How Strong is Your Trademark?

The most important thing when deciding your "branding" for your business is to make sure that you pick words and logo that identify and protect your brand. Your intellectual property is some of the most valuable assets you have, particularly if you're just starting out.

If you're just starting out, you should pick a mark that is as strong as possible to build your brand around.

So, how do you know what makes a strong mark?

Because I'm going to tell you, that's how....

There are five classifications of marks (four of which can be registered with the USPTO). (Actually, Famous marks are given extra protection, but let's assume that if you're starting out, you don't have one of those.)

They are (in order of strength):

Fanciful - A fanciful mark is one that is a made up word or set of words that have no dictionary definition. Examples would include: Xerox, Google, Ebay.

Arbitrary - Arbitrary marks are ones where the words themselves have dictionary definitions, but no actual relation to the class of goods and services being protected. Examples: Shell for gasoline, Apple for computers, Tide for laundry detergent.

Suggestive - Suggestive marks are marks that have some relation to a feature or quality of the goods and services being offered but are not directly descriptive of the good or service. A suggestive mark would require you to do some thinking to see the relationship, otherwise it would fall into the descriptive category. Examples: Sunmaid for raisins, Coppertone for suntan lotion, Jaguar or Mustang for cars, Playboy for a men's magazine.

Descriptive - Descriptive marks are exactly what you'd think they are. They describe the service or product being offered. They are often not permitted registration on the Principal Register but instead have to be included on the Supplemental Register (once it has been used in commerce for 5 years, it can be moved to the Principal Register). Often marks that include a first name or surname fall into this category. Other examples include: Vision Center for an eyeglass store, Jiffy Lube for a 15 minute oil change spot, Bob's Ice Cream Shoppe for an ice cream store.

Generic - Generic marks are, well, generic terms for the product or service being offered. Examples: Apple if you're selling apples, Soap if you're selling soap. Adding a descriptor will, however, change the classification to Descriptive.

Interestingly enough, companies fight very hard to keep their marks from becoming generic. If your mark becomes a household description of a class of products or services, you weaken the strength of even the strongest types of marks.

Examples of somemarks who spend a lot of time and money fighting to keep from becoming generic include: Scotch tape, Band Aids, Xerox, Google and Kleenex.

Picking a strong mark and keeping it strong are essential to the value of your intellectual property and, in turn, your brand and your business.

If you have more questions about how to create a strong mark and how to protect that mark once you have it, I'm always happy to discuss it. You can either ask me on Twitter (http://www.twitter.com/DeenaEsq) or fill out the contact form on my website (http://www.ebusinesslawgroup.com)

Do I HAVE to register my trademark?

It has come to my attention that seemingly a lot of trademark lawyers have been telling their clients that they "have" to register their trademark to protect it. Of course, federal registration is certainly helpful in protecting your mark.

But is is necessary?

The answer may surprise you, but it's not necessary to register your trademark with the United States Patent and Trademark Office (USPTO) to protect your mark against infringement.

Under U.S. law, you gain trademark protection once you have used the mark "in commerce". This is often referred to as a common law trademark. You can use the "TM" indication (or "SM" for a service mark) after your mark at any time after beginning to use it in commerce (though you can only use the ® mark once you have a registered mark with the USPTO).

So, why do people register their marks with the USPTO then?

Well, for one, common law trademarks have some very serious limitations.

First, common law trademarks are only good in the geographic area in which they've been used. So, if you have a chain of drugstores in New Jersey called "Moose Drugs", you'd only be protected in the market that you're working in.

If someone in Oregon opened a "Moose Drugs" in Oregon (assuming they had no knowledge of your chain of stores), that's fine. The only time that there'd be a problem is if the Oregon "Moose Drugs" went nationwide. They'd be prevented from entering the New Jersey market by your prior use of the mark, but that's all.

On the other hand, federal trademarks registered with the USPTO are protected nationally.

Second, common law trademarks are very hard to search for. There is no general databse of them (as there is for a federal or even a registered state mark). This means that it is far more likely that someone will unknowingly violate your mark. And chasing people off of your mark can get very expensive.

Because federal trademarks are contained in the federal database, innocent infringers are far less likely and there are, with any luck, far less people to sue to protect your mark.

Finally, there are rights that are available for federally registered trademarks that aren't available to common law marks. Other than the rights that I've mentioned above, these include:

* The right to trial in a federal court (which enables you to reach infringers in other states);

* The right to recover profits, costs, attorneys' fees and damages from infringement;

* In some cases, the right to recover treble (triple) damages;

* Prima facie proof that your mark is a valid mark and is not "confusingly similar" other marks;

* The right to have U.S. Customs block entry of any goods bearing an infringing mark; and

* After five years of registration, you gain an "incontestable" status on your mark, which eliminates almost any argument that you do not have exclusive rights to use the mark.

That's certainly worth the price of admission.

So, what do I advise my clients?

I advise them to register for a federal trademark if they can afford to do so (since I do flat fee registrations, it doesn't end up being particularly expensive).

But I let them know that it's not the end of the world if they don't. Because it's not.

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Any opinions are offered without knowledge of the specific law of your jurisdiction. No advice given here should be reasonably relied upon by you or any third party without consulting an attorney who is aware of all of the facts and law surrounding your situation. Any advice given here is not intended to create an attorney-client relationship in any way.

Why can politicians (and anyone else) use copyrighted music without the artist's permission?

There have been numerous allegations over the past weeks by musicians against the McCain campaign based on its use of songs in its advertisements and campaign rallies without the prior authorization of the artists who recorded those songs. Some of these artists include Jackson Browne (who sued the McCain campaign for the usage), Van Halen, Heart and the Foo Fighters. In all fairness, Obama was asked by Sam Moore to stop using his song, "Soul Man" as well.

Many of the artists feel that they should have the right to keep the McCain campaign from using their songs because they feel that (not only should they have been asked) it appears to other people that they have not only sanctioned the use of the song, but they have endorsed the candidate by allowing the song to be used.

So, why hasn't McCain stopped using the songs. It's actually very simple. The McCain campaign claims that they've purchased blanket licenses from ASCAP/BMI. A blanket license (often purchased by stadiums, sporting arenas and the like) gives the purchaser the right to use any of the over 4 million songs in the ASCAP/BMI library. They have the right to use them at campaign events, in advertisements or even broadcast them.