After nearly thirty combined years practicing trademark law, and hundreds and hundreds of registrations, David and I feel like we’ve heard just about everything wrong that people think about trademarks. But some of the most wrong are also the most common. Don’t fall for a trademark myth, especially any of the biggest trademark myths that we hear year after year.“You can always use your own name as a mark.”
Trademark Myth #1: “I can always use my own name as a trademark.”
Nope. If your name happens to be McDonald, forget about trademarking anything even remotely associated to the food industry. And having the same name as a famous brand won’t save you from an infringement charge, either. When a company becomes famous enough to trademark a name, like MCDONALDS®, they control the use of that mark in the specified goods and services area – no matter what your name is. For a great story on the use and obstacles to a family name, check out the problems the family of the late musician Frank Zappa are dealing with as different branches of the family square off against each other: http://www.nytimes.com/2016/04/30/business/media/whats-in-a-name-just-ask-frank-zappas-feuding-heirs.html?_r=0
Trademark Myth #2:“I’ll check my mark by running it through one of those free searches on the internet.”
Not if you have any sense, you won’t. Lawyers make their living by selling their time and expertise to clients. Would it make sense to give that time and expertise away? Most of the free trademark searches are automated links to the USPTO trademark database, and can only search for exact matches. Try running “Nike Shoes” through a free search. Chances are it will say that the mark is “potentially available for registration.” That’s because the registered trademark is just NIKE®, not “nike shoes,” so there is no match. The computer can’t figure out the association, but I bet the people at NIKE® won’t have any trouble, and no trouble making sure that you don’t infringe on their mark. An adequate search, which is the only kind done by thetrademarkfirm.com, covers federal registrations, state registrations, sound and look-alike marks, common law use, and internet presence. Anything less is dangerous and irresponsible.
Trademark Myth#3: “If someone infringes my registered mark, the government will enforce it.”
Sounds logical, and after all, we are talking about federally registered trademarks. But it doesn’t work that way. Although the owner victimized by an infringer may feel like the victim of a crime, almost all the time, trademark infringement is a civil matter. That means that both parties in any enforcement action will usually pay the costs of their own lawyers. There are some “fee-shifting” statutes, under which the losing side can be made to pay the winner, but these are not easy to obtain. If you intend to register a trademark, consider the costs of enforcement as part of the price of owning the registration.
Trademark Myth #4: “As long as I change another’s mark somewhat, I’ll be O.K.”
Very, very wrong. This is a myth along the lines of “if I only copy X seconds of a song, it isn’t a copyright violation.” The test for trademark infringement is whether a mark is “confusingly similar” to a registered mark. That test is a relatively low bar for famous marks. Think of the case of the HERSHEY® chocolate bar. You can picture it in your mind right now. Try changing that appearance, even in a fairly major way, and you’re still going to have something confusingly similar.
Trademark Myth: 5: “The best mark is one that describes my product exactly.”
Now this is a tough one, but wrong nonetheless. Suppose you want to market a new brand of racing bicycles under a trademark of “Speedy Bikes.” The USPTO is going to reject that mark as being “descriptive,” that is, it simply tells you what the product is or does: a fast bicycle. A better choice is a “suggestive” mark, one that calls to mind some quaity of the product without actually describing it. Consider GREYHOUND® (bus service that is hopefully even speedier than a greyhound) or JAGUAR® (cars that are fast and beautiful like the cat).
Even better are “arbitrary” or “fanciful” marks like APPLE® (computers that have no relationship to the fruit), or the NIKE® “Swoosh” (no intrinsic meaning of any kind). These marks are extremely powerful because it is impossible to get them out of your head or to mistake them for anything else. The downside of such marks is that since they have no apparent tie to the goods, it takes a long time and a lot of marketing money before the public comes to clearly associate that mark to your product.
The best way to avoid trademark myths is to work with an experienced trademark law firm. We at thetrademarkfirm.com know that we aren’t the only trademark lawyers you can find, but we are always ready to help you achieve the best results from your trademarking efforts.
