Trademarks are a type of intellectual property (IP) that help separate your business and products from other companies. Think brands. Trademarks are your businesses name, logo and product name that uniquely identifies you for your competition. A registered trademark, will help to ensure that you can protect your brand from use by others in various circumstances.
New businesses should seriously consider investing in registering their trademark prior to investing heavily in marketing as you may discover that another company has been using the same or similar brand for years which may result in business disruption and added expenses down the road.
In this episode, trademark attorney, Michael Atkins share insights into the necessity of trademarks and what you can and cannot do to protect yourself from future trademark disputes.
Jeremy Epp: Starting a business is very exciting. It is fantastic to see an idea that you have come to fruition, see the marketplace, start to see a product or service develop and go sell it to the marketplace. But in all that excitement, there are certain key things that you must do to protect yourself from stepping in landmines, as well as protect what you create and what you own from others who want to steal from you. What am I talking about today? We're talking about trademark law, how to protect your brand, your logo and other critical things that make your business unique in the marketplace. Stay tuned, we've got a special guest on the show today, but first, let's cue the intro.
Jeremy Epp: Welcome to episode #21. My name is Jeremy Epp, and I'm here to help you set up, launch and grow a profitable business. Well, today we are in part two of a three-part attorney series that you are going to absolutely get value out of today's show. We've got Michael Atkins from Atkins Intellectual Property. Mike is going to be talking about trademarks and what you need to know to protect yourself from having infringements on your brands, your logos and other information, as well as how to protect yourself from infringing on other people's brands unknowingly.
Jeremy Epp: Before we bring Mike on the show, do me a favor. Head on over to jeremyepp.com. Register for the show, and this way you'll be able to stay in tune with timely information about new episodes and information that we share that will help you grow your business. Without further delay, let's bring on Mike. Welcome everybody. I am excited today to have Michael Atkins on the show. Mike is from Atkins Intellectual Law Firm, and Mike is an expert in trademark law. I'm excited to have you on the show. Thanks for joining us, Mike.
Michael Atkins: Hey, thanks very much for having me.
Jeremy Epp: Tell us a little bit about yourself, how long you've been practicing law, your focus, how long you've been focused on IP, intellectual property, and what brought you to where you're at today on your law journey.
Michael Atkins: Sure, thanks. I graduated in 1996 from the University of Minnesota Law School. I grew up in Seattle, so after graduating from law school, I went back to Washington State and took the bar exam there and started working for law firms, first doing business litigation and then later transitioning into intellectual property, both fighting things out in court... that's litigation and dispute resolution... and giving advice and making trademark and copyright filings. That's the intellectual property side.
Michael Atkins: Nowadays, Atkins IP, my law firm, it's a one-man show, and I focus solely on intellectual property issues. Sometimes it's referred to as soft IP, meaning trademarks, copyrights mainly, sometimes trade secrets, but never patents. Patents are considered "hard IP," and that's a whole different kettle of fish. I don't go into that and refer those sorts of issues out to other lawyers that focus and specialize in patent law, but I do all the other types of intellectual property law, but mainly trademarks and copyrights.
Jeremy Epp: Okay. Mike, could you explain because know a lot of times we throw around terms for those of us not in the legal profession, IP this or trademark, copyright, we may get those terms mixed up and even patents. You mentioned patents was a hard IP. Would you agree that patent is typically on a physical product of some type? Is that accurate?
Michael Atkins: Well, not necessarily. It's an invention, so that can be even a new way of doing business or a new way to beat the stock market through a computer algorithm, those things that can potentially be patentable. When we're talking about patent law, we're mainly talking about inventions, dancing the state of the art. The trade off with the government and the law says that if you have an idea that's patentable and you apply to the government, describing your advancement of the state of the art, your new technology or your new process... Or it could be a new widget, a new physical good. If the government endorses you as being the owner, they issue a patent, which is a legal monopoly. Makes you the one and only seller and producer of the definition of whatever the patent says for a period of years. That's the patent law. Think about it in terms of engineers and scientists, software developers. They all may be potentially developing things that are patentable.
Jeremy Epp: How would you explain the differences between trademarks and copyright?
Michael Atkins: Trademarks are brands. The definition in the Trademark Act, which is a federal statute... There's also parallel state law statutes that also deal with trademarks, which kind of runs parallel to the federal statute. Trademark is defined as any device, any tool, any word, any tagline or symbol that tells consumers that this good or this service comes from you as the seller. You think about Nike, the word Nike. You see that on a running shoe or on a sweatsuit, you know that that product only came from one place, Nike. Didn't come from Adidas, didn't come from Reebok. It's the company that's putting its brand on its good.
Michael Atkins: I sometimes explain it in terms of the literal word or the origin of the word brand. I think about it in terms of ranching. You've got two ranchers living next to each other, and they physically brand their cattle. If the cows get all mixed up, you can sort them back out. "This cow's mine. This cow's yours." Really, it can be a slogan, a tagline. "Just do it," that tells consumers that item came from Nike just like the swoosh logo also serves that same purpose, just like the word Nike. That's the law of trademarks.
Michael Atkins: Copyright is sometimes mistaken for trademark law, but it's a different animal. Copyright law only exists under federal law. Copyright law recognizes original works of expression that are "fixed in a tangible medium." That's video. That's content. If you're writing a blog, you're writing a book, you're producing a play or you're filming a movie, all of those things because they are fixed in video or on the web were on pen to paper. All of those things qualify as copyrightable as long as it's at least minimally creative and original.
Michael Atkins: As long as you meet those minimum thresholds, you can get copyright protection, which mainly protects against copying, third parties copying your article or your video without your permission or making what's known as a derivative work. That's taking your original work of expression and using it as a jumping off point to create a new work without your permission. As an author, you've got the right under the law to put a stop to that, and that's what copyright protects. What copyright does not protect is ideas. I've got this idea for a new product or I've got an idea for a story, those high level ideas are not protected under copyright. It really is the way an idea is expressed, that is what is protected under copyright law.
Jeremy Epp: What is expressed, not the idea itself?
Michael Atkins: The way you say it, and so facts are also not protected under copyright. So if you have directions for a board game or a recipe that you as a chef have come up with on your own... Now, as an idea in your head, the recipe or the rules for a board game aren't protected because they're just in your head, but as soon as you fix it in a tangible medium, so write it down, then the way that you express how to play this game or how to cook this meal or a story or an article that you've written, all of those creative choices that you make in putting words and sentences and paragraphs together... Or as a photographer, how you compose the image before you click the shutter, all of those are artistic, creative. Those aspects are what copyright law protects.
Michael Atkins: It's kind of hard sometimes to figure out... And actually judges and courts also struggle with this. If you accuse someone of infringing your copyright, there is what's known as a filtering or a sifting of the non-protectable parts of your work out of the equation. The comparison between the two works in order to show copying focuses on the original, creative, protectable aspects of the work. It's tricky, but that's what the law requires you to do.
Jeremy Epp: Let's start with trademarks because I think this is an area that many new business owners or individuals who are thinking about starting their own business probably haven't given a whole lot of thought to. In a new business owner's mind, when should they begin to be thinking about a trademark? Is there an ideal time in the business startup cycle that would trigger that trademark conversation?
Michael Atkins: Great question, I would just say sooner the better because when you're thinking of a brand like the company name or a product name or even a logo or a tagline, you're really thinking about offensive considerations and defensive considerations. Defensive considerations, it's basically, "I want to pick a brand that is sufficiently unique in the context of my good or my service, my marketplace, so that I don't get sued." The standard for trademark infringement... This works both on the offensive side of things, but also on the defensive side. The standard is "likelihood of consumer confusion."
Michael Atkins: Likelihood of consumer confusion basically boils down to would ordinary consumers seeing my new brand, or my old brand, likely or probably believe that my goods with my brand actually come from the other guy? Or does the other guy, a newcomer who has adopted a brand that's too close to mine, would ordinary consumers in the context of the goods or services that the other guy is selling or offering, would consumers likely think that person's goods or services come from me? If the answer is yes, that's trademark infringement.
Michael Atkins: As a new company or if you're launching a new product, you want to make sure I think, number one, that you're not getting so close to someone else's pre-existing brand that you're likely to draw a nasty gram from their lawyer or, god forbid, a trademark infringement lawsuit soon after you get your product or your new company off the ground. Being unique, again, in the context of your marketplace... Mainly it's what your competitors are offering, but who else in your marketplace, in your market, what are they calling themselves? What are they calling their goods and services?
Michael Atkins: That's really some things to think about because, god forbid, you're a new company and you just launched your product and now you're getting hassled by someone else that is saying that your brand is too close to theirs. Now, you've either got to pay a bunch of money to fight and defend your rights, which is an unfortunate, uncomfortable, time consuming, distracting situation to be in. Or you've got to change your name, and that's also a real pain. It could be very disruptive to a new company.
Michael Atkins: From the defensive side of things, you want to be unique, but you want to be unique also from the offensive side of things because you want to pick a name or a logo that is sufficiently yours in the marketplace so that if someone else sees you've become a big success and they want to trade on your hard earned reputation, that you can bring the hammer down on them with the likelihood of confusion's standard. If you stand sufficiently alone, you can use the trademark laws to keep those third-party copycats or would be copycats at bay. So thinking about these things, it really behooves a new company to think about these things really from the start.
Jeremy Epp: That makes a lot of sense. How would you even begin to know if you're on the fringe of that confusion factor? I mean you've got an idea, you've got a name, you've got a marketplace that you've tested out. You've checked your dotcom names, make sure that's available. How would you even know that somebody across the country, that you're stepping on their toes maybe directly or right on the fringes like you mentioned?
Michael Atkins: Well, I'm a little biased, but I would say talk to a trademark lawyer to help you out with that type of question because there are really two big bodies of law in trademark law that will help you answer this question. In the United States, we have rights that flow from getting a trademark registered. Offensively, that's something that you might want to consider. You can maximize your trademark rights by getting your trademark registered with the US Patent and Trademark Office. That expands your local rights nationwide. We can talk about that a little bit more if you're interested.
Michael Atkins: But from a defensive standpoint, where you're adopting a new brand and you want to make sure that you're sufficiently unique, the first place to go is the US Patent and Trademark Office's database of prior trademark filings. That's a database that will tell you... It's public, and it's freely searchable, and it's free as well. That will tell you who before you has sought national rights with their trademark, and so you can search that database and really you're wanting to see, "Is my target trademark sufficiently unique that I'm not likely to get a claim from somebody else?"
Michael Atkins: Besides searching the USPTO's database, which will uncover rights that flow from the registration, we have in the United States a system that recognizes common law trademark rights. Common law trademark rights automatically arise in the local geographic area in which a trademark has been used. If you have a mom and pop shop in Des Moines, Iowa, they very well may have rights with their brand in connection with their goods or services in Des Moines, Iowa. If you're looking to rule out a national brand, they would have better rights than you in their local area. Now, you may have rights better than them everywhere else, especially if you've got a federal trademark registration, but you would be subject to the pre-existing rights that are essentially grandfathered in, that came before you.
Michael Atkins: So Google and Facebook and Amazon, searching those databases at a minimum will help you ferret out these unregistered, local, common law rights that could be still significant even though they're local. At two-pronged approach, searching the USPTO's database and then you're searching Google, Facebook, Amazon and whatever industry databases that may pertain to your particular product or your particular market. Just trying to see who else is out there that came before you because in trademark law, it's kind of a race. In the event of a conflict, so in the event there is a likelihood of confusion... Your brand is too close to someone else's in connection with your products and their products.
Michael Atkins: The winner of the race or the winner of the conflict is usually who used first. By doing these searches with the USPTO and also trying to ferret out the common law uses, you're really seeing who has come before you, and then that can inform you as to whether or not you should start pouring resources into the particular brand that you want to roll out.
Jeremy Epp: So just for clarification here, if the local mom and pop shop in Des Moines does not have a registered trademark... They are local. They've been in operation for let's say 20 years, and then another company comes along, files a federal trademark protection, it's actually the mom and pop shop that have a claim. Is it just in that local geographic area against the national trademark?
Michael Atkins: Yes. In that case, the common law trademark rights that are owned by the mom and pop shop in Des Moines, Iowa, the geographic area would be defined by where do their customers come from. For a purely local business, like say a restaurant, where you're only going five, maybe 10 miles, hopping in the car or taking a train to a restaurant, you're probably not hopping on a plane if you're hungry. You're going somewhere pretty local. There might be a five or maybe at most a 10-mile radius drawn around the restaurant. That's where the trademark rights would arise in a purely localized business like a restaurant.
Michael Atkins: If there was a restaurant with your target trademark or something confusingly similar to your target brand in Des Moines, Iowa, and you apply to get a federal trademark registration for your restaurant name, and the application was granted, what would happen is you would trademark rights better than the restaurant owner in Des Moines, Iowa, everywhere other than Des Moines. Then the restaurant owner that came 10 years before you, they'd have better rights than you in maybe a five or 10-mile radius of their restaurant in Des Moines.
Michael Atkins: So you'd sort of split up the United States with the federal registrant getting the overwhelming lion share of the map, but the localized rights, they would still have what's known as priority rights. In the event of a conflict, who wins? The one with priority, the first user in that local area would have priority and have a right to sue you and win in their local area.
Jeremy Epp: I could see how this could get really confusing very rapidly if the mom and pop shop had a successful pie station and started selling pies online to customers that visited and then were sending them out throughout the world or the US at least.
Michael Atkins: Absolutely or, worse yet, on Amazon. I've got some clients that before getting a federal trademark registration sold products say through Costco. Their "local geographic area" is every major city. The same on Amazon if they're selling... If you're on Amazon and you're selling product all around, you, at least theoretically would have rights, enforceable, perfectly good rights all around, but the beauty of getting a federal trademark registration is, it kind of removes all doubt about whether... Does that include Missoula, Montana? Does that include Dallas, Texas? Well, if you get a federal trademark registration, you get the entirety of the United States, so the answer is yes. If you don't have a federal trademark registration, you still have perfectly good, parallel, common law rights in the cities where you're doing business, where your customers are, where you make sale, shipping product and selling goods.
Jeremy Epp: As part of your service, Mike, when you go in to assist a company with filing a federal trademark, do you do research at the local level? I mean I know there's only so much you can do with the available resources if somebody's not advertising online or utilizing a different name online or just servicing the local community. How in depth does your research get as you help somebody file for a US trademark?
Michael Atkins: Usually, my client comes to me knowing their own marketplace, knowing who their customers are and what their products are called. Frankly, possibly even having used its trademark for a period of time, maybe even years before they come to me and say, "I want those federal, national rights." More often than not, in my practice, the client takes on either expressly, or just sort of de facto wise, the responsibility of ferreting out who is out there in the marketplace and may have trademarks that might conflict with mine.
Michael Atkins: Unfortunately, a lot of the time, the horse is already out of the barn. "Mike, I adopted this brand 10 years ago, and now I want national rights." It's much less a question of, "Am I going to get sued? We already know that answer because they've tested it by using the product in the marketplace or the name in the marketplace for all those years. That ship has sailed. Really the question is, "Can I get this trademark registered?"
Michael Atkins: The process starts with, after filing the application, you've got to get over two hurdles to get an application registered or approved at the federal level. First, and by far the highest of the two hurdles, is you've got to clear the examination stage. That's where a federal employee working for the US Patent and Trademark Office, a trademark lawyer, examines your application. There's about a dozen reasons why they would deny your application under the statute, but the very most common is that your brand is too close to someone else's brand that filed an application before you.
Michael Atkins: What the examining attorney does is simply look at the USPTO's own database of prior trademark filings to answer that question. The examining attorney is not going out on Google and Facebook and seeing if there's a mom and pop shop in Des Moines, Iowa. They are not doing that. If the question is simply, "Can I get this trademark registered?", especially if the trademark has already been in use for a long time, then my analysis... And I charge this with part of my flat fee. Part of the work that I bundle in with filing and preparing a new trademark application is a search of the USPTO's database.
Michael Atkins: If the question is just, "Can I get this trademark registered?", the only relevant database to look at is that USPTO database that the examining attorney is going to be looking at. What you're trying to do as a trademark lawyer is read the tea leaves and at least gauge a low, medium or high risk in terms of, "Can we get this application through? Is it likely that we're going to be able to succeed here or did a month ago or a year ago someone apply to register for our brand or something close to our brand in connection with our target goods and services or related that would likely lead the examiner to deny our application?"
Michael Atkins: Conversely, the very first time I had to do a comprehensive trademark search, I was working for a big law firm and it was a hotel in Chicago that said, "I'm about to spend $1 million on advertising and signs. I need to know if my brand is going to be challenged by another hotel really anywhere." Talk about putting a lot of stress on a young lawyer. I had sleepless nights worried about if I tell them, "Yeah, go ahead," and they put the sign on the top of their hotel in downtown Chicago and then Hilton or Hyatt comes and says, "You've got to change your name because it's too close to one of our hotel names," gosh I don't know how I could live with myself with that kind of result.
Michael Atkins: If it's a big money, big risk, bet-the-company type of endeavor, what I do is hire Thomson Reuters, a big sophisticated financial services company that has proprietary algorithms and proprietary databases. They query a whole bunch of databases and they produce a research report that, when printed out would look like a phone book. It'd be like 400 pages long. They're going into company names and trademark filings for sure and common law uses on the internet or on the web, domain name filings, company name filings in the various secretaries of state offices in all 50 states around the country.
Michael Atkins: They're doing a super comprehensive... It's called a trademark clearance search. Then I get the 500-page output and then I spend a few hours analyzing it. Then the question is, like the hotel, I am about to spend a bunch of money on signs. I can't six months into it change my name because I get threatened with a lawsuit or actually get sued. If it's that type of question, then you go through this comprehensive search analysis. You start with an outside vendor like Thomson Reuters to give you the output and then a trademark lawyer analyzes it and then offers a fairly formal opinion about whether this is likely to be okay in the marketplace. That's a powerful registration. That's more, "Am I going to get sued type of question?", rather than, "Can I get this through and get a trademark registration?"
Jeremy Epp: Yeah, that's the defensive arm that you mentioned versus the offensive.
Michael Atkins: That's right. That's the first... Yeah, that's exactly right. You first think about... At least I do. I mean when I think of the offensive and defensive considerations, it's kind of different sides of the same coin. I think about the defensive considerations first. "Am I going to get sued?", or, "Is my client likely to get hassled by adopting this?" By smoothing it out and really doing your due diligence, you also then answer the question on the offensive side of things. That is, "Will I be able to enforce my mark? If a copycat starts mimicking my brand and starts riding on my coattails, can I put a stop to that or will I likely be able to put a stop to that?" It's the same standard you're looking at, so it's the same considerations.
Michael Atkins: That comprehensive search... You can do it kind of on the cheap potentially by yourself with Google and Facebook and kind of spoofing around and deciding for yourself whether you like the odds of being sufficiently unique or not or having a trademark lawyer do that for you. Or with a higher confidence level still, having an outside vendor provide the lawyer with the tools to do a real sophisticated, high-level confidence analysis in order to give you an answer to that question.
Jeremy Epp: We've talked about primarily US. What about outside of the US? How does that work? Is there such thing as trademark law in other countries? Is there global or is there country by country? How does that work?
Michael Atkins: Sometimes I get the question, "I want this protected worldwide. Get me a worldwide trademark registration." That can sort of be done. Trademark law is recognized in every country that I know of around the world, but it's on a country by country basis. You generally start with your home country, which normally is the States, which is also very convenient. It's where you're selling your product. It's where you are, but it's also the biggest consumer market in the world. Even if you were in Japan or in Germany, probably after your home country, the United States, is your number two concern because that is likely where most of your customers are likely to come from around the world.
Michael Atkins: Fortunately, trademark law principles are roughly the same all around the world, but they are not identical. It just depends on what you want to do. Typically, for my clients, it comes down to United States first and foremost, but after that, it's Europe and then, in no particularly order, Australia, China, Japan and South Korea. Those are the biggest markets in the world. After all, I'd say Canada is high up there as well. Then just sort of depending on where your customers are or potential customers are, that would likely drive where you want to get your trademark protected around the world.
Michael Atkins: What's important is in the United States we have the common law system and we also have the trademark registration system, so we've got two sources of trademark rights that can protect you and your brand. In most countries around the world though, they don't recognize the automatic common law rights that arise by virtue of using a brand. Instead, it totally flows from whether or not you have a trademark registration. It can be hugely important for you to get a trademark registration in China or Russia or even the EU because in those countries, what drives the train is whether or not you have a trademark registration.
Michael Atkins: Put in negative terms, if you don't have a trademark registration, you don't have trademark rights. Kind of a horror story is, as I understand it, Starbucks wanted to start selling coffee in open cafes in Russia, but could not because someone had registered Starbucks for coffee in Russia. Think about the millions of dollars and millions of cups of coffee that they would have sold if they had been able to enter Russia when they wanted to, rather than having to horse around with the person that registered Starbucks for coffee or café services that they had to then contend with.
Michael Atkins: Under Russian law, and under the law of most countries around the world, it was the registrant, the trademark registrant, that recognized as having the trademark rights. Starbucks without contending with that person, as galling as it may feel, would be considered to be the infringing party because they didn't have the registration in that particular jurisdiction. I would say think about your home country first. After that, think about other countries where your customers are likely to be.
Michael Atkins: Once nice thing is through treaty you can protect your trademark. If you have it filed in your home country, you can essentially replicate that cost effectively through your USA lawyer, in other countries around the world that are members of this treaty. Canada, just a few months ago, joined this treaty. It's called the Madrid Protocol Treaty. Rather than having to go around the world and hire... Which can be very expensive... hire a lawyer in Canada, a lawyer in the EU.
Michael Atkins: The EU is cool because it's 29 countries right now that's treated as one for trademark filing purposes, so you get like 29 for the price of one, but you're hiring a lawyer in China, hiring a lawyer in Japan, all around the world can be very expensive, but there's some limitations to this treaty. It's not a cure all, but for a much discounted fee, for a very efficient one-stop shop, you can stick with your US trademark lawyer and essentially replicate your US filing in many, many country... I mean you have about 100 countries around the world. That's something to potentially consider as well.
Jeremy Epp: Mike in your experience, what are some of the more common trademark violations that you've seen or come across in your career?
Michael Atkins: Some are innocent and some are intentional, nefarious. I've got clients that unfortunately over time have poured resources, time and money and advertising and started building up and investing reputation in a trademark that unfortunately was too close to somebody else's. My client before they came to me adopted and fell in love with this trademark and started using it and started advertising and so forth and didn't do so with a bad faith intent to profit from somebody else's reputation, from the confusion that slops over to them based on a similarity with somebody else's trademark. It's just innocent. It's just that they didn't do their homework.
Michael Atkins: Really, regardless of industry, whether you're a restaurant or a clothing line or starting a software company for downloadable apps, it's just somebody liked a name and ran afoul of somebody else's innocent or unknowingly. Then you also have the bad actors out there, akin to a cyber squatter that knows that you're out there and tries to take advantage of your good reputation and names their restaurant or names their product something close to your brand because they figure they can get a bump in sales because consumers will mistakenly buy from them when they think they're buying from you.
Michael Atkins: You get both flavors of trademark confusion out there, but they both hurt the same. Aside from confusion, a likelihood or probability of consumer confusion, and there are definitely some very prominent pitfalls that new trademark owners can fall into, probably the most common other than adopting a brand that's too close to someone else's is they pick a brand that's too descriptive. It's too literal. A descriptive trademark legally is defined as a trademark that immediately conveys information about the good or service being sold, a characteristic of quality or it tells you something about the product like Speedy Auto Glass. Leaves nothing to the imagination. "We sell auto glass and we do it in a hurry." No imagination is required.
Michael Atkins: Even Seattle's Best Coffee, right, it's so darn literal, so on day one, or week one or even year one or year two of pouring money into a descriptive trademark, that trademark really legally is still not protectable as a trademark. It can become protectable through a process that's called secondary meaning or acquired distinctiveness. That's when a descriptive trademark like Seattle's Best Coffee in the marketplace gets a reputation where consumers over time learn that a particular descriptive trademark, a particular description actually denotes one company or one source of goods or services.
Michael Atkins: But this acquired distinctiveness, or secondary meaning as it's called, takes pride and so a trap that new brand owners can fall into is they pick a trademark that is good for SEO purposes. They like a literal brand because it'll help them with Google and then help them down the line make sales. I appreciate that, but if you're a sole proprietor, you're wearing many hats. One hat is, of course, to make sales, but another hat you've got to wear is, "Can I protect my brand?" It's sort of a tension sometimes between making sales and picking a literal trademark that potentially could maximize the chances for sales.
Michael Atkins: It can also minimize the chances of being able to get your trademark registered or being able to enforce it because a description is kind of a fair use or first amendment right that's built into a description that limits anybody from claiming monopoly rights over Speedy Auto Glass. How else are you supposed to convey what you do? We're a auto glass company and we install our auto glass in a hurry, so if you're Speedy Auto Glass, upon adoption and even the first couple of years, maybe your trademark isn't protectable and so if somebody... Even though your business is booming and competitors are starting to mimic you and your brand, what can you do about it? Sue them for trademark infringement? Not in year one or year two because its descriptive trademark is not protectable upon inception and upon adoption and use.
Michael Atkins: It's only after this process of secondary meaning or acquired distinctiveness, where you've got lots of sales and lots of advertising. Or for Seattle's Best Coffee, millions of dollars in advertising, million of cups of coffee sold. Once you have those things, now you've got a protectable trademark, but you couldn't initially get that trademark registered and you initially would lose a trademark infringement lawsuit if you brought against a copycat because you haven't yet established your description as a brand.
Michael Atkins: That's probably the most common other pitfall, where I've got people that come to me with a very literal brand. You're a consulting company and you're a realtor... You're a real estate broker and you're calling your company Seattle Real Estate, and you get mad because someone opened up a real estate brokerage across the street and they're also pitching themselves as Seattle Real Estate. Well, you've invested in a trademark that's maybe good for SEO, but it's totally unprotectable as a trademark, at least until you've built up a reputation around your particular description. It's really a tough one.
Jeremy Epp: Yeah, it is. You reminded me as you were talking. Can you touch base a little bit on the need to enforce trademark rights? I mean you do a lot of research, you hire an attorney, you file. You get it issued to you. Time goes by, you learn of something, somebody infringing on it. You take no action. Talk about enforcing that trademark.
Michael Atkins: You get to pick and choose your battles. You're not required to sue every potential infringer under the Sun, but if you don't police, if you don't enforce your trademark rights, your brand can lose its trademark significance because remember what a trademark is supposed to do. It's supposed to earmark your goods or services and distinguish your goods and services from those of your competitor. If you allow other people to creep too close to your name and sell competing goods and services, the trademark, your brand no longer earmarks uniquely you as the seller of those goods or services.
Michael Atkins: If you've got two or three, or god forbid five or 10 other people that are too close to you, and you've just sort of allowed that to happen, you eventually can lose your trademark rights. That's not to say that you've got to sue everybody, not to say that you've to write cease and desist letters and nasty letters to everybody. You don't. You can pick and choose your battles, but you've got to prevent your brand from blurring into a bunch of other companies' brands. You want to stand as unique... stand as alone as you can in the marketplace as possible.
Michael Atkins: You've got maybe a startup, a small business to run and you've got scarce resources and you've got to decide where to spend your money and where to spend your time. You're not obligated to spend it all playing whack a mole and suing and making demands of everybody, but if there's an in your face infringer... I mean in your geographic area, in your market space, a competitor, you just cannot let that continue because if you do, your brand will just cease to have meaning.
Jeremy Epp: Yeah, I'm thinking of the article that you recently wrote about Taco Tuesday, Taco John. I had no idea that that was a trademarked promotion that Taco John put out.
Michael Atkins: I got a quote... I was very proud of this... Picked up in the New York Times. It was cool. I'm a fan of tacos. I'm a fan of trademark law, so it was a good... kind of a meeting of two loves. Here's Taco John's... I think they registered Taco Tuesday maybe 30 years ago. 30 years ago, this turn of phrase mainly... maybe only... referred to their promotions and their tacos, but as kind of every restaurant and every university and every bar... Or it's not every... many.
Michael Atkins: Many, many, many people over the 30 years that followed had their Taco Tuesday because it just rolls off the tongue, "Taco Tuesday, half-price tacos." You go to a university and the dining hall, "Taco Tuesday." It's just a fun celebration, little fiesta midway through the week. To the extent that other people, other than Taco John's are using Taco Tuesday to refer to their tacos, that really strips Taco John's of the meaning that they had sought out when they adopted this trademark. It no longer refers to Taco John's.
Michael Atkins: The reason why this was on the news was because they were starting to send out letters to other people saying, "Quit using Taco Tuesday in connection with your restaurant or your taco truck. Knock it off. That's ours. That only refers to us." Well, maybe it did in 1980, but in 2018, or 2019, it does not anymore. That's a great example of a very strong trademark that was just whittled away to nothing because they didn't enforce their rights and competitors started using Taco Tuesday to refer to their tacos.
Jeremy Epp: Yeah, that's important.
Michael Atkins: No longer serves as a trademark. In fact, that's what the court recently decided that it's generic. Just means a night, a theme. It doesn't mean a particular seller anymore.
Jeremy Epp: Mike, a question came to mind when you mentioned 30 years ago. Is there a time limit to how long a trademark is good for? Does it expire? Do you renew it? How does that work?
Michael Atkins: On the common law front, where a trademark registration is not required to get those automatic localized rights, that can go on theoretically forever as long as you continue to use your trademark in connection with your goods in the sales to customers, your trademark can last forever. At the federal level though or the country by country registration level goes, in the United States between the fifth and sixth year anniversary of getting your trademark registered, you have to renew it with the US Patent and Trademark Office and then again between years nine and 10. That's the anniversary date of your original registration.
Michael Atkins: About five years after the first registration issues and then five years after that and then every 10 years. You've got to pay money every time and you've got to continue to prove that you are using your trademark in connection with your goods or services that are listed or reflected in your registration certificate. You've got to submit that to the USPTO in the US, but as long as you keep renewing and paying your renewal fees, even your registration can last forever, as long as you keep using the trademark in the marketplace.
Jeremy Epp: Mike, in wrapping up, I just want to say a big thank you. I've learned a lot about trademark law and the ins and outs, and I know that this is just scratching the surface. I know for those that are listening that are either in business now, currently launching their business or thinking about it this is something definitely that should be on your consideration immediately.
Jeremy Epp: As Mike said, you do not want to find yourself in that position of receiving that letter from an attorney. You do not want to sink your money into your time, your branding, all this effort just to find out that it is not usable for your use. Again, Mike, thank you. Where can people go to find out more about trademarks and you and your services and how to get in touch with you?
Michael Atkins: Sure. Thanks a lot, Jeremy. It's been a lot of fun. I'm accessible at atkinsip.com. That's my website. It's A-T-K-I-N-S-I-P, which stands for intellectual property .com. [email protected] is my email. Probably the best way to reach out. I'd be happy to answer any questions that folks might have going forward and be happy to work with somebody on a professional basis to help protect their brand or learn more how some of this esoteric stuff actually works in the context of their particular business.
Michael Atkins: I blog at seattletrademarklawyer.com and as the name suggests, it's about trademark law issues. It might be of interest to the listeners out there. You can read about some interesting trademark issues by checking out my blog.
Jeremy Epp: Great. Thank you, Mike. I hope you enjoyed that show. I want to say again a big thanks to Mike Atkins for coming on board. If you want to learn more information about how to grow your business, head on over to jeremyepp.com. Check out our resources, as well as utilize the show notes that are part of this episode so that you can reference back any material that you may have heard during today's show. Thank you once again. You'll want to be sure to tune in for next week's show, where we're going to be talking about copyright law, how it differs from trademark law and what you need to know about how to protect your creative work from copyright infringement as well as how to protect your own business from infringing on other people's copyright.
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