Recently I gave a
protecting your brand—your business identity—from being
stolen. I said the most important legal tool for this is
trademark registration. Then I made a bit of a mistake, by
letting the audience think it is safe to choose a trademark without
involving an attorney from the beginning. It isn’t.
not—it’s my business and I should be able to choose my trade name or
logo, right?” Not exactly—read on.
not. If anyone could do this then buyers would quickly become
hopelessly confused about what goods and services comes from what
sources. The Trademark Act (Lanham Act) is designed
to prevent that by creating a system of registration, a bit like
registering who owns what cars.
But unlike cars,
trademarks are often bitterly contested by competing would-be owners
(registrants). And these people are assisted by able lawyers
who each argue why their client is entitled under the law. It
makes for a pretty subtle set of rules about who gets to own.
also means that there are rules, much like the rules in sports, that
the process of deciding who wins go by. The rules are designed for one
thing: to make things
move quickly and smoothly
, but not so simply
non-professional can keep up. If you are not a trademark pro you can
and probably will get balled up in the subtlety of
rules of who wins, and the complexity of the rules the game proceeds by.Now to the rules of who wins.An
occupied space requiring bright stars.
of a trade name or a logo existing in a space already occupied by other
marks. Imagine a large rectangular canvas with dots,
blotches, and swaths, each representing a trademark—words or a
Imagine the vertical dimension represents the breadth of
product offerings under the brand, single products or lines of multiple
products. (For instance, Nike’s Swoosh represents not only shoes but
also clothing and other products in many colors and
imagine the horizontal represents geography—regional, national or even
global. (Nike sells all those products in Oregon but also
Oklahoma and probably Okinawa.)
mark is close to others it may be covered--or worse-- cover a mark
already there. The law of trademark is much concerned with
this covering or, as it is called, “confusion.” As you can see, breadth
of products and of geography are both important determining if the
marks might cause confusion.
trademark statute, the Lanham Act, also requires a mark to be
“distinctive” to be registered. So, to register a new mark it must be
and not cover a spot already on the canvas. A mark that
a product or service or its vendor will not work.
can provide distinctiveness is a mark that is by itself visible among
others—something cool, dynamic, and memorable. It is
fanciful, uncommon, and not merely a description of the
business. “Juicy Hamburgers” is not distinctive, nor is
“flavorful”, “mouth-watering” or even “beefy.” What about
“Checker?” “Stampede?” “Wendy’s?” “Brazier?” All
but “Stampede” are actual brand names of hamburger chains.
(Stampede is a line of truck products like hood protectors and side
window deflectors; I just threw it in.)What makes
it a “bright star”?
It would not be
easy for a
customer to distinguish Brazier
if both sell burgers. That is especially true if, as is the
case, one is a national brand (part of Dairy Queen). Someone
applying for Brassier will not then likely be allowed registration for
fast food. If on the other hand Brassier was intended to be a
trade name for musical band it is not likely to be confused.
if we take instead the case of “Giant Food?” It is a large
supermarket chain in the mid-Atlantic but not elsewhere. If
someone wanted to start a supermarket in, say, Oregon under that name
then probably it would be OK. Unless … Giant Food
mid-Atlantic opposed and showed plans to expand to the west coast, with
reports from real estate spotters and other officials who had visited
or vetted. Probably a different story. But a Giant
dude ranch in the mid-Atlantic is likely to be registered.
is not that trademark lawyers know much more than you do, although
somewhat more, and they know the ins and outs of the procedures in the
TM Office. (And that makes applying for a trademark registration ore an
art than a science.) But in law school lawyers learn how to
relevant, provable facts, and to marshal the facts for their
clients. This all leads to two strategic lessons to be
learned about creating good trademarks:Lesson 1: Early in your branding
you can register.
While there is time to make a change without more investment in time
and money than you can afford to waste.
Don’t focus on your own aesthetic but on what will stick in your
customers’ minds and be positive. You are not naming your
baby—others have a say, especially competitors.
Don’t depend on a logo or brand name to describe what you do—your ads
and networking must do that.
You, your artist, your branding expert and your trademark lawyer must
work in concert to come up with what can be registered, will be good
marketing, and later can be used effectively against any other
encroaching (infringing) brand.
“Target” and the
bull’s-eye logo are great, not because they describe a department
store, but because they stick in your mind after a few
exposures. So is the “Oracle” brand for database
software. (It sticks in your mind, while also satisfying the
company founder’s narcissism and grandiosity.)
as a brand name for hamburgers probably will not fly; “Bubba” does
because it does not describe the burgers but the customers.
Nor will “clean” work for a clothing detergent, while “Tide” does, as
did “Duz” for washing dishes (before dishwashers).Lesson 2: trademarks are not
(They differ from
copyrights, where anyone can write a book or take a photo, and register
it.) The factors that help a court decide whether one TM is
infringing another are multiple.
Circuit (basically the western states, including Oregon) has identified
eight factors the trial courts should use to evaluate the evidence in
cases of alleged trademark infringement:
(1) Strength of the mark,
fanciful v. descriptive or generic; AMF Inc. v. Sleekcraft Boats
(2) Proximity of the
(3) Similarity of the marks;
of actual confusion if any;
(5) Marketing channels used;
Type of goods and the degree of care likely to be exercised by the
(7) Defendant's intent (good or bad) in selecting
the mark; and
(8) Likelihood of expansion of the product
599 F. 3d 341 (9th Cir. 1979).
Circuit—including Maryland—uses 6 of the 8 factors, but has railed
against mechanical application of the factors. It has focused
on the likelihood of confusion even if there has not been actual
But in a 2011 case the 9th Circuit
mentioned above said that specifically for purchases of keywords for
on line ads--think Google “Adwords”--the factors are narrower:
similarity of the marks, the relatedness of the goods or services, and
the marketing channels used, even if the defendant intended to divert
business by using plaintiff’s registered brand name for its own
So don’t try to pick a mark
based on what you like and then hire a lawyer to try to ram it through
the Trademark Office or defend it in an infringement case. You will
almost certainly fail. Bring in the lawyer at the start of
the process and avoid the expense and heartache of abandoning a mark
you love but cannot have.