Trademark Law Basics

A trademark is any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods, and to distinguish them from those manufactured or sold by others. A service mark is a mark used in the sale or advertising of services to identify the services and distinguish them from the services of others.

As the definitions suggest, a trademark or a service mark can be a name, symbol, or even a sound.  Think of Nike.  Both the name Nike and the distinctive ‘swoosh’ symbol are trademarked.  A trademark helps to identify your good and distinguish your product from someone else’s product.  Think of brand names such as BMW and Ford.  When either name is mentioned, a particular class of automobile comes to mind.  That is what a good trademark or service mark does- it furthers brand development and eases marketing.  When someone hears the name of your business, you want your particular product or service to come to mind.  You want customers to associate your business name with a high level of service or a quality product.  That is the art of branding.

Not all names are necessarily trademarkable.  If the name of your business merely describes the type of business you do (Example: Crazy Pete’s Lawn Care), the name is usually not trademarkable.  Also, if it merely describes where you do the business (Example:  Indianapolis Paint Supply), it is also usually not trademarkable.  Lastly, if the business is just your surname along with a description of the good or service (Example:  Smith’s Auto Repair), it is usually not trademakable.

However, there can be exceptions made in certain circumstances.  In Indiana, descriptive marks and surnames may be registered if the mark has been used in Indiana or elsewhere for at least five years and the name has become distinctive of the applicant’s goods or service.  One example of this is McDonald’s.  Even though McDonald’s is just a surname, it became associated with a certain quality and type of food.  That association is what made McDonald’s distinctive.

A business can register its trademark with both state and the federal governments.  Both have their advantages and disadvantages.  Indiana’s registration process is relatively inexpensive, but does not give a business the same amount of protection as federal registration.  Registering with the United States Patent and Trademark Office is more expensive than state registration, and the application process can take six months or longer.  However, once the trademark is registered, it has a high level of protection, including preventing the importation of goods with the same name from other countries, once it is registered with the United States Customs office.  Federal trademarks also provide the ability to try any trademark infringement case in the federal court system.

Different businesses might need different levels of protection depending on the type of work done and where the business is located.  Some businesses might only need to register in Indiana while others might not need to register at all.

A small amount of company name protection is provided by common law even if you do not register your trademark.  The rule is known as “first in time, first in line.”  However, a dispute could always arise as to who was the first to use a particular trade name.  Registration is one way conclusively to establish that a particular business is the rightful owner of the trademark.

To register a trademark or service mark with the United States Patent and Trademark Office, the mark must be used in interstate commerce. That means the business must use the name while doing business across state lines or advertise to people across state lines.  If you only conduct your business in Indiana and do not plan on expanding your business into other states, then federal trademark registration is not for you. You should still register your trademark or service mark in Indiana.

Registering the mark in Indiana will give constructive notice to other businesses in Indiana that you have used the name first.   This is especially important if your business has a distinctive business name and a good reputation throughout the community.

How does this all apply to the average real estate investor?  Real estate investors need the same amount of protection as other companies.  You do not want another company using your well thought-out and clever business name in connection with their product or service.  You worked hard to develop you brand.  You worked hard to earn your reputation and do not want someone else to gain from that hard work.  If protecting your brand and trademarks is important to your business, then you just might need to seek professional help in filing your trademarks.