Trademark law for bloggers: what you don’t know CAN hurt you!
One aspect of intellectual property that’s often misunderstood is trademark law. For bloggers and other Internet-based businesses, however, trademark can be a vital and valuable asset. On the flip side, NOT knowing about trademark law can get you into serious legal trouble.
I’m only going to be covering the basics of US trademark law. It’s important, even for international businesses, because much of what we as Internet businesses do may create some liability or presence in the US. I’ll cover international issues in a later post.
Here’s the absolute minimum you need to know:
What does trademark protect?
As I covered in a previous post, the purpose of trademark is mainly to protect consumers. A trademark shows you the source of whatever goods you are buying. It does this by stopping others from using that mark, so that there’s no confusion over where those goods came from.
Let’s look at some examples of famous trademarks:
Now, imagine you go into a computer store and see a bunch of computers with the Apple logo on them. What if you bought one, but inside was some generic PC? That would be bad, right?
When you go into a store, you expect that brand logo to coincide with the products that you know.
If others were allowed to use any famous logo for different products (and infringe on the trademark owner’s rights), you would never really know what you’re getting.
If others were allowed to use any famous logo for different products (and infringe on the trademark owner’s rights), you would never really know what you’re getting. It would probably diminish your feelings about the brand, as well.
This is the problem that trademark law hopes to solve.
What makes a strong trademark?
All trademarks are not created equal.
In US trademark law, the strength of trademark protection is measured on a “continuum” of distinctiveness. This means that the lower the distinctiveness of the mark, the less protection it receives. In fact, at the lowest level, a mark will have no protection. We’ll get to that in a moment.
Here’s the five levels of distinctiveness:
#1 - Fanciful:
A fanciful mark is a made-up name for the brand. These, along with the next type, are the strongest marks. Think Exxon or Xerox. They are distinctive because no one else is using that name – it’s made up.
#2 - Arbitrary:
An arbitrary trademark isn’t made up, but it’s a word that isn’t usually used in connection with the goods that it’s describing. It is, after all, arbitrary.
Think Apple Computer or Fruit of the Loom for underwear. If you used either of those marks to describe your fruit stall business, they would be merely suggestive or descriptive (see below). However, when these fruit names are used in connection with computers or underwear, they become strong brand identifiers.
I usually hear the argument that “they’re just generic words! How can you claim rights over them?” Well, this is why.
I usually hear the argument that “they’re just generic words! How can you claim rights over them?” Well, this is why. And Apple Computer doesn’t have dominion over everything Apple (though they certainly try). You generally only get protection in the type of goods that your trademark is associated with. We’ll cover that later in this post, though.
#3 - Suggestive:
Suggestive marks are not quite arbitrary, since the words they use actually suggest the type of product they are connected with. Think Microsoft or Chicken of the Sea. To be suggestive, but not merely descriptive, a mark needs to require some kind of thought or imagination to make the leap to the product.
#4 - Descriptive:
A descriptive mark is one that describes the product itself. Think Arthriticare for arthritis medicine or Car Freshener for car air fresheners.
In order for a descriptive mark to be registered or give the owner any protection, it needs to have something called “secondary meaning.”
What’s secondary meaning?
Well, the first three levels we talked about have something called “inherent distinctiveness.” This means that, by their very nature, they are distinct enough to be good trademarks. However, a descriptive mark has to show more than that in order to get protection. It has to show proof that the public associates their descriptive brand name with the product that they sell.
So, in our example, Car Freshener would have to show that surveys or some other proof that the public knows that Car Freshener means their particular brand of car air fresheners, not just any old car air fresheners.
That’s why I usually counsel clients to shoot for something in the arbitrary or fanciful range, rather than risk being merely descriptive.
This isn’t always easy to do and it can take time to get this secondary meaning. That’s why I usually counsel clients to shoot for something in the arbitrary or fanciful range, rather than risk being merely descriptive.
It is interesting, because many blogs and other Internet businesses name their businesses something descriptive for SEO purposes. The URL itself may describe exactly what the blog is about. This may be good practice for SEO (debatable), but it’s certainly bad trademark practice and will probably leave you unprotected when others try to steal your brand.
#5 - Generic:
The lowest level of trademark distinctiveness is generic. Think Discount Mufflers for a discount muffler shop or Super Glue for an adhesive product. The name literally describes the product. It is not distinct from the product at all, and therefore gets no protection.
If you called your travel blog “Travel Blog,” you wouldn’t expect to get any protection for that brand name. The reason is that giving you protection would stop others from merely describing their sites! You can’t corner the market on the generic term for a product.
How do I know if I’m infringing?
Trademark infringement hinges on something called “likelihood of confusion.” This means that if someone else is using your trademark in such a way that’s likely to confuse consumers, they could be found to be infringing.
Likelihood of confusion is kind of complicated, and involves the balancing of a number of different factors. It’s usually a very fact-driven analysis, so it’s hard to give any kind of hard-and-fast rule. Another issue is that different jurisdictions have different sets of factors, making the whole thing pretty complex.
This is why lawyers charge you a lot of money, I guess.
Trademark infringement hinges on something called “likelihood of confusion.”
We've only just begun...
So those are, in my opinion, the absolute basics about trademark that you need to know. However, there are a bunch of other topics related to trademark that Internet businesses should know about, like “why should you register your trademark” and “what to do if someone is infringing on your mark.” I’ll get to those in future posts, so stay tuned and sign up for my mailing list in the little “subscribe” box below.