Introduction
Whether your company already has an existing name, or you are in the process of building a new brand, trademarks are important to consider as part of your long-term strategic plan. However, many business owners haven’t thought much about trademarks and aren’t sure where to start.To share answers to common trademark questions, Melinda Pradarelli, founder and CEO of Meld Marketing, sat down with Jason Sytsma, a registered patent attorney and senior vice president at Shuttleworth & Ingersoll, PLC, a law firm based in Iowa. Watch the video or read the key takeaways below for a quick overview of trademark 101.
What is a trademark?
According to Sytsma, a trademark is a ‘source indicator’ that’s used to designate the source of someone’s goods or services. A trademark can be a name, a design like a logo, a color, a sound, or even a certain smell.
Why a trademark can be an asset to a company
Trademarks are a powerful tool to sell your goods or services. Trademarks allow you to protect your reputation and expand your business more easily.Consumers come to know you through your brand or trademark. When they are in a store or scrolling through options online, you want them to look for your brand and be able to recognize it immediately. Once your company has strong name recognition and is top of mind to consumers, you have a smooth runway for expanding your product lines into new markets. The reputation you have developed “lends a certain level of trust and reliance and all this goodwill,” Systma explains, “and now it becomes much easier to launch a new brand.”
How common law trademark rights work
The United States has a common law system. That means you can get trademark rights merely by using the mark, so once you start selling goods and services under a name, you have some trademark rights in that name.But under the law, you only have rights in the geographical area where you’re using the mark. “It might just be your little footprint here in town,” Systma says, “Maybe it’s Eastern Iowa. Maybe it’s Iowa.”Federal registration gives you constructive rights throughout the U.S. to use that particular mark, which can be essential if you want the ability to expand your business in the future and have access to a broader market.
What can go wrong if you don’t get a trademark
If you don’t take the time to get a trademark, you may drastically limit the growth potential of your company.”If another player comes into the market, maybe in another part of the country or another geographical area, now all of a sudden, you’re prevented from going into that area, because you didn’t have rights in that area,” Systma says.Even worse, a second comer can get a federal registration for your mark and block you from expanding at all. Unfortunately, this does happen quite a bit.According to Systma, there was a well-known case a while ago, where two banks got into a lawsuit over the rights to use a name. The junior user was the first to register their trademark, and they were able to stop the bank that was using the name first from expanding out of its small geographical area in Eastern Iowa.If you invest money into marketing and developing your brand, it’s important to think ahead about trademarks so your company can flex and grow and not be inhibited by what the competition is doing.
What does a patent lawyer do, and do you need one?
A patent attorney can help you do a trademark search and choose a name to trademark, which can be more complicated and time-consuming than it sounds.Searching a trademark database to see if your name is already registered isn’t enough. The standard for trademark infringement is whether or not there’s a likelihood of confusion between two marks. A patent attorney will help you assess whether the marks are too similar in appearance, or sound too similar.”Maybe they’re completely different words, but they have very similar looking spellings,” Systma explains. “You also have to look at whether or not they convey the same impression. When you hear one word, will a consumer think of another word?”An attorney will brainstorm with you and walk you through all the details you might not even know to consider such as different spellings, pronunciations, synonyms, and other variations.Other factors an attorney will consider is how distinctive the mark is, what category it fits in, and what other companies it may compete with now or in the future.
Real-world trademark examples
Not all trademarks are created equal. Some types of names are given more protection based on their level of distinctiveness.On the low end are names that are purely descriptive. “Imagine you have a black box, and your product is inside this black box, and all you have on the black box is the name,” Systma says. “How easily can you think of what’s actually in the box based on name? The easier that you can do that, the more likely it’s on the lower end of that spectrum of distinctiveness, so it’s probably a descriptive name.”The next level above a descriptive name is a suggestive name. “And that’s one that takes a couple of mental leaps to be able to guess what’s inside the box,” according to Systma. “A good example I use is Coppertone for skin suntan lotion. Think suntan, bronze skin, Coppertone… that’s suggestive.”The high end of the spectrum includes arbitrary names and made-up names. One great example is the brand Apple. Apples and computers would not be commonly associated with each other, except for the brand of Apple computers.”Because the name Apple is arbitrary, it’s given a broader scope of protection than just a descriptive name,” Systma says. This makes it easier for Apple to expand into many different areas such as music and software.
How trademarks fit into your marketing plan
At Meld Marketing, we bring up issues like trademarks and make them part of the discussion in a marketing plan. We want our clients to be prepared for growth opportunities, have the flexibility to expand, and be ready to outsmart the competition.There’s certainly a lot to think about when you’re building a brand and marketing strategy for your business. But don’t let all the details trip you up or stop you from moving forward.As you plan for the future, don’t be afraid to seek the advice of experts. Companies that thrive over the long-term usually have a strong support network and a team of partners in place to consult with about marketing, legal issues, finances, and other key aspects of running a successful business.Ready to trademark your business? Reach out and let’s chat.
Have a brand and you want to trademark it? Contact Jason at Shuttleworth & Ingersoll P.L.C. (shuttleworthlaw.com).
Read the full transcript
Melinda: Hi, I’m Melinda Pradarelli, and I’m founder and CEO of Meld Marketing in Coralville, Iowa, and I’m here today with Jason Sytsma with Shuttleworth and Ingersoll Law Firm. He’s also in Coralville, Iowa, and they have an office in Cedar Rapids, and they’re one of our key partners at Meld Marketing for discussing things like trademark, which is the topic of today’s video blog, so thank you for joining us. And thank you, Jason.
Jason: Thank you.
Melinda: Excellent. I know you specialize in patents and trademarks.
Jason: Yes.
Melinda: And probably a lot more. But those are some of the things in terms of trademarks that we personally find at Meld Marketing that come up a lot as we start working with a client, and they come to us and ask about building a brand or maybe renaming themselves, or maybe they even have an existing name. But as we start the process, we typically ask, “So, what part of this is trademarked, and what is not?”
And oftentimes with existing businesses, they will tell us, “We’ve never really thought about trademark.” And with new businesses, they say, “That is a great idea, but we don’t know how to get started.” So if, if you’re open to it, I’d like to just ask a few questions that would help our clients.
Jason: Absolutely.
Melinda: Okay. Excellent. So, first of all, what are the basics — like the first things that you need to know about trademark?
Jason: Well, I think the first thing to know is what a trademark is. A trademark is a source indicator. It’s used to designate the source of somebody’s goods or services. And so in that regard, a trademark can be a name. It can be a design, like a logo. It can be a color.
And it can be a sound. There are certain smells that are trademarked, so it can really be anything that can be used to designate the source of someone’s goods or services. So that’s what a trademark is.
Melinda: Great. And so, why is it important to look at the different elements that you have for your business? Because I hear people talk about them like assets. They are your company’s assets, and what does that mean, exactly?
Jason: Well, it means, because your brand, your trademark, is what consumers come to recognize you by or recognize your product by. And so when they go to the store, you want them to look for your particular brand on the shelf. And if you have a well-known brand, you know, consumers will recognize it immediately and it will come to mind, your name with a particular product, and you want the consumers when they’re looking for product X to immediately think of your name. And so that’s how a trademark can be an asset, because it’s a really powerful tool to sell your good or service, and it can be broadened in several respects.
One I think is when you have a really powerful brand that, you know, consumers recognize, then when you go into other markets or begin to sell other products, you could use that brand to associate with your new product, and now all of a sudden, it lends a certain level of trust and reliance and all this goodwill. That’s with your brand into this new product, and now it becomes easier to launch a new brand because you’ve got this reputation. So I think more than anything, think about a trademark as your reputation.
Melinda: And that’s where I think our world in marketing, and your world in terms of law and helping people navigate that, really crossover, because one of the things that we do is a lot of consulting with our clients about why — what’s the risk if I don’t get a trademark in place?
Jason: Well, there’s a few things. One, the law says, in the United States, we have what’s called a common law system. And under that system, you can get trademark rights based merely on use of the mark. So immediately you start selling goods and services under a name, and now you’ve got some trademark rights in that name. But under the law, you only have rights in the geographical area where you’re using the mark, so it might just be your little footprint here in town. Maybe it’s Eastern Iowa. Maybe it’s Iowa.
Where a federal registration can come into place, though, is it gives you a constructive right throughout the United States to use that particular mark. And so, if you have a goal, or you think in the future you might want to expand your brand or your product across the United States, and I think a lot of companies when they’re selling a product or service envision having a broad market for their product — they want to expand. Well, having a federal registration can give you the flexibility to expand on your terms and on your speed.
Without that, if another player comes into the market, maybe in another part of the country or another geographical area, now all of a sudden, you’re prevented from going into that area, because you didn’t have rights in that area, and he was free to begin using that trademark in that area. Or even worse, a second comer can come and get a federal registration for your mark. And now all of a sudden, you’re blocked from expanding at all, and that’s happened quite a bit. In fact, there was a well-known case a while ago, a couple of banks that got into a lawsuit over the right to use a name, and actually the junior user was the first to register their trademark, and they were able to stop the bank that was using the name first from expanding out of its little geographical area here in eastern Iowa.
Melinda: That’s a really good example. I mean that is exactly why we talk to our clients about, you know, whenever you build a marketing plan or business plan, you try and build it for the first six months, and a year, and then five years, and 10. And when we’re building a brand, we’re always saying to them, “You know, we’re building the brand so that the look of that can flex and grow with your company, but you also have to think about the behind the scenes things like the trademark, because where you might start off and think you’re only going to operate in one area, like you said, you may all of a sudden develop something that you want to franchise or that somebody else is interested in, or you just don’t know.”
And the worst thing is to see somebody invest a lot of money in their marketing or their brand or any element of their business. And then, to get five years down the road and realize, wow, we can’t use any of this — we have to start all over again. And so that’s one of the reasons, you know, I was talking with Jason a little bit about how, getting people to kind of take a stop for a second and look around and realize what assets they have and what they can do to protect them.
At Meld, we know that we are not the trademark experts, and so all we do is point out sort of some of these baseline things about why — why would you want to think about it. We do some initial searching, because the United States has a patent trademark online presence, but it’s not as thorough, obviously, as it would be if you went to an attorney. And so one of the questions we get a lot from people is, “Do I really need an attorney to help me with this, or can I just do this on my own?”
Jason: Well, I might be a little biased, but I do recommend using an attorney for trademark searching and choosing a name. You know, the reason for that is the standard for trademark infringement is whether or not there’s a likelihood of confusion between two marks, and so that test doesn’t require identity between the marks, but rather it’s whether the marks are confusingly similar. So you’ve got to look at how similar are their marks in appearance. Do they sound similar? Maybe it’s the same word with different spelling. Maybe they’re completely different words, but they have very similar looking spellings. You also have to look at whether or not they can convey the same impression. You know, when you hear one word, will a consumer also think of another word?
So, those are some of the things you got to think about when you’re doing a trademark search, and frankly, it’s difficult. It takes time. You’ve got to brainstorm. Okay, here’s my mark. Are there other ways I can spell it? Are there other ways I can pronounce it, and spell it that way? Or are there other words like synonyms or other closely related words that I can exchange for them to still kind of have the same meaning? So thinking about all of those different types of variations that might come up, and that’s how we do a search is to look for those variations.
Melinda: Well, I think that’s a really good point. Sometimes we’ll have people come to us who are thinking of starting a new business, and they will say, “We definitely want to have this name.” And we’ll say, “Okay tell us about what that name is.” And we know it has significance for them. And then we don’t want to be the wet blanket to say, “Okay, now we just did an initial search, and there seems to be some issues here.” But we know that there’s a value in doing that for them up front, or like you said, we’ve had a client like Kalona SuperNatural who said by attaching Kalona to the front of it, we’re able to say, not just supernatural, which it can be a generic word — it’s very hard to trademark — but by giving it that extra word or thought. And from our end of it, I think we’ve learned in marketing — I’ve been naming businesses and naming entities for a long time — and it’s gotten harder and harder and harder to come up with those that are not taken or don’t possibly have a trademark infringement. And that’s not necessarily something that other people would know.
Jason: Yeah, that’s right, so a trademark is always that name or symbol, and it’s always connected with a particular good or service. And so you’re looking at those categories, you know, the name and the category, and sometimes it’s not so simple as, you know, are they in a different category. You also got to look at or consider, well, how recognizable is the name. You know, so for example, Apple is a good one. Apple in connection with computers, and that’s where they started off. And they got into, iTunes. Now they’re in the music business. Now they are in the software business, and they’re more of a software company now than anything. So, you know, a brand could change over time.
So just because a name, two names are in different categories, it’s not necessarily a sure thing that you’re free to us that mark, and Apple is a good example. Another reason that makes Apple a good example is marks are categorized kind of on the spectrum of distinctiveness — how distinctive is the name. On the low end, you have a name that’s just purely descriptive, and it’s a name that just describes a characteristic or quality of the good or service. So I think of it like this. Imagine you have a black box, and your product is inside this black box, and all you have on the black box is the name. How easily can you think of what’s actually in the box based on name? The easier that you can do that, the more likely it’s on the lower end of that spectrum of distinctiveness, so it’s probably a descriptive name.
The next level above descriptive is suggestive. And that’s one that takes a couple of mental leaps to get to be able to guess what’s inside the box. A good one example I use is Coppertone for skin suntan lotion. Think suntan, bronze skin, Coppertone. That’s how you get to that — that’s a suggestive. It’s not very descriptive, but it’s certainly a suggestive. And then on the high end of the spectrum, we have arbitrary names, and then made-up names. And Apple is an arbitrary name. Apples and computers — they’re not commonly associated — but for that company, they wouldn’t be associated with each other.
Melinda: Taking something disconnected from that area, typically, and putting it on top.
Jason: That’s right. And if you were to try to use the name, so because the name Apple is arbitrary, it’s given a broader scope of protection than just a descriptive name. And so if you try to come up with an arbitrary name for your product, and that arbitrary name also happens to be the same name that another company is using maybe on goods in a different category, you still got to be somewhat concerned, based on, you know, is the mark famous. How widely recognized is it? Are the goods you’re selling, could they be viewed as related? Are they competitive? Are they the type that might come from the same source? So there’s a lot of other factors to consider when choosing a name.
Melinda: That’s all the time we have for today, so I just want to say thank you for spending time with us. If you’d like to learn more about what Jason does, you can visit shuttleworthlaw.com.
If you want to know more about Meld Marketing, visit meldmarketing.com, and we’d encourage you to sign up for Meld Intel. It’s an email newsletter that we send out about every month, including marketing insights and trends, as well as information about things like this, which are a bit more of our business consultation services. If you’re an existing business or a new business that’s interested in talking about branding, please reach out to us also at meldmarketing.com. Thanks for watching the video today.
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