You may have heard of “patent trolls” and “copyright trolls.” Companies and law firms that send messages claiming violation of patents or copyrights – sometimes with little or no justification. They are trying to scare you into making a big payment to avoid litigation
Well there’s a similar kind of troll out there, the trademark troll. These are law firms or companies that try to tell you that your business is advertising itself using words or pictures that these people are claim are exclusively theirs.
The Threat
We see many of these claims, even from law firms, that are patently absurd. They try to claim that your use of a simple word or phrase of the English language is prohibited because only they can use it. Never mind the fact that these words and phrases existed years before the company did, or that they are in frequent use both generally and to describe other businesses.
What Can Be Trademarked?
Although trademarks, copyrights and patents are all types of intellectual property, they are not the same. Copyrights protect works of art, patents protect inventions and trademarks protect products and services. The level of protection depends partly on what kind of mark it is:
Arbitrary and Fanciful – This applies to products and services whose names could be considered random. These names are not common words used in our language but rather a specific and unusual name. This trademark category is the easiest to protect.
Suggestive – This applies to products and services whose name might “suggest” what the product or service does.
Descriptive – This applies to products and services whose name acquires a secondary meaning besides the descriptive name. Products like Jello™ and Kleenex™ are examples of this category.
Generic – This applies to products and services whose name is a common word used in our language. These are the most difficult to trademark and most often, the subject of letters from trademark “trolls.”
Is it Registered?
Often these trademark trolls will make these claims even if the words or mark they are claiming is not registered. Now, it is true that a trademark does not have to be registered in order to be protectable in some circumstances. However, the claim is much weaker, and may be restricted to the same geographic area.
Also, keep in mind that registration might only protect the mark in a certain area, or pertaining to certain goods. We have seen trademark trolls try to claim that a client is violating their rights, even when the trademark is restricted to certain types of goods or services which the client doesn’t sell.
Seek Professional Advice
The best thing to do if you get a demand letter regarding trademarks is to speak to an attorney experienced in these claims to help you determine how much of a problem you have. Similarly, if you have a trademark you want to protect, consult an attorney to find out how strong your mark is, and if you should seek registration.
If you would like more information on trademark trolls or other intellectual property, check out our podcast episode on trademarks.
Sam Ventola has a wide variety of experience in litigation, legal education, and mediation. When he is not protecting battling trademark trolls, he loves to spend time with his family, especially his grandson, Jack.
Ventola Law serves the Denver Metro area including Arvada, Aurora, Boulder, Brighton, Commerce City, Castle Rock, Golden, Lakewood, Littleton and Arapahoe, Adams, Douglas and Jefferson Counties.