There are a lot of misconceptions about intellectual property and specifically trademark law. Each week I field many calls from individuals and businesses that want to lock down their rights, which is great! However, there are a number of issues that I come across regularly in these calls where the caller has gotten some bad information. This may lead them to try and protect something that they cannot. There are also a lot of misunderstandings about trademark rights in general. For this post, I thought I would take a look at a few of these trademark misconceptions that I see most frequently.
1. Protecting All Uses of Words/Phrases
I think most people at some point have made up an original word, phrase, or saying that they really like. It may be something funny, political, philosophical, or have personal meaning. The next thought is usually either one or two things: (1) “how do I stop other people from using this?,” and/or (2) I should put this on a t-shirt. This typically leads them to start looking up trademark law on Google, which can lead to more trademark misconceptions.
Let’s go back to our definition of “trademark” for a minute. A trademark is something (most often a word or phrase) that is used in connection with products and/or services in order to help distinguish those products/services from those of competitors. Using a trademark establishes a brand. So even when someone establishes trademark rights, those rights are generally limited to the products/services they are providing.
Since there is a limitation of trademark rights to certain products/services, one cannot just claim rights to a word or phrase “in the ether.” Your rights will not protect you against all potential uses that someone else might have for the word or phrase that you came up with. Moreover, another person may also be able to use your word/phrase because their own First Amendment rights allow them to do so in certain circumstances. You cannot use trademark law as a means for monopolizing the English language, even if you’re making words up.
Finally, to come back to the second question above, be aware of the limitations of putting words/phrases on the front of t-shirts, hats, coffee mugs, and stickers. These types of uses (and many more exist) are what we refer to as ornamental use, and not use as a trademark. Think of it this way: when you are trying to determine the brand of a t-shirt do you typically look at what it says on the front? No, generally you would like at a tag, label, or imprint inside the shirt’s collar. That is where a shirt’s branding is typically found. Printing a word/phrase on the front of a shirt does not brand it or protect the word/phrase you are using, nor does it prevent others from being able to use it on their own shirts. (The notable exception is for famous brands, like Nike. If you try to use Nike ornamentally on clothing or otherwise, you will likely receive a nasty letter as soon as you are discovered.)
2. Promotional Merchandise
This trademark misconception is also very common, and has to do with the ornamental use just discussed as well as with federal trademark registration. When someone has a business, it is very common for them to generate and sell promotional merchandise to help get the word out about that business. For example, if you go to a concert you will nearly always see a “merch table” where the musician is selling their clothing items. In most cases, these clothing items are not branded under the same name as the musician, though. They are instead items that have been printed up to promote the musician. They are often ornamental uses of the band name and not clothing items branded under the musician’s name.
The biggest issue here is the misconception that every business filing a trademark application should add “clothing,” “water bottles,” “coffee mugs,” and other common promotional items to their trademark application. That simply is not the case, and these things can add to the cost of your application and often lead to a refusal based on the fact that your use is an ornamental use, and not a trademark one.
When a roofing company tells me they want to add “clothing” to their trademark application, my assumption is generally that they are not trying to create a clothing brand under the same name as their roofing services. Instead, they want to sell promotional items to support their roofing service brand. That is great, but it does not require (nor would their trademark rights be improved by) federal registration of the name for clothing.
3. Trademark Application Classes
The Trademark Office divides all products/services that one might provide into a number of administrative classes. While meant to make the USPTO’s work easier, this has led to one of the most common misunderstandings about federal trademark registration. The misunderstanding is that the classes determine the scope of protection that the federal registration provides. In fact, it is simply the products and services listed in a registration that help to determine its scope of protection. Particularly, the wider the variety of products/services covered by the registration, the broader the scope of protection that it provides.
The confusing aspect of this is that more classes tends to yield a wider variety of products/services, since each class covers certain categories. But it is what is in the classes that matters, and not the classes themselves.
Another issue with this thinking is that people commonly believe if they have registered a product/services in a particular class that no one else can register a similar mark for any product or service in the same class. That is just not true. For example, let’s say that I register the mark XYZ for “online retail clothing store services” in International Class 35. Someone else could likely register the exact same XYZ mark for “marketing services,” even though that is also in International Class 35. That is because although both services are in the same class, they are not strongly related to one another and consumers would not be likely to believe that a clothing store and marketing service are provided by the same company.
Need Help Navigating Around Common Trademark Misconceptions?
Falling victim to misconceptions about trademarks can cost you in terms of time, money, and ultimately put your brand at risk. If you would like to work with an experienced attorney specializing in trademark law, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
