It’s the moment many of you have been waiting for. Today, we’re diving into the fascinating world of trademark law.

This post is about basic trademark principles. For some of you over-achievers, this will be review. Regardless, I think this primer is necessary before we can really tear into the subject with ferocity. And we will. Oh yes, we will.

But first we're going to start at the beginning and answer the following important questions:

    ⇒ What is trademark law?
            → Product marks versus service marks
    ⇒ Where does trademark law come from?
    ⇒ Isn’t trademark the same thing as copyright?
    ⇒ Do I have any trademarks? How do I get some?
            → Be first in your market
            → Be distinctive
    ⇒Trademark law's guiding principle: don't confuse the consumer
    ⇒ Limitations on trademark rights
            → Trademark does not protect disparaging or lewd marks
            → Trademark holders do not “own” the words, logos, or slogans themselves
            → Parodies of trademarks are permissible
            → Non-commercial uses are permissible
            → News reporting and product comparisons are permissible
    ⇒ Caution! The very famous marks exception!
    ⇒ Should I register my trademarks?

This is the part of the post where I remind everyone that this post is not legal advice and I am not your attorney. If you have a trademark issue, you should consult a qualified attorney to give you custom-tailored advice.

Okay. I can’t wait any longer. Let’s talk trademark.

⇒ What is trademark law?

A trademark is any word, sound, symbol, slogan, or design that serves to identify a specific product or service brand.

Trademark law is a type of intellectual property, like copyright or patent. Because it was developed to protect businesses, trademark law does not protect your non-commercial, personal sites or projects. You don't have any trademarks for your non-commercial, personal projects.

            → Product Marks versus Service Marks

In your independent research, you may read about "product marks" and "service marks." For our purposes, they are the same thing. The only difference is that "product marks" identify specific products whereas "service marks" identify services. It's not rocket science, but I don't want anyone to have a panic attack when they read about these things on other sites.

For example, the rainbow apple with a bite chunk missing is a product mark for Apple, Inc. The red placard with white letters spelling “Wendy’s” and a drawing of a pasty white girl with red pigtails is a product mark of the fast food restaurant, Wendy's. The color brown with a gold crest containing the capital letters UPS is a service brand for United Postal Service.

You’re all accomplished marketers. You get the picture.

⇒ Where does trademark law come from?

Both federal and state governments craft U.S. trademark laws. There are also several international treaties and organizations governing international trademarks. [See Registration, below, for some helpful links]

Federal and international laws are quickly supplanting state regulations now that so much commerce is national, if not international in scope. Regardless, if you get yourself in a spot of legal trouble regarding U.S. trademark issues, your attorney should consult relevant state laws in case there is a state law remedy or claim that may help your case.

⇒ Isn’t trademark the same thing as copyright?

Trademark is not the same thing as copyright. They have similarities and differences that lead people to frequently  confuse the two. Both trademark and copyright are legal regimes that protect intellectual property. However, copyright protects your creative content (written words and graphics) from illegal unauthorized use.

Trademark, on the other hand, protects all of the little things that comprise your brand, including your product name, your logo, your slogans, your domain name, and your product dress. (In this context, “dress” can include packaging and website designs.) When you think "trademark," you should think "I'm branding my content." When you think "copyright," you should think "my content is my product."

⇒ Do I have any trademarks? How do I get some?

If you're brand savvy, and most of you probably are, then you may already own some trademarks. In order to trademark an element of your brand, such as your business name, slogan, product dress, you need to (1) be the first in your market to use the mark, and (2) make sure the mark is distinctive. Let's take a closer look at these two necessary elements of a protectable trademark.

            → BE FIRST IN YOUR MARKET

Trademark operates on a finders-keepers basis. If you use a distinctive mark first, you own it. No registration is necessary. An unregistered trademark is often called “common law trademark.”

You do not have to be the first person in the whole world to use the trademark, but you do have to be the first in your market. Your "market" is limited by the service and products you offer, as well the geographic area you serve.

For example, let's assume you operate a search marketing firm for businesses in the United States. Let's also assume that you are using a green star as your logo. In order to rightfully claim the logo as your trademark, you need to be the first search marketer in the U.S. to use the mark. You can't prevent other kinds of businesses in the U.S. from using a green star. For example, a laundry detergent manufacturer could use the green star as a logo and there is nothing you could do about it. Also, a search marketing firm in China could use green star as its logo even though it is in the same industry because it is outside of your geographic market area. [Note: this hypothetical assumes that you did not internationally register your logo.]

Here's a real life example: Delta Airlines and Delta Faucets are both legal and non-infringing trademarks because they are separate industries with separate markets. The airline can’t prevent the faucet company from using “Delta” and vice versa.

Being the first to use the mark in your market is only one of two requirements necessary for a protectable trademark. The mark must also be sufficiently distinctive in order for it to qualify for trademark protection.

            → BE DISTINCTIVE

In order for your mark to be a protected trademark, it must be distinctive. Generally, either a mark is "inherently distinctive" or it "acquires distinction over time." So long as your mark ends up distinctive, it doesn't matter which way you get there. Let's look at each method more closely.

1. The mark can be inherently distinctive. This means that the mark is so unique, a customer would recognize it immediately. It also means that your mark is not purely descriptive. It must do more than accurately identify the kind of product/service it is branding. It’s very difficult and probably impossible to trademark a name or slogan that is purely descriptive of your product.

For example, branding your SEO services “Best SEO” creates a purely descriptive mark. You are merely describing what you do. You can't trademark "Best SEO." It is descriptive and not distinctive.

In contrast, good luck charms have nothing to do with breakfast and were a good choice for General Mills to brand its Lucky Charms cereal.  And while “American Search Engine Optimization” is probably not trademarkable,  SEOmoz [what the schmee does SEOmoz mean?!] has trademark written all over it.

[Note the difficult business decision: Do you choose a name that is distinctive and can be trademarked? Or do you choose a name that describes what you’re selling and can more quickly grab the attention of consumers looking for products like yours?]

2. Alternatively, the mark can acquire distinctiveness through continued use over time. If your marketing and branding campaign is sustained and pervasive enough that your business become synonymous with an otherwise unremarkable [ha ha. It’s a play on words!] mark, it qualifies as a protectable trademark.

I think one of the best examples of "acquired distinctiveness" is UPS’s success in trademarking the color brown. I mean, it’s a color. How can someone own certain rights to a color? Well, you can if you persist long enough (since 1929, in this case) and your business becomes synonymous with the color (“What can brown do for you?”).

Don’t flip out. Take a deep breath. This does not mean that we are all forbidden from using the color brown. But it does mean that FedEx better steer clear of that particular shade of UPS brown!

The more distinctive your mark is, the easier it is to convince a court to stop others from using it. Think of trademark protection as a continuum. There are weak marks and there are strong marks and everything in between. “Strong” marks are distinctive marks. The stronger your mark, the stronger the protection.

In sum, if you are the first in your market to use the mark and your mark is distinctive, then it is your trademark and you have limited abilities to control its use.

⇒ Trademark Law's Guiding Principle: DON'T CONFUSE THE CONSUMER

Burn this principle of trademark law into your brain: trademark law is intended to prevent customer confusion.

Thus, if one of your marks (e.g., domain name, product name, logos, slogans, etc.) is too similar to a competitor, it may lead to customer confusion and may not be eligible for trademark protection. Alternatively, if your mark is too boring or descriptive, consumers won’t be able to tell your product from something else and you can’t trademark that. The prevention of consumer confusion is the founding principle of trademark law. From this guiding principle, all else flows. Zen.

Whenever you are confronted with a trademark issue, it's a good idea to ask whether the questionable conduct may lead to customer confusion. The courts are definitely going to ask that question.

⇒ Limitations on Trademark Rights

If you were the first to use a distinctive mark, you have the limited ability to prevent other people from using that mark. You only have "limited" ability because you can prevent other people from using it in order to prevent consumers from getting confused. But there are competing interests (for example, free speech). Thus, there are some limitations on your trademark rights. They are not absolute. Let's take a closer look:

        → Trademark law does not protect disparaging or lewd marks

That’s right. You can’t trademark “MySpaceSucks.” It’s disparaging and the trademark office doesn’t want to get in the middle of fights. Note: You can still register MySpaceSucks.com as a domain name, but you can’t claim any trademark rights to it. You also can’t establish trademark rights to lewd names, slogans, or logos. I’m sure I don’t have to give you examples here. Use your imagination.

Also, if someone is saying bad things about your products, it is not a trademark violation. It may be other things, such as libel, etc., but that is beyond the scope of this post.

        → Trademark holders do not “own” the words, logos, or slogans themselves

They only own the right to use them in connection with commerce in the relevant industry. Thus, UPS doesn't own the color brown; it just owns the right to use it in connection with commerce in its industry.

        → Parodies of trademarks are permissible

Parody is a legal defense to claims of dilution and infringement. Yay! Viva free speech! Viva satire!
 
        → Non-commercial uses are permissible

Trademark protects businesses. If a trademark is being used in a truly non-commercial context, there is no infringement.

        → News reporting and product comparisons are permissible

Some businesses have a defense to infringement claims, namely, journalists and product reviewers.
 
⇒ Caution: The Very Famous Mark Exception!

Okay. Everything I have told you thus far is subject to this very important exception. Thus, I hope people have kept reading. Remember how I said a minute ago that the most important thing is customer confusion? Well, I sort of lied because that is not true for very famous marks.

For some reason, if your mark is very famous, you get extra protection. You don't have to prove that someone else's use of a similar mark confuses customers. You only have to show that either (1) the other person is 'diluting' your brand, or (2) the other person is 'tarnishing' your brand. "Dilution" means that the secondary trademark holder lessens the ability of the primary trademark holder to distinguish her goods and services. "Tarnishment" occurs when the secondary holder negatively impacts the primary holder's reputation, usually in an unsavory way.

My favorite tarnishment case is the one where Hasbro sued an adult entertainment company that was running the website candyland.com. Obviously, this wasn't a customer confusion issue. Men were not stumbling around the site searching for their favorite children's game. Instead, this was a case of tarnishment. The site negatively impacted Hasbro's brand reputation.

Do not under any circumstances use a very famous mark, even if your products and markets are very different. In other words, do not sell Google Truffles or Microsoft Aquariums. Even though the products and markets are very different, super famous trademarks get extra protection under the law. Microsoft doesn’t have to prove confusion to force you to stop using “Microsoft” as the trademark for your aquarium business. They are so big that they can just accuse you of "dilution." If you want to know more about dilution and tarnishment, the law is codified in 15 U.S.C. 1125(c).

⇒ Should I register my trademarks?

Even though trademark rights are somewhat 'automatic,' there are many good reasons to go through the trouble of registering your trademarks. The pros, cons, and how-tos of registration deserve their own post. Suffice it to say that registration increases your chances of winning any disputes that develop and entitles you to greater monetary awards if you win. Thus, anyone serious about his or her business should consider registration on the national level, and perhaps the international level too.

        → Links for National Trademark Registration:

If you can’t wait until my post on registration, you should acquaint yourself with the United States Patent and Trademark Office (“USPTMO”) for further information about registering trademarks in the U.S. For my U.K. friends, check out the UK Intellectual Property Office. The standards for registration are pretty similar to U.S. standards. My Australian friends can consult the Australian government intellectual property office.  And my dear Canadians (viva Vancouver!)  should consult the Canadian Intellectual Property Rights Office (“CIPO”).

        → Links for International Trademark Registration:

If you’re considering registering your trademarks internationally, check out both the Office for Harmonization In the Internal Market and the World Intellectual Property Organization’s sites for information to get you started.

Conclusions

Thank you for reading this very lengthy post. I know that trademark is not universally considered sexy material. More's the pity. For those of us in business, we must protect trademarks. This has never been more true as the global market becomes reality through the promise of the internet.

Now that you’ve worked hard to develop your brand, learn how to protect it. We’ve only scratched the surface today.

I also regret to inform you that I will be out of the country for the next several weeks. Thus, Legal Mondays will be on a temporary hiatus until after SMX West. I will be speaking at SMX West's Legal Developments session on the 26th and would love to meet as many mozzers as possible. Please come up and introduce yourself. You guys make my job possible and I'd like to thank you in person.

As always, please let me know your thoughts and feedback.

Very truly yours,

Sarah

P.S. Future trademark posts include the following:

• The Ying and Yang of Domain Name Disputes: How to Handle Cybersquatters; How to Respond to Accusations of Cybersquatting
• Trademark Registration: Why Should I Bother and How Can I Do It?
• ACPA or UDRP? What are the advantages and disadvantages of the Uniform Domain Name Dispute Resolution Policy versus the Anti-Cybersquatting Consumer Protection Act?
• Creative Use of Keywords and Broad Matching: Trademark Violation or Smart SEM?
• How Screwed Am I? Another Business Has the Same Name As My Business