Almost everyone has heard about trademarks. But when asked what is a trademark, most people draw a blank. Even savvy business owners understand that they likely have a trademark, but they’re not sure how to protect it.

Let’s start by learning what is a trademark.

A trademark is a distinctive symbol, word or phrase used to identify a seller’s product or products.  The trademark helps distinguish the seller’s product from the products of another seller.  For example, the trademark for “Nike” is the Nike “swoosh”.  This symbol identifies this type of shoe.  Marks can also be used to identify a company’s services rather than products.  These are called service marks.  For example, the service mark for a housecleaning company might be “Merry Maids” with or without a company logo.

Want to learn more about trademarks? Call a trademark attorney.

Are trademarks protected by state or federal law?

Both state and federal laws govern trademarks.  State common law originally provided the main source of protection for trademarks. The U.S. Congress enacted the first federal trademark law in the late 1800s. But, since then federal trademark law has taken this over. Federal law provides the main and most extensive source of trademark protection today. State common law actions are still available.

How do I protect my trademark?

A trademark can be registered in any state. However, this only provides limited protection. A better option is to seek a federal trademark registration.

A trademark can be registered at the United States Trademark Office website.  A trademark application requires  information, such as the date of first use in commerce and a category of goods and services for which the mark is used. The online form may seem simple, but it is easy to make mistakes. Some mistakes cannot be corrected after the application is submitted, and you may lose important legal rights. Therefore, you should always work with a trademark attorney when applying for a trademark registration.

Do I have to register my trademark to be protected?

Registration is not required for the trademark to be protected. But there are many benefits to registering your trademark with the US Trademark Office.  Some benefits include:

(1) registration gives notice to other parties that the trademark is already owned by someone;

(2) registration enables an infringement lawsuit, if necessary; and

(3) a trademark can become “incontestable” after five years and, at this point, the party has the exclusive right to use the trademark.

Of course, registration could be denied or rejected by the US Trademark Office.  For example, the trademark examiner may reject marks that have not attained secondary meaning. A descriptive mark acquires a secondary meaning when the public primarily associates that mark with a particular producer, rather than the underlying product.

The trademark examiner may also reject a certain geographic marks, “scandalous” marks, marks that are primarily surnames, and marks that can cause confusion with marks that are already existing.  If a mark is initially rejected, this does not mean your mark cannot be registered. You have the opportunity to present arguments in favor of registration. This is where working with a good trademark attorney is important.

Do I have to hire a trademark attorney to register my mark?

You are not required to hire an attorney to register a trademark – but it is strongly recommended. Working with an attorney decreases the possibility of mistakes.  A good trademark attorney does more than simply file the application for you. Your attorney will also help you through the entire process, from choosing a name all the way through to final approval. This can help with approval and registration of your trademark.

Denver patent and trademark attorney Mark Trenner often receives calls from small business owners about selecting a new trademark. Below is a transcript of an interview Mark gave, in which he shares some of the common pitfalls business owners may encounter when selecting a new trademark.

Selecting A New Trademark

Interviewer: What is the biggest pitfall business owners should avoid when selecting a new trademark for their business?

Mark Trenner  Selecting a mark that is generic of the goods or services being marketed.

Interviewer: What do you mean by ‘generic’?

Mark Trenner : A generic mark is a word or words that tell the user exactly what the product (or service) is. For example, the word “gas station” is generic for a gas station, and the word “restaurant” is generic for restaurant. Read more about generic trademarks here.

Interviewer: Can you trademark a generic word?

Mark Trenner : No. Generic words are considered to be in the public domain and cannot be protected by trademarks. Everyone selling that product should be able to use the generic term for that product without having to be concerned that someone trademarked it.

What Should A Business Owner Do When Selecting a New Trademark

Interviewer: That makes sense. What should a business owner do instead?

Mark Trenner : Suggestive marks are subject to trademark protection, so are arbitrary and fanciful marks.

Interviewer: Can you give the readers an example of each?

Mark Trenner : Sure. A suggestive mark suggests something without being outright generic or descriptive of the product. FOCUS for contact lenses is a good example. The mark FOCUS suggests to consumers that they will see better with FOCUS brand contact lenses.

Interviewer: And that’s not generic (or descriptive). I understand. What about arbitrary marks?

Strong Trademarks are Arbitrary and Fanciful

Mark Trenner : Arbitrary marks are real words, but applied to something completely different (or arbitrary). For example, APPLE when applied to computers or electronics. The word ‘apple’ is a real English word. But ‘apple’ is a fruit, not an electronics product – except when used as a trademark.

Interviewer: What is a fanciful mark?

Mark Trenner : Fanciful marks are those which are completely made up. For example, GOOGLE, XEROX, EXXON. Those were all made up to market the brand.

Interviewer: In other words there was no real English word prior to the mark being put out there.

Mark Trenner : That’s right. These are going to be the strongest marks. While someone may be able to use a word in their mark that is the same as a word used in another trademark, as long as it is for different products (for example, for t-shirts when the other mark is applied to financial services), you probably wouldn’t want to use the mark GOOGLE for ANY service, even if its not a search engine – because GOOGLE is such a strong mark.

Pitfalls in Selecting a New Trademark

Interviewer: What are some other pitfalls business owners should be aware of?

Mark Trenner : Selecting a mark that is confusingly similar to someone else’s mark. Not only do you want to select a mark that is different (in spelling, sound, etc.) than anything a competitor has, it is important that you do not select a trademark that is considered confusingly similar to another trademark.

Interviewer: How can a business owner be sure they are not selecting a mark someone already has?

Mark Trenner : I always recommend working with an attorney. An attorney can order a full availability search and after reviewing it, provide a clearance opinion. At least if you have a well-reasoned clearance opinion, it will be more difficult for a competitor to allege willful infringement.

Interviewer: We’re almost out of time for today’s interview. Can you give our readers one more pitfall they should try to avoid?

Mark Trenner : Failing to fully or accurately identifying all of goods/services in a trademark application. It is important to discuss all products or services being offered under the mark with your trademark attorney before submitting a trademark application. And then follow-up on a regular basis, whether that is quarterly, bi-annually, or at least annually, to be sure that any products which have been added to the product lineup are either covered by the existing registration, or a new application is filed.

Interviewer: That’s all we have time for today. Thank you for these important tips. As always, Trenner Law does not offer legal advice on its blog, and the discussion above is general information only. Please speak with your trademark attorney for legal advice specific to your situation.

Trademark infringement lawsuits generally fall into two categories. Perhaps the most common is due to a lack of planning. Businesses start using a trademark without any background research to determine whether that mark is already in use. The second most common are the sellers who want to trade off of the success of a popular brand. That appears to be the case with a recent trademark infringement lawsuit filed in Colorado.

A Colorado company is facing a federal lawsuit for selling marijuana infused chocolate. Not because the sweet confections contain cannabis, but because their packaging contains names and colors that closely resemble that of another candy maker—Hershey.

Trademark Infringement Lawsuit

Hershey Candy Co. is suing TinctureBelle LLC and TintureBell Marijuanka LLC, the makers of the marijuana chocolate, for trademark infringement and claims that TinctureBell is selling knock-offs of Hershey’s York peppermint patties, Reese’s Peanut Butter Cups, Almond Joy, and Heath bars.

The edible marijuana makers sell their products under names like Hashees, Hasheaths, Ganja Joy, Buddafinger, Snockers, Dabby Patty, and Twigz. All of which contain packaging almost identical to their Hershey counterparts. Hershey claims that by using these knock-offs, TinctureBell is able to garner more sales by having consumers associate their products with the trust and goodwill of the Hershey’s brand.

Confusingly Similar Standard

There are also concerns among the public that these marijuana-laced snacks are too confusingly similar to regular snacks and candies. There have been claims of children having to go to hospital after mistakenly eating these marijuana snacks.

Hershey is suing for damages, both punitive and compensatory, and hopes that a judge will order the Colorado company to stop selling the items that mimic Hershey’s candies.

Always work with an experienced trademark attorney before adopting a trademark. And remember, trademarks cover more than just words. Trademarks can cover words, slogans, logos, and even sounds, colors, and product packaging (referred to as “Trade Dress”).

“12th Man” Infringement: Might the Denver Broncos Have to Pay?

Today is a big day in Colorado. Tim Tebow and the Denver Broncos are in the NFL playoffs, and they’re scheduled to play against the New England Patriots today. So what do the Denver Broncos have in common with intellectual property law? Plenty. Colorado patent attorney Mark Trenner of Trenner Law Firm, LLC in Denver explains.

According to the Denver Post article “Broncos could be in trouble with Texas A&M after fan flag” the university may take legal action against the Denver Broncos for using the school’s trademarked “12th man” phrase before last Sunday’s game against the Pittsburgh Steelers. Apparently a man parachuted into the stadium in Denver holding a “12th man” flag, and Texas A&M claims to own a trademark for this.

I checked the US Trademark Office records, and sure enough, Texas A&M does have a trademark registration (trademark registration number 1,612,053 registered in 1990) for “12th MAN” for “novelty buttons, towels, hats, t-shirts, polo-type shirts, golf shirts, sweaters, shorts, and athletic uniforms, in addition to college scholarship services.”

But what do any of these items have to do with the flag at the Broncos game?

Mark explains that with trademark law, potential infringers need to be aware that it’s not just identical uses, but what might be considered to be “confusingly similar.” Here, another sports team used the identical words “12th man” on a flag at a sporting event (I might add that it was a widely publicized and watched NFL television event). A flag isn’t the same as hats, t-shirts, etc., but given the circumstances (a football game with football fans who likely watch both college football and NFL games), arguably there may be an element of confusion. That is, those attending the NFL game may have been “confused” into thinking that Texas A&M was somehow associated with or involved in the parachute stunt – when apparently the university was not involved.

Do they have a case? Possibly. At least the Denver Post article quotes Jason Cook, vice president of marketing and communications at Texas A&M as tweeting that they “will defend our trademark.” And that wouldn’t be the first time either. According to the article, Texas A&M threatened legal action against the Seattle Seahawks for a similar stunt last season. The article says that they settled after “the NFL team was forced to pay the school a fee.”

Denver patent attorney Mark Trenner would like to acknowledge that the following trademarks: NFL, New England Patriots, Denver Broncos, Denver Post, and Texas A&M, are all trademarks of their respective trademark owners.