TRADEMARKS: A PRIMER

By Timothy K. Cutler

 

Businesses thrive by successfully marketing their services or products and creating brand name recognition. Registering logos and names as trademarks is an integral part of these strategies.

What is a trademark?

A trademark is a word, design, color or sound that identifies the source of a good or service. For example, Coca-Cola is perhaps the most recognizable trademark in the world. When people see "Coca-Cola" or "Coke," they know that the product featuring those words comes from the Coca-Cola Company. The Citgo name and red triangle are registered trademarks. Even the loud "thunder" of a Harley-Davidson motorcycle is a protected trademark.

What is the difference between a trademark and a copyright or patent?

A copyright protects an author's literary or artistic works. Patents protect useful inventions. Trademarks are words, designs, colors or sounds that identify the source of a good or service for sale in commerce.

Trademarks are identified with a ™ or TM, while copyrights are identified with a ©. Patented inventions are typically stamped with their patent number.

Why should I register my trademarks? What benefits will I receive?

By registering your proprietary trademarks, you put the rest of the world on notice that your company is the owner of such marks. A successful trademark registration strongly discourages anyone else from using your brand names or designs. If another person or company does use your marks for profit, you may block further usage and be entitled to a variety of damages.

Where should I register my trademarks?

Registration is available with the Massachusetts Corporations Division and with the United States Patent and Trademark Office (USPTO). Registering in Massachusetts is not a requirement for Massachusetts businesses, although doing so may help prevent other businesses from using your trademarks in the Commonwealth. 

If you obtain a registration with the USPTO, however, you will not achieve any further benefits by registering with Massachusetts. A federal USPTO trademark registration gives you rights against infringing users throughout the country, whereas a Massachusetts registration only gives you rights against infringers in the Commonwealth.

What types of damages are available to me if someone illegally uses my trademark?

A federal registration with the USPTO gives trademark holders the right to sue infringers in federal court for a variety of damages. Depending on the nature of the infringement, the rightful trademark holder may be entitled to: Profits earned by the infringing party; Damages sustained by the trademark holder multiplied by three; Court costs; Attorney fees; Seizure of the infringing goods; Destruction of the goods; Up to $1 million per type of counterfeit goods or services, and; Up to $100,000 per domain name violation

What types of things can I register as a trademark?

Businesses should consider registering any word, design, color or sound they believe uniquely identifies their services or products. To be registrable, however, the mark must be either arbitrary or suggestive, and not descriptive or generic.

Arbitrary marks are either made-up words (such as Exxon) or words that are seemingly randomly applied to a good (such as Apple for computers or Domino for sugar). 

Suggestive marks are words that require some imagination to connect the trademark to the good or service. The mark Microsoft, for example, suggests computer products ("micro" is derived from microchip, and "soft" is derived from software) but does not come right out and say it. Similarly, some imagination is required to connect U-Haul to a moving-truck rental service, as hauling could refer to many different types of services.

Merely descriptive or generic marks are not registrable as trademarks, though a descriptive mark that has been in continuous use for five or more years may become registrable. A descriptive mark only describes the actual good or service. "Business Law Services," for example, is merely descriptive of a company providing legal services to businesses. 

Generic marks are words that are the service or good themselves, and are never registrable. For example, if I could register "Bananas" as the name of my banana-selling company, then no one else in the country could rightfully use the word banana-even to advertise a produce sale.

Special rules apply for the registrability of colors and sounds, and marks that include geographic indicators (such as "Boston" or "French").

I want to register my business' name or product as a trademark. How do I know if it is available for registration?

You can perform a basic search on the USPTO Web site. You will find that many words are already registered trademarks for multiple goods or services. If this is the case for the word(s) you are seeking to register, it does not necessarily mean that you will be unable obtain a registration as well. 

If there is no likelihood of confusion by potential consumers as to the source of a good or service, two or more companies may obtain registrations for the same mark. For example, four different companies hold registrations for "Iron Mountain." One business makes shoes, another customizes ammunition, a third produces outdoor furniture and the fourth is a records inventory control company. There is no likelihood of confusion between the four companies because the products are so diverse.

Please keep in mind that while an USPTO search is helpful, it is not conclusive. Before deciding to use a mark, or write it off as already taken, we suggest you contact a competent trademark Attorney for further advice.

Do I have the right to register my name as a trademark?

Contrary to popular belief, you do not have an automatic right to a trademark registration for your own name. If I wanted to start a restaurant, for example, I would not be able to register my last name as the name of the restaurant. The reason: Marriott Corporation already owns the mark "Cutler's" for restaurant services. But if your name is not already in use for the type of good or service you wish to sell, you may register it.