Common Mistakes Regarding Trademarks

One thing people often forget about trademarks is they are marks and not names per se. But that’s where it gets tricky. if the name is unique enough, you can probably register the name itself. If it’s not, the use of the name itself isn’t protected, so unless the mark is close enough to what someone using the name already has, it’s not an issue.

But it can be very challenging to determine exactly what trademark rights you have. The many facets of trademark law include the issues of whether:

  • registration is needed for particular marks and why,
  • the name itself can be trademarked,
  • there are particular words or phrases within the trademark that have unique meanings that enable trademarking,
  • a logo or other marks are unique enough for trademark registration,
  • the mark being used is close enough to a registered mark to infringe on another party’s rights.

If a trademark is so unique and unusual that no one else will want the same mark or name, trademark registration isn’t needed. Put differently, trademark registration is only needed because a degree of similarity between names and marks is great enough as to cause confusion or mislead customers, consumers or the general public about whose mark is being used.

Confusion alone is not necessarily enough to create trademark infringement, however. When a mark or name is so common that the marketplace would not identify it with a particular brand to begin with, the name isn’t unique enough to generate any trademark protection. But knowing what is common or unique enough is a judgment call, of difficult determination, especially by a judge who doesn’t do it every day.

An especially challenging issue relating to trademarks relates to the uniqueness of a word, letters or a phrase, as used within the trademark itself. Thus, the company name “Beetles Be Gone” might be eligible for trademark protection because of the unique (though common) nature of the meaning of the name. used in a pest control company, but perhaps not as the name of a band.

That may or may not be easy to understand. Ultimately, trademark rules are made by humans for humans, and so the art of trademarking is anything but exact in its creation. That’s a good reason to have a skilled attorney to help you with the process. The advocate who goes to bat, explaining to the USPTO the logic behind the trademark, will often have a winning argument.

That is, where the logic makes sense.

So, on the one hand, the word “delta” is used as the company name for literally hundreds of companies across America. It is a common word with several different meanings. Delta Air Lines, and Delta Faucet are the two largest companies using the name. Both are Fortune 1000 companies. If you wanted to start a company called Delta Technologies, the only inhibitors would be the existence of another company called Delta Technologies, not Delta Air Lines nor Delta Faucet. Their trademarked logos, however, are fully protected in spite of the freedom for others to use the name.

 

On the other hand, it doesn’t matter who you have representing you if you’re trying to utilize likenesses of existing registered marks. So, for example, if you utilize a chubby, two legged, white creature, with a chef’s hat, apparently made from white flour and oil, and pass it off as your own “Dough Boy”, it probably doesn’t matter that you’re using it to establish a bank, it’s to much like what Pillsbury has already done and invested in branding. You might argue the point endlessly, but who out there doesn’t understand that the likeness has value primarily because of all the millions of people who’ve already seen theirs?

When you seek trademark protection, take care. A search is not a bad place to start. What’s already out there that you may run afoul of? What can you do to be sure you remain different? Is protecting your mark really in your best interest at the present time? There are so many considerations, decide wisely what will work best for you and seek the right counsel to help you through the process.

If we can assist you at any level in the process of protecting your trademark, call Landmark FLA and we’ll be glad to work through the process with you.

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Landmark Advisors

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