Trademarks: A Primer for Colorado Business Owners

Trademark Primer

A “trademark” is any word, name, slogan, symbol, or combination thereof, including packaging, configuration of goods or other trade dress, which is adopted and used to identify goods or services, and to distinguish them from goods or services offered by others.

The primary goal of trademark law is not to establish an exclusive property right in the mark, but rather, to protect consumers from confusion in the marketplace.  Thus, your trademark rights are violated if someone else is using your mark (or a mark confusingly similar to yours) in a way that is likely to cause confusion to existing or potential customers.

Technically, “trademark” is the term to use for tangible goods and products and “service mark” or “servicemark” is for non-tangible services, but nearly everyone, even trademark attorneys, use “trademark” for both categories.

“Common Law” Trademark Rights

Many people believe you can only have a trademark if you file for a registration, but this is not true!

Trademark rights can be established under common law simply by being the first use a mark for a business endeavor.  Your common law trademark rights extend as far as the geographic area in which you use your mark.

For example, if Roger started a plumbing business called Roger’s Parts & Plumbing in 2002 and has continuously used the name “Roger’s Parts & Plumbing” in the Denver metro area ever since, he will have likely established a legal right to “Roger’s Parts & Plumbing” under common law in the Front Range.

If, in 2017, Judy tries to start a plumbing business in Denver called “Roger’s Parts & Plumbing”, Roger could use his trademark rights to legally stop Judy from doing so.  Consumers would be confused about which “Roger’s” business is which.  Plus, the new “Roger’s Parts & Plumbing” could unfairly take advantage of the goodwill and reputation Roger has established over more than 10 years of business.  These are the very problems trademark law was designed to address.

However, if Judy starts a plumbing business called “Roger’s Parts & Plumbing” in Durango, Colorado instead of Denver, nearly 350 miles away from where Roger operates, Roger might have trouble proving that his common law rights extend that far.  Similarly, if someone starts a punk band in Denver called “Rogerzz Plumbing”, Roger would have to prove his trademark rights extend beyond the plumbing industry in order to stop the punk band from using that name to promote music and live shows.

Federal Trademark Registration

Registering your trademark, even if you have established strong common law rights to the mark, is always advised.  This allows you to provide notice to the world that you are using the mark, and affords you certain statutory rights and protections as well.

The U.S. has a two-tiered system of trademark protection:  federal and state.  A federal registration issued by the U.S. Patent & Trademark Office (USPTO) give the registrant rights through the entire United States.  A state registration will grant rights within that state’s boundaries only.

Generally, in order to file for a registration with the USTPO, the trademark’s owner first must use or plan to use the mark in “interstate commerce.”  This means the mark is used on a product or service that crosses state lines or that affects commerce crossing such lines (for example, an Internet business that caters to interstate or international customers).

At first glance, registering a mark with the USPTO appears to be a relatively simple process. It requires a completed application, a specimen, and a statutory filing fee.

However, doing some research before spending the cash on the filing fee, which can range from $250 to $375 or more depending on the type of application submitted and how many class of goods or services you want to list for your mark, is strongly recommended.  This is because all applications will be examined by a USTPO Trademark Examiner for registrability under the Lanham Act (15 U.S.C. § 1051 et seq.).

Some things CANNOT be trademarked under the Lanham Act.  You are not allowed to claim the generic name of a product or a service itself as your trademark.  Roger cannot trademark “Plumbing” or “Plumber” for his plumbing business.

You cannot register “clearly descriptive” marks, which are those made of dictionary words which describe some important characteristic of your product or service (e.g., “Delicious Apples” if you have an apple orchard business).  You also cannot register “deceptively misdescriptive” marks (e.g., “Leather Shoes” for shoes that aren’t actually made of leather).

However, “suggestive” marks only give some vague idea about the products and services covered by the trademark, and are registrable.  Sometimes the boundary between unregistrable clearly descriptive marks and registrable suggestive marks isn’t very clear. This can result in long disputes between applicants and the USPTO.

There are many other rules for what is allowed for registration under this Act, and if your application is rejected, you do not get a refund of your application fees.  As such, consulting with a trademark attorney is advised before you begin the federal registration process.

If the Trademark Examiner determines your mark can be registered, it is then published in the USPTO Gazette, and if it is not challenged within 30 days of publishing, it will be registered. The total process can take 1 year at a minimum.  After registration, you can use the symbol ® after your mark to show it has been federally registered.

Colorado Trademark Registration

Trademark registration under Colorado law[1] is easier, faster and cheaper than federal trademark registration.  It is used to protect a trademark within the state.

A Colorado trademark registration allows for a standard character mark (expressed in ordinary English letters, Roman and Arabic numbers, or punctuation, without any stylization) and a special form trademark (logos, pictures, design elements, color or style of lettering).[2]

To file a Colorado trademark registration, you submit a Statement of Registration of Trademark electronically at the Colorado Secretary of State’s website with an attachment of your mark and the goods/services category your mark will be used in.  The current filing fee is $30.

Unlike the USPTO, there is no examiner who is going to look at your application to make sure you have completed it correctly and that the mark is appropriate for registration under state law.  Instead, when you file your application, you certify that in your good faith belief, you have the right to use the trademark in connection with the goods or services listed your application, and

your use does not infringe the rights of any other person in that trademark.

Colorado trademark registrations are effective for 5 years and may be renewed before expiration in successive 5-year terms.[3]  (Prior to May 29, 2007 however, Colorado trademarks were effective and renewed for 10 years.[4])

Obtaining a Colorado trademark registration does not authorize the use of the federal registration symbol ®.[5]  However you can use “TM” or “SM” (for a service mark) after your mark.

If you are interested in speaking with one of our attorneys about registering your trademark or stopping someone else from using your mark, give us a call.

[1] Section 7-70-101, et seq., C.R.S.

[2] Section 7-70-102(2)(f), (g), C.R.S.

[3] Sections 7-70-104(1)-(2), C.R.S.

[4] Section 7-70-109, C.R.S.

[5] Section 7-70-103(4), C.R.S.

Creative Entrepreneurship

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The stereotype of the starving artist, one who endures a life of poverty for a labor of love, is a common cultural conception. Indeed, many creative individuals ultimately choose to forgo any professional pursuit of their creative endeavors because of a perceived uphill battle of “making a living” in the arts.

However, today a growing “do-it-yourself” mindset is allowing artists, designers, engineers, architects, and other creators to invent jobs for themselves that didn’t exist a decade ago.  More now than ever, business- and technology-savvy individuals are branding, marketing and networking their way into successful creative careers.

Creative Industry Companies

Brian De Herrera-Schnering is the founder of Colorado-based video production company, Pinto Pictures.  Prior to moving to Colorado in 2007, he was employed full-time as a video editor at a company that produced healthcare education films, but was unable to find similar full-time work upon relocating to Colorado.  Nevertheless, upon establishing his own business he found Denver housed a robust, collaborative community of film, animation, and video design professionals, and his business has thrived ever since.  His company now specializes in a wide range of film-based projects and has worked with a number of local companies and nonprofits in Colorado, as well as national major entertainment brands like Discovery Channel, TLC, Root Sports, and Dish Network.

Another success story is LA-based entrepreneur KamranV, who has mashed technology, marketing and music to build a diverse creative industries company called CyKiK.  CyKiK has successfully undertaken a wide range of creative business endeavors, including developing Interscope Records’ mobile business; designing POP-AUT, a payment system for music, games art and other creative projects; producing DVD-Audio projects for artists like Beck and Nine Inch Nails, and taking over the production of Moogfest.  KamranV is also one of the founders of Bedrock.LA, a converted manufacturing building that houses music rehearsal and showcase rooms, recording studios, and an equipment rental and repair shop.

As these two examples show, there are many opportunities to thrive as a creative entrepreneur, whether pursuing film, music or technology and a mash-up of multiple mediums.

Career Entrepreneurship

The emergence of the “creative entrepreneurship” movement has been fueled by several factors.  By far the biggest is the emergence of technologies that unbundled creators from the traditional hold of studios, book publishers, concert promoters, record companies and museums.   Artists today have the ability to distribute and make money from their works in ways that were never available to prior generations.

New, web-based technologies have also generated innovative ways of project collaboration.  One clear example of this is crowdfunding.  Sites like KickStarter and IndieGogo have made the process of raising capital significantly easier for artists and startups.

Finally, the national economic slump that began in 2009 led to a lack of good-paying employment opportunities for millions of young people and recent college grads, and also resulted in layoffs for other workers who had been working their way up the traditional career ladder.  A number of these individuals realized they could no longer rely on an employer or a large established company to train and mentor them towards their dream career.  

 Business Planning and Awareness of Legal Issues

Today, designers, artists and creators mix artistic expression with business skills in order to thrive and sustain their endeavors. These individuals recognize they can utilize new resources and platforms to form their own businesses that contribute to media, arts and culture.  However, there are many legal pitfalls that could take a fledgling creative-industries business owner by surprise. 

One of these is the unfortunate receipt of a Cease and Desist Letter for either trademark or copyright infringement.  When forming a new business, people may spend a lot of time and energy coming up with a great brand name, designing a great new logo, and planning an interactive website, only to learn, after a large investment has already been made, that the name is being used by another company.  This happened to Judith Mendez, an entertainer who went by the name Dita de Leon.  Ms. Mendez decided to expand her business by offering jewelry, clothing and leather goods featuring her stage name “Dita”, but was sued for trademark infringement by luxury sunglasses brand, Dita, Inc.

Another pitfall for new businesses is improper business planning or the incorrect reporting or calculation of taxes.  This topic certainly isn’t very exciting or sexy, but extremely important.  For example, running a business a certain way, especially if there are two or more owners, or misunderstanding the filing and deposit requirements from having employees can have huge financial repercussions.  Even if you acknowledge your mistake to the taxing authorities and try to work something out to resolve it, the impacts of not knowing the intricacies or administrative rules of the tax system can be devastating and shutter an emerging business altogether.

Do you need help starting a new creative business or dealing with a tax problem under your current enterprise?  Contact us today to schedule a consultation with an attorney.