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Protecting Your Trade Name & Your Logo
And what about those little TMs & Rs in circles?
What is a trademark? Easy. It’s a literal extension of the phrase Marks of Trade. A TM protects the name or mark associated with the product or company to which they are attached and can be specific to the the type of activity being carried on (Apple Computers and Apple Auto Glass for example). The main test of trademark infringement (legally speaking) is whether or not a conflicting mark is going to confuse consumers (either by accident or design.) A trademark can be a word (real or imagined), name, symbol, color (yes, colors) or even sound that is claimed and used by a company to identify its identity or products and distinguish them from those offered by others. For all intents and purposes, a service mark is the same as a trademark but identifies a service. A trademark offers more protection than copyright – even marks that are similar can be considered infringement – but the bar is set much higher for registration. More expensive too – filing a trademark registration usually involves the services of an attorney (but if you’re a persistent do-it-yourselfer it is possible to handle most of the process yourself.) A trademark can take up to a year to be granted, and costs (at the bare minimum) about $300 for the necessary paperwork.
Who used what first?
When you boil all this legalese down to a ‘what does it really mean’ level, both copyright and trademarks are dictated (generally speaking) to who used what first. When we applied to trademark The Logo Factory back in 2000, we were first told that we wouldn’t be successful because a ’similarly named’ entity had been using their trademark since 1998. The name – using “branding” instead of “logo” – was seen by the Trademark Office as being likely to ‘confuse consumers’ – an important benchmark as we’ve noted earlier.
“..it’s always beneficial to do some homework before hanging out your company shingle. Unique is always better. Just because you think your company name (or design) is unique enough doesn’t mean that others will agree.”
I was able to prove earlier use in 1996, and claim earlier use in 1993 – when I had first developed the name and concept. As we were first, we could have challenged the other guys’ claim to whatever TM had already been awarded. All fine and dandy, but such challenges involve lots of suits (law and apparel), court time and legal paperwork. Tons of cash too. Eager to avoid a potentially expensive trademark battle, The Logo Factory and the other party agreed to peacefully coexist, and our TM application was granted in late 2000. Cost us a few bucks in legal fees though, so it’s always beneficial to do some homework before hanging out your new company shingle. Unique is always better. Just because you think your company name (or design) is unique enough doesn’t mean that others will agree.
Types of trademarks.
When it comes to developing a name for your company or product there are 4 main types of trademarks you should be aware of (there’s actually five, but the four we’ll discuss are the most practical and in the context of this article, trademarks that are easier to protect). I introduced these concepts as methods of naming a company in our previous piece, and here we’ll take a look at fanciful, arbitrary, suggestive and descriptive company names as they relate to trademarks.
A fanciful trademark is a made-up name, created for the sole purpose of functioning as a trademark, and has little meaning other than the name of a company or product. Think Xerox, Verizon or Kodak as examples. Fanciful trademarks are considered the strongest trademarks and it’s very difficult for your competitors to claim they were accidentally influenced by (read ripped off) your name.
Arbitrary trademarks use words that have some very-real meaning, but when used in the context of a company name, don’t really offer any clues to what the company does, or what the product is (there might be some abstract, or creative way that the name does offer a description – Google, for examples, is an actual word that describes a really, really big number). An arbitrary mark may still be a strong trademark, unless a number of other companies have adopted similar names in other fields. A classic example of this would be the name Acme (from the greek word meaning the peak, zenith or prime) and used famously to identify the various companies that supplied Wile E. Coyote gizmos, used in the endless pursuit of his nemesis, the Roadrunner, during Saturday morning Warner Brother cartoons.
These type of trademark names might hint at some quality or character of the company or product represented without actually describing the product. If they’re available (ie: not in use by someone else) suggestive marks can be relatively easy to receive a trademark for. Trouble is, suggestive trademarks can be difficult to protect, as they come awfully close to descriptive trademarks, which run the risk of not being protectable at all. The Logo Factory is an example of a suggestive trademark. The Logo Design Studio would be an example of a similarly themed descriptive trademark, much more difficult to register, and difficult to protect if someone did manage to get a TM in the first place.
These are names which describe, in absolute terms, a characteristic or quality of the company and/or products for which they are used. This is the least desirable of all trade names – in fact, most descriptive TMs are generally considered non-registrable and unprotectable by most courts. In the internet age, many people are tempted – for search engine keyword density – to name their company in absolute terms. Athletic Shoe Sales for example, might offer some search engine advantage if you were to own the domain AthleticShoeSales.com. Unfortunately, it would be extremely difficult (if not impossible) to register the TM and avail yourself of trademark protection. Your competitors could quite literally use your name to further their business. Not such a good idea, huh? If you’ve come up with a company name that is absolutely descriptive in nature, time to hit the drawing board again.
Using a TM in a logo.
“Should I use a TM in our logo design?” is a question that comes up often during the design process at the shop. The answer is as follows. Yes. No. Maybe. If you have the rights to use a TM in a logo (ie: you’re laying claim to the trademark – either as a design like the Nike ’swoosh’, or for the name, the phrase Nike itself – then yes, adding a TM is probably worth while. Here’s where the maybe comes in. If you have a legitimate claim to the TM, you don’t have to put the little T & M beside your spiffy new logo to protect it. And while adding a TM to a logo indicates that you’re in the process of registering a trademark, it also might be interpreted that you haven’t been awarded them just yet. After all, if you’ve already registered the name and/or mark, your logo would feature an R in a circle which is only permissible to use if you’ve officially registered with the government. That may get your competitors thinking that they can poach your TM turf. At The Logo Factory we generally left the TM off any publication of our design, until we had obtained official recognition, at which point we plastered the registered trademark symbol over everything we own.
And that’s about it for our look at trademarks and how they relate to your new company name. Granted, a little ‘dry’ but ultimately worthwhile stuff to keep in mind when asking yourself the basic question – “what do I name my company?”