After their game six destruction of the Indiana Pacers, the Miami Heat have put themselves in prime position to win a third consecutive NBA championship— a three-peat or 3-peat.
The rights to those catchy phrases commonly used to describe a sports team that wins back-to-back-back titles actually belongs to Miami Heat President Pat Riley and his firm, Riles and Co.
Also, remember those long, dragged out court battles between Christian Louboutin and YSL over the rights to using red-soled shoes?
What do these two high-profile stories have in common? Trademark protection and infringement.
So what is a trademark?
Black Enterprise recently attended an Intellectual Property clinic in New York City.
It was a workshop on the basics of intellectual property law put together by the Community Development Project, Legal Aid Society, New York’s Lower East Side People’s Federal Credit Union, and law firm Fitzpatrick, Cella, Harper & Scinto. They provide workshops and portfolio training sessions in different areas across New York as well as provide loans to small businesses or people who either have bad credit or are working to build credit.
According to Tim Kelly, a partner at the law offices of Fitzpatrick, Cella, Harper & Scinto, “Trademarks are pretty much anything that functions to identify a source. It can be a car — a smell– a word– even a color. The idea is to identify the source of your product and service so it can be separated or distinguished from some other firm’s.”
A service mark is similar to a trademark. It’s basically a name that designates some offering of services. Trademarks are used for products and service marks are used to denote services like computer lessons, or plane trips.
Sometimes domain names can be used as trademarks, for example Monster.com. Bear in mind, Monster.com is not a trademark, just like an address on a building is not a trademark. But if you put a design on it or next to it, it incorporates your domain name. That design can be registered as a trademark.
Simply put, it is a symbol like a word, that can be used to associate with your particular business holding.
How effective can a strong trademark be? Kelly uses Coca Cola as an example.
“If all Coca Cola facilities companies burned down around the world, executives can walk into a bank and say we are Coca Cola give us the money to build it back. If people know who you are, your brand is going to continue on whether or not you have buildings.”
Picking the ideal trademark can be tricky.
Trademarks are usually strong, coined terms that don’t mean anything other than what you associate them with. For example, Exxon. Originally, it didn’t mean anything, but through aggressive marketing and advertising promotions, people now recognize the meaningless word as an oil company. Same thing with Kodak and Blackberry. They now stand for camera and film companies and a brand of cell phone.
They can also be suggestive, like London Fog or Pedigree for dog food. Ideally trademarks should not be descriptive, like fluffy for pillow or soft for laundry detergent.
Kelly explains why. “If that’s what you’re using to associate people with your product, they wont be associated with you. It gets associated and mixed up with the quality of the product. Sure the pillow soft, but I’m not sure who makes it.”
To file an application, you have to decide on Federal vs State. You go the federal route if it’s Interstate Commerce. Pretty much anything you do in the Tri-state area is interstate commerce because there’s enough business that moves between New York, Connecticut, Â and New Jersey that you can argue that your business or services is interstate. If
you are selling something by the street corner you can just get a state registration, though state does not give you the same protections as federal but it does give you the ability to say it’s a registered trademark.The federal registration process is stronger. Technically because you have nationwide rights. Just like patents, trademarks are not country specific. But at the same time, if you have a business in Hawaii but selling in New York and then in California the following year, a federal registration gives you national protection and freedom to trade in these other parts of the country.
The letter “R” in a circle means it’s gone through the federal registration process, you’ve applied to the patent and trademark office, they’ve examined the trademark, and it’s been approved.
“TM” basically means I’m claiming trademark rights here or SM, I’m claiming service mark rights here. It doesn’t get you much as far as going to court, but it does put someone else on pause, maybe they’ll think about it first before deciding to use.
There are two ways to file that are important to businesses. What they call the “attempt to use application” or “used base application.”
Used based application just shows you have been selling a product for years and have decided to apply for trademark. You have to show the requisite documents of proof of sale.
Intent to use is very important for businesses. You may not be ready to start using your mark, but you also don’t want somebody else to come along and try to take unfair advantage. It helps for you put your stake in the ground saying “As of this date I have intention to use this mark for my products and service.” Then get a notice of allowance. After that, as long as you continue to maintain the work and pay the fees every six months, you get up to three years from that notice of allowance until you finally start using your mark.
Also, patents are good for 20 years. After you file a trademark, they are technically indefinite as long as you go through all the steps. Each registration is good for 10 years and then you can renew that registration as long as you continue to use the mark again.
With a patent, you are giving the invention to the public in exchange for 20 years of exclusive use. A trademark is evidence of your reputation and this word or this symbol or this design is evidence of your reputation so you should be able to keep that forever as long as you continue to use it. If you keep using it for five years, it becomes incontestible, more rights also give you the opportunity to file abroad— maybe China or Brazil world cup is coming up you want to go sell your product or services there. It gives you a stepping stone to do that.
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.