U.S. Trademark FAQ: Your Questions Answered
In Nate’s last article, he answered some frequently asked questions about copyright. This week he’s back to do the same thing to the idea of trademarks. So if you’re an author concerned about protecting your brand, you won’t want to miss this primer on what trademarks are, how they are protected, and whether or not you need to worry about them. And at the end, if you have any questions, feel free to leave a comment for Nate and he’ll do his best to get you an answer!
Howdy again, everyone! Just wanted to give you a heads up that the same caveats apply to this post as the previous FAQ about copyright: while I am pursuing a law degree that I may or may not ever use, I am not a lawyer. Nothing in this post should constitute legal advice, and everyone should always engage a law professional in your particular jurisdiction to handle questions and issues that are specific to you.
Also, while I do know a little about trademark law in the EU, the UK, Canada, Australia, and Japan and can try to field questions specific to those locations if you have them, my knowledge of US laws is more substantial. This guide only takes US law into account.
This probably isn’t exactly the gift you were hoping to get on Christmas morning, but I’ll do my best to keep it from being a lump of coal in your stocking.
What is a trademark and how does it differ from a copyright?
Like a copyright, a trademark is a legal protection for intellectual property. But where copyrights protect specific creative works like the text of a book or the images that make up a movie, trademarks protect brands, and help distinguish the products of one brand from the products of another. Another big difference is that unlike copyrights, trademarks never expire as long as they are consistently used, defended, and maintained according to USPTO (the US Patent and Trademark Office) regulations.
What are the types of trademarks?
- Fanciful – This is the strongest and most defensible possible trademark, since it’s a word or phrase you will have fully plucked from the ether. For example: Pepsi.
- Arbitrary – This is a word or phrase that already exists, but that you’re using in an arbitrary way. Arbitrary trademarks are also strong, since the chosen language doesn’t really have anything to do with the product. For example: Apple.
- Suggestive – A suggestive trademark is the middle ground between purely invented or unassociated language being used to describe your brand and using language that is too common or that describes your product too directly. Suggestive trademarks still require a little imagination. For example: KitchenAid.
- Descriptive – A descriptive trademark is very likely to be rejected if registered because it isn’t distinctive enough, and merely describes a product. For example: Qwerty Keyboards.
- Generic – I list this as a type of trademark, but this type will always be rejected upon registration. It uses extremely common language, and/or is very likely already in use by competitors in their own branding. For example, Subway attempted to trademark “footlong” and failed. And just as a personal note since we all live in Authorworld: it’s a very unwise move to attempt to trademark commonly used words and phrases just to stick it to contemporaries. Not only will these attempts cost time and money and are almost certainly doomed to fail, but you’ll have to deal with lost reputation and other drama as well. There are much better ways to procrastinate!
Do I have to register my trademark?
Nope! Registration is not required. Unregistered trademarks use the TM symbol and registered trademarks use the ® symbol. Like copyright though, registration has its benefits, the largest being that your ownership is nationally recognized and searchable in the TESS database, which will deter competitors from attempting to use the same trademark. There are other benefits as well, like increased standing in the event of legal challenges and barring foreign importers from selling products bearing your trademarks in the US.
Unregistered trademarks are more difficult to protect on a national and international scale, and are more subject to the inconsistencies of regional law. For example, some states resolve trademark challenges with the first person to use the trademark in practice. Others take the side of the first person to register the trademark.
Is my business name automatically trademarked when I incorporate?
Your trade name is the name you choose for your company when you incorporate, register your business with your locality, or file paperwork to do business under a name other than your personal legal name. None of these register your trademark, however. You would still need to use the TEAS (Trademark Electronic Application System) portal at the US Patent and Trademark Office, preferably after checking the TESS (Trademark Electronic Search System) portal to make sure that the trademark you’re planning to use hasn’t already been registered. Please note though that in early 2021, the fees for registering new trademarks are going to increase. You can check out the new fee structure here.
What’s the difference between a service mark and trademark?
Service marks are for services instead of products, but otherwise they are identical in every way. Service marks use the SM symbol and trademarks use TM, but both can use ® if registered. A lot of times, companies use both service marks and trademarks. Take McDonald’s for example: as a restaurant, it’s in the service industry, so the McDonald’s trade name is a service mark. But their golden arches logo is a trademark, as is Happy Meal, which is one of their products.
Can I use trademarks owned by others in my books?
We’ll go into more detail about this when we cover fair use, which will be the next article in this FAQ series. Basically though, you can generally use trademarks owned by others as long as you don’t disparage the brand or contribute to a company’s trademark becoming generic.
By disparagement, I mean that you don’t want to have a character get uncontrollable diarrhea after eating at a named major fast food chain. Or depicting a major fashion brand using slave labor. Or depicting the tablets of a major electronics manufacturer blowing up in their users’ faces.
By contributing to a trademark becoming generic, I mean things like “googled it” instead of “searched the web” or “put on a band-aid” instead of “put on a bandage”. Once a trademark becomes generic and more or less ubiquitous it becomes next to impossible to legally protect, and competitors can start using the generic term on their own products. The process by which this happens has a cool name: genericide.
A great idea for not having to worry about the above pitfalls and covering your caboose against potential drama (and as a great way to flex the old creative muscles) is to create your own brands. The vast majority of the time, readers won’t care whether your main character is grabbing a bite to eat at Burger King or Hot Buns, and using the same brands across different books let you create an entire universe for your characters to live in even if they never share a story.
That’s all for now! As always, if you have any questions or comments, feel free to leave them below. I hope you’ll all join me in wishing 2020, the year that felt like a decade, a very, very fond farewell. I hope that you find (or continue to find) success in 2021. Cheers!