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Insight Trademark Is Not a Verb: Guidelines From a Trademark Lawyer

By Bradlee R. Frazer,

I bet I get one call or e-mail per day from a well-intentioned person seeking to “trademark” something. “Hey, Brad,” they will say, “I want to trademark my new logo. Can you help me with that?”

“Of course,” I reply, but as has become my new mantra, I first explain to them that trademark is not a verb. It is a noun. I will sometimes then go on to discuss common-law trademarks versus trademark registration, and the “®” symbol versus the small superscript “TM.” (“®” is used with trademarks that have been registered with the United States Patent and Trademark Office. “TM” is for those that have not.)

The true nature of trademarks is, admittedly, confusing, especially when they are so often confused with copyrights and patents—two completely different forms of intellectual property protection.

In a broad sense, “intellectual property,” as contrasted with real property (dirt) and personal property (cars and computers), has four main subgroups:

  1. Patents. Protects inventions and processes.
  2. Copyrights. Protects things such as books, movies, source code and photographs.
  3. Trade secrets. A valuable and secret device or technique used by a company in manufacturing its products.
  4. Trademarks. A broad category of intellectual property that performs a commercial identification function—they tell you about the source of the good or service you are consuming.

In the United States, common-law trademark rights accrue through “use in commerce,” a defined term that means using the trademark in connection with the goods or services such that a consumer would recognize you as the source of that good or service. For example, you know that a Big Mac hamburger comes from McDonald’s, that a shoe with a swoosh on it comes from Nike, and that insurance being sold by a gecko comes from GEICO. Big Mac, the swoosh and the gecko thus each function as a trademark. This is why “trademark” is a noun—it just arises as a function of use. You do not need to “trademark” anything. Confusion occurs because in the United States, while you may file an application with the United States Patent and Trademark Office to register a trademark, “use” and “registration” are distinct and different concepts. “Use” creates a common-law trademark; “registration” perfects and enhances your ability to protect and defend it. McDonald’s, Nike and GEICO have each registered their respective above-referenced marks.

Some of the advantages of federal registration include having better remedies against cybersquatters (those who register domain names that invoke your trademark without your permission and with no intention to lawfully use the domain) and making it easier to secure international trademark protection. If either of those outcomes is desirable to your business, you may wish to consider seeking federal registration of your marks instead of relying only on your common-law rights.

For more information about trademark issues or to contact a member of the Business Group, please click here or call 208.344.6000.

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