Related: See Copyrights & Trademarks 101: What is Protected and Where?
Determining whether a trademark has been infringed will depend on the level of protection a trademark has (state vs. federal) and whether usage of the trademarked asset violates those protections. Below are a few of the most common misconceptions surrounding trademark protections.
Business Name is not a Trademark
Registering a business name is not a guarantee of trademark protection. A business name is simply that – a name that distinguishes an entity from other entities. Alternatively, a trademark is a word, phrase, symbol, design, or any combination of those elements that identifies the source (a company or individual) of goods or services, the totality of which is usually called a brand. Trademarks do not have to be registered to be protected, but the protection, rights, and remedies for infringement significantly increase if the mark has been registered with the USPTO. Registration at the state level can be beneficial, but primarily is useful for giving competitors in the state notice of the claim that the mark is a trademark.
Simply put:
- State registered entity name protects from copying the exact name of the businesses at the state level.
- USPTO registration of a trademark protects brand-identifying words, phrases, designs, etc. at the federal level from confusingly similar marks across the US.
- In some cases, a “doing business as” (DBA) name may be required for entities, but that does not provide any legal intellectual property protection if it is not used as a trademark.
- Registering a domain name only protects your company’s website URL.
Generic Terms and Phrases
Generally speaking, common words and phrases cannot typically be trademarked solely based on their generic usage. For example, it would be difficult to trademark the term “soda” because it is broadly used to reference an entire category of beverages. However, in some cases, a generic word combined with other words, with a logo, or in a phrase can qualify for trademark protection. Examples include Allen Wrench, Band-Aid, Post-it, etc. All common words (wrench, post, it, band…) combined to for a secondary meaning or unique description of a product or source of goods or services.
In some cases, a once-trademarked word has become generic and is no longer protected. “Escalator” is a good example. The Otis Elevator Company originally trademarked the term, but lost the trademark after it became so widely used that it lost its brand specificity.
National vs. International Protection
Just as registering a business name at the state level only provides some state-level protection, registering a trademark with the USPTO only provides protection within the United States, not globally. For broader protection, the Madrid Protocol is a system administered by the World Intellectual Property Organization (WIPO) that allows companies to file one application with their home country’s intellectual property office and then select the available countries for additional protections. There are some caveats, however:
- Only applies to countries that are members of the organization; non-member countries will not be available and must be applied to separately.
- Even with member countries, there are still country-specific trademark laws and requirements that companies may need to be aware of.
Despite those caveats, the benefit of the WIPO Madrid System is that it’s more cost effective than applying to each country individually and that it provides a central location to manage global trademarks.
Mistaking Similar “Look and Feel” (Trade Dress) as Infringement
If another brand or product employs similar color schemes, fonts, designs, etc. to a trademarked brand, it may not necessarily qualify as infringement. This is where the waters can get a little murky, as the challenge is whether the similarities are strong enough to confuse consumers.
“Look and feel” is legally referred to as “trade dress.” Not every design element can be protected under trade dress, as just like the trademark, it must be unique and fully identifiable to the brand or product. Additionally, if a design feature is an essential component of a product’s function, it doesn’t fall under trade dress protections.
In cases revolving around trade dress, a court will consider whether the likeness is enough to confuse a reasonable consumer.
Thinking of a Trademark as “Set it and Forget it”
To maintain trademark protections, companies must actively use that trademark in commerce and be diligent about filing renewal documents (typically every 5-10 years). Consistent usage is key to solidifying trademark rights by underscoring strong brand recognition, making it easier to prove actual infringement when it happens.
In addition, companies should be vigilant in watching for potential infringement. Failing to monitor for potential infringement can damage brand reputation, but also weaken a case for protection if the trademarked asset becomes too commonly used.
Not Seeking Legal Counsel
Protecting intellectual property (IP) can be a complicated process, and the best way to ensure that brand-identifying assets are properly protected is to work with an attorney well-versed in trademark and IP law. At the end of the day, preserving a brand’s identity is crucial to the brand’s success in the marketplace, whether that’s at the state, national, or international level.
The experienced attorneys at Hackstaff, Snow, Atkinson & Griess can help companies navigate the registration process as well as maintain IP protections over time. Contact us today for a free consultation.
