Forums: Discussions for entrepreneurs and small business.

Trademark selection – avoid functionality

 

Trademarks can offer a huge advantage over patents in that properly used trademarks do not expire, while all patents [and copyrights] do.  Some people try to use this difference to their advantage and register trademarks that look like their products.  If this is taken too far, it can backfire and lead to an invalid trademark. 

 

If a product’s design is functional, that design cannot serve as a trademark.  Trademark law, which seeks to promote competition by protecting a firm’s reputation, can not be used to inhibiting legitimate competition by allowing a producer to control a useful product feature with a trademark.  That is the province of patent law.

 

Food for thought:  if you are going to employ some sort of logo or design for your goods or services to serve as a mark that identifies your company as the source of those goods or services, make sure the logo or design does not look too much like the goods or services. 

 

Even if the USPTO allows the logo or design to be registered, it might eventually be declared invalid in court.  This could leave you scrambling to come up with a new trademark to use instead of the one that was declared invalid.  Also, you might not be able to exclude others from using it to display their goods or services.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

James,

I am glad that I saw your post because I have some questions about trademarks.  I read on the LegalZoom website that it could take up to a year or more for a trademark to be registered.  I have a product that will be ready to go on the market in about two months and if I don`t have a trademark on it what do I do?  Can I go ahead and put a "TM" behind the logo while I wait for the trademark to be filed?  I also found on the govt site for tradmarks and patents that someone else is using this name as well.  Does this mean that I could be sued if I use it? 

a seller of goods can use the `tm` designation without filing any type of application.  yes, infringement is also based on priority - who used it first.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

There are more factors to consider.  In addition to who used it first, the two users of similar marks must be providing the same or similar goods or services. 

I had a client recently who used Legal Zoom to file a trademark application.  In my opinion they did nothing that she could not have done herself and they provided no actual assistance.  I told her to get her money back. 

If you want to file a Federal trademark application yourself, which I do not advise, log onto the trademark office website and go through the steps to do an electronic filing.  At best your application will be allowed and mature into a registration.  At worst you will get an Office Action and at that point you can hire a lawyer to help you respond.

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Norton R. Townsley
Patent Attorney/Professional Engineer
The above message is provided for general information purposes only and is not to be construed as legal advice.

The problem with filing it first then asking a lawyer to fix the mistakes is that some mistakes can`t be fixed.  For example, you can`t fix a mark that was wrongly identified and you can`t broaden the identification of goods.  I am truly surprised at how many people will try to save a few bucks on their most valuable business asset - their goodwill as expressed in a trademark.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com