Here is the second entry from my colleague, John Scruton, discussing aspects of trademark law that may be important to Kentucky business owners:
Trademarks 101: How Does My Company Acquire a Trademark?
Our previous installment discussed what a trademark is. This post discusses how you get one. Short answer: by using your mark on goods or in connection with providing services.
Trademarks are governed by both statutory law (law created by a legislature) and common law (law created by court decisions). Fortunately, in the case of trademark law the two are similar, since the federal trademark law – the Lanham Act – was intended to incorporate the common law with some new additions. The most notable difference is that the Lanham Act provides for a federal system of registration. We'll get to that in a later post, but soon.
Acquiring a trademark under common law is relatively simple: you select a mark and use it in connection with goods or services. From a legal standpoint, the main concern in selecting a mark is to choose one that is not so similar to another existing mark that it will cause confusion in the market. Preferably you choose one that is "strong," meaning that it will be protected not only against marks that are exactly the same as yours or almost exactly the same, but also against ones that are less similar but still could create confusion. There are obviously significant marketing concerns also, and often there is tension between what the lawyers consider a strong mark and what the marketers consider a good mark.
Once you have chosen your mark, you acquire rights by using it. How should you use the mark? In the case of goods, the mark must be on the goods in some manner, unless that is impractical. Common ways of using a mark on goods is on the goods themselves (stamped in or printed on the goods, for example), or on labels or tags, or on packaging. Even using the mark on printed materials that go with the goods, such as owner's manuals, can work. Catalogs and "point of sale" materials can also work, particularly for goods for which attaching the mark to the goods themselves is not practical, such as products sold in bulk.
In the case of services, the mark should be used on advertising or marketing materials that promote the services. In addition to straight advertising, examples include signs, menus, websites, concert programs, and any number of other things. Appropriate use will vary depending on the nature of the services, but as a general rule there should be at least some materials that both include the mark and some sort of reference to the services. And they have to be materials that the consumer will see.
Using a mark begins the process of building up trademark rights under both the common law and the Lanham Act. In most cases a company with only common law (meaning unregistered) rights would have a claim against an infringer under the Lanham Act. Still, there are good reasons why all but the most local businesses would want to get a federal registration for their mark (or marks). The benefits of registration will be the subject of the next Trademarks 101 post.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
