How to Protect Your Business and Intellectual Property
Entrepreneurship

Small Biz Alert: Guarding Your Intellectual Property: Trademarks & Service Marks 101

pat-riley-with-lebron-james
pat-riley-with-lebron-james
Lebron James is seen with Miami Heat president Pat Riley, who trademarked "3-peat." (Image: File)

Now do you have to file a trademark registration? In theory, no. Because again, what’s a trademark? A symbol that shows your reputation by which consumers can associate and identify your products with your brand. So if consumers are aware of your product before you acquire trademark notice, but it is not as useful as a federal trademark registration. It does not afford you court protection.

Trademarks are also not to be used as nouns. Think MM candy, Jeep or escalator.

It’s also trademark infringement when another firm without being authorized uses a name so similar to yours it is likely to cause confusion. Like Tim and Jim nail widgets. Consumers are likely to think that the product is either from you — or you think that their product is good enough so you gave permission. If the product is terrible it can damage your name.

The overall design of a product or its packaging, even the design of the store can be protected.

In rare instances Kelly says “You can use the name of a firm you are competing with in an ad but you have to make sure it is truthful. One way to do this is to make sure you have a test that can back up your claims. For example, ‘I have a test that shows my paper towel picks up three times as much as bounty. If you want to see the test I’ll show it to you.’ It constitutes fair use but should be as minimal as possible. Remember you can’t use the logo.”

One last note, try to avoid naked licensing. Your trademark is your goodwill, your association, if you let someone else use it or offer it for sale, the court could rule against you on naked licensing and cancel your trademark.

Finally, back to the examples above. Colors can be trademarked. The courts allowed YSL to make monochromatic red shoes (where both the soles and uppers are red) … but still granted Christian Louboutin trademark protection over the red sole alone. The trademark office was actually ordered by the court to modify the registration they obtained by limiting it.

Pat Riley has in fact stopped people from using the three-peat trademark. He was able to convince the trademark office before anyone else did. According to Bloomberg, any business entity, wanting to use the term for commercial purposes, would have to either obtain permission or pay a royalty to Riley.


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