The Business of Creativity

Houchin Consulting PLLC



From Legal Information Institute: “Trademarks are generally distinctive symbols, pictures, or words that sellers affix to distinguish and identify the origin of their products. Trademark status may also be granted to distinctive and unique packaging, color combinations, building designs, product styles, and overall presentations. It is also possible to receive trademark status for identification that is not on its face distinct or unique but which has developed a secondary meaning over time that identifies it with the product or seller. The owner of a trademark has exclusive right to use it on the product it was intended to identify and often on related products. Service-marks receive the same legal protection as trademarks but are meant to distinguish services rather than products.”

What’s In a Name?

Answer: a great deal – your reputation.

Trademark law is about marketing. It’s about protecting the good will people feel toward your institution – essentially it’s about protecting your reputation, otherwise known as the “good will” of your business.

Trademark law is designed to eliminate consumer confusion about who is offering or even endorsing a particular product or service. You don’t want your logo or name showing up on a product or service that tarnishes your reputation or image in the marketplace and trademark law is the club you use to prevent that kind of activity.

Marks used to distinguish tangible products (such as a logo sweatshirt in your bookstore) are called “Trademarks” and should be identified with the TM symbol. Marks used to distinguish services (such as your tag-line on your Web site) are called “service marks” and should be identified with the SM symbol.

When a servicemark or trademark has been federally “registered” with the United States Patent and Trademark Office it can be identified with the “circle R” ® symbol whether it is used to identify a product or a service.

Trademark v. Copyright

Sometimes these terms get used interchangeably by the general public, but these two areas of law protect different forms of creativity. Copyright protects all creative expression except for slogans, names, titles, and short phrases. These very things ARE protected by trademark as expressions used to identify and distinguish a product or service in the marketplace. To qualify as a trademark, the item at issue (name, logo, etc.) must meet some minimum levels of distinctiveness. Distinctiveness analysis is beyond the scope of this article and is a good topic to discuss with an attorney experienced in trademark law.

What should you protect?

Your institution’s name (just the plain old name)

Your institution’s word-mark (the name used in your specific typographic treatment(s))

Your institutional logo(s)

Your tagline(s)

Your internet domain name

Anything that distinguishes you in the market and indicates your institution a source of specific products and services.

How do you get Trademark protection?

Trademark protection attaches simply by using the trademarkable name, logo, slogan, in commerce.

You don’t have to use the TM or SM to establish protection, however, using these symbols puts potential infringers on notice that you consider these marks your property and that you will be likely to protect that property interest.

Use in interstate commerce gets you into federal court for infringement actions.

Many people think the use of the TM or SM next to a mark is a “temporary” solution. If you are in the process of registering your mark with the USPTO, then the TM or SM will be replaced by the ® upon registration and are temporary. However, it’s more accurate to refer to the TM and SM marks as protecting UNREGISTERED marks. The TM and SM symbols can be used permanently.

What does trademark protection get you?

The right to stop others from using your mark on confusingly similar goods or services without your approval.

The potential to get money damages from infringers.

Why Register your mark?

Registration of your mark with the USPTO gives you a presumption of ownership in the mark which makes it easier for you to enforce your rights in court should the need arise.

The relatively low registration fee and legal hassle is easily paid for by the savings this presumption generates in any eventual litigation for trademark infringement.

When should you call an Attorney?

  • While the majority of enterprises can secure a trademark registration without the assistance of an attorney, it would be wise to consult an attorney in the following situations:
  • When you are creating a new trademark and need a distinctiveness analysis to see how strong the trademark protection will be. Not all marks are created equal – some are legally stronger than others – some are not protectable at all.
  • If the mark you want to register is something unusual (a color, sound, or scent, for example).
  • If the USPTO rejects your application for registration.
  • When you need to enforce your trademark rights against an alleged infringer.
  • When you want to create a licensing program to allow third parties to use your mark for a fee.
  • When you have been accused of infringing someone else’s trademark.
  • When you want to protect your trademark rights internationally.
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