Acquiring and Maintaining a Trademark

Apple Store Trademark Registration

Frank Lloyd Wright Home

 

Acquiring and maintaining a trademark is much like purchasing and maintaining a home. Before they purchase a home, reasonable buyers will have it inspected. That inspection will, among other items, check the electrical system to see if it is safe and has sufficient capacity for the buyer’s needs, test the HVAC system to see if it is working properly and how long its useful life is, check the roof to make sure that it keeps the elements out and how long it will last, check the plumbing and drainage for leaks and make sure that it functions correctly; and in some areas of the country, inspect for termites and check to make sure that the home is not in a flood plain. The buyer will also have an appraisal done, comparing that house with comparable homes in the same area to confirm that it is priced correctly. Then after they buy that home, they will have to maintain it; fix the fence, maintain the yard, repair the shingles, insulate the windows, replace the appliances, etc.

Intellectual property is like a home. While it is different in that it is intangible property, it is property nevertheless, has value and, like a home, once you purchase it, you need to maintain it to maintain its value.

Trademarks may be generic. “Computer” would be a generic trademark for a computer. They may be descriptive. “Raisin Bran” would be a descriptive trademark for a cereal containing raisins and bran. They may be suggestive. “Roach Motel” would be a suggestive trademark as, while the product is a place that you want roaches to stay in, they generally don’t check out as they would in a motel. They may be arbitrary. “Apple” would be an arbitrary mark for a computer as would be “MacIntosh” and a fanciful mark would be “Exxon” or “Clorox,” i.e., a made-up word.

Just like homes, certain trademarks would be appraised as having more value than others. Since a generic trademark can’t be protected; anyone can use it, it would have little or no value for your use as a brand as competitors could use the same term and, therefore, you could never achieve brand recognition for it. A descriptive trademark cannot be registered with the United States Patent and Trademark Office without proof that the relevant purchasing public has come to see that mark as identifying a single source for a product or service. [The advantages of federal registration are that it is prima facie evidence of the validity of that registered mark, the registrant’s ownership of that mark, and of its exclusive right to use that mark throughout the U.S. as well as gives the registrant the right to sue for infringement in federal court. Also, anyone seeking to register a similar mark in the U.S. will find your trademark application or registration in the records of the U.S. Patent and Trademark Office, which should encourage them not to adopt and use a similar mark for similar goods or services.] Therefore, a descriptive mark could best be described as a fixer-upper. Ten years ago, Kellogg’s owned a federal trademark registration for KELLOGG’S RAISIN BRAN and General Mills owned a federal trademark registration for GOLD MEDAL RAISIN BRAN. Both companies were required by the Patent Office to disclaim exclusive rights to the term, RAISIN BRAN, on the ground that that term was descriptive, Like a fixer-upper home, the owner of a descriptive trademark needs to put substantial money into marketing its goods and services under that brand to the point that the relevant purchasing public has come to associate that mark with them and not as a merely descriptive term and to the point that a court or the Patent Office would concur. Like a fixer-upper home, that effort could turn into a money pit and the trademark owner might never reach that goal. Selecting a suggestive mark is like buying a house in a subdivision where property values are stable. You can get a solid house for a very good price, a registrable trademark, that doesn’t require a lot of work to keep up. Since it suggests a quality of your goods, the mark itself, without anything more, will aid in the marketing and selling of your product; you can throw it on a store shelf and with the right label, like a white picket fence, a well-tended lawn and a fresh coat of paint, it will attract buyers. But, like that house in that subdivision, every third house will be pretty much the same, with the result that in the trademark world, there are likely to be similar marks out there, giving you only narrow protection for your mark. Like a house, should you want to sell, if there are other houses in that subdivision that area for sale at the same time, your house is likely to be on the market for a while.

Now an arbitrary or fanciful mark is a different matter. Like a distinctive house, you may have to put some work into it, e.g., a house designed by Frank Lloyd Wright like the one depicted above, but unlike that generic fixer-upper, once you do that, the end result may be one of a kind and worth millions. You are going to have to spend money creating a brand that people will find instantly identifiable and that evokes a particular positive impression in buyer’s minds. Consider what Steve Jobs did when he returned to Apple to create the iMac, the iPhone as well as the interior of the Apple Store. He created products that did not look like any other competitors’ products out there, and, which, while they may not have had some of the features that those other products had, like a fine architect, created a reputation for design that made you want to own those products. It took a great deal of talent and money to get there but today Apple is #1 on Forbes Most Valuable Brands List and is worth close to three-fourths of a trillion dollars.

So, before you select a trademark, remember that intellectual property is like real property. If you do a home inspection or trademark search first to make sure that it is a good property, put money into it to maintain it; you need to police your trademark, watch for copycats and enforce your rights against them by demanding that they cease and desist their use of similar marks for similar products or services, and, start off with a distinctive design (or name), its resale value will be good.

And if you have a very good trademark attorney and a very good architect you can create both a valuable architecturally distinctive building and a valuable distinctive trademark at the same time. See U.S. Trademark Registration #4,277,914 for the design of the Apple Store, above.

About ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
This entry was posted in News. Bookmark the permalink.