“Where’s the beef®” – A classic trademark that first appeared in a 1980s Wendy’s commercial – a trademark that to this day would still make some consumers instantly crave a Wendy’s hamburger.
Trademarks are, and have always been around us. Some trademarks can even live in the minds of consumers for many years to come. As cable TV and commercials slowly become a thing of the past, trademark owners have resorted to social media as a means of promoting their goods and/or services.
The rise in social media brand promotions in conjunction with the various opt out ad options have made it more difficult for trademark owners to establish a long-standing brand name. Social media has created a crowded field of trademarks, many of which are oftentimes not officially registered. Regardless of registration, common law rights exist for those using marks in social media. Therefore, without proper due diligence, in addition to money spent on building a brand, businesses may find themselves confronted with a cease-and-desist letter that could result in unexpected legal fees.
In our previous article, “Click, Edit, Post: The Perfect Recipe for a Copyright Lawsuit,” we discussed copyrights and the importance of knowing whose work you are posting and sharing to social media, both as a business and as an individual. The article also addresses the significant ramifications that can occur as a result of such actions. Unlike copyrights where rights are established based upon authorship, when an original work is memorialized in a “tangible medium,” trademark rights are established based upon first use of a mark in commerce in connection with goods and/or services. Trademark rights for an unregistered mark (or common law rights) permit an owner exclusive rights to exclude others from using the mark within the geographical area of the owner’s use. However, much like copyrights, there is significant value in registering a trademark with the United States Patent and Trademark Office (USPTO).
A trademark can be “any word, phrase, symbol, or design.” Based on this description you would think selecting a brand name or designing a logo would be simple, but unfortunately, it is one of the biggest challenges a business may face. Trademarks are essential for anyone offering goods and/or services to the public. Whether you are a business, entrepreneur, or someone looking to start a new business, a trademark helps the public associate the goods and/or services you are offering with your business. Put another way, a trademark is simply a source identifier for goods and services.
Registering a trademark with the USPTO establishes priority rights for a business. This means that unlike an unregistered trademark owner, whose rights are limited in geographic scope, a registered trademark owner, absent any intervening common law rights, generally has the right to exclude others from using their trademark across the United States. A registered mark provides notice to other competitors about an owner’s rights in the mark. As an added bonus, the USPTO will most often refuse registration for confusingly similar marks. Furthermore, registration provides other added benefits such as a right to exclusively register a trademark with e-commerce sites like Amazon.com (Amazon). Amazon Brand Registry helps protect owners’ rights by providing accurate representation on the Amazon marketplace. The caveat, however, is that in order to register with Amazon Brand Registry, an owner must have an active federally registered trademark.
U.S. trademark laws generally consider the strength of the mark. Weaker trademarks are harder to register and may present significant legal challenges because they are more likely to create confusion among consumers with other owners’ trademarks. The stronger the mark, the more likely the public will quickly identify the source of the goods and/or services. The strength of a mark is often a measure of uniqueness in the words and/or design/logo. For example, the word “apple” primarily meant a type of fruit to the majority of the public prior to the founding of Apple Computers, Inc. Today, the majority of the public upon hearing the word APPLE® would instantly think of their computer, the latest iPhone, or maybe even the AirPods they lost in their washing machine. The point is that the word APPLE® had nothing to do with computers, until Apple Computer, Inc. arbitrarily started using this word in connection with its goods and services.
The bottom line is businesses are spending more time and money navigating the new technological landscape to protect and promote their brands. For example, it’s now commonplace for businesses to have their own social media policy, which provides guidelines to employees on how to use the business’s trademark personally and professionally on various social media platforms. Beyond policy implementation, trademark registration reduces risk for businesses and helps them gain access to valuable e-commerce sites, such as Amazon. So the next time you find yourself driving past a Wendy’s or eating a hamburger, may it remind you to register your business name and logo.
If you or your business have questions regarding social media policies, your trademark rights, potential trademark claims by others, or trademark law in general, please contact our intellectual property attorneys at Walter | Haverfield.