Thursday Apr 17, 2014 by Ryan E. Thomas - Attorney, Goodwin Procter LLP
Naming a business, designing a logo, writing a company slogan; there are many elements involved in building a company brand, and many of these elements can, and should, be trademarked.
Before you consider choosing or registering for trademarks, here are the five most prevailing myths surrounding trademarks, and what startups need to know to avoid these misconceptions.
1. I own a trademark registration therefore I own a monopoly for my mark.
Two companies may use identical marks as long as the goods or services offered by the companies are different enough that consumers would be unlikely to think that a company providing the first product or service would be likely to provide the second product or service. Examples of this are Dove for soap and chocolates, Delta for airlines and faucets and
Domino's for pizza and sugar.
2. I cannot obtain a trademark registration for a color.
Any source identifier is potentially registrable as a trademark. In addition to business and product names and logos, this can include slogans, domain names, the shape of goods or their packaging, "jingles" and colors. Examples of companies that own trademark registrations for color are The Home Depot (orange), UPS (brown) and T-Mobile (magenta).
3. My trademark should describe my product or service.
The essential function of a trademark is to identify the goods and services of one seller and distinguish them from those sold by all others. Therefore, a mark may not be entitled to protection if it is determined to be (1) merely descriptive of the goods or services to which it relates, or (2) the generic term for such goods or services.
Take the phrase, DOMINO(r) GRANULATED SUGAR, for example. The word DOMINO is a protectable trademark, because it is used arbitrarily (i.e., without reference to its dictionary meaning) to identify the source or origin of the goods. GRANULATED is not protectable because it is descriptive of a characteristic of the product; and SUGAR is not protectable because it is generic - it is the dictionary word for what the product is.
4. Owning a domain name for my mark bestows trademark rights.
Registering a domain name does not convey trademark rights. The principal benefit of owning the domain is that no one else can register that exact domain name. Ownership rights in a trademark come from using the mark in commerce in connection with a bona fide offering of goods and/or services.
5. I am free to use the (r) symbol as soon as I being using my mark.
The (r) symbol designates a federally registered trademark, and may only be used (in fact, must be used) when the owner has a federal registration for that exact mark. A state registration does not permit use of the (r) symbol, nor does a pending federal application.
The "TM" (for trademarks) and "SM" (for service marks) symbols indicate common law trademark rights and their use is not governed by any federal statute. They merely announce to the world that one is claiming exclusive rights to this mark, regardless of federal registration. Use the "TM" or "SM" symbol liberally on all unregistered marks, including marks that are going through the federal registration process.