3 Possible Traps When Creating & Registering Your Trademark

It’s exciting for an entrepreneurial business to create and register its trademark. It’s a big step for your business. Like many things with legal implications, there may be unseen risks you need to know so as to not divert your focus from growing your business. Three of those are discussed below.

Your trademark could be false advertising.

One area that is often overlooked when choosing a trademark is determining whether the mark could be considered false advertising under federal or state law because it makes claims about your product that cannot be substantiated. The Federal Trade Commission (FTC) requires that advertising must be truthful and non-deceptive, that advertisements not be unfair, and that advertisers must have evidence to back up their claims. Claims about a product or service must be truthful, accurate, and when used in combination with the remainder of advertisement material, must not convey any unsubstantiated claims.

A federal trademark registration does not change the requirement that advertisers have a reasonable basis for all express and implied messages conveyed by the trademark alone and in conjunction with other elements of the advertisement. In other words, a federal or state trademark registration cannot serve as a defense to a claim that the mark itself is not truthful and accurate.

Before disseminating an ad, advertisers must have a reasonable basis for all express and implied product claims. What constitutes a reasonable basis depends greatly on what claims are being made, how they are presented in the context of the entire ad, and how they are qualified. With this in mind, trademarks should be evaluated by counsel to determine whether they make an express or implied claim and, if so, is there substantiation to back up those claims. 

Does your trademark make an environmental claim?

The FTC Green Guides provide general principles that apply to all environmental marketing claims, how consumers are likely to interpret particular claims, and how marketers can substantiate these claims and can qualify their claims to avoid deceiving consumers. While the U.S. Patent and Trademark Office may object to a mark because terms such as “GREEN” and “ECO-FRIENDLY” merely describe a way for consumers to find providers of products and services that are not harmful to the environment, it will not review the mark to determine whether an applicant has substantiated its green claim in connection with its products. 

When evaluating claims about environmental benefits or safety of products, competent and reliable scientific evidence is the standard. This is typically defined as tests, analyses, research, studies, or other evidence based on the expertise of professionals in the relevant area that have been conducted and evaluated in an objective manner by persons qualified to do so, using procedures generally accepted in the profession to yield accurate and reliable results. If a trademark with an environmental claim is to be used, the trademark owner should evaluate to assure it is sufficient in quality and quantity based on standards generally accepted in the relevant scientific fields for that product. 

Can you use your trademark internationally?

In today’s global economy, it is often imperative to seek trademark protection outside of the U.S. Part of the vetting process should include a conversation with foreign counsel in all jurisdictions of interest. While the U.S. requires that a mark be in use in interstate commerce prior to receiving a registration (“common law rights”), most countries follow a “first-to-file” rule. This rule allows trademark owners to obtain priority in a trademark prior to using the mark by being the first to file an application for that mark in connection with its goods and services. 

If the mark will receive significant use in that jurisdiction, a similar check should be conducted by foreign counsel to determine whether domain names are available, whether the mark has any particular meaning in that jurisdiction’s language, and what the requirements are to assure you will not lose rights in that mark after a certain period of time. 

This article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general informational purposes only, and you are urged to consult your own lawyer on any specific legal questions you may have concerning your situation.

Barnes & Thornburg LLP is a large, full-service law firm that seeks to take a more entrepreneurial and cost-effective approach both to client service and its own business.

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