How to pick and register a trademark - Part One

Mystique for Sale

Applications to register a trademark once involved a lot of mystique.

Standard equipment for trademark attorneys used to include an arcane filing system containing multiple flaps (some opened to the side, and others up).  Delightfully, those folders are still around, although in a digital world they’re probably getting a lot less use.

The application itself consisted of multiple documents drafted in conformity with very particular rules about margins and line spacing.  When a mark included a logo or stylized letters for which protection was sought, special draftsman drew it using black India ink (so the mark would show up sharp when published in the Trademark Gazette).  Until five years ago, those draftsmen needed to know the special hatch mark codes that were drawn in black to indicate colors (such as the red cross of the Red Cross).  Nowadays when color is claimed as a feature of the mark, the drawing is actually in color.

Applications were accompanied by evidence to show the trademark was really being used—things such as a box for computer games, a cloth label sewn into shirt collars, or a large paper label glued onto crates of oranges.  That sort of evidence is still accepted, but now so are photocopies, and for electronically filed applications, JPGs and other digital files are the rule.

With much of the mystique is gone, applying to register a trademark now seems easy as playing an on-line game—a few clicks, and you’re done.  The change is positive, bringing uniformity and increased accessibility to the records of the trademark application process, but it also makes trademark applications look too easy—easier than they really are.  In the end, a lot of people wind up running into problems they could have avoided, or owning registrations that are vulnerable to challenge and that sometimes protect nothing.

Here are some trademark basics to help avoid those problems—rules that are relevant to picking a trademark whether you decide to register it, or not.

What is a trademark?

Trademarks go back thousands of years, when animals were branded to indicate who owned them, and potters and stonecutters used designs on things they made to indicate themselves.   Today trademarks usually take the form of:

• - words (such as “iPod” for a certain product of Apple, Inc.);
• - slogans (such as “We Try Harder” for the car rental service of Avis Budget Group, Inc.);
• - images (such as Planter’s monocled “Mr. Peanut” for peanuts); and
• - sounds (the three musical notes associated with “Na-bis-co!”);

But a trademark can be anything you can sense which is capable of associating a thing with its source, including a 3-dimensional shapes (the hourglass of a classic Coca-Cola bottle), a shade of color (the pink of Owens-Corning spun glass insulation) or even a distinctive scent (embedded, for example, in a brand of yarn).  Trademarks use the same primitive and psychological process by which perfume may subliminally entwine emotions and memory, a way to communicate when you smell this, think of me!

How to buy a life story

Buying life stories is a big business.  Anyone’s story is fair game—war veteran, whistle blower, acne survivor.  One attorney with experience in this area reports the price to buy a life story for use in a television movie “might be $50,000 to several hundred thousand dollars. For feature films, it could be two times or more that amount. If the subject is famous, the figure could be considerably higher .”

I knew someone who, in his striving to become a movie producer, spent years scouring tabloid newspapers for tragic stories with uplifting endings.  When he found a good one, he sought out the survivor and paid for an option to buy her life story and pitch it to Hollywood studios.  When a studio picked up the option, he’d be a real Producer at last.

Anyway, that was his plan.

Mostly he met a lot of tragic people, and a few charlatans who’d thought of the life selling idea before he did.  The options only gave him a limited time to make his pitch, and eventually he had the choice of paying to renew the option, or watching his hot prospect slip away.

The legal form he used was 2 pages in close-spaced type.  Mostly it consisted of a promise to sell a life story plus assurance it hadn’t already been sold to someone else.  He paid $1,300 for that form—10 years ago—and was very proud of it.

It was the stupidest form I ever saw.

Selling the Brooklyn Bridge

Everyone knows the Brooklyn Bridge joke:

• * “Hey, I just ordered an antigravity bicycle.  This guy I know swears is works!”


• * “If you believe that, I’ve got a bridge to sell you.”

No one has laughed at that joke in 50 years, but it makes a point: you can’t sell something you don’t own, and people don’t own their life stories.  To claim to own something, you’ve got to be able to explain why.  As examples:

• * A company that’s famous for publishing a series of books under a familiar name (“Home surgery for Dummies”) could, if it wanted, sell to another publisher the right to publish a book under that name (“Aneutronic Fusion for Dummies”) as long as it owns the “... FOR DUMMIES” trademark.


• * An independent author can sell the right to publish a book he wrote because, as the author, he owns a copyright in it.  The copyright gives him (among other things) the exclusive rights to copy and distribute the book—which is mostly what publishing is—and because he owns those rights he can sell them.


• * An independent programmer can sell the right to publish his software program because (much like the book author) he owns a copyright in it.

Except selling software is more complicated than that.  A company that publishes software has to do more than copy and distribute—it needs also to give the people who buy the program the right to use it.  The right to use starts with the programmer, who gives it to the publisher, who gives it to end-users—which is a fine system as long as the programmer owns the right in the first place.

But does he?

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