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Almost anything can be a trademark – a word or phrase, a sound, a scent, a color or combination of colors, a symbol, or a combination of items.

Suggested Readings

Founders School || Intellectual Property || Trademarks || Impact Guide (PDF).

American Bar Association: What is a Trademark? Third Edition, 2009.

An overview of U.S. trademark law and links to other resources are provided by the Legal Information Institute of Cornell Law School at Trademark.

The United States Patent & Trademark Office has materials, links and information, including answers to frequently asked questions regarding trademarks (and service marks) and the process of applying for federal registration of a mark: Trademarks.

Have in mind that a word or phrase that is merely descriptive of the product or service is only protectable as a trademark if it has acquired a “secondary meaning” in the marketplace, that is, in the minds of the consumers of that product or service. Secondary meaning can be developed through advertising, long term use, etc. Establishing secondary meaning is also necessary for trademark protection for a personal name or geographic term.

Questions for You

Have I identified one or more candidate trade names for the business? Has it been cleared by trademark counsel? Likewise, have I considered the trademark aspects of any slogans, domain names and website design, and trade dress such as product packaging or configuration?

Will my planned product or service benefit from a strong, protect-able trademark (or service mark)? If so, have I identified one or more words, phrases, symbols etc. as candidate trademarks?

Where does it fall on the strength/protect-ability scale from fanciful to generic?

Has a strong candidate been cleared by trademark counsel?

Should I register it with the US Patent & Trademark Office? With state agencies? In foreign jurisdictions?

Do I understand the proper use of the trademarks of others, such as suppliers, customers or joint development partners? Does the company have contractual obligations or restrictions on using their trademarks?

Are there opportunities for co-branding to leverage the market strength of a supplier or customer?

Questions for Your Team

What can you do to protect the company’s trademark rights? Do you understand the company’s guidelines for proper use of its trade marks?

Do you have questions about the use of the trademarks of other companies, such as suppliers, customers or joint development partners?

Tools and Exercises

The question of trademark infringement involves a determination of whether or not there is a “likelihood of confusion” by the reasonable prudent purchaser of the goods in question. Would purchasers, seeing the trademarked goods of the accused company (defendant) believe they are associated with the complaining trademark owner (plaintiff)? Here are some of the factors courts typically consider in making that determination:

Strength of the plaintiff’s trademark

Similarity between the trademarks

Proximity of the products in the marketplace

If the products are not the same, whether the plaintiff could reasonably be expected to bridge the gap

Evidence of actual confusion

Defendant’s good faith in adopting the mark (Note here the value of good company records showing the independent development and adoption of the accused trademark).

Quality of the defendant’s product

Care and sophistication of the buyers.

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