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Intellectual Property Law Series: Common Trademark Pitfalls Even the Pros Make

Trademark and Copyright Reminders for the Pros
12.4.2017

We've all heard of trademarks. But, what exactly do they do? And how do you select your trademarks, protect them, and then properly use them in commerce?

As we discussed in the previous article, trademarks identify original sources for products and services and ideally help distinguish one source’s goods and services from another source’s goods and services. Trademarks can come in a variety of forms, including logos, taglines, product or service names, colors, scents, etc.
 
As many of you already know, selecting a trademark is not always an easy task. And, properly using your trademark in commerce requires diligence. Avoiding the mistakes below can help you protect your trademarks, wallet, brand, and reputation.
 
7 Tips to Avoid Common Trademark Pitfalls:
 
1. Select a distinctive mark.
In order for you to distinguish your goods and services from others, your trademark must be distinctive, i.e. not confusingly similar to another’s mark for similar goods or services. If your trademark confuses consumers as to the source of origin of your goods or services, you run the risk of losing your mark and even a lawsuit for infringement. So, make sure your mark is distinctive before you begin to use it in commerce.
 
Trademarks can be:

  • Arbitrary (Apple for computers, Kodak for cameras) or
  • Suggestive (Microsoft for microprocessor software)


However, trademark protection is not afforded to marks that are:

  • Descriptive (Smartphone for smart phones) or
  • Generic (Escalator, Realtor, Dumpster)

2. Conduct a search to see if any others are using your mark or something confusingly similar.
Even if your mark is not identical to another’s mark, you could still be at risk. We recommend searching through online search engines like Google and reviewing the U.S. Patent and Trademark Office (“USPTO”) database records. Not all trademarks are registered with the USPTO, but you still need to be cautious of using marks similar to others that already exist. Run the search before registering your trademark or using it in commerce.
 

Example of Confusingly Similar Names but Vastly Different Products

 
3. Register your mark with the USPTO.
Trademark registration gives you the exclusive right to use your mark in all 50 states for the covered goods/services, except for prior users. The registration process can be started based on the intent to use the mark in commerce, even if you haven't used it yet. After five years of continued use in commerce, a registered mark can become incontestable, meaning that others cannot contest the validity of your mark.
 


4. Properly mark your trademark.
Remember this difference: a common law trademark (a mark that is not registered with the USPTO) is marked with ™, and a mark that is registered with the USPTO is marked with ®. Use the ™ symbol before you file your trademark application with the USPTO and during the pendency of the federal trademark application. Upon receiving a federal registration, switch the ™ symbols to ® symbols.
 
5. Use your trademark as a proper adjective.
The proper adjective describes the generic name of goods or services to which it applies. For example, we stocked up on Q-tips® cotton swabs and Little Debbie® snack cakes.
 
Incorrect:
Little Debbie® represents a third of the snack cake market.
 
Correct:
Little Debbie® snack cakes represent a third of the snack cake market.
 
The risk of using your mark as a noun instead of an adjective is total loss of your trademark rights. If your mark is used as a noun and becomes a generic term for the goods or services with which it is used, you will lose your exclusive rights to the term and your competitors will be able to use it without risk of infringement. Two previously trademarked terms that became generic are aspirin and escalator. 
 
So, be sure to use your trademarks as a noun. Use your trademarks as an adjective modifying the good or services. Pass the Jello-O dessert, please.
 


6. Format your trademark the same way every time.
 Avoid these common inconsistencies in formatting:

  • Using upper case and lower case
  • Using a hyphen and no hyphen
  • Including a space and no space
  • Using various colors and fonts, if applicable

Example:  Sportsbarn vs. Sports Barn vs. Sports-Barn
 
7. Avoid using marks that are identical to OR confusingly similar to other’s marks.
Clearly, your use of a trademark that is identical to another’s mark may expose you to trademark infringement. Just as important, though, your use of a mark that is confusingly similar to another’s mark may also expose you to trademark infringement.   
 
Factors of infringement include:

  • Strength of plaintiff's mark
  • Similarity of plaintiff's and defendant's marks
  • Similarity of products or services
  • Similarity of channels of trade/customers
  • Sophistication of customers
  • Defendant's intent in adopting it's mark
  • Actual confusion
  • Likelihood of expansion of product lines

It is fair to use someone else's trademark in order to identify the other party or its goods and services. The use must not be misleading, and a disclaimer can be used to avoid confusion.
 
Trademark mistakes are easy to make but can be avoided. Select a distinctive mark, do your research, take the appropriate steps to protect your mark, and follow the rules of proper use. You will avoid the pitfalls that are all-too-commonly made... even by the pros.

If you have questions about identifying, protecting, or enforcing your IP, please contact us. Interested in learning more about Paul and the Chambliss IP practice? Click to watch Paul's video in our "UNLEASHED" video series.