When it comes to trademarks, there are many common myths and misconceptions that we have noticed often lead to confusion and pivotal missteps for business owners. Getting ahead of and preventing these common mistakes is crucial for minimizing costs and ensuring effective protection for your business and brand. This article will walk through 16 common myths regarding trademarks, shedding light on key legal truths as well as best practices.

Myth 1: A Trademark and a Copyright are the Same Thing
In my practice, its common to speak with individuals who believe that trademarks and copyrights serve the same purpose or who confuse the purposes of each. While both are forms of intellectual property protection, they are distinct in many ways, including what they protect as well as their processes and procedures for protection. Trademarks are used to protect your brand identity, including your brand’s name, logo, slogan, and other items of identification that are used in conjunction with the sale of certain goods or services (think about the Nike logo; when you see the Nike swish on an article of clothing you immediately know who is selling that product). In contrast, copyrights protect your original works of authorship, such as books, music, and art. These areas can sometimes overlap. For example, you may have a copyright on the art you created for your t-shirt line, which you sell on a website under a trademarked brand. It’s important to make sure you are properly covered for both trademark and copyright protection, if they apply.

Myth 2: Trademark Registration is Not Necessary
Many believe that if they use a trademark for their business, they automatically have full rights to it and can stop all other potential users. While common law trademarks can provide some protection based on your use, they are limited in scope. Registering a trademark with the USPTO (United States Patent and Trademark Office) offers stronger protection as well as nationwide enforcement rights. Don’t hesitate to register a trademark with the USPTO. We often see business owners who lose some of their protection and enforcement rights, and, in the worst cases, deal with lawsuits and have to rebrand due to other users who are able to register with the USPTO first.

Myth 3: Conducting a Trademark Search is Unnecessary
Skipping a trademark search can be a costly mistake. A comprehensive search helps identify other existing trademarks that might conflict with your proposed or already existing mark. Performing a search, ideally in advance of creating your brand but at least in advance of submitting your trademark application, can significantly reduce the likelihood of wasted fees as well as trademark infringement claims by ensuring that your mark is unique and legally defensible. As a part of our firm’s standard practice, and included as a part of your flat fee, we include a professional trademark search and a written analysis report in advance of submitting application(s).

Myth 4: Trademarks Last Forever
Trademarks do not last indefinitely without meeting certain criteria. They must be both 1.) actively and continuously used [with no substantial changes to the trademark name, logo, etc. or relevant goods/services] and 2.) periodically renewed in accordance with the set timelines of the USPTO. A trademark renewal involves filing specific documents and paying fees to the USPTO to keep the registration active. Our firm can assist with your trademark renewal filings and, for those who request it, we can keep their mark(s) in our docketing software to timely remind of upcoming renewal obligations.

Myth 5: Any Name Can be Trademarked
Not every name is eligible for trademark registration. Generic terms (using common names like “Bicycle” as the name of a bicycle store), descriptive marks (using “The Shampoo Company” for a company/store that sells shampoo), and misleading or deceptive names (using the word “Organic” to sell products that aren’t organic) often fail to qualify. A successful trademark should be distinctive, arbitrary, and capable of uniquely identifying the source of a product or service.

Myth 6: International Trademark Protection Happens Automatically
A trademark registered with the USPTO does not automatically grant international protection. Businesses looking to expand globally must apply for international trademark protection through separate mechanisms like the Madrid Protocol, which simplify the process of securing trademark protection in multiple countries. Do not assume that one U.S. trademark registration will protect your trademark in all places for all things. Additionally, trademark law varies by country, so it is important to understand and comply with the laws in each country where you seek protection.

Myth 7: Trademarks Are Only for Large Businesses
Trademarks are crucial for businesses of all sizes. There is significant benefit in establishing trademark protection early on; ideally, before the business even starts selling goods or services. In the case of small businesses and startups, where money is often especially tight, it can be particularly important. Not only does it establish your brand identity and help prevent others from using confusingly similar marks, it’s also valuable to know if there are other brands out there that would be an obstacle to your trademark so that you can still pivot early on without incurring too much cost in the re-branding process.

Myth 8: Trademarks Protect Ideas and Product Designs
Trademarks do not protect ideas, concepts, or many of the creative designs you place on your products; they protect brand identifiers of goods and services. If you have an innovative idea, consider seeking counsel from an attorney regarding the possibility of patent protection. If you, or someone you hired, have made a creative work or design, including a design you place front and center on your clothing, consider seeking counsel to advise on the viability of a copyright. If the creative design is being used more like a logo, this can qualify for trademark protection as well as copyright protection, and you can discuss both with your attorney.

Myth 9: You Can Use the ® Symbol Alongside Your Trademark to Add Protection
The ® symbol can only be used once a mark is officially registered with the USPTO. It’s very important that you do not incorporate this symbol alongside your unregistered trademark on any websites, marketing, or other places until you have successfully registered the mark with the USPTO. Using this symbol improperly can result in serious repercussions, including fraud or false advertising claims as well as cancellation of pending applications. While waiting to register your trademark, it is permissible to use the TM symbol to indicate that you are claiming rights to a trademark, but it is not required.

Myth 10: Trademark Monitoring is Unnecessary
Failing to monitor your trademark can lead to infringement and dilution by third parties. Trademark monitoring allows you to keep an eye on the marketplace as well as other USPTO filings to help ensure no one else is using a mark that is confusingly similar to yours or using a similar mark in a way that could tarnish the reputation of your brand. Our firm offers the ability to set up a trademark monitoring system for your trademark(s) with frequent reports sent to you offering insight and evaluation, typically for a monthly fee.

Myth 11: Once a Trademark is Registered, Future Protection is Automatic
Registration does not guarantee absolute protection. It is essential that you enforce your rights actively by taking steps to monitor for infringement, either on your own or through a professional monitoring system, and taking legal action when necessary to stop infringing users.

Myth 12: You Can Only Protect Your Launched Products and Services
A lot of people believe they must wait to start the trademark process until they are ready to “open for business.” This is a huge misconception. The USPTO offers an intent-to-use application, which allows you to apply for a trademark that you intend to use soon but have not yet started using to sell some or all of your goods or services to the public (“in commerce”). Getting in line early through an intent-to-use application can help secure your rights while you work to finalize product development, marketing strategies, and/or your brand launch.

Myth 13: Registering a Corporation or LLC Protects your Business Name as A Trademark
Forming an entity with the relevant state office does not, on its own, guarantee trademark rights. This process simply reserves your business name for use in that state for administrative purposes, taxes, etc. Registering an entity to own your trademark rights does not obligate you to use that name as your “brand” and, in fact, many people do not use it in that way. Instead, your trademark rights begin through your use of a name to sell goods or services to the public and through any state or federal registrations. While creating a corporation or limited liability company to own your trademark is a good idea, it should not prevent you from taking steps to protect your trademark.

Myth 14: Trademarks Only Protect Names and Logos
Trademarks can protect a wide range of elements, including slogans, designs, sounds, and even colors or smells. Anything that you can prove uniquely identifies the source of your goods or services can potentially be trademarked. If you have several distinctive components you use to identify your brand to consumers, don’t stop with just protecting your brand name or logo.

Myth 15: Trademarks Cannot Be Transferred
Trademarks, registered or not, are a business asset and can be transferred or sold. The process of transferring a trademark involves several important legal components, such as the inclusion of the proper contract language needed to effectuate a complete and enforceable transfer as well as timely recordation of the transfer document with the USPTO. If you are planning to sell your business or some assets of your business, whether you already have a registered trademark or not, our firm can assist you with putting together the necessary transfer documents and filings.

Myth 16: All Trademarks are Created Equal
Trademarks have varying levels of strength. Fanciful and arbitrary marks (such as “Apple” for the sale of computers) are the strongest and easiest to protect, while descriptive marks are weaker and harder to enforce. Generic marks are not enforceable at all. For descriptive marks, there are options for some minimal, but still important, protection on the Supplemental Register with the potential to one day move to the Principal Register (full protection). However, choosing a strong trademark from the outset can save significant legal trouble down the line. If you would like to discuss the strength of your current trademark or a potential trademark you are considering, we can can brainstorm with you on some potential ideas to help strengthen your trademark.

Conclusion
Understanding the realities behind these common trademark myths is a key first step for any business owners looking to protect their brand. Clear comprehension of the differences between trademarks and other forms of intellectual property followed by proper trademark registration and vigilant trademark monitoring can significantly enhance your brand’s security and value. Whether you are a small business owner or a part of a large corporation, having an attorney on your team with the knowledge to help you properly navigate the intricacies of trademark law can be crucial for your long-term success. Our attorney, Destinee Byers, is an experienced trademark attorney who can assist you with avoiding these common missteps. Call Davis Burch Abrams today at (757) 410-2293 to set up a free 15 minute introductory call.