Trademark law is the law of business slogans, names, and identifiers and the right to use them.
Trademarks are a type of intellectual property.
They help businesses build brand identity and sell their products.
Trademark law involves creating and protecting trademarks for business use.
There are both federal and state laws that apply to trademark law.
What Is Trademark Law?
Trademark law is the area of law that involves slogans and logos that companies use to sell products.
Companies that have slogans and symbols have a business interest in protecting the exclusive use of those slogans and symbols.
Trademark law is the law that surrounds when a company has exclusive use of a phrase and what happens when someone else fails to respect that exclusive right.
Trademark law is the body of law that governs property rights surrounding trademarks like phrases, symbols, and words that are unique to a company.
What Is a Trademark?
A trademark is a phrase, symbol, or word used by a company to distinguish or brand a product.
It is a unique set of words or a symbol that a company uses to identify and sell a product. 15 U.S.C. 1127 gives the definition of a trademark under United States federal law.
To be a trademark, the phrase or slogan must meet legal qualifications.
The most important qualifying characteristic is that the phrase or slogan uses unique identifiers to distinguish the product.
A trademark is a series of words or symbols that set a product or company apart in an attempt to create a brand and sell products.
Where Do Trademark Laws Come From?
Trademark laws come from both state and federal sources.
Trademark laws first began as part of United States common laws.
The U.S. federal government passed a nationwide trademark law in 1946.
The law is called the Lanham Act.
Most of the trademark law that is enforced today comes from the Lanham Act.
The Act is still good law, and Congress amended it in 1996.
In addition to the Lanham Act, trademark enforcement may still occur in the form of state common law actions.
What Do Trademark Attorneys Do?
Trademark attorneys help their clients create and defend trademarks.
They help their clients understand when a phrase or slogan qualifies for trademark protection.
If a phrase qualifies for trademark protection, the attorney creates a plan for the client to claim trademark protection.
In addition, if a trademark infraction occurs, the trademark attorney helps their client defend the trademark including bringing legal enforcement actions as necessary in federal and state courts.
What Qualifies as a Trademark?
A company qualifies for a trademark based on one of four characteristics:
Arbitrary or fanciful – An arbitrary or fanciful trademark bears no relationship to the product.
For example, the word Apple has nothing to do with selling computers.
Apple is a trademark based on arbitrary or fanciful characteristics.
An arbitrary or fanciful trademark must be readily capable of identifying the product because it has nothing to do with the function of the product itself.
The laws provide a high degree of protection for arbitrary and fanciful trademarks.
Suggestive – A suggestive trademark implies a characteristic of the underlying good.
For example, the trademark Clinique for the beauty product company may suggest that the product is a clinic for the skin.
A suggestive trademark has some relationship to the product itself.
Suggestive trademarks have a high degree of protection under United States law.
Descriptive – Descriptive trademarks describe, rather than merely suggest, the characteristics of the product.
A descriptive phrase or slogan makes it much more difficult to claim trademark status.
Descriptive trademarks must take on a secondary meaning as the identity of the brand in order to qualify for trademark protection.
Courts are hesitant to award trademark protection to descriptive phrases and slogans because of the possibility of providing an unfair competitive advantage to one company over another.
Generic – Generic phrases and slogans merely describe a product.
For example, the word computer merely describes all types of computers.
Generic phrases and slogans are too broad to receive any kind of trademark protection.
In addition, a unique slogan may become generic over time if it becomes used to describe a category of products.
How Does an Attorney Help a Client Get a Trademark?
A significant part of practicing trademark law is helping a client win trademark protection for a phrase or slogan.
There are two ways for a company to receive trademark protection.
The first way to receive trademark protection is to be the first to use the phrase or slogan to sell a product.
Protection attaches to the point that the company sells the product to the public.
When a product is introduced regionally, trademark protection is regional instead of national.
To get national protection in one transaction, it’s necessary to file for trademark protection with the United States Patent and Trademark Office.
The USPTO is a national, government office designed to evaluate and keep records of patents and trademarks.
Any company may register its trademark with the intent to use it in commerce.
The USPTO investigates applications.
They may deny an application if it is too generic, if it has no secondary meaning, or if it is immoral or scandalous.
Enforcing Trademark Laws
Trademark lawyers serve an important role for their clients in defending trademark use.
Trademark infringement and trademark dilution may be grounds for legal action.
Legal action may also be appropriate when the use of the phrase casts the trademark or the company in an unflattering light.
Defenses may include parody, descriptive use, and nominative use.
Remedies may include profits, damages, costs, and treble damages if the use occurs in bad faith.
Who Practices Trademark Law?
Trademark lawyers typically combine their practice with other, related areas of law.
Many attorneys make their entire career of practicing patent, copyright, and trademark law.
To practice patent law, an attorney must take and pass the patent bar exam.
However, passing the patent bar is not necessary to practice before the United States Patent and Trademark Office on trademark matters only.
For a lawyer who does not combine a practice of trademark and patent law, there is no requirement to take the patent bar exam.
While some lawyers combine their practice of trademark law with patent law, another area of law that complements trademark law is business law.
Businesses have many legal needs that vary over time.
Trademark law is one type of business law.
A business may choose to work with a single lawyer for all of its business needs.
A lawyer who is well-versed in all forms of business law is uniquely qualified to make their entire practice the legal niche of business and trademark law.
Most trademark lawyers work for medium and large law firms or work for boutique patent firms.
It’s unusual for a solo or small firm attorney to focus exclusively on trademark issues.
Typically, businesses with trademark issues have a wide range of legal needs.
In turn, they seek out a team of representatives that is capable of meeting those needs.
For lawyers who want to offer legal services as a team, trademark law may be a good fit.
Trademark Lawyers Should Be Prepared for Litigation
In their daily work, trademark lawyers utilize a variety of skills.
They represent their clients in an advisory capacity.
Clients need to understand their options and rights as they pertain to creating and protecting trademarks.
In addition, when violations occur, the attorney must have the insight to help the client approach enforcement with tact.
It may not be wise for the company to enforce a trademark infringement with immediate litigation or even a sharp demand letter.
It may make more sense to protect brand image with other enforcement tactics.
Lawyers must manage brand image while they defend their client’s legal rights.
In some cases, aggressive litigation is necessary and appropriate.
A trademark lawyer helps the client navigate both legal and non-legal considerations in order to determine how best to enforce their rights and interests.
Why Practice Trademark Law?
Trademark law is an exciting and growing legal field.
Trademark lawyers have been in demand since the beginning of the United States.
As companies enter the competitive marketplace, trademark lawyers continue to be important in helping businesses defend the phrases and slogans that help them succeed.
Lawyers in the field use a variety of written and oral skills.
They must prepare documents to file before the USPTO.
They prepare litigation documents and demand letters.
However, they must also succeed in communicating with their clients and discussing different options.
They must also be prepared to litigate when matters go to court.
Their work may have a profound impact on the future of a company.
For lawyers who excel in a variety of written and oral advocacy skills, trademark law is a capable career match.
Protecting the Right to Profit
Trademark law is about business intellectual property.
Businesses that make creative slogans and symbols have a right to enforce their exclusive use.
Trademark lawyers help their clients understand and pursue their rights when it comes to trademark law.
In turn, they help their clients conduct business.