This is the second post in an ill-defined series on legal matters pertaining to intellectual property creation, development, and defense. Please read our intro post for back-story on why and, most importantly, some disclaimers.
The other day we dove into some of the basic ins and outs of copyright law and how it particularly relates to creating work for others, or hiring others to create work for you, or how it may make your head explode if you try to read legal filings about Superman. I know it was exceptionally exciting reading and that you can’t wait to get to trademark law, so far be it from me to keep you waiting. Though the copyright Bowie knife is arguably your most important protection as a creator in the IP jungle (since it’s common law and covers your actual ideas and work), trademark is kind of like your fishing rig; it’s quite useful, fairly optional, and wow, does it demand a lot of maintenance.
Trademark: Pay Attention and It’ll Help You Out In the Long Run
Trademark protects logos, nomenclature, and any other marks that you might use in the course of doing business with your copyright-protected creative work, and it only works if you actively register those marks with the government.
You also have to use them; if someone else comes along and establishes a market presence with your marks while you were letting them sit in your basement unseen, a judge could reasonably decide that the marks are more legitimately theirs by right. (This happened when the Los Angeles Dodgers tried to claim protection for the Brooklyn Dodgers trademark they obtained when they bought the team in the ’50s; judge wasn’t even having that.) This concept is called “abandonment” and it has many IP-farm trademark-holders in a constant state of panic. More on this below.
Of course, like copyright, the marks you want to protect have to be unique and not under someone else’s control or part of common usage. This is partly common sense (no, you shouldn’t try to trademark “Luke Skywalker” or “water bottle” just to see what happens) but it’s also a legitimate matter of legal dispute. The word “thermos” is generally used to describe any food container that keeps things warm or cold, so it was legally determined to be not unique enough for Thermos L.L.C. to claim trademark protection. Failure to police your trademarks (actually, that should be “failure to police” since it’s another legal concept) can sometimes result in your marks becoming generic and therefore at risk of losing their protection.
Plus, you’ve got to make sure your trademarks are registered separately in every individual industry in which you plan to use them, and then you have to go ahead and actually use them. So, even if Thermos did hold the trademark for food and beverage containers, they likely don’t have one for books and magazines, which means that you can write a series of fantasy novels set in the mystical land of Thermos (and if you do, I will pre-order all the hardcovers).
More on the rules and regs as we get into some common trademark misunderstandings: