By Kathryn Pajak
My client, an Entrepreneur, had an idea, a plan, a product, and wanted to protect it. He asked: what kind of protection does the law provide and how do I get it? Are all others enjoined from using my idea? What happens if someone is using something similar to my mark but not quite it – where is the line?
What is an Entrepreneur?
“Entrepreneur” may be the motto of the millennial generation but it is not-so-new. It has been used in English since at least the middle of the 18th century. Merriam Webster defines entrepreneur as “one who organizes, manages, and assumes the risks of a business or enterprise.” Entrepreneurs are not merely small business owners, for not only do entrepreneurs own their business, but also they share a spirit: the belief that their idea is worth the risk, a knowledge of a niche market, the challenge of making big things happen with few resources, and an understanding of what consumers want. In our current age of technology, innovation, and startups – no matter how disparate the idea, service, or product – common obstacles and goals tie entrepreneurs together.
Whether they have a product or a service, all entrepreneurs have in common the desire to protect what is theirs. In the law, this protection arises out of the protection of intellectual property.
So, what is intellectual property?
Intellectual property (“IP”) is a broad category that describes patents, trade secrets, copyrights, and trademarks. The idea of IP derives from the sense that certain products of human capital should be protected similarly to physical property.
What does a Trademark get me?
Trademarks protect finished goods that are related to the brand. The overarching theory is to protect consumers because trademarks help consumers identify the source of goods or services. Trademarks include any word, name, symbol, device, or any combination used by someone who intends to use it in commerce to identify and distinguish his or her goods as an indication of the source of the goods. Lanham Act §45 (15 U.S.C. §1125). That was legalese… in English trademarks are whatever distinguishes a product and its source.
Cooley LLP described it well:
“As a practical matter, trademark rights function both as a sword and a shield:
Sword: Trademark rights enable you, the brand owner, to stop others who are using the same or similar names to cause consumer confusion, usurp or free ride on your goodwill and reputation, or harm you by potentially associating your brand with an inferior product.
Shield: Trademark rights protect you from others who might try to challenge your right to use or register your brands.”
Is my name trademarkable?
Some terms are not trademarkable such as generic words and symbols. Descriptive marks, describing some character or quality of the mark, are only protectable if the mark has achieved secondary meaning, i.e. when consumers associate the mark with a single source. The best type of trademark is a suggestive or arbitrary mark because they receive automatic protections. “Suggestive” suggests but does not describe some characteristics whereas arbitrary terms are fanciful they bear no relation to the product.
How do I obtain a trademark?
When you trademark, you receive the rights to protect against consumer confusion. What does that mean? You can prevent others from using your trademark. You also get the right against dilution.
In order to receive a trademark, your mark must be distinctive and used in commerce. Registration is not required but confers significant benefits. When you register your mark federally you receive the presumption of exclusive rights to use your mark. Registration of a mark also establishes nationwide priority over other marks, can stop free-riders or other third parties from using your mark, and gives you automatic access to federal courts which might enhance your remedies if someone infringes on your mark.
In order register your mark and gain these extra securities, the mark must pass clearance, which involves checking to see if someone else has already registered it. Next, your attorney would prepare and file an application. Trademarks cost between $200 and $400 but the protection it affords are worth the fee.
What if I do not register my mark federally? Am I still protected?
You do not need to register your mark federally to get common law protection. In fact, you can get automatic protection in your state. Without registering, you can still use TM or SM superscript in your advertising material or your website. However, I would recommend to any of my clients interested in trademarking that they register because the extent of the protection is superior.. For instance, a state trademark only protects you in that geographic area, whereas federal trademarks give you protection across the United States.
How long am I protected?
When you successfully trademark, you receive protection for as long as you use your trademark. In fact, there is potentially limitless duration!
Are there other ways to protect my idea?
This article focused on what trademark protection provides but entrepreneurs can also protect their intellectual property through patents, trade secrets, or copyrights.
IP protection derives from a variety of sources depending on the type of IP. Copyright protection derives from the Constitution directly. The Copyright Clause of the US Constitution provides protection “to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” U.S. Const. Art. I, § 8, cl. 8. You can copyright original works of authorship like books, movies, music, and even software. Trade secret protection, on the other hand, is largely derived from state law. Trade secrets are any valuable information you actively keep secret like formulas, techniques, etc. Patents derive protection from federal law and are registered with the US Patent and Trademark Office PTO. Patents provide the greatest amount of protection and the greatest amount of work to secure. You can patent innovations, processes, and methods.
The main driver in the United States for protecting intellectual property is to promote innovation, thus when protection would limit innovation, you are not likely to get protection.
You should speak to a lawyer about the best way to protect your intellectual property.
Mark Lemley, et al., Intellectual Property in the New Technological Age: 2016, Vol. I: Perspectives, Trade Secrets and Patents (Clause 8 Publishing 2016)
Mark Lemley, et al., Intellectual Property in the New Technological Age: 2016, Vol. II: Copyrights, Trademarks and State IP Protections (Clause 8 Publishing 2016)
Lanham Act §45 (15 U.S.C. §1125)
U.S. Const. Art. I, § 8, cl. 8.