Patent Attorney and Founder
Maybe you recognize this; yeah, it’s our logo. It’s a collection of colors, angles, and black lines. What kind of mark is this, though? [Music]
Well, my name is J.D. Houvener, a registered USPTO patent attorney, and Managing Partner here at Bold Patents law firm. Today I wanted to dive in and help you better understand how to trademark a name, a logo, and keep your business brand protected.
Before we get started, I want to note the time stamps below so if you want to jump ahead in the video and you’re short on time, you can do that right now. So here, let’s get to the basics of trademarks.
Trademarks are all about product source, identifying where things come from. It’s that simple – goods or services. It’s about finding out who indeed is actually making that product and reducing confusion in the marketplace. You only now have one name for one particular classification so that when we go and buy a product off the shelf, we know that quality. We can kind of sense as to who made it and be able to barter and negotiate for that particular item.
Now, I want to make a quick note here. I was super impressed when I took a look at the USPTO.gov website for trademarks; flat out blown away. I’m not gonna say I’m the expert; these guys have got it nailed. So, to supplement this video, I want you to go online to the USPTO.gov. They’ve got some great videos, tutorials, and written explanations.
Types of trademarks, okay. There are three major types: word marks, design marks, and certification marks. Word marks are the standard, right? Word marks represent English characters, what the brand is you’re protecting. Without stylization, without color or form, words will give you the broadest protection for your brand. This is cool because trademarks on the federal level will give you protections not just for that word. Let’s say “Bold IP,” but any sound-alikes or mixing up of words. So, someone wanted to start a law firm in England for property called “Boldly IP,” that’s still likely to infringe on our trademark.
Design marks are another term for logos; we hear logos all the time. The true technical term is design marks. Now, design is a wonderful idea in that even though you may see the beautiful curving letters of Coca-Cola, right? The cans before that’s actually a design mark. Certainly, they also have the word mark to go with it. They’ve got both. The design mark will actually protect just the ornamental appearance. It’s really to treat it more like a work of art as opposed to the letters that it’s spelling out. So, it’s specific angles, and it’s the color. On our logo I showed earlier, the colors are pink and green, and the black lines outlining it. Those are a collection of colors. Then they just happen to form letters. So, keep in mind that you’ve got word marks and design marks.
The last ones are called certification marks, absolutely rare, but you’ve seen some of these, right? Organic, Fairtrade – some of these certification organizations have different distinctions.
So, let’s come to the next subject, which is common law trademark. Law is wonderful in that you have rights on your business, your brand immediately as soon as you start using it. Gotta admit, though, it’s somewhat limiting. You’re only gonna be able to get common law rights for the geographic scope in which you’re doing business. A classic story from law school is the original Burger King located in the little town in Iowa started in the 1930s. They were the first to use the word “Burger King.” They could only prove that they were able to serve customers in a 50-mile radius. The Burger King we all know today has to respect that, and they’re not allowed to enter into that halo of 50 miles in that little town in Iowa. What if that Burger King had registered federally? They would have had that name locked down nationwide.
So, let’s talk about state versus federal trademarks. State trademarks really are only for those businesses that only ever plan to stay local. There’s plenty of types of businesses that are just like that and really never anticipate having customers out of state. Laundromats sometimes, institutes like restaurants in small-town bakeries. These are types of companies that sure definitely should need to make sure they have trademark protection, but they don’t need federal protection.
Now, if you’re conducting business online, you’re gonna need federal, right? That is a no-doubt need for you. There are three requirements to get the trademark. One, it’s got to be distinctive. It’s got to be the only term or use in the market in your class. You have to prove that you’re selling. The trademark office doesn’t give out names; you can’t register a name if you’re not doing business. They want to incentivize the stream of commerce. It must be source-identifying. There’s different strengths to different marks. If you’re selling, let’s say, water bottles and you’re calling your company “Water Bottle,” that’s not gonna be able to get trademark protection because you’re merely describing what the product is. On the flip side, one of the most strong brands we probably all have heard about is Apple. What’s funny is that company doesn’t even come close to selling fruit. They’re selling computers. So, “Apple” is actually a super strong trademark when it’s an arbitrary term for that specific business. And then the strongest type of trademarks are those brands that are building recognition around a made-up word. Xerox is one of the most famous examples. Xerox is a company that we all know. In fact, it almost became generic for making a Xerox or a copy. That is a fanciful term, and it’s the strongest trademark.
So, last but not least, I want to make sure you’re clear on when to put TM or when to put R on your products. Because of common law rights, you should be using TM whenever you want to signify and put people on notice that you’re using a trademark. You use the circle R after you’ve gone through federal trademark registration.
Quick summary, I want to make sure you understand that we do have trademark basics. You understand the product source; there’s no confusion in the market. Please visit the USPTO. Know the difference between word marks, design marks, and certification marks. Covered common-law rights, state versus federal. We know the three requirements of getting a trademark: distinctive, use in commerce, and source-identifying. You also now know that you should be putting TM on your products right now and using the circle R when you get that registration. Last but not least, I want to make sure you’re clear. Get this free copy today; this is the patent book that’ll help you walk through the difference between trademarks and patents and when you need to move your product to the market. Visit boldip.com/free to get your free digital PDF download today.