A trademark is a logo, phrase, word, or symbol that is used to distinguish products from other products and their sellers or producers. Typically, trademarks set products and their producers apart from others.
If an individual or business is considering registering a trademark name, they should first do a trademark search before they register their trademark to ensure it is not already in use by another entity. It would be wasteful and detrimental to the business to choose a name, purchase advertisements or other materials, and then have to change the name and re-purchase all of those materials.
Trademarks have to be distinctive in order to be registered. Distinctiveness of a trademark is influenced by whether it is generic, descriptive, suggestive, arbitrary, or generic.
It is important for an applicant to be aware of these requirements, rules and regulations for using trademarked names. There can also be other trademark nuances, such as the United States Patent and Trademark Office (USPTO) only authorizing one trademark, such as a name or logo, per application.
If a logo incorporates words, the design and text may be treated as one trademark. However, if a business wants to protect both the design and the words separately, they will have to submit two applications.
Consulting with a trademark attorney when an entity is contemplating using a certain trademark name or even after the application process has begun will help ensure that all of the requirements are met to protect the trademark.
What Is a Trademarked Name?
As noted above, a trademark may include a word, design, symbol, logo, or combination which is used to identify and distinguish an entity’s goods or services from others. A trademark name can help consumers recognize businesses in the marketplace and distinguish them from competitors.
In addition, trademark names can provide legal protections for the brand, help safeguard against fraud and counterfeiting, as well as give the business exclusive rights to the name. Examples of commonly known trademark names include:
What Steps Should I Take to Ensure Compliance?
There are several steps an individual or business can take to ensure compliance with the use of their trademark name. A lawyer can also help an individual or business ensure continuing compliance with trademark requirements.
Register the trademark
Before using a trademark, it is important to protect it. The best way to do so is by federal trademark registration.
Use the trademark consistently
This means using the trademark in the same way each time, including its spacing, punctuation, and spelling.
Use the trademark as an adjective
Using the trademark as an adjective that modifies a noun and not as a noun or a verb. This means using the generic description of the product along with the mark. For example, saying, “copies can be made on a Xerox® photocopier,” instead of, “making a xerox.”
Using the ® symbol
It is important to use this symbol next to the name to clearly claim trademark ownership. This symbol can only be used for registered trademarks.
Avoiding conflicts
Conflicts can be avoided by not using commonly used or descriptive terms.
Searching for imposters or unfair uses
A business entity can regularly conduct searches for their trademark on the Internet as well as social media to ensure it is not being improperly used.
Having a licensing agreement
If a business wants to allow a third party to use their trademarked name, they can enter into a licensing agreement. It is important to have assistance from a lawyer when drafting this type of agreement to ensure the trademark is properly protected.
Using cease and desist letters to stop infringement
An intellectual property lawyer can help an individual send a cease and desist letter to an infringer who is using the trademark without authorization. This is a letter informing the infringing party that they are engaging in illegal conduct that should stop immediately.
Licensing the trademark
Licensing a trademark occurs when a contractual agreement is made between the trademark owner, or licensor, and another party, the licensee. This agreement gives the licensee the right to use the trademark in a specific manner, often in exchange for compensation, which may include royalties or licensing fees.
Trademark licensing can help a trademark owner expand their brand presence as well as generate additional revenue streams while maintaining control over the use of their trademark.
How Can LegalMatch Help?
An intellectual property lawyer can play an important role in all aspects of trademark registration, protection, and usage. A lawyer can help a business choose a trademark, ensure that trademark is not in use and apply to protect the trademark.
If a business has a trademark, a lawyer can help draft and negotiate a trademark licensing agreement that protects the business’ interest by defining the scope of the license, including:
- The specific goods and services for which the mark can be used
- The geographic territory that is covered by the license
- Quality control standards that the licensee has to adhere to
A trademark attorney can also help their client avoid licensing agreement issues, which can include ensuring that the licensor still has sufficient control over the mark to avoid any loss of their trademark rights.
They can also help determine the proper compensation structure for the license, which may include:
- Up-front fees
- Ongoing royalties
- Performance-based payments
LegalMatch has assisted millions of clients with their legal needs, including providing trademark assistance. For more information see LegalMatch customer testimonials.
What Laws Apply to Trademark Names?
There are certain regulations, laws, and agencies that govern trademarks and trademark names. For example, the federal Lanham Act protects trademarks in the U.S.
The federal United States Patent and Trademark Office (USPTO) is the agency that administers trademark registrations. In addition to federal laws, there can also be state laws in each state that protect trademarks.
What Are Permissible Uses of Trademarked Names?
There are certain permissible uses of trademarked names, including the fair use doctrine and the descriptive use doctrine.
Fair use doctrine
The nominative fair use doctrine is a legal doctrine that allows a trademark to be used to refer to a brand’s goods or services without causing confusion regarding the source of the product of the trademark holder’s affiliation or sponsorship. This serves as a defense to a trademark infringement claim.
Fair use is typically permissible when certain conditions are met, including:
- The service or product is not readily identifiable without using the trademark
- Only as much of the mark that is reasonably necessary to identify the service or product is used
- Using the mark does not suggest enforcement or sponsorship by the owner of the trademark
This doctrine allows for the unlicensed use of copyright-protected works in certain situations. This can include using a trademark for a purpose other than what it is typically used for.
Common examples of nominative fair use include:
- A social media post using the trademark “Sony Interactive Entertainment” to discuss the developer of an upcoming video game
- A YouTube video using the trademark “Maytag” to identify a specific type of washing machine that is being repaired
- A comedy routine that uses the trademarks of Burger King, KFC, and McDonald’s to satirize the fast food industry
Descriptive use doctrine
The descriptive use doctrine applies in situations where a descriptive mark is used in an ordinary and descriptive manner to describe a service or product. For example, this may arise when using the word, “apple” to describe the fruit even though “Apple” is a registered trademark for the technology company.
What Are Trademark Prohibited Uses and Infringement?
There are trademark laws that provide prohibited uses and infringement parameters that are intended to help prevent consumer confusion as well as trademark infringement.
Trademark infringement
Trademark infringement is an issue that arises when a trademark is confusingly similar or the same as one that is already registered.
The test to determine the likelihood of consumer confusion is whether the reasonably prudent consumer would be confused by the use of similar marks on competing goods or services. If they would think that the two marks are affiliated, that is evidence of potential confusion.
The case, Polaroid Corp. v. Polarad Elecs. Corp., provides the Polaroid factors which are reviewed by a federal court to determine the likelihood of confusion. The Polaroid factors include:
- How similar the product or services are
- The strength of the senior user’s mark
- The more distinctive or stronger it is, the more likely there will be confusion
- The similarity of the marks
- The intent of the junior user when adopting the mark
- If there is any evidence of actual confusion
- The sophistication level of the purchasers
- The quality of the products or services of the junior user
- The likelihood that the senior user will expand into the junior user’s product area
Trademark dilution
Even if there is no evidence of consumer confusion, there may still be trademark infringement. This type of infringement is trademark dilution.
Trademark dilution arises when the use of a trademark tarnishes or blurs the distinctiveness of an already famous trademark. This type of infringement usually involves a trademark that is very popular or famous in the public consumer market.
Legal remedies
Legal remedies may be available for both trademark confusion as well as trademark dilution. As these are both subcategories of trademark infringement, the damages will often be monetary damages that are paid by the defendant to the plaintiff.
Compensatory, or monetary, damages in these cases are provided to compensate the plaintiff for their losses, which can include:
- Reputational damage
- Lost clientele
- Lost profits
Punitive damages can also be awarded in certain trademark infringement cases when a defendant intentionally violated intellectual property laws and protections. It is also important to note that federal charges may also result from trademark infringement, which can lead to prison time or other additional penalties.
Do I Need Legal Assistance with my Trademark Name?
If you are considering choosing a trademark name, have already begun the application process, or are having infringement issues, a trademark lawyer can help ensure your trademark is protected and that you avoid liability for trademark infringement.
LegalMatch can help you find a lawyer for your trademark name concern at no cost. Just submit your trademark name issue on the website and you will get responses from licensed and pre-screened member lawyers in around 24 hours who will help ensure that your trademark name is protected and as successful as possible.
