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Inventor Update

Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.

Trademarking Your Product

product, license, trademark, legal

Trademarking Your Product

We’ve talked a great deal about protecting your invention by applying for a patent; there are other ways to protect your ideas and products, as well.

In many cases, a brand can become a very effective way to distinguish your product from that of your competitors. Being the first to enter the market or having an innovative product is important, and even more so if you can distinguish your product with a name and identity that are exclusively yours. In short, crossing the finish line first can be even more lucrative if your product looks good doing it. This is accomplished when you file for a trademark to protect the name and identity of your product. American businesses, from fledgling startups to vast multinational corporations, spend billions of dollars every year to develop and protect their trademarks. Inability to protect your marks can cost your company its competitive edge, which can mean that an otherwise superior product or service will fail in the marketplace.

Trademarks can be an enormously valuable asset for a company, the value of which is measured as brand equity. Take for example the beverage Snapple. The company was created in 1972 by three partners who sold fruit drinks to health food stores in New York City. The brand name was short for Snappy Apple, a carbonated apple-juice product whose brand they purchased from a Texas man for $500. As the company grew, so did brand loyalty, and by 1994 sales approached $700 million. The following year, Quaker purchased the company for $1.7 billion dollars. If you added up the inventory, equipment, and all other assets, the sum was far less than the purchase price. The difference was the value of the brand. The purchaser, Quaker, was buying the name recognition and goodwill associated with it.

It is also important to note, however, that brands can lose value when they are not managed properly. Following the sale of Snapple, other brands entered the market with better products, packaging, and marketing. As a result, Snapple lost much of its appeal, as evidenced by the 1999 sale to TriArc for only $300 million! Yes, that’s correct. In less than two years, the value of the brand decreased by more than $1.4 billion.


What Constitutes a Valid Trademark?

Trademarks protect the words and symbols that identify a product, not the product itself. Any word, symbol, slogan, logo, device, or design that uniquely identifies a product can be legally protected as a trademark.The sole legal purpose of any trademark is to identify the source of goods and services. Unlike other types of intellectual property, such as patents and copyrights, trademarks bear no relationship to invention or discovery. In fact, trademarks must not have a function other than identifying a product. If they do, their owners must generally protect the mark as a component of a product’s design under patent or copyright laws.

The Entrepreneur

I’ve Got My Brand On You

A brand is just as important as the product itself—and is just as necessary to protect. Think about the most successful products in America: Coca-Cola, the Big Mac, Google. Not only do these names recall the flavor, taste, or function of the product itself, but we see the products’ brands in our heads, as well. It’s practically impossible to think of a Big Mac without seeing the golden arches. Trademarking is vital to the invention business because it protects your product’s style—which is just as important in the marketplace as protecting its function.

Establishing Legal Rights Within Your Trademark

 Getting legal rights to a trademark is not as complicated as some lawyers might want you to think. To get federal trademark rights, you must actually use the mark in some way that associates it with your product. Although registration of a mark is important, it is really the first use of the mark that establishes the legal rights in the trademark.

Until fairly recently, U.S. businesses faced a miserable dilemma. Federal law wouldn’t allow them to register a trademark unless they could prove their prior use of it. This meant they had to spend money promoting a mark and risk associating it with another, emerging product or service line without the benefit of registration. In 1988 federal trademark law was revised to allow inventors to file “intent to use” applications on trademarks. Once an application is filed, you must engage in actual use of the mark within six months to make it valid. Extensions for additional six-month periods may be filed, but this can become costly.


Protecting the “Trade Dress” of Your Mark

One type of trademark asset inventors and businesses often don’t realize they have is trade dress. Trade dress is the total appearance of a product or service. Although you can register trade dress with the USPTO or file for design patent protection, it’s not always necessary. You acquire trade dress just by using it in the marketplace and being able to demonstrate that the public associates the appearance of your product with its source. There are many court cases in which one party has been found to be misappropriating another party’s established trade dress, or in which the first party is found to be using a product or package design that obliquely references that of another product (owned by the second party) that recognizably uses that form or mark.

This type of trade dress is called product configuration. If the shape or appearance of a product has no function other than identifying the source of the product, it can be protected as trade dress. Examples of protectable product configurations are the plastic ReaLemon brand lemon-juice container, which looks like a lemon, or the bottle for Mrs. Butterworth’s syrup, which is shaped and decorated to look like a plump woman in an apron.


Developing a Strong Mark versus a Weak Mark: Types of Protections 

Looking to save on future legal fees? Then it’s important to consider choosing a “strong” trademark rather than a “weak” one.

Some trademarks are legally stronger and therefore easier than others to protect against infringement. Marks that are easy to defend in the face of misuse or infringement by a competitor are known as strong marks. It’s generally true that the less descriptive your mark is of the actual product, the stronger your case will be against infringers. Trademarks are placed into four general categories, based on their relative legal strength: Fanciful marks (for instance, Google, which is completely made up) are the hardest for third parties to challenge, making them legally strongest. Subjectively chosen marks (Apple) are only slightly less strong. And suggestive marks, which suggest the characteristics of the product being offered (Jiffy Pop), are the hardest to protect. Purely descriptive marks (such as flying disc) can’t be protected at all, since they’d prevent people from using necessary language. If you choose a mark that is legally weaker, you won’t be able to exclude other users of the trademarked terms as broadly. You’ll have to prove that alleged infringers have a mark that is a lot more similar in look, sound, or meaning than you’d have to in fighting infringement of a stronger mark. Also, where products are not exactly similar but are closely related, the owner of the stronger mark will be able to exclude similar marks, whereas the owner of a weaker mark will not be able to do so.

Businesses such as Google and Microsoft opted for strong marks. They made up their own words, which were easy to register with the trademark office and to protect from competitors. These companies relied on the strength of advertising and marketing to build their brands and give these otherwise meaningless terms extraordinary value in the marketplaces. Other companies opt to use more descriptive marks (like Nutrasweet or Handi Wipes), knowing that they are legally weaker and harder to protect. These companies take the view that there is an advantage to a more descriptive mark because it has market strength: it educates, and is absorbed by, the public more quickly.


Death by Generocide 

 What do aspirin, baby oil, cellophane, and shredded wheat all have in common? They’re all perfectly good, distinctive trademarks that have become “genericized” over time. 

A trademark becomes a generic term when a court or the United States Patent and Trademark Office finds that, in the mind of the public, the mark has come to represent particular goods or services rather than to describe the origin of those goods and services (person or company). Though it’s a little counterintuitive, this spells disaster for a company. All of its prior advertising dollars and marketing efforts are lost.

In order not to become a victim of your own advertising campaign, as the marks in the table below did, take precautionary measures as to how your trademark is actually used. Jell-O, Band-Aid adhesive strips, and Google all provide excellent role models in this regard. Google sends letters to the media requesting that they not use the term “google” as a verb and instead use “Google” as an adverb, Google search, to avoid having their mark become genericized. While you might think a company would be happy that consumers are using its product name so frequently that it becomes synonymous with, say, a word as common as “search,” what it means to the company is that the consuming public has stopped recognizing the specific brand name that the company has worked so tirelessly to individualize. The genericized product essentially becomes no different from the field of competitors—the brand itself ceases to exist. Jell-O calls itself “Jell-O brand” gelatin for this same reason—watch for this next time you see a commercial. Johnson & Johnson now promotes “Band-Aid brand bandages.” They use the generic term “bandages” in order to protect their trademark and prevent other brands of adhesive bandages from benefiting from broad consumer identification with Band-Aid. Kleenex avoids generocizing its mark by making sure that its brand name for a tissue is always capitalized and that its advertising materials make clear that it’s a registered trademark for disposable paper products.

Trademarks are what visibly represent your product in the marketplace, and as such, need to be protected as fiercely as patents.


Oh So Generic

Generic Term Product
baby oil mineral oil
aspirin acetyl salicylic acid
escalator moving stairway
hoagie “submarine” sandwich
honey baked ham ham with sweet glaze
Murphy bed type of bed that folds into wall
shredded wheat baked wheat cereal
thermos insulated bottle
trampoline athletic apparatus for jumping

Maintaining Your Mark

 To avoid having your mark become “genericized,” here are some cardinal rules of trademark usage:

  • Use the ™ next to the mark as soon as you begin the trademark process:
    This alerts the public of your intention to protect the mark.
  • Use the ® symbol to denote a federally registered trademark:
    This symbol can be used only after you receive a federally registered trademark, and should be used in any materials promoting goods and services covered by the mark.
  • Use the mark as an adjective:
    Don’t use the mark as a noun or a verb, but rather to describe the source of the goods. (“I’m going to use the Xerox copier” instead of “I’m going to Xerox it.”)
  • Don’t use the mark as the object of a plural or possessive term:
    You won’t find Johnson & Johnson allowing a retailer to say, “We sell a lot of Band-Aids.” Instead, you’ll hear and see references to a “Band-Aid brand bandage.”
  • Establish company policies and guidelines:
    Establish and enforce clear policies as to how suppliers, distributors, retailers, and promoters should use your mark by directing them not to use it as an adjective, as a plural, or as the object of a possessive.
  • Use your mark consistently:
    Make sure that your mark is spelled and capitalized consistently and correctly and that correct punctuation, such as hyphens, is used. For example, Coca-Cola should never appear as Coca cola; and “Kids prefer Jell-O” should never appear as “Kids prefer jell-o.”

Making Their Mark

See how many brand names you recognize simply by looking at their mark. A successful mark is clear and specific but remarkably versatile .
As an inventor, you have an impressive arsenal of intellectual property assets that you can assemble to protect your invention. Patents, trademarks, copyrights, and trade secrets all serve to create barriers to entry and, more important, as appreciable assets that could be worth a significant amount if they are properly developed and protected.

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