Trademark Basics, for Creators

In our intro post to this series on how to run a creator business, we covered the concept of branding. We explained why branding is important to a creator. And, usually, a trademark is the focus of a business’s brand. It is a trigger that conveys all the qualities of your goods or services in one word or short phrase. Because trademarks are so essential to branding, we think creators should have a solid understanding of trademark basics. And that’s what this article is about.

Trademark laws are country-specific. While most countries in the world recognize such a thing as a trademark, the details of each country’s laws are usually different. Most of our readers are in the US, so this article will mostly talk about US trademark law. But trademark law is complicated and full of exceptions. So, if you have specific trademark questions—and especially if you’re not in the US—you should hire a trademark lawyer to help you.

Let’s start this trademark basics article by defining what is a trademark.

What is a Trademark?

Here’s a one sentence definition of a trademark: A trademark is usually a word or phrase that is used in commerce in connection with goods or services to denote the source of the goods or services. You don’t always have to register a trademark with a government agency. It’s a trademark as long as it satisfies the definition.

Sounds simple, right? Not really. Let’s break the sentence down.

A Trademark is Usually a Word or Phrase but Can Be Other Things

When most people think of a trademark, they think of a word or maybe a phrase. Or they think of a logo. But, at least in the US, trademarks can be other things too.

So, what is a trademark? Almost anything can be a trademark as long as it signals to a consumer that the goods or services came from a particular business. In trademark lingo, the mark must denote the origin of the goods or services.

You can register these unusual items as trademarks:

• Sound. Here’s a very cool list of sound marks. It includes the very first trademarked sound, the NBC chime.
• Colors. The very first color mark went to Owens Corning, for the color pink used with fiberglass insulation (Reg. No. 1439132). 3M has also trademarked yellow for its Post-It notes (Reg. No. 2390667).
• Bottles and containers (called trade dress). The most famous trade dress is probably the Coca-Cola bottle (Reg. No. 1057884). It was registered in 1977 but was first used in 1916.
• Fragrances or scents. Ironically, perfumes and air freshener scents can’t be trademarked because the fragrances are “functional.”

Creators might be able to trademark these items:

• The title of a series of books or shows/movies. But you can’t trademark the title to a single book or show/movie
• Names or pseudonyms of authors and performing artists
• Names or designs of characters

Registering these unusual marks with a government agency can be very tricky. If you ever want to register such a mark, we recommend you hire an experienced trademark lawyer to help you through the process.

A Trademark Can’t be Functional

To have a good grasp of trademark basics, it’s also important to understand what can’t be trademarked. You can’t trademark a container, color, fragrance, and so forth if it has an actual use. The technical term is that a trademark can’t be functional.

When a business gets a trademark, other businesses can’t use the same word, phrase, color, shape, etc. on similar goods or services. But, sometimes, every business in that industry needs to use the same color, container, or similar to do business. If this is true, then the law won’t grant anyone an exclusive right to use that color, container, etc.

For example, delivery trucks don’t usually have a color. So, brown on a delivery truck is not functional. That’s how UPS trademarked the color brown for its delivery trucks. Cell phone services don’t usually have a color either. That’s how T-Mobile was able to trademark the color magenta for its cell phone services.

Of course, the most famous example of functionality is probably the Coke bottle. Bottles usually have a neck and a cylindrical body. These are functional aspects of a bottle. They can’t be trademarked because other businesses will need bottles to hold whatever liquid they want to sell. But the Coke bottle is tapered. The tapering has no function. And that’s how Coke was able to trademark its unique bottle.

A Trademark Must be Used with Goods or Services

A trademark is only a trademark if it’s used with goods or services. This is another important concept in trademark basics.

Technically, a mark used with services is a service mark. Only marks used with goods are trademarks. Still, most people use the word trademark pretty loosely to refer to both a trademark and a service mark. That’s what we do in this article.

For a mark to function as a trademark, you need to put the mark on the goods or on a container for the goods.

If you have a service mark, you’ll need to display the mark with the services. Often, if you advertise your services with your mark, this counts as use in commerce. Other times, displaying your mark along with your services is enough. Showing your mark with a “coming soon” page on a website won’t work, however, because you’re not providing the services yet.

If your trademark is your business’s name, using the mark as a part of your business’s address isn’t using it with goods or services. So, be sure to display the mark separately.

With most creators, unless you sell merchandise, you probably have a service mark instead of a trademark. You can use it on your videos, on the sign-up page for your newsletter, on the download page for your podcast, or as a part of the header on your website.

Your Trademark Rights Start When You Use It in Commerce

For a mark to be a trademark, you must use it to do business. The trademark jargon for this concept is the mark must be used in commerce.

In the US, trademark rights come with use. So, you start to acquire trademark rights as soon as you use the mark in commerce with your goods or services.

You can use a trademark in commerce by shipping the goods via a commercial carrier like USPS, UPS, and FedEx. To apply for a federal trademark registration, you have to ship goods bearing the mark in interstate commerce. Technically, even shipping only inside your state is interstate commerce, but you can make everything absolutely clear by shipping across state lines.

With a service mark, the usual way to show use in commerce is to use it on advertising for your services. Sometimes, using the mark on a website where you provide your services will be enough.

This is a trademark basics article, so we won’t go into the tricky parts of use in commerce. If you’re curious, here’s what the US Trademark Office uses to help them decide what qualifies as use in interstate commerce.

What Rights Do a Trademark Owner Have?

The goal of a trademark is to prevent consumers from confusing one business’s goods or services with another business’s goods or services.

So, if two marks that look or sound too much alike are used on similar goods or services, consumers might confuse the two. They might grab one product when they meant to buy the other product.

This key trademark basics concept is called likelihood of confusion. A trademark owner has the right to prevent others from using a mark that is likely to be confused with theirs.

Over the years, courts have broken the concept of likelihood of confusion into smaller bits. A mark is likely to be confused with another mark when they are the same or similar mark and are used on the same or similar goods or services.

Same or Similar Mark

So what does same or similar mark mean? Two marks are same or similar if they:

• Look similar
• Sound similar
• Have similar meaning

The marks don’t have to be exactly the same. Just because one is spelled differently than the other doesn’t mean they’re not same or similar.

Same or Similar Goods or Services

What does same or similar goods or services mean? It means the goods or services are related—maybe in the same product category like clothing, consumer electronics, accounting software, etc. They don’t have to be exactly the same.

In addition to categories of products or services, courts often look at these other factors:

• Marketing channel. Maybe one product is a hand soap sold to high end resorts for the guests’ rooms and another is an antibacterial soap sold to hospitals. If the channels are different, then there’s less likelihood of confusion.
• Sophistication of consumers. Sophisticated consumers tend to study their purchases more before buying and are presumably less likely to be confused.
• Price of goods or services. People tend to be more careful buying expensive items vs. cheaper items. So, those who are buying more expensive items are presumed to look at the trademarks more carefully and are less likely to be confused.

These factors are not exclusive. There are also a lot more detailed arguments on these factors than we can present in a trademark basics article. So, if you have a question about likelihood of confusion, it’s best to get the answer from a trademark lawyer.

An Important Trademark Basics Concept is Trademark Dilution

We mentioned earlier in this article that trademark law is country-specific. Some countries only have the likelihood of confusion standard that we explained above. They apply this standard fairly broadly. Here in the US, the standard can sometimes be a little limited. So, we have another concept called trademark dilution.

Trademark dilution works only for famous marks. The idea is that some marks are so famous that consumers might be confused about their origin even when another business uses them on very different goods or services.

For example, consumers will probably think a Coca-Cola electric scooter has something to do with the soft drink company. Or a Google burger joint has something to do with the internet search company. So, Coke and Google can stop others from using their mark even when used on very different goods or services. In other words, they can prevent others from diluting their mark.

So which trademarks are famous? A court decides this point. It usually has a lot to do with advertising spending. But, let’s face it, we don’t need a court to tell us that Microsoft, Hershey, Louis Vuitton, Samsung, Rolex, and Netflix are all famous marks. We just know.

How Long do Trademark Rights Last?

Trademark rights can potentially last forever. This is very different from patent and copyright rights.

Trademark rights come when you use the mark in commerce. So, as long as you keep using the mark in commerce with your goods or services, you’ll have rights to the mark. You can sell the trademark, but usually the right to make the goods or provide the services come with the trademark.

Three Ways to Lose the Rights to Your Trademark

There are three ways to lose the rights to a mark.

When You Abandon the Mark as a Trademark

You can stop selling the goods or services associated with the trademark. Once you tell the world you’ve stopped, you stop having rights to the mark.

When the Mark No Longer Functions as a Source and Quality Identifier

You can also lose rights to the mark if others start to use the mark on similar goods or services and you don’t stop them.

Trademarks are supposed to identify the origin and quality of goods or services. So, if other businesses start to use the mark on goods or services similar to yours, the mark no longer identifies you as the only source of the goods or services. If this happens a lot, then you lose rights to your mark.

You can stop unauthorized use of your mark by asking the other business to stop, by giving them a license, or by suing for trademark infringement.

When the Mark Becomes a Generic Word

The third way to lose the rights to a mark is if the trademark becomes a generic word. A trademark is an adjective that modifies the goods or services, which are nouns. So, if people start to use your trademark as a noun or as a verb, you could lose the right to the mark.

For example, the word escalator used to be a trademark, but not anymore. It became a generic term for an automated staircase. Aspirin and thermos used to be trademarks too.

The good news, though, is that you can rehabilitate a trademark that has become generic. Singer is a trademark for sewing machines. At one time in the past, it became a generic term for a sewing machine. But the company was able to rehabilitate the mark. Now, people call sewing machines sewing machines instead of Singers, and Singer is once again a trademark.

How to Use Your Trademark Correctly

An important part of trademark basics is knowing how to use your trademark correctly. It’s a part of what you have to do to maintain your mark. Mostly, you’re trying to prevent it from becoming a generic word.

You’ll see that Xerox still tries to tell consumers that you don’t xerox a document but make a photocopy of the document. A court ruled in 2017 that the mark Google is still a trademark despite people say google it instead of do an internet search on it. Still, things can change over time, so a trademark owner can never relax just because a court ruled that, for now, the mark hasn’t become generic. Yet.

There’s a simple trick to using a trademark correctly. If in doubt, just add the word product or service after the mark. If you pay attention, you’ll see Coke ads often call their soft drink the Coca-Cola product. The Netflix service sounds pretty natural too.

Should You Register Your Trademark?

One of the most important things to remember from this trademark basics article is that, in the US, trademark rights come with use. So, once you start to use your mark in commerce, you have at least a little bit of protection. Still, a trademark registration is good to have. For one, it lets the world know that you’re using the mark for your goods or services, so they shouldn’t use it in the same way. For another, it gives you some legal goodies if you ever need to enforce your trademark against a latecomer.

If you’re a small business just starting out, there will be a million things you’ll need to spend money on. You’ll probably be OK for a while if you need to prioritize spending money on other things instead of a trademark registration. But if the trademark is the name of your business, we recommend you at least grab the domain name to prevent others from getting it. And we recommend you start using the mark as soon as you can.

As to your trademark rights in other countries, unlike copyright rights, your trademark rights are country specific. This means you don’t automatically get rights to your mark in other countries once you start using your mark. You have to file applications in each country. But there is a simplified way to file in other countries if you file a federal trademark application in the US.

We’ll go into the trademark registration process in our next article.

Interested in starting and running a small business? Here’s the beginning of our step-by-step guide: What to do right after getting that great business idea.

DISCLAIMER: This article does not constitute legal or accounting advice. Instead, it contains general information. The information gives you the background you’ll need to hit the ground running when you do go get advice from a lawyer or accountant. Only lawyers and accountants properly licensed in your state/country are qualified to give you legal or accounting advice.