“I dyed my hair this crazy red to bid for attention. It has become a trademark, and I’ve got to keep it this way.” – Lucille Ball
Whether you’re a Millennial binge-watching I Love Lucy, or a Baby-Boomer reminiscing about your family’s one black-and-white TV set, most people remember Lucille Ball and her bright red hair. Her hair was her “trademark” – what set her apart from other actresses and made her memorable.
But is that what a “trademark” really is, or is this just a colloquial, inaccurate use of that word?
Actually, Lucy’s not off the mark (pardon the pun). A trademark is any word, phrase, letter-string, slogan, logo, symbol, design, scent, color, or even sound that identifies a source of a product or service. A trademark is not only the NIKE® brand or Nike’s “Swoosh” logo; other trademark examples include the look of a Coca-Cola® glass bottle, the distinctive sound of a Harley-Davidson® brand motorcycle, and the pink color used on Owens Corning® brand insulation.
All these trademarks communicate to the consumer that the product comes from a certain trusted source. The buyer may not know the name of that source, but the buyer trusts that any product bearing that trademark maintains a certain level of quality and embodies attributes that the consumer associates with other products bearing that trademark.
If you were to see a Rolex® limited edition car going down the road, you’d probably assume that the car is luxurious, expensive, and might even display a diamond-encircled Swiss clock on the dashboard. This is true because you have come to trust that the ROLEX trademark means you’re buying a high-end product.
What do Trademarks Mean for your Business?
Trademarks do not have to be registered to have value and to be valid and enforceable. The minute you open your doors for business, you are beginning to create a trademark (and possibly multiple trademarks). Your customers will rapidly associate your trademark or business name with the friendliness and the level of service they encounter or with the quality of the products you are selling. If customers are pleased with their purchases and the service they received, your trademark value goes up, and your competitors start to take notice.
So why should you go to the trouble and expense of registering your trademark? Here are just a few reasons:
* Registration makes it easier to prove your trademark rights, rather than having to present evidence about your trademark use, your volume of sales, and where you have used your trademark.
* Registration makes it easier to prevent domain name cybersquatters and pirates.
* Registration makes it easier to go after counterfeiters and infringers of your trademark.
* If you have trouble with fake goods bearing your trademark coming into the U.S., you can register your trademark with U.S. Customs and Border Patrol and they may stop counterfeit goods – but only if the trademark is federally registered.
* Registration affords a presumption that you have nationwide rights, even if you only have sales in a couple of states. Since trademark rights are based on actual use, though, bear in mind that your rights might not vest until you have actually used your trademark in a particular state. Once you have used your trademark in a state, your rights pre-date to the date your trademark was federally registered.
* A registered trademark is a valuable business asset, especially if you sell your business.
Notice that I used the words “federally registered” quite a bit. That’s because trademarks can be registered in each state, too. A state trademark registration costs a bit less than a federal registration, but only applies within that state. There are more pros and cons to state registrations versus federal registrations, but we’ll have to address those issues in another column.
Don’t go the Way of the Trampoline – Keeping Your Trademark’s Value
Registration does not mean that a trademark will be valid and enforceable forever. A federal registration must be maintained periodically, including by renewing your registration every 10 years and periodically filing a “Declaration of Use.”
More importantly, you must use and protect your trademark so that it does not lose its ability to designate a single source for the product or service.
Always remember that trademarks are adjectives. Adjectives modify nouns, so you should use your trademark/adjective in connection with a noun in order to prevent the trademark from becoming a generic product descriptor. That noun could be the word “brand,” but it is helpful to give the consumer a more descriptive noun to call your product.
This concept is sometimes called “genericide” – when a trademark loses its value to distinguish a single seller of a product and becomes the generic word for a product. Classic examples of genericide include “escalator,” “corn flakes,” “yo-yo,” “aspirin,” “kerosene,” and “trampoline.” All these words used to be trademarks, but their manufacturers and marketers failed to give the consumer a name to call the product. Since the consumer didn’t know what else to call that “bouncy toy for your backyard,” they just called it by its brand name, and “trampoline” passed into the English language as a new noun rather than a trademark.
Genericide is why you’ll see “Kleenex® brand facial tissue” on every box, or “Band-Aid® brand adhesive strips” or “Jell-O® brand flavored gelatin” or “Rollerblade® brand in-line skates.” These companies are ensuring that their trademark doesn’t become the generic name for the product, which would mean that their competitors could start calling their in-line skates “rollerblades,” too.
Your Trademark: Use It or Lose It
Let’s look at the second part of the Lucille Ball quote: “I’ve got to keep it this way.” Lucy was exactly right, again. In order to keep a trademark, you’ve got to continue to use it. If Lucy hadn’t kept her hair that bright red color, her audience would cease to associate it with her.
The same is true for more typical examples of trademarks, like words and logos. If you don’t use your trademark, you wind up losing it.
There’s an interesting debate in the law right now about when a trademark actually “dies.” When do consumers cease to remember a trademark, or cease to associate it with a single source? Naturally, the answer to this question varies from trademark to trademark, depending on the strength of the trademark and the goodwill and reputation that it had built.
A cottage industry has grown up around these “zombie” trademarks. Some entrepreneurial companies are trying to resurrect brands of companies that have gone out of business or of products that had left the marketplace, such as “Coleco,” “Montgomery Ward,” BRIM brand coffee, and UNDERALLS brand pantyhose.
So, what are the lessons to be learned here?
* Register your trademark.
* Use your trademark, and keep records of how you’ve used it and where you’ve used it.
* Use your trademark as an adjective – follow it with a noun and don’t let it turn into a verb (like “Go xerox some papers for me”) or the generic product name.
* Use your trademark with the registration symbol ® if it’s federally registered.
* Consult a trademark lawyer for more advice on using and protecting your valuable trademark rights.
Meet the Author – Arthur DeBaugh
Art DeBaugh is an attorney at the law firm of Bell, Davis & Pitt, P.A. As a North Carolina State Bar certified specialist in trademark law, Art has more than 25 years of experience protecting clients’ intellectual property. He focuses his practice on trademarks, marketing/advertising/promotions issues, copyrights, trade dress, trade secrets and business and corporate matters. Art represents clients in a wide range of industries, such as software and electronics, health care, marketing, consumer packaged goods, apparel/textile, retail, and food & beverage. He has prosecuted more than 3,000 trademark applications in the United States alone.