Tuesday, April 6, 2010
Trademark Yourself: Part 1
The key to protecting business goodwill
While the terms “Portrait Studio” or “Photo Studio” may not be protectable by themselves, adding some additional terms might result in a protectable trademark. For example, Walgreen Co. filed an application to register “W Photo Studio.” The pitfall associated with this approach—adding some term or element to help distinguish an otherwise descriptive mark or generic term—is that the applicant almost certainly will be required to disclaim any interest in the descriptive or generic terms. In Walgreen’s case, the company was required to disclaim any rights in the term “Photo Studio” except when those terms appeared together with the “W” prefix. Similarly, Vance encountered this pitfall when registering her trademark, “Oh Baby Photography. Bellies. Babies. Beautiful.” To obtain a federal trademark registration, Vance was required to disclaim any interest in the descriptive terms “baby photography” apart from her complete trademark.
The problem with disclaiming parts of a trademark is that it limits the rights the trademark owner can exercise and effectively opens the door for others to use the same terms. While this sort of limitation isn’t readily apparent when you’re trying to obtain a trademark registration, save for the requirement of disclaiming descriptive terms, it can have a tremendous impact once you’ve obtained a trademark registration. The rights associated with a trademark are broader than merely preventing people from using the same mark, and owners are generally permitted to preclude others from using any mark that’s confusingly similar (e.g., that’s likely to cause consumer confusion). However, when an owner disclaims portions of a trademark, it limits the scope of what may be protected, and thus, the scope of what may be considered when attempting to determine if a competitor’s trademark is confusingly similar.
In light of the pitfalls associated with disclaiming portions of a trademark, it should become apparent that the better approach to finding a good trademark is to select a mark that has no relationship to the products or services with which it’s associated (e.g., Apple for computers). Such marks, often referred to as arbitrary or fanciful, are considered to be inherently distinctive and entitled to the greatest protection. Alternatively, you can select a suggestive term combining photography-related terms. For example, a California-based motorcycle-racing photographer registered the suggestive trademark “Automotophoto.” Although the word might be more appropriately described as a portmanteau word, the resulting combination didn’t exist in the English lexicon and was approved for registration. Another example of a suggestive trademark is San Francisco, Calif.-based Mascot Metropolitan’s selection of “Camera On Wheels” as a trademark for a rolling camera bag.
There also are numerous instances of photographers registering trademarks that include their names. Names of people also can serve as a trademark, provided the mark is being used in commerce and provided the person’s consent to use his or her name has been granted.
If you’re just starting your business, or developing a new brand identity for your business, try to resist the urge to adopt a descriptive trademark. Often, business owners will feel the need to include terms in trademarks that describe what the business does. While this tendency is understandable, it’s also shortsighted because it will limit your ability to prevent competitors from using similar marks.
Once you’ve identified or created a potential trademark for your studio or business, you should attempt to “clear” the trademark for use before you start using the trademark.
The process of “clearing” a trademark involves assessing the risk that may be associated with using a given trademark and to help determine whether it’s worth making the investment in that trademark. However, even if a trademark appears “clear,” there’s no guarantee that it will be. Since trademark rights in the United States are acquired through use rather than mere registration, whoever first acquires rights in a trademark—whether registered or not—will have superior rights to anyone who starts using the same trademark later.
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