What Every Tech Business Needs to Know About Trademarks
Your goal should be to avoid infringing on someone else’s mark and to be prepared to pursue others who tread on yours.
By Richard Stim
As a blogger, developer, or ecommerce business owner, you need to pay attention to trademark basics for two reasons: (1) to help you decide whether to pursue a trademark registration, and (2) to lower your odds of getting into a trademark scrape. Your goal should be to avoid infringing on someone else’s mark and to be prepared to pursue others who tread on yours.
Here are some basic trademark principles to help you get started:
- First User Gets the Trademark. You acquire rights and can stop others in your trade (that is, other bloggers, ecommerce businesses, website developers, or app makers) from using a substantially similar trademark if you are the first to use it in commerce for a specific class of goods or services. That means that you are the first to advertise or sell those products or services under the name. Your rights extend only to the class of goods or services which you offer as well as to those goods or services that a court or the USPTO might consider that you are likely to offer. However, simply being the first user of a mark may not get you all the protection you need. Other factors that influence trademark rights are the geographical extent of your use, whether the mark is weak or strong, or whether you have abandoned your right to use the mark. We’ll talk about these more, below.
- Rights are Limited to Your Goods and Services. This is a cornerstone of trademark law. You can only stop others from using a similar mark on goods or services with which the mark is used, intended to be used or likely to be used. So if you create the mark, Goodbye Rats, for a game involving rodents, you won’t be able to stop a company that adopts the name for pest extermination. That’s because consumers are not likely to be confused by the two distinct and noncompeting uses.
- Creating a trademark doesn’t create rights. Trademark rights do not arise because you create a trademark—for example, you design a logo or coin a slogan. To acquire rights, you must use the trademark in commerce. You can reserve trademark rights—see below—but these rights will not vest unless you eventually use the mark in commerce.
- Distinctive trademarks are easier to protect. Trademark protection is based around a “strength” classification system. Strong trademarks are distinctive, and you can immediately stop others from using similar ones. A weak trademark is not distinctive because it describes some aspect of the goods (your app) and you cannot register it on the Principal Register—the best form of U.S. trademark protection—until you strengthen it by pumping up the mark with consumer awareness through advertising and sales (known as “secondary meaning”). To determine if a mark is “distinguishable” or “distinctive” start by asking whether a consumer associates the mark with a certain product or service, a certain quality, or a specific source? The more likely that there’s a consumer association, the more likely than the mark is distinctive and strong. Unfortunately in the world of blogs, website developers and app makers, descriptive names – for example Word and Pages -- often work well. In other cases—for example, Scrivener’—distinctive clever marks are more suitable. There are no foolproof tests for choosing or for determining if a mark is strong or weak—however, be prepared for issues during registration if your mark is weak or descriptive. Generally, a mark is strong if it is either (a) so unique or clever that it is classified as “inherently distinctive”—for example, immediately distinctive names like “Tetris,” or if it becomes distinctive through sales and advertising—for example, ‘Angry Birds.’
- No trademark protection if … In some situations, the intended trademark cannot be registered, and the owner has no right to stop others using a similar mark. The most common include: (a) Nonuse (also known as “abandonment”) which occurs if you stop using a trademark and it appears as if you won’t resume use, (b) If you use a generic term—that is, you attempt to use the name of the a class of goods—for example, you use the term “Software” as the sole name for your mobile application—the name will not be protected, because it is a generic term. Someone could, however, use generic terms in conjunction with other terms—for example, Software Lingerie—and not be generic.
- Symbols indicating a trademark. Typically, the symbols ®, TM or SM are used along with trademarks—as in Tetris®. The symbol ® indicates that a trademark has been registered at the USPTO. It is illegal to use the ® symbol if the trademark in question has no USPTO registration. There is no legal requirement that the ® be used, but the failure to use it may limit the amount of damages that the trademark owner can recover in an infringement lawsuit. If the trademark hasn’t been registered, the TM symbol can be used. Similarly, the SM symbol can be used for service marks that have not been registered. The TM and SM have no legal significance other than to indicate the fact that the owner is claiming trademark rights.
Relationship of Domain Names and Trademarks
What if my trademark is being used by somebody else as a domain name?
If you have a registered trademark and someone is holding the domain name hostage—that is they hijacked it in bad faith in order to cause you problems (and jack up the price)—then you have remedies under federal law and international arbitration rules. We discuss it in more detail, below.
However, not all uses of domain names by others are in bad faith. Trademark owners often vie for the same domain name—for example the Apple computer company and the Apple music label (the Beatles record company) may both have a legitimate claim to apple.com, but the computer maker apparently acquired it first.
Beware When Using Your Surname as Your Trademark.
There are some advantages to using your own name -- you have less chance of infringing on someone else’s trademark and you may have an easier time preserving your rights to a domain name. But you may be surprised to learn that it’s often difficult to register trademarks that use a family name, because the USPTO often considers family names to be weak trademarks—that is, a family name that is perceived primarily as a person’s name is descriptive (weak) and can’t be registered. The owners cannot stop others from using a similar mark without proof of secondary meaning.
Learn more about filing a trademark application for your blog.
Learn more about searching for competing trademarks.