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
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
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
firstname.lastname@example.org. 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.