Entrepreneurs’ intellectual property rights: Trademarks more complicated than slapping on a ‘TM’ emoji

Editor’s note: The opinions expressed in this commentary — the second in a four-part series — are the author’s alone. Chris Brown is the founder of Venture Legal where he represents startups, freelancers, and small businesses. This column is intended to be general in detail and does not constitute legal advice.

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Understanding intellectual property law is about more than protecting yourself — but also how to avoid infringing the rights of others. We previously discussed copyright law; now we’ll cover trademarks, and in future posts, trade secrets and patents.

What is a trademark?

A trademark is any name, logo, slogan, or similar item that consumers can use to identify the source of a particular good or service. For example, when you buy a computer with an apple logo on it, you should be able to trust that it was created by Apple Inc. and not a counterfeiter.

What makes a good trademark? 

Some things (like generic words like “restaurant”) cannot serve as a trademark because they are too generic. You can, in theory, protect descriptive words like “Holiday Inn” but you should generally avoid descriptive words because they are harder to protect.

What you should aim for are words that are arbitrary, which have no underlying connection to the good or service you sell. For example, “Apple” in connection to computers.

How to conduct a trademark search?

Before using a mark (and certainly before applying for a trademark registration) it is best to conduct a trademark search. You should search common law sources like Google, Facebook, Trade Magazines, and the like, and also the database maintained by the United States Patent and Trademark Office. You can do all of this yourself, but it is smart to work with a trademark lawyer or search company because they can search alternate spellings, phonetic equivalents, and other items much faster and more thoroughly.

How to obtain trademark rights?

Technically speaking, you don’t have to obtain a registration to have trademark rights. Rather, the first person to use a mark on specific goods or services can claim it as a trademark. This is sometimes called a “common law” trademark (in the sense that you can ask a judge to enforce your trademark rights). When you are claiming common law rights, you can use the “TM” symbol on your mark to evidence your claim.

However, you should consider seeking a trademark registration with the USPTO. If you are successful, you can obtain stronger rights, including the exclusive right to use your trademark nationwide, and the right to use the ® symbol on your trademark. 

The online application process seems easy. However, it is often best to work with a trademark lawyer on your application because application mistakes can be costly, and take months or years to resolve.

If you are not already using your trademark, then you can file an “Intent to Use” application, which effectively holds your place in line. But in order to finalize the registration, you’ll eventually have to use the mark in commerce. 

What constitutes trademark infringement?

Trademark infringement occurs when someone uses another business’ trademark (or a similar mark) without authorization on similar goods or services. The mark doesn’t have to be identical to constitute infringement. Rather, all that is necessary is that the original trademark owner be able to show that the alleged infringer’s use of the similar mark is likely to cause confusion among customers.

In addition to enforcing your rights against infringers, it is important that you avoid infringing the trademark rights of others. To avoid that, make sure you conduct a good trademark search (see above).

What’s next?

Coming up: We’ll talk about trade secrets, and finally, patents.

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Chris Brown is the founder of Venture Legal where he represents startups, freelancers, and small businesses. He also co-founded Contract Canvas, a digital contract platform for freelancers. www.venturelegalkc.com // @CSBCounsel