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Everybody Forgets about the Trademark
By Gene R. Woodle, Registered Patent Attorney, 36,973
Copyright 2005, Gene R. Woodle
This is a true story. Well, not exactly true. I’ve had thee excited calls in the last two weeks from people who were in serious trouble because they didn’t realize how important trademarks can be. This story is a combination of their three stories with names changed for anonymity.
Erlenmyer loved to make sausage. He used his grandma’s recipe from the old country. Every year he treated friends and family to a feast of his sausages cooked on the grill on the Fourth of July. One of Erlenmyer’s friends owned a breakfast restaurant and he convinced Erlenmyer to make sausages he could serve as a special treat for his customers. They loved them. In no time Erlenmyer’s daughter had a regular route delivering sausages to three or four grocery stores and a dozen restaurants.
Erlenmyer began to label his sausages with “Buffalo Jump” just because he liked the name. Within four years the Erlenmyer Sausage Factory became something of a force in the regional food business and sold thousands of Buffalo Jump sausages. Erlenmyer’s daughter designed a logo and had five thousand Buffalo Jump sausage t-shirts made up. She sold all of them in two months.
Things were going very well for the Erlenmyers. There were articles in the local paper and TV interviews. For whatever reason, Buffalo Jump really caught on.
Then Erlenmyer got a nasty letter from a lawyer in Santa Fe. A small company in New Mexico had been making Buffalo Jump beef jerky for many years. Because they were going to open factories in Nebraska and Oregon, they decided to register Buffalo Jump as a trademark with the Patent and Trademark Office. The Erlenmyers could no longer use the name Buffalo Jump for their sausages.
The sausages were just as good as they had ever been, but for some reason nobody would buy Squeaky Clean Intestine sausages. The Erlenmyers were out of business in four months.
The Erlenmyers and just about everyone else who starts a business didn’t spend enough time and effort on their trademark. It cost the sausage king dearly.
Here are some things to think about if you don’t want the same thing to happen to you.
A trademark can be any word, phrase, design, slogan, or symbol that identifies a specific product brand. The courts also recognize a fairly nebulous concept known as “trade dress” which is a product’s (or even a room’s) total image and overall appearance. Even a short slogan such as “This Bud’s for you” may become a trademark. However, most written material, including advertising copy, must be protected under copyright laws rather than trademark laws.
Way before the United States existed, medieval guild masters put particular marks on their products to identify the maker. Ancient courts enforced rights in these early trademarks to protect the public and provide a commercial advantage for the owners. The public had a right to know that a product with a guild mark was actually made by the guild and not by another manufacturer improperly using that mark. The guild had the right to the financial advantage that flowed from people preferring to buy goods identified by the guild’s mark.
Now there are state and Federal laws that establish trademark rights and how to get them. It’s almost always better to go Federal which means the Patent and Trademark Office; because, to paraphrase Z Z Top “they’re nationwide.” There are still “common law” trademark rights that are part of the body of law relating to unfair competition, but most trademark issues are decided under Federal statutes referred to as the Lanham Act. The Lanham Act provides for registration of certain trademarks (labels for goods) and service marks (labels for services). One section of that statute, 15 USCA 1052, provides that a person can register a “…trademark by which the goods of the applicant may be distinguished from the goods of others…” This is universally recognized as a requirement that a trademark be distinctive.
Very early on in the process of planning a new business or product line, you should try to think up a catchy name or label for your product or service. A really solid trademark can be more valuable than a patent. Just ask Coke (that’s a registered trademark of the Coca-Cola company). While you’re at it, you may as well make the mark distinctive. You won’t be able to protect it either under common law, state law, or the Lanham Act if you don’t. We won’t worry about “secondary meaning” here. Look it up if you’re interested.
A descriptive mark isn’t distinctive. That is, words that just describe the product or service aren’t distinctive. We’ve all seen thousands of descriptive labels: Southside Liquors, Big Bang Fire Crackers, Two Leg Pants. Some of the best trademarks are brand new invented words: Blistex, Cellophane, and Kleenex. Fanciful names are also good: Unicorn Books, Penguin Lighters. Suggestive marks are considered distinctive because they suggest traits about the product rather than describing it. Ambassador Shoes might be a good trademark, because it suggests that distinguished people wear the shoes. However, Feather Light Shoes isn’t a good trademark, because it simply describes the shoes. Gazelle Delivery suggests quick delivery, but Speedy Delivery just describes the service.
Entrepreneurs often shy away from fanciful or suggestive trademarks; because they are afraid people won’t know what the product is without a descriptive trademark. Remember Buffalo Jump? It certainly doesn’t describe the sausage, but it became widely known and recognized as labeling a very tasty product. After a relatively short time, a lot of people bought the sausage because of the name and not because of the taste. Of course, if the taste starts to go downhill, the name won’t save the product.
After you think up a good trademark, check it out before you blow your advertising budget promoting the name or stamp it into seven thousand stainless steel widgets. Have a trademark search done on the mark or figure out how to do it yourself. If Erlenmyer had done a search on Buffalo Jump, he could have thought up a different, even better, trademark at the very beginning.
You should consider Federal registration of your trademark pretty early on. There are a number of quirks and somewhat esoteric requirements for registration. You probably won’t want to do it yourself, but it shouldn’t be particularly expensive to hire it done. At some point you’ll have to prove that your trademark was used in interstate commerce to register the mark Federally. You can also register your trademark with the state, but that is of limited value.
Here are a few other things to remember about trademarks:
1. Anybody can and probably should put the little TM above their mark as in AmbassadorTM Shoes. Do not put the little R inside the circle on your trademark unless it has been accepted for Federal registration. There are fairly severe penalties for using the registration symbol illegally.
2. Keep track of and document the first date your trademark was used anywhere and the first date it was used in interstate commerce. You should also keep some documentary evidence which can be used to prove those dates.
3. Remember that a trademark or service mark is a label that identifies a particular product or service. It most likely shouldn’t be the same as your business name. That is, Jensen Brothers Shoe Company, Inc. sells Ambassador Shoes. In some cases it’s not possible to separate the name of the business from the product. For instance, go ahead and register the name of your restaurant.
4. Always use your trademark as an adjective or adverb and never as a noun or a verb. For example, your ads should always refer to Ambassador Shoes and not just Ambassadors or Buffalo Jump Sausages and not just Buffalo Jumps. It probably won’t happen to you, but aspirin used to be a trademark, as in aspirin headache remedy. Aspirin became so widely known as the little white pill noun that it lost its character as a trademark.
5. Protect and enforce your rights in your trademark. You’ve probably heard stories about great big companies coming down on little guys that tried to use a trademark that was the same as or similar to the big company’s. They didn’t do it because they’re mean (probably), but because if they let other people use their mark they can lose their rights to the mark.
6. If you buy or sell a business in which a trademark has some real value, make sure that the rights to the trademark are dealt with appropriately.
7. If your register your trademark, there are a number of very important filings and dates to track. Don’t forget them.
When you’re starting your business or a new product or service line, put a paragraph about trademarks in your business plan. Your trademark might just become your most valuable asset. The wrong trademark or a mishandled trademark might just sink you.
This article was written by:
Gene Woodle
Woodle Law Office
3516 Woodle Place
Rapid City, SD 57702
605-342-0853
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