Look around you on any given day and you will see words and symbols that represent businesses large and small. Every time you see the distinctive swoosh, you know that the products come from Nike; and when you see that wave, you know it’s Coca-Cola. Even if consumers cannot identify the company behind the good or service, they know that it is the same company and can rely on what they know about those goods or services.

Words and symbols aren’t the only things that can be trademarked. Sounds like NBC’s chimes and MGM’s roaring lion; colors like John Deere’s green, UPS’s brown and Owens-Corning’s pink insulation; and even Hasbro’s Play-Doh smell all received trademark protection. As long as the sound, smell, or color identifies and distinguishes a brand and doesn’t serve a practical function, it can be trademarked.

So, what is a trademark? How do you get one? Why should your business even care?

The United States Patent and Trademark Office defines a trademark as “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” A trademark is used for goods, while a service mark is used for services.

Trademarks serve as a way to protect the brand and reputation of a company, and to distinguish its products or services from those of its competitors. More importantly, trademark owners can stop competitors from using the mark or one that is confusingly similar. That type of protection helps build a brand and protect good will.

There are two main types of trademarks: common law trademarks and registered trademarks.

Common law trademarks are those that are established through use. This means that if a company uses a particular word, phrase, symbol, or design to identify its products or services, and does so consistently over time, it can establish a common law trademark for that mark. However, the company will only have rights within the geographic area where the company has used the mark, for the specific goods and services for which the mark has been used, and for as long as it uses the mark in commerce.

A registered trademark, on the other hand, is a mark that has been officially registered with the government through a trademark office. Unlike common law trademarks, registered trademarks are enforceable nationwide, or statewide for state registrations. Registered trademarks also last for specific periods of time depending on whether it is a federally registered or state registered trademark, and they must be renewed and maintained to remain valid.

Another major difference between common law trademarks and registered trademarks is enforcement. If someone infringes your common law trademark, the only recourse is using state courts and laws. The same holds true for state registered trademarks. However, if your mark is federally registered, you can use federal courts and law. Federal courts have a uniform set of laws which generally results in predictable decisions and remedies. Before you can even sue for infringement, you must prove that you have common law trademark rights. However, if your mark is registered, the defendant would have the burden of proving that your mark is not entitled to registration. In addition, you can file your federally-registered trademark with Customs to prevent counterfeiters from importing infringing goods that can damage your brand because they are often cheaper and inferior. Only a mark that is federally-registered can use the registered trademark symbol (®).

Be careful about only applying for trademark protection in one state. If you plan to use the mark in multiple states at any time or are known nationally, you might want to consider filing for federal protection. You do not have to use the mark outside of your state, but you will have the protection if you ever need it. Consider the case of Virginia Commonwealth University (VCU). In 2011, the VCU men’s basketball team made the NCAA tournament’s Final Four for the first, and only, time in school history. They used a disruptive style of play called HAVOC. The problem is that VCU only registered the mark in Virginia. With that, they received protection across the Commonwealth but not across the nation. When the head coach left for the University of Texas (UT) in 2015, UT filed for trademark protection for the terms “Horns Havoc” and “House of Havoc” for college sports setting up a dispute that could have been costly. Eventually, for whatever reason, UT abandoned its trademark applications. VCU could have avoided the entire dispute had they filed for trademark protection with the USPTO. They were already known nationally as the home of “Havoc.”

Trademark protection doesn’t just help large organizations. Before Nissan was known as an automobile company in the United States, it was a computer parts and retail business. It was Uzi Nissan’s third business, his first being a car repair business (Nissan Foreign Car) and his second being a wholesale parts business (Nissan International). Meanwhile Nissan Motor Company sold motor vehicles under the Datsun name. When Nissan Motors began to switch its branding to the Nissan name in 1983, Nissan Computers was growing and, by 1994, sold on the Internet under the domain nissan.com. By 1999, trouble started brewing. It took eight years of legal battles, but Uzi Nissan won his case. Though it cost him dearly, he maintained control of the website.

Once you have a trademark, you have to protect it. That means policing its use to make sure it doesn’t become generic or damaged by others. Overuse is another problem. When the brand becomes the name of the product, the mark loses its distinctiveness and becomes generic thereby losing its ability to remain protected. Everyday words that used to be trademarks include “aspirin,” formerly owned by Bayer, and “escalator,” formerly owned by Otis. The terms “thermos,” “yo-yo,” “laundromat,” “hacky sack,” “wine cooler,” and even “pilates” were all once trademarked before becoming the term that merely describes what the product is. When the word becomes the product, it becomes generic and the rights can be revoked in a court of law. Xerox and Google are fighting hard to keep that from happening as are dozens of other companies. Remember that when you use a Band-Aid or a Kleenex - or is it adhesive bandage and facial tissue?

Do you need help protecting your brand? Do you have questions about this article or want more information? Please contact Mitchell Goldstein (mgoldstein@setlifflaw.com) at (804) 377-1269, or Steve Setliff (ssetliff@setlifflaw.com) at (804) 377-1261.