Entertainment Law Asked & Answered – How to Protect Your Brand with Trademark Registration?

In this Asked & Answered video, I answer questions about trademark registration.

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You've spent a lot of time, energy, and maybe money to build a brand for your business. You've landed on a name or logo that captures the true essence of your products and services. It immediately conveys important information that will draw your audience in, and help persuade them to purchase product or service from you. You've got a strong brand, and it's worth protecting.

How would it affect your business if a competitor opened up shop with a similar, or a nearly identical name?

How would it affect you if, as you are poised to expand into a new geographic area, you learned that your brand is already being used by a similar business?

How would it affect you if an existing company already using a similar brand expanded into your market?

All of these things can be avoided if you take steps early-on to protect your brand. The most important steps to take?

Select your brand carefully
Use the brand consistently, as a trademark
Register the brand as a trademark.

So, What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

Brand Selection

Because a trademark must be distinctive, it is important to select your brand wisely. Generic and primarily descriptive identifiers can't be protected by trademark law.
So, for example, calling your product “Lasting Taste Gum”, might be very useful in attracting customers, but it won't be protected… at least not until it has “acquired distinctiveness”, by becoming so popular, so well-known, that the name “Lasting Taste Gum” has a “secondary meaning” with consumers… (This is why brands like “Pay Less Shoes” are protected).

It is better, for trademark protection purposes, at least, to select a brand that is inherently distinctive. Coined, Fanciful and Suggestive brands all fall on the distinctive side of the spectrum and are entitled to protection. Brands like XEROX, GOOGLE, and KLEENEX do little to describe the products and services to which they're attached, but they convey the most important information – source. The consumer knows which company stands behind the products and services marketed under these brands.

What does a Trademark protect?

The owner of a trademark, is entitled to the exclusive use of that brand in the particular category or categories of goods or services the trademark owner sells. Competitors will be barred from using any confusingly similar branding to identify their goods in the same categories. So, for example, a maker of tape and adhesive products would not be able to use “Scotch”, or anything confusingly similar, like “SKAWTCH” or “Scoch”… 3M's “Scotch” trademark prevents this. (The same is true for the plaid designs, also registered as trademarks by 3M)

But, if Mr. MacDougal wants to begin manufacturing power drills, under the name “Scotch” (in honor of his heritage as a Scotsman), he will probably be permitted to do so.

How do I get a trademark?

Trademark rights are earned by using the mark. Generally speaking, the first person or business to affix a mark to goods or services, and advertise and market them, gains the exclusive rights of a common-law trademark. If the use is purely local, then the scope of trademark rights is similarly local. Many states have adopted trademark registration laws, permitting protection to be extended statewide.

But if a business markets its goods or services across state lines, it is engaged in interstate commerce and is thus subject to federal law. Under the so-called “Lanham Act”, marks used in interstate commerce are entitled to federal protection, and can be registered with the US Patent and Trademark Office. This registration system provides for constructive notice of trademark ownership, and remedies against infringers.

Trademark registration

Registering a trademark is not a difficult process, but it can be rather technical. Unlike registering a copyright, which we often advise our clients to handle in-house, Trademark registration has hidden complexities, mostly to do with properly classifying the goods and services to afford the owner the greatest flexibility and protection. For this reason, we recommend against the do-it-yourself approach.

the government's fees for registration start around $300, and can increase depending on the number of marks, logos, etc., and the number of classes of goods involved. All of this money can go to waste, being forfeited if the application isn't prepared and prosecuted properly. It is not at all unusual for trademark applications to be initially rejected by the examining attorneys in the Trademark Office, and in such cases, it becomes necessary to prepare a responsive legal argument in favor of registration. My experience is that “do-it-yourselfers” wind up hiring lawyers at this stage, paying much more than they'd have invested initially to have a lawyer prepare the application.

Conclusion

Your brand name is likely one of your most valuable assets. It makes sense to take measures to protect it, and your business, against unfair competition from competitors. Trade- or Service mark registration is among the best ways to secure this protection. But before you log into the Trademark Office Web site, it's wise to consult with an experienced intellectual property or entertainment attorney to make sure you've got all your ducks in a row.

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See you next time.

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This is intended as general information only and does not establish an attorney-client relationship. It is not a substitute for a private, independent consultation with an attorney selected to advise you after a full investigation of the facts and law relevant to your matter. We will not be responsible for viewers'’ detrimental reliance upon the information appearing in this feature.