Disclaimer: The thoughts and opinions expressed by the interviewee are the interviewee’s own thoughts and opinions. They are not legal advice and they do not represent the thoughts and opinions of Brient IP Law, LLC.
A brand is what the public uses to identify a company, but the trademark protects specific aspects of that brand. Trademarks create a mental leap. It’s where marketing meets the law.
To better explain the process of how trademarks are registered, and how conflicts can arise, AccessU spoke with Tara Branscom-Holmes, Esq. With more than 20 years of experience, she focuses her practice on representing large and mid-sized companies and well-funded startups in a broad range of trademark, copyright, and licensing.
She tells us the bulk of her time is spent trying to prevent disputes in IP law. Marks should be a source identifier, but sometimes people submit weak marks.
“There are two aspects; applying to register your trademark and using your trademark,” explains Branscom-Holmes. “If you apply to register your trademark with the U.S. Patent and Trademark Office, they may object to your application. That is a little different from somebody else objecting to your trademark.
“With third parties, the things I see that start to create problems are when your mark is too close to somebody else’s in a way that creates confusion. If you select a mark that is too close to somebody else’s, the patent and trademark office may not let you register the mark, and if a third party becomes aware of your efforts, you may receive a cease-and-desist letter.”
Do Your Homework
When it comes to choosing a trademark for your brand, do your due diligence and plenty of research.
The best-case scenario for success, as described by Branscom-Holmes, is when a client selects a mark that is original and not too similar to someone else’s. If someone meets with her to discuss a mark, the mark is searched, and problems are found, this is the first step to improving their mark for their business needs.
“People get very wedded to the marks they come up with, but if you can keep an open mind, you can come up with something stronger, better, and something that passes muster,” says Branscom-Holmes. “You can get registration. You’re not getting cease and desist letters. It sounds minor, but compared to the alternative, it’s terrific. That’s what you want to have happen is an application to the patent and trademark office that sails through nicely.
Brands who file for a mark themselves can run into many complications if they didn’t do their due diligence.
“Suddenly they’ve pulled all these objections and they feel overwhelmed. With those, sometimes we can help, sometimes we can’t, and you have to start all over again,” says Branscom-Holmes. “By that time, you’ve lost time, and to rejig your business to a brand-new mark can be costly. It defeats the person a bit, but sometimes it has to be done. In terms of product, you might have to start pulling product off the shelves, so I don’t recommend it. So, try to do your homework before selecting a mark.”
Use it or Lose It
If your business has applied for a trademark, Branscom-Holmes warns not to get sloppy, and to use the mark consistently and use it as you applied for it. When businesses start changing the look of their mark, that’s when they may run into problems.
If marks are not in use, they may be taken away. This can be helpful to some hoping to obtain the mark.
“Marks will sometimes just sit on the register for an age. They’re not in use, they’re just blocking everybody else,” tells Branscom-Holmes. “So, we will apply for a mark, and we’ll get these citations against us, and if they’re not in use, we will seek to cancel them. Hard on the person who has the registration, but it’s great for our clients.”
This means no one is infringing on anyone else’s current intellectual property or must make changes to the mark they want to use.
The Ohio State University
In the world of higher ed, we recently saw that Ohio State was successfully able to trademark the word “the” and they are now being referred to as “The Ohio State University.”
Branscom-Holmes’ reaction was that this is not your typical case.
“The first thing I say to people is do not worry that you will not be able to use the word “the” in your business or trademarks. The word “the” does not create a mental leap, it doesn’t really function as a trademark,” explains Branscom-Holmes.
In this case, Ohio State produced a lot of specific evidence that the word “the” is a source identifier for them. They were able to support this claim in their narrow exception and only for collegiate clothing.
“I’m not super concerned that other colleges can’t apply with the word “the” in their title,” adds Branscom-Holmes.
Mark Jacobs had filed for the word “the” ahead of time, but the companies came to terms in the end, coming to an arrangement where Mark Jacobs has the word “the” for fashion and Ohio State has it for collegiate wear.
“The key is to avoid confusion. Marks can co-exist as long as consumers aren’t confused,” says Branscom-Holmes.
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