Today's Guest: Brian Hall Traverse Legal
Today's Host: John Bentley
November 2007
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Brian Hall Expert PageANNOUNCER: Welcome to VTalk Radio Tech Spotlight, with your host, John Bentley. This program is sponsored by Traverse Legal, PLC, a law firm specializing in internet law, domain disputes, and technology company representation. That's Traverse Legal. www.traverselegal.com.
JOHN: Today we are in the studio with Brian Hall of Traverse Legal of Traverse City, Michigan, on VTalk Radio's Tech Spotlight. A little something about Brian. He's a recent graduate of Michigan State University College of Law. He is currently awaiting his bar examination results to become a licensed attorney in Michigan. He currently works as a law clerk for Traverse Legal, one of the leading technology law firms in the world. Traverse Legal represents numerous international technology and business organizations bringing expertise in both the legal and technology matters. Brian tends to focus on trademark matters currently. Welcome, Brian, to VTalk Radio's Tech Spotlight.
BRIAN: Thanks, I appreciate it.
JOHN: What's start off. What is a trademark?
BRIAN: Well when we're talking about trademarks, there's really two things that we need to keep in mind. The first being that trademarks are governed by two different types of law. The first being state law and when we're talking state law, obviously, it could be Michigan, New York, California, etc. And then there's also a second body of law called the federal law, and that law is basically governed by the lanham Act which is a piece of legislation that is strictly dedicated to trademark law. So today, really I think we'll be focusing on trademarks in general, but when we're talking about law, we'll probably be focused more towards the federal lanham Act Law. But to answer your question directly, a trademark is basically a word, symbol, or a phrase used to identify a particular manufacturer or a seller's products or whatever good they're producing.
JOHN: And how does someone know if they have a trademark?
BRIAN: Sure. You see trademarks every day, really, out there. I mean if you're driving down the road and you're looking at a sign for McDonald's, for example, you just see a small "r" in a circle, that's showing to the public that, hey, we have a trademark for McDonald's. And really what it comes down to is, there are two types of trademarks. A trademark can either be as it says a trademark which represents a good. So when we're talking about one of those, and example would be, you know, Chevy or Toyota, for example. And then there's a second type of trademark called a service mark. It's essentially the exact same thing as a trademark except that it represents a service. So instead of the mark representing a good like Chevy or Toyota, it represents a service, for example, a drycleaner. They might be called ABC Drycleaning so their service mark would be an ABC. So really it comes down to a way for a company to distinguish themselves from another company. So when you're trying to determine whether or not you have a trademark, you have to look at what does it require to get a trademark. And, like I said before, the number one thing is that it has to be distinctive. And there's a bunch of different categories that a trademark can fit into, for example, a mark needs to be arbitrary or fanciful. And what that means is for example arbitrary is a coined term is really what we refer to it as. And a coin term example would be Kodak. It's a term that somebody came up with that really has no meaning to what the particular good is, and in that case camera equipment, etc. Or fanciful to the mark having no relationship to the underlying product, but it's a word that's out there. The easiest example I can give for that is Apple Computers. Everybody knows what an apple is, the apple that you eat, but you also can talk about Apple Computers which is the trademark that represents those computers.
JOHN: How does someone go about getting a trademark?
BRIAN: First thing that you really need to know about that is there's really two ways that you can establish a trademark for yourself. When we're talking about trademarks, a person/individual can own a trademark, a company or an organization can own a trademark. Really it comes down to two things, the first is use. In order to get a trademark, you have to be the first to use a particular mark in commerce. And when we say in commerce that simply means you're selling something under that mark. So, if you want to come up with a new store that sells a particular type of widget, and you come up with a mark that will represent that widget, that's your trademark, and as long as you're the first person out there using it, you have rights in that word; that brand that other people can't go out and use the exact same word or mark for the thing they are going to go out and sell. The second way that you can get one is really what I want to talk about here today. And that's doing a filing with the United States Patent and Trademark Office. And I mentioned earlier the two areas of law that really governs trademark and I said the common law and the federal Lanham Act trademark law, well by filing with the USPTO, you're automatically given the benefits of the federal law. And really what it takes to file with the USPTO is working with an attorney usually, and Traverse Legal handles a lot of that work, or sometimes individuals try and file the trademark on their own. I think I can offer a pretty unique perspective on that just because I'm not quite yet a licensed attorney so I know what it's like to be out there and trying to do some of the work on your own, but I also have worked for these law firms and see the benefits you get by employing a law firm to do that work for you. But really all it is simply working with an attorney or filling out the online form and providing the information that's requested to get a filing with the USPTO.
JOHN: Ok, what's the difference between a trademark and a patent or even a copyright?
BRIAN: A trademark is, like I said earlier, the simplest way to put it is it's a name, a symbol, a saying, something along those lines that really identifies a particular manufacturer or sellers products and allows them to distinguish their product or their service from someone else's. You know when we're talking about a copyright, a copyright is an idea that is put into a particular type of work. So a music composition is an example of a copyright that you can go out and get. If somebody puts a poem together and wants to put it on the internet, you usually go out and get a copyright for something like that, and for a patent a patent is really when you're dealing with engineering and really putting things together to get a patent in place is a far different process than a trademark. So, you know, a trademark is more limited in what you're doing with it as opposed to copyright or patent when it comes down to the actual mark itself.
JOHN: I'm a musician so I understand the copyright aspect of this. Now I also have a name for my music or my website, for that matter, bfbmusic.com. Would "BFB Music" be considered a trademark?
BRIAN: Sure. It really comes down to those different categories that I was talking about earlier. The first question you need to ask when you're looking at a trademark is: number one is it distinctive? So if you go out there and there's a bunch of other people using BSB Music, then most likely it's not distinctive because it's not capable of identifying the source of a particular good, namely you're services and the music you're providing. But I mentioned there are those different categories, and we talked a little bit about arbitrary and fanciful, but there's other categories. For example, suggestive is a second category. And a mark is suggestive if it evokes or suggests as the term suggests itself a characteristic of the underlying product. So an example of that would be Jaguar, the car. People think of the Jaguar brand for a car because it suggests the speed and the sleekness of an actual jaguar cat. So that's an example of a suggestive mark, and a third category of a mark would be a descriptive mark. And a descriptive mark would be an example that we've seen is "park and fly". I'm sure you've been to the airport and you see where you can park your car, take the bus route to the airport and actually fly out of the airport. Well "park and fly" is a mark. It's basically describing exactly what that service is. You're going to go, you're going to park your car, and you're then going to go fly somewhere. So if you're using a mark that's simply descriptive you need to have what's called secondary meaning. And secondary meaning is when the public basically associates your mark with a particular product rather than with the underlying service or product that it's explaining. So, BSB Music really comes down to having to go out and do a search and find out what's out there for the type of service you're offering and see if BSB or some similar alternative of it is available.
JOHN: We are in the studio with Brian Hall of Traverse Legal in Traverse City, Michigan. We are talking trademark law today on VTalk Radio's Tech spotlight. We're gonna step aside for these important messages. We'll be right back.
ANNOUNCER: This VTalk Radio's Tech Spotlight is brought to you by Traverse Legal. A high tech law firm providing international representation in business, technology, intellectual property, and complex litigation matters. You can contact Traverse Legal through it's website at www.traverselegal.com .
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JOHN: We're back in the studio with Brian Hall of Traverse Legal in Traverse City, Michigan. You're listening to VTalk Radio's Tech Spotlight. Welcome back to the program, Brian.
BRIAN: Thanks a lot.
JOHN: Now, we're talking trademark law today, and we've been talking about how to get one, what it is, and how people know they have one. Now, why would I want to have my trademark filed with the USPTO?
BRIAN: That's a great question, and I know just from working in trademarks in school and then working as a law clerk at Traverse Legal, we get question a lot. I tried to break it down into the top 5 reasons you would want to trademark just so it's easy to remember. And really the first and foremost reason is that it gets the individual nationwide priority and what I mean by that is without a registration you must do business in a particular geographic area to have protection over someone else who may use that particular mark there. So for example, you know, if I started a bagel shop called Brian's Bagels in Traverse City, Michigan, I'd have the right to use that name to represent my bagels in Traverse City, Michigan, but if I file with the USPTO it gives me the right to use that name Brian's Bagels throughout the entire United States. And even beyond that, once you get that nationwide priority, you can use the priority date, you know, whatever you filed with the USPTO that US registration when you're filing in another country. If you're looking to go international, it offers you not only nationwide priority, but the benefit of having that priority use date when you go international. The second reason that I think it's really important to file with the USPTO or USPTO is that it's easy identification. Going back to the car example that we talked about earlier, you don't have to go back and explain to a car dealer the particular body shape of the car or the way it felt driving, you can simply go back and say, "Hey, I drove a Chevy, I drove a Toyota, I drove that Jaguar, and once you tell them that they know exactly what you're talking about and they can go bring you something similar to that. That can be good and bad if you really think about it. It's good because of the consumer liked it, they're going to go back and look for that particular trademark, but if it's bad, the consumer can remember it. You know, they'll remember the experience they had with that product or that particular service. So, it really forces the trademark holder to be held accountable for the product or service that that trademark or service mark represents. The third reason that I say is it provides notice to everyone out there that you have a trademark in something. That notice is very important because it also deters others from using that mark. I talked about earlier how if you see the McDonald's sign you see the small "r" with a circle around it showing that that person has a registered trademark. That puts someone on notice that they can't go out and use the same trademark to sell hamburgers, or french fries, milkshakes, etc. Fourthly, is people talk a lot about it, you know, you hear more and more from trademark attorneys than you do the general public, but they talk about the presumptions you get by filing with the USPTO. When you file a trademark, it automatically says once it's registered that that trademark is distinctive which if you remember that means it's capable of identifying the source of a particular good or service. It says that you own it, that you've used it in interstate commerce, meaning that you sold something under that name. And really importantly after 5 years you can file another supplemental form that says that it is incontestable. Meaning that a challenger or someone else can not claim your mark as not distinctive or lacks that secondary meaning if it's simply a descriptive term. And finally it's damages. Usually a lot of people don't get to this point, because you're only really talking damages once you're in a federal court in a lawsuit, but by having a trademark filed with the USPTO, you're entitled to treble damages. Treble damages mean three times the actual damages that you sustained by somebody infringing upon your mark, or diluting your mark, or taking your mark and using it as part of their domain name. I think we'll probably do some follow-up shows and talk more about those, but really what it comes down to is, you know, Top 5 reasons - You get nationwide priority, Easy Identification, Notice to Everyone, The presumptions I talked about, and worst case scenario if you have to end up in federal court, you get a better chance at the 100,000 statutory damages and other trouble damages available to you.
JOHN: These are important things to know about trademark law. I want to thank you, Brian, for joining us today on VTalk Radio's Tech Spotlight.
BRIAN: Thank you.
JOHN: We've been in the studio today with Brian Hall of Traverse Legal in Traverse City, Michigan. You've been listening to VTalk Radio's Tech Spotlight. Thanks for joining us today. Have a great afternoon.
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