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November 11, 2015
When the time comes to create a brand for your business, it’s important to remember the key differences between copyright and trademark law. You will spend countless hours refining and rebuilding your trademark, so you don’t want those hours going to waste because of a misunderstanding of the law. Here are two things you should avoid when you’re in the process of building your trademark:
1. Don’t confuse trademark law for copyright law
In copyright law, you can take inspiration from an existing work and create a wholly new work that will generally warrant its own copyright. For example, in copyright law taking inspiration from a copyrighted painting of a horse won’t preclude you from making your own painting of a horse – so long as you aren’t making what essentially becomes a copy of the original painting. However, in trademark law, things aren’t quite as simple. One of the key tests in trademark law is the consumer confusion test – would a reasonable consumer be confused by the two marks. If your competitor uses a horse in their logo, you are likely precluded from using a horse in yours – no matter how different your horse may be. I use the word “likely”, because – as with everything else in law – there can always be an exception. When researching your competition’s trademarks, be careful not to use designs that may create confusion in the marketplace; that’s the easiest way to lose your trademark.
2. Don’t keep your new trademark a secret
For some reason, many companies will create a trademark and then keep it a secret from the world until a “great unveiling”. While this might make sense for particular a product line – so the competition doesn’t get wind of a major release until it’s been announced – it doesn’t always make sense for a new business. In fact, keeping your brand secret may have dire consequences. In trademark law, when a dispute over trademark ownership arises, the ultimate rule is to determine who used it first in public. By keeping your mark secret, you are not releasing it to the public and, therefore, should anyone else come up with a similar mark in the meantime, they will have precedence over you – no matter how long you’ve been working on your mark. Instead of all the secrecy, get the word out about your new brand – at lease to a few people outside of your company. Let a few key customers know what you’re planning. Get cards made with the new brand and send it to them as a pre-announcement. This will satisfy the first public use requirement, as well as make your customers feel special because they knew before everyone else.
By doing the proper trademark research, you can avoid costly litigation down the road. I’ve seen companies spend more than a year developing their mark, only to lose it within the first couple of weeks of its release. Give me a call, or speak to another qualified IP attorney to learn what you need to do to protect yourself and your brand.
And remember… have fun creating your trademark!
Mike Terkanian, Esquire.
DISCLAIMER: The information provided in this post should not be construed as legal advice. It is provided for research purposes to give you basic information on the content contained herein. This post does not create an attorney-client relationship nor should it be used as authoritative. If you have questions regarding the conclusions reached in this post, please call our offices or contact your legal counsel.