Facts and Myths About Trademarks
By J. Nevin Shaffer, Jr.
Do you know anything about trademarks? What they are? What they are not? Here are some Facts and Myths for businesses to consider.
Fact: You have trademarks! If you are in business, you sell something, either goods or services. The words, symbols and slogans you use to identify and distinguish what you sell from all other similar goods or services are your trademarks!
Myth: Incorporating my company name is the same as trademarking my name. The process of obtaining a corporate name involves questions of selecting a name that is acceptable to the government. That sounds like trademark selection, doesn’t it? It is not. You are dealing with a totally different bureaucrat. This bureaucrat’s purpose is to make sure they get the tax bill to the right company!
Myth: I can always use my own name as a trademark. Wrong. Trademark rights are first come first served and the first person to obtain a federal registration for a particular name for a particular type of good or service has the right to prevent the same or confusingly similar name from being used thereafter for the same or similar things. So, if your name is McDonald, forget using it as a brand for your restaurant. If it is Dell, computer businesses are right out. Same with “Mike” for tennis shoes.
Myth: A good trademark describes exactly what you are selling. Wrong. We sometimes have complete conversations with people in which we say nothing but brand names. “I drove my HONDA to SEARS, bought a pair of NIKEs, and had a BIG MAC and a COKE.” There is nothing wrong with people using brands descriptively but a trademark will not be registerable if it is just descriptive of the thing being sold. APPLE for fruit is NOT registerable while APPLE for computers was perfectly registerable.
Myth: Brands become descriptive when the public uses them descriptively. Wrong. Because people use brands generically, they often believe the mark must in fact be generic. Not true. If you use KLEENEX generically to mean tissue that is OK in general conversations. However, if you use it at a drug store, they must give you KLEENEX brand tissues if they have them. This accounts for the discussion at the drive through when you say give me a “coke”, meaning soda pop, and they say “Will PEPSI do?” The only way a mark becomes generic is if the owner of the mark uses it descriptively. This is what happened to the previously registered brands: ASPIRIN, LINOLEUM, DRY ICE and ESCALATOR.
Fact: A trademark is a short cut people use to give you their money.
Fact: A federally registered mark prevents others from using the same or similar mark for the same or similar things.
Fact: A federally registered trademark lasts forever.
BOTTOM LINE: The Fact is that a federally registered trademark, your short cut to other people’s money, is a very valuable business asset. In order to get and keep one that you can register, be sure you know the Facts and Myths of Trademarks!
About the Author
Nevin is a licensed patent attorney and has been practicing Intellectual Property law for 25 years. You may contact Nevin at his Gulf Breeze office in the Harbourtown complex, Suite 43, or by phone or email at 850-934-4124 and nevin@jnevinshaffer.com. You can also get information about Nevin and his practice at his website at www.nevinshaffer.com. Nevin is a professional speaker as well. If your organization would like to have him speak about these topics, please contact him! Note: Nevin speaks in plain English and not in unintelligible lawyer gibberish!
© Copyright 2006 JNSJrPA. The material in this article is provided for general informational purposes only and should not be considered a legal opinion nor relied upon in lieu of specific legal advice. Accordingly, readers who require legal services in connection with their specific circumstances should consult an attorney competent in the field of intellectual property.
