mark for a particular product or service, within a particular industry, and sometimes within a particular geographic area. The best trademarks are so pervasive that, from a marketing standpoint, they carry significant value even without reference to the owner’s name. Think, for example, the Nike “swoosh”, the Coca-Cola bottle, or the Apple symbol.
  4. Not all marks can be protected. The marks must be distinctive, and they cannot be registered or protected if likely to cause confusion in the marketplace. Furthermore, a generic or merely descriptive mark is not likely to afford the owner significant protection. One cannot, for example, claim ownership in the name “auto parts”, yet “Advance Auto Parts”, including its stylistic text, color scheme, and the checkered flag is a very strong trademark.

 

For assistance with any legal matters related to your business or estate planning, contact Fournier Legal Services at jfournier@jeflegal.comor 860.670.3535 now for a free consultation and planning session.