As a startup owner, you should know that a trademark is a word, name, symbol, or other device that’s used to identify your company’s goods and services, and distinguishes them from those offered by your competitors.
Once you successfully register your mark, you run the risk of losing your right to enforce the registration if you misuse your mark.
“Misuse” is a fairly broad term, and it doesn’t mean that it will result in the removal of your startup’s trademark from the registry. However, incorrect use of your mark may impact your company’s ability to enforce the rights that were granted by the registration.
The trademark rights that are conferred from a federal registration can last for an indefinite period, provided that you actively use the mark with the goods and/or services in the registration. The best way to protect this type of intellectual property is to actively use your trademark. But use it the right way so that you don’t dilute your mark.
What is Dilution?
Trademark dilution is interference with the uniqueness or distinctiveness of a mark. It can occur through blurring, which is the proliferation of trademark meanings even in the absence of confusion. For example, Pepsi-Cola Auto Repair may get a letter from the soda company’s lawyers about the use of their mark. This is dilution, even though the mechanic isn’t competing directly with Pepsi products.
Another form of dilution is tarnishment, the cultivation of negative associations linked to the mark. Many companies have sued adult entertainment producers for using the names of their products. Recently Ben & Jerry’s Ice Cream sued a DVD maker for using “Ben & Cherry’s” in the title of a movie.
Dilution doesn’t depend on confusion or on any similarity in the parties’ goods or services, and it can be extremely difficult to define or prove. But the Federal Trademark Dilution Act of 1995 protects famous trademarks from uses that dilute their distinctiveness, even without the likelihood of confusion or competition.
Protect Your Mark
There are several ways that you can avoid dilution or your ability to enforce your trademark. Consider these reminders:
Registered use only. If you receive a registration of your mark for the “Cool California Startup Bread Slicer,” the use of the mark with your startup’s “Cool California Startup Metal Slicer” isn’t protected. You should file for another registration for the second product.
Use it with your product. Put your mark on the product packaging or use tags or labels to provide greater identity of the mark.
Use it as an adjective. Only use your trademark as an adjective…not as a noun or a verb. If possible, your startup’s trademark should be followed by the common descriptive name of the product it modifies, like “HP printer. You can also use the word “brand” to reduce the possibility that the mark will be thought of as the generic name for the product, or a line of products (put the word “brand” in lower case, like “CRAFTSMAN brand tools”). Finally, your trademark shouldn’t be used as a common descriptive adjective or as a verb (you shouldn’t “Google,” but instead run a “Google search.”)
Don’t use plurals or possessives. Don’t use “Cool California Startup’s Bread Slicer.” Refer to the mark and the product in their proper forms.
Distinguish your mark. Your startup’s trademark should be distinguished in presentation…it can be capitalized, underlined, italicized, placed in quotation marks, or bolded…each new distinction makes it more distinguishable.
Your startup needs to be aware of the importance of protecting your trademarks. Discuss your IP issues with an experienced intellectual property legal professional.
Attorney Michael Ahmadshahi focuses on patents, intellectual property, copyright, and trade secrets in Irvine, California. The Ahmadshahi Law Offices are also located in Beverly Hills and Sherman Oaks. Call us toll free at (800) 747-6081 or direct at (949) 260-4997 or email [email protected] and let us help you with your IP questions and the strategy for your startup.