Using someone else’s trademark can be tricky. It is permitted in certain instances and under certain restrictions. Generally, I advise not using someone else’s trademark. This avoids the possibility of liability for trademark infringement. Even if you are not technically infringing their trademark. Why? Just having to respond to their lawyer’s threatening letters can be time-consuming and costly. For example, it can be expensive if you have to hire an attorney to deal with potential threats. 

It is best to promote your own trademark. Read more about Trademark Basics for Business Owners and What Should A Business Trademark. But sometimes you have to use someone else’s trademark. In those cases, it is best to obtain the trademark owner’s permission to do so. For example, if you are selling JEEP(R) parts, you obviously have to say that they are for a JEEP(R). In that case, it is best to get permission from Chrysler Corporation to use their trademark.

Often, large companies will have a trademark use policy on their website. Facebook has a page on their website explaining permitted uses (and restrictions) for displaying the Facebook logo on your website to point to your Facebook. YouTube does too, including what colors you can use (red – and not just any red, but their red).

Here is a general information article from the American Bar Association (ABA) that may also interest you before you use somebody else’s trademark.

If you have a specific question(s) about using somebody else’s trademark, a trademark attorney can evaluate that for you and give legal advice in the form of an opinion letter. The trademark attorney will likely charge a fee for doing so. The fee is often based on the scope of your specific question(s).

Can I trademark a similar word. I get this question a lot. For example, can I change one letter, or a few letters in someone else’s trademark and get my own trademark?

That’s a great question! The question often comes up in the context of trademark registration at the US Trademark Office. But the same standard applies to trademark infringement.

Is it enough to change an ‘S’ to an ‘X’. Probably not. To determine whether you can trademark a similar word, you have to do more than change one letter.

The standard is not whether the marks are identical. Instead, the question is whether the consumer of this product might be confused by the trademark as to source of the product. Trademarks designate a source of goods (products) or services. Whether someone is confused depends on a number of factors, called the DuPont factors after a trademark case involving DuPont. These factors are used to determine how likely it is that the consumer will be confused.

Read more Information on Trademarks including using trademarks as Tag Lines.

One of those factors is the level of sophistication of the consumer. Consumers will generally be more sophisticated when purchasing high-dollar items, such as automobiles. Consumers are generally less sophisticated when it comes to low-dollar purchases. For example, beverage consumers are not necessarily sophisticated when making purchasing decisions. It would be easy for a beverage consumer to grab a 6 pack of Mountain Do, thinking they were buying Mountain Dew. Hence no one can register a trademark for “Mountain Do” for beverages.

It’s best to check with a trademark attorney before using or applying for a registration for a mark for your product or service. Find out what the US Trademark Office says about working with a trademark attorney.

Register a Trademark to Maintain Your Rights

If you’re the owner of a new business or service and have come up with a great name for your business, you’ll want to protect it right away to prevent it from being used by others. What’s even better is that the process of registering a trademark does not need to be time-consuming and it can take just over an hour to give you exclusive rights to your chosen business name. Once you have registered a trademark you can put the ® symbol next to it to deter other businesses or individuals from using it without your consent.

Be Protected

Without registering a trademark, you may find it impossible to take legal action against someone who is using your company name. You will have to put a compelling case forwards to convince the    authorities that you are associated with the trademark and that if others use it, your business could be harmed.   Register it however and the authorities will be able to act if an attempt at stealing your trademark is made. Once you have registered a trademark, you commence ownership of exclusive rights to it, and you can even sell it if you wish.
Original and Memorable Trademarks
It’s important to ensure that someone else has not already registered your chosen trademark before you start to go about registering it yourself. In the US, you can use the online Trademark Electronic Search System database to see whether someone else already owns your proposed trademark or not. This can save you time, money and embarrassment. Generally, the first business to assume ownership of a trademark in a geographic area is automatically permitted to use it, but this does not stop someone else from registering it and finding the rights to it switched to their ownership as a result, which means that is extremely wise to register your trademark at the first opportunity. It is worth remembering that generic trademarks such as “The Music Shop” for instance may be harder to register, so it is worth attempting to come up with a unique and original trademark.

Register Trademarks without Fuss

When you do register a trademark online, you will need to provide the authorities with information such as the category of sales that you are operating as well as details pertaining to the design that you will be using. Once you have applied, you can expect to receive a response from USPTO – the US Patent and Trademark Office. Many people have found it helpful to seek advice and support from a patent attorney in the past to increases their chances of success. This is because these professionals generally have an in-depth knowledge of patenting law, and play a pivotal role in any successful attempt to register a trademark. If there are any objections to your application once it enters the public domain, you may face a tough battle, so it is always worth doing your homework to avoid copying someone else’s trademark by mistake.

All business owners need to develop and protect their trademark portfolio. But many business owners don’t know the difference between a trademark, a copyright, and patent. In this article, trademark attorney Mark Trenner goes over some Trademark Basics for business owners.

First, let’s clarify the difference between a patent, a trademark, and a copyright. A patent protects a new and useful invention, be it a process or a device. A copyright protects a literary work, an artistic work, musical composition, or film, as long as it has been recorded in a tangible medium (not just an idea in your head – you have to actually paint the picture).

What is a Trademark?

A trademark is any word (or words) or logo, or combination of words and logo, that identifies the source or origin of goods or services. Trademarks identify the source of goods. Service Marks identify services.

Marks that identify goods are called Trademarks

Think about famous brands you already know. For example, the NIKE “swoosh” is a graphic logo. As soon as you see this famous swoosh, you instantly know that the Nike company is behind that product.

Another good example is STARBUCKS. Just hearing that word makes you think instantly of coffee. That’s what I mean by “identifies a source or origin of goods or services.”

Marks that identify services are called Service Marks

Think of ALLSTATE. They don’t sell a product. But you instantly know when you hear ALLSTATE that we are talking about a company that offers insurance – a service.

Want more information on Trademark Basics for Business Owners

Denver trademark attorney Mark Trenner answered some common questions about trademark basics for business owners in his most recent blog post. See the full article here: Common Trademark

Questions Business Owners Ask

Contact Mark Trenner at 720-221-3708 to find out if we can help your business with trademarks.

I’m often asked, can I or should I “trademark your own name?”

The answer is yes and no. You can trademark your own name. But only if specific requirements are met first. Let’s start with the definition of a trademark. The World Intellectual Property Organization (WIPO) explains trademarking your own name.

A trademark is an intellectual property law term for any word, slogan, or graphical logo that identifies the source or origin of goods or services. For example, when you hear the name “STARBUCKS” you immediately think of coffee. That is, the trademark STARBUCKS identifies the source of (the company that provides) coffee.

Similarly, when you hear “GOODS HANDS” you immediately think of Allstate, the insurance company. This is an example of a service mark. A service mark is a type of trademark. That is, a trademark is the intellectual property law term that generally applies to the provision of goods, whereas a service mark is the intellectual property law term that refers to the provision of services. In the “GOOD HANDS” example, the services are insurance (car, home, life, etc.). Insurance is not a product, but rather a service – an agreement to provide money to cover various costs associated with a particular incident, such as a car accident.

So back to the original question, whether you can or should trademark your own name.

You certainly can trademark your own name IF you are providing goods or services under that name. That is, you cannot simply file a trademark application for your name as it applies to you as a person.

But if you are providing services under your name, for example if you are an accountant providing accounting services under your own name, a builder, or the like, then you can certainly trademark you name – for those particular services.

Or if you are selling a product marked with your name, such as t-shirts or soccer balls with your name identifying those products, then you can apply for a trademark for your name – for those particular products.

Be sure to check with a trademark attorney before starting to use any trademark. You don’t want to infringe on someone else’s trademark – even if it is your own name!

I have so many things to trademark – where do I start?

I get this question all the time. First, keep in mind that the strength of a brand is in its ability to distinguish a product or service from similar products being offered by others. Think of any famous brand (Starbucks(R), McDonald’s(R), or other famous trademark). While these companies may have multiple trademarks, they put the most effort into marketing only a few of these brands.

Most trademark attorneys will recommend a Clearance Search and Opinion – Using someone’s else’s mark can result in a trademark infringement action!

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Attorneys are often asked “can I file a trademark or copyright for a product name?”

Generally, an application for a federal trademark registration can be filed for a word-only, word-and-graphic, and/or graphic (e.g., logo) trademark that is used to identify the source of goods or services in interstate commerce.

There are some basic requirements, however. For example, the trademark sought to be registered can not be confusingly similar to a mark already being used by someone else. In addition, the mark cannot be generic (e.g., the terms “gas station” used to identify a “gas station”). Merely descriptive marks can be difficult to register, and the Trademark Office Examiner will often require that the mark be registered on what is called the supplemental register (as opposed to the principal register), until the owner of the trademark can be shown that the trademark has acquired secondary meaning.

Other types of trademarks are easier to register. For example, suggestive (e.g., “hot chocolate” to identify sun tan lotion), arbitrary (real-words used to describe something totally different, e.g., “Apple” to identify a computer), and fanciful (made up words, e.g., “Xerox”) trademarks can be registered on the principal register without any showing of secondary meaning.

Suggestive, arbitrary, and fanciful trademarks are also considered stronger marks. That is, these trademarks are typically afforded broader protection against infringers, with arbitrary and fanciful marks often being afforded the strongest protection.

Those seeking trademarks often initially propose descriptive and suggestive marks. While it is possible to file a registration application and argue that the trademark is suggestive (and not merely descriptive), the applicant may have to amend to the supplemental register if the Trademark Examiner disagrees and asserts that the trademark is merely descriptive.

Finally, it is a good idea to work with a trademark attorney, and conduct a professional trademark search before using a mark, to reduce the possibility of infringing on someone else’s trademark rights.

When you start your own business, you already have an idea for your business, and so the next logical steps always seem to be: 1) register an Internet domain name, 2) get business cards, and 3) reserve a name for your product or service (a trademark).

The first two steps are easy, and you decide to do those yourself. You may be unsure whether you can reserve a trademark, and so perhaps you check around on the Internet to see what local trademark attorneys charge to help you. Initially thinking that a trademark attorney can help you for $100 or so, you’re shocked when you see what trademark attorneys actually charge.

Next you may look at so-called “self-help” services. While often less expensive than a trademark attorney, you have to ask yourself “what am I really getting from the self-help service” that you couldn’t just do on your own.

I can spend the rest of this post explaining why trademark attorneys charge so much, and why using self-help services is a bad idea. But that’s not my purpose today. Instead, I want to tell you a few things that everyone must know about trademarks, and why if you don’t understand these basics, you can find yourself in a heap of trouble.

1. You need to know if anyone else is already using your mark. This may seem obvious. If you wanted to set up a coffee shop, you’re going to need an original name. You know that you can’t trade off of the goodwill of established and well-known coffee houses. A good place to start is with a general Internet search engine, such as Google, Yahoo, and Bing. Next you might try searching the state registers and the US Trademark Office. Most state registers are available online now, and the US Trademark Office database is available online for free.

2. You need to know if your mark would be confusingly similar to anyone else’s mark. What does that mean? Just because you don’t find an exact use of your mark, the standard for registering a trademark with the US Trademark Office, and the standard for trademark infringement, is whether a consumer of products or services would be confused by the use of the two marks in question. This is really where the trademark attorney earns his or her fee. It’s generally easy to find out if someone is already using your exact mark for the same goods or services. It’s a lot harder to identify and then determine whether someone else’s mark, although not identical to yours, might be considered confusingly similar.

This is why its best to hire a trademark attorney to assist you with this determination. Trust me, if you try to register your mark or start using your mark, you may find yourself faced with a letter from someone else’s attorney telling you to stop or face an infringement action (this is called a “cease and desist letter”). Getting yourself out of this mess is going to cost you a lot more time, money, and heartache, than if you had just paid the trademark attorney to help you in the first place.

3. You cannot use the encircled “R” notation. That is, unless and until you receive a federal trademark registration from the US Trademark Office. Otherwise, you are violating the trademark laws. And you may also be violating other state and local laws, rules, or ordinances based on consumer protection or fraud.

So can a trademark attorney save you money? While reserving your trademark may seem as simple as ordering business cards at your local office supply store (so why pay a trademark attorney), there are many intricacies that a trademark attorney can help you with that can trip you up and end up costing you more in the long run than if you don’t hire a trademark attorney from the get-go.

Many customers buy particular products or services because they have become accustomed to a certain degree of quality in the product. Many people will even pay more for certain brands of soft drink than they will pay for a generic soft drink.

Brands or trademarks designate the source or origin of goods or services. By consistently providing high-quality goods or services under a trademark, along with a successful marketing campaign, customers come to associate trademarks with a certain degree of quality in the goods and services being provided.

In other words, brands can be used to establish customer loyalty.

This customer loyalty is also called “goodwill.” The goodwill you establish not only affects the sale of your current goods and services, it may also carry over to other goods and services that your business may introduce in the future. For example, when a product is well-known and then you introduce a new product, loyal customers will often purchase the new product without having ever tried it before based only on your brand. That’s because the customer expects a similar degree of quality to that which they have become accustomed to with other products you offer. This gives you a distinct marketing advantage when introducing new products. In fact, you will often see new products that are introduced with the statement “from the makers of [insert brand here].”

But don’t risk losing all of this goodwill. Work with a trademark attorney to properly protect your brand with trademarks.

You are not required to file a trademark application for registration with the US Trademark Office in order to have trademark rights. But there are advantages of federal trademark registration, including:

Others cannot register a mark that is confusingly similar to your mark.

A trademark registration is constructive notice of your claim of ownership in your mark.

A trademark registration is a legal presumption of your exclusive right to use the mark nationwide.

A trademark registration is a basis for registering your mark in foreign countries.

A trademark registration allows the trademark owner to bring an infringement action in Federal Court.

A trademark registration allows the trademark owner to file with U.S. Customs to prevent others from importing infringing foreign goods.

A trademark registration allows you to use the encircled-R notation ® after the mark is registered.