September 2007 Scene Magazine Article: TM Myths

OOPS!  I forgot to post this earlier this month…

Trademark Myths
© 2007 Kevin E. Houchin

There’s a lot of misinformation floating around the business world about trademarks. Smart business people are waking up to the fact that this area of LAW is critical to successful BRANDING, which as we all know is the foundation of sales, revenue, and ultimate business success or failure. It doesn’t matter if you are selling widgets, houses, luxury cars, guitars, or brooms – your brand is one of your biggest assets, and trademark law is the protective mote around your brand. Here are top mistaken assumptions business people tend to make about trademarks.

10. I changed a letter and got the domain name, so I’m OK.

Wrong! The test for trademark infringement is not if a letter or word is different. It’s whether or not consumers would be confused as to the source of the goods and services.

9. Someone else is already using the name, but they haven’t filed a registration, so if I file first, I’ll be OK.
Wrong! The tests for trademark infringement isn’t who registered first, it’s who used the trademark in commerce first.

8. Just using the “TM” symbol gives me all the protection I need.
Wrong! While it’s smart to use the “TM” symbol next to anything you want to claim as an indicator that your company is the source of the goods and services, just using the “TM” will not give a generic or merely descriptive trademark any protection unless you can prove the trademark has achieved what’s called “secondary meaning” in your marketplace.

7. I can use my competitor’s brand in my Google Adwords buy without any problems.
Wrong! Just because Google doesn’t check for trademark infringement and will let you place the ad doesn’t mean your competitor won’t be ready to slap you with an infringement suit if you use their name as a keyword to distract consumers from their site and lead them to yours.

6. I own the domain name, so I can stop anyone else from using something similar.
Wrong! Even if you got there first to register a domain name, the test is who USES the mark first. Sitting on a domain name doesn’t count. Launching a Web site that includes the name for a product, but not actually selling the product, doesn’t count. You have to use the name appropriately to get protection, which means if you’re offering a product, the name has to be on the actual product. If you’re offering a service, then a Web page is usually good enough.

5. I filed the LLC papers with the Secretary of State on this name, so I’ll be OK.
Wrong! Filing your name with the Secretary of State is basically the same as getting the domain name.  Their test is just if the string of letters is different. Again, trademark infringement is about consumer confusion, which is a much more difficult standard than just changing a letter or two.

4. As long as I’ve used my product or company name in commerce, nobody else can use it for anything.

Wrong! You could have a great trademark for a marketing firm, but I could potentially use that name for my line of clothing – as long as we’re marketing to different people and my customers wouldn’t be confused about whether you are the source, sponsor, or are otherwise affiliated with my products. Again, it’s about consumer confusion, and that’s sometimes hard to define.

3. I paid the $50 to register my trademark with the secretary of state, so I’m covered.
Wrong! You’re probably covered in Colorado (or whatever state), but that does nothing for your business with people in any other state. State-specific trademark filing is practically a relic from the pre-internet days when it took more than just launching a Web site to have an interstate or international business presence.

2. I’ve invested a lot of money in this name, logo,  stationery, and marketing materials, they can’t just make me toss it all and start over.
Wrong! This is exactly what a prior user can make you do, and make you pay damages and/or profits on top of that. It’s just this risk that makes investing a branding strategy that doesn’t include a trademark plan such a dumb move.

1. I have the domain name and I use the “TM” on my stuff, so it’s not worth the expense to register my trademark.
Wrong! Having the domain name is a good indicator these days that you’re the first user of the mark, and using the TM is very effective at putting potential infringers on notice that you’re claiming the mark as an indicator of source for your goods or services. However, in today’s competitive market place, registering the trademark with the United States Patent and Trademark Office is in most cases worth the expense if you think you will ever need to enforce your rights. The power of the registration will both increase the chance of a quick resolution, and lower the litigation costs of an infringement suit.

Kevin E. Houchin is principal of Houchin & Associates, PLLC – a copyright, trademark, arts & entertainment, business development, and branding firm located in Fort Collins, Colorado. To contact Kevin, call 970-493-1070 or email kevin.houchin@houchinlaw.com.






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