6 Things Every Marketer Should Know About Trademark Law
Get smart on naming and branding—no law degree required!
To be clear, I’m not an attorney. I’m in marketing.
And, as a marketer, I’ve named a lot of different things over the years: products, services, ideas, technologies, brands. All of these things need to be trademarked. So, I wanted to share some of what I’ve learned about trademark law. A lot of it comes from personal experience. A lot of it comes from independent research.
But NONE OF IT should be considered a substitute for REAL legal counsel.
With that important disclaimer out of the way…
Here are 6 “Trademark Truths” to keep in mind when naming products and services.
1. A trademark isn’t a brand.
This may seem obvious. But understanding this distinction helps clarify the true purpose of a trademark: to identify stuff and differentiate it from other stuff. A trademark doesn’t have to describe, qualify, quantify, or explain ANYTHING about your product or idea—and in many cases, it shouldn’t (see next point). It’s just the legal stake in the ground that says, “this belongs to someone and it’s protected by law.”
2. “Trademark” is generally used to describe both Trademarks (TM) and Service Marks (SM).
There’s real no mystery here. If you have a product (i.e., you can physically touch it) it gets a TM. If it’s a service (i.e., something someone does) it gets an SM. Legal folks will refer to both as “trademarks,” in the general sense; both are afforded identical protections under the law.
Once you register either a TM or an SM with the U.S. Patent and Trademark Office (USPTO), it becomes a Circle-R ®. But before they’re registered, both TMs and SMs are considered “Common Law” trademarks (see #5), with a more limited scope of protection.
3. Names that are direct and descriptive are more difficult to trademark.
As marketers, we’re often compelled to choose names that describe what a product is, does or provides. But you have to be careful. Terms that are just generally descriptive usually can’t be trademarked at all—i.e., you can’t just name an ice cream “Cool & Creamy.” Terms that indirectly suggest something about a product CAN be trademarked… but it’s much more likely that competitors will be using something similar (in which case, you can’t trademark it).
An attorney will tell you that the most protectable names are random, arbitrary words that have nothing to do with the product/brand in question. Call your ice cream “Hexagon”—no one’s gonna confuse that with another ice cream. And the chances of it being taken by a competitor are basically nil. In legal terms, this would be a “distinctive” name for ice cream.
4. Trademarks can be rejected if they even resemble existing trademarks in your category.
It doesn’t have to be an exact match. Example: If you try to register “BeWell” with the USPTO… and there’s already a “BeeWell,” a “GeWell” or even a “MeWelle” in the same industry… there’s a good chance they’ll reject it. Also… simply adding an extra word, prefix or suffix won’t save your name if part/most of it is too similar to something that’s already out there.
Obviously, having a bunch of super-similar names would end up being “confusing” to the public. So, a big part of your attorney’s job is to predict whether the USPTO would see your new name as “confusing” (based on existing trademarks). Your best bet is to search the USPTO’s website yourself and preemptively eliminate any potential names that seem fairly similar to an existing trademark, IN YOUR CATEGORY. Similar trademarks in different categories/industries are okay.
It’s also worth noting that visual elements (sketches, logos, pictures) can also be part of a trademark. So, if your logo looks super similar to another logo in your category… try again. The USPTO will likely tell you it’s “confusing.”
5. But wait! Trademarks don’t actually have to be registered with the USPTO!
It’s true—they’re called “Common Law” trademarks. And, like common law marriages, they’re basically a less-reliable version of the real thing. Literally, all you have to do is put a TM (or SM) after the thing you want to trademark—the moment you do that, you’re afforded basic protection against infringement (“infringement” = someone else using your name).
When you register a trademark with the USPTO, you get that nifty little Circle-R. At that point, you’re protected nationally (a TM/SM only protects you within a radius of 20 miles) and you have a much stronger case against infringement. But here’s the thing that sucks for us marketers: you won’t find common law trademarks on the USPTO site. So, you’ve gotta Google around to find the pesky unregistered TMs/SMs that may be using the name you have in mind.
6. The law is fraught with gray areas. So… use common sense.
If you think your idea for a name sounds like something that other people already thought of… it probably is. If you Google your name idea and it comes up a lot for similar kinds of businesses… it’s probably not worth pursuing, regardless of the legal considerations.
Having a better understanding of how attorneys—and the USPTO—look at trademarks can help you make better choices earlier in the creative process. You can eliminate the obvious “no-go” names up front and, hopefully, minimize rework.
Caveat: ALWAYS consult a qualified attorney in all matters of naming and branding. This guide is only intended to help streamline your creative process, leading up to a formal legal review.
Any other tricks of the trade(mark!) you think we should know? Drop me a line! And if you’re looking for someone to handle your next naming, branding or innovation project… Seed’s got the experience and the expertise to help you win the name game.
Matt Donahue is a Creative Director at Seed Strategy with a keen interest in product innovation and marketing theory. Matt is a graduate of Seton Hill University’s “Popular Fiction” master’s program and writes whenever he can.
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