Trademarks 101

What are trademarks?

Trademarks are a word or words, an image, or other similar marking that identify the source of a product or service.  Historically, trademarks were used in various aspects of commerce, including marking goods that were shipped so that, in the event of a shipwreck, the owner of the goods could claim them instead of the goods escheating to the crown.  In the age of guilds, individual craftsmen would have a mark they would apply to goods they individually made so that the guild would be able to trace a product back to its individual maker in the event that the good did not meet the standards of the guild.  Trademarks have even been found on ancient goods in the Roman empire.[1]  Marks have been around for a long time and serve an important purpose.

Today, there are numerous trademarks that are almost universally recognized: Coke, Pepsi, McDonald’s, Cisco, IBM, HP, Ford, Facebook.[2]  All of these words signify a particular maker of a product or service – Coke and Pepsi represent their respective soft drink products; McDonald’s represents a certain brand of fast food (as distinguishable from Checker’s, Red Robin, Wendy’s, Burger King, and many others); Cisco, IBM, and HP are all respective computer and software makers; Ford for cars; Facebook for a web site that introduced the world to social media.

Why should I register a mark?

Intellectual Property, of which trademarks are one kind, presents specific challenges for those that want to own and protect it from use by others.  Unlike physical property, which you can touch (and potentially can protect by a lock, fence, or gate), intellectual property is intangible.  As a result, securing IP requires a different action to protect it from infringement or dilution by others.  Prosecuting and securing a registration is an important way to mark out the boundaries of your intellectual property.  The research required prior to registration of a mark helps a prospective trademark owner determine if a proposed mark is already in use, and if so, for what product or service.

This research is important to help a prospective trademark owner from using a mark that infringes on someone else’s intellectual property, thereby avoiding unnecessary litigation.  In addition, a “cleared” mark is more likely to be distinctive as a brand for its associated product or service, which of course is the whole point of having a brand name in the first place – to distinguish your product in the market place.

Registration of a trademark that is in use in commerce also helps a mark owner to protect that mark from use by others without authorization, as the registration itself represents constructive notice to a would be mark user to not use the mark.[3]  In addition, a mark registration helps simplify a trademark owner’s infringement law suit against unlicensed users, as a registered mark carries with it the presumption of validity as to the mark (and five years after registration, the registration itself becomes conclusive evidence of ownership as to the registered mark).[4]  Moreover, registration provides an owner with more remedies than an unregistered mark owner under federal law.[5]

So while registration is not mandatory, there are strong incentives for a trademark owner to register his mark, particularly if you plan to be in business for the longer term with a particular product or service.

In addition, a substantial portion of the value of businesses today comes from a business’ intellectual property, including the brand names used to distinguish its products and services in the market.  In fact, as we move further into an “information economy,” I would conservatively estimate that a majority of a business’ value comes from its intellectual property.  Identifying and protecting a brand name is a key step in the business planning process for any business.  Also, because of the widespread adoption and use of the internet globally, protecting one’s brand name from infringement is more important than it ever has been for business.