Five common questions about trademark protection

With the recent news about King’s Candy Crush trademarks, game developers and fans have been talking trademark a lot lately. However, many inaccuracies and incorrect assumptions have been thrown about in the ensuing flurry. I’ve gathered here five questions about trademark that seem to come up a lot, with (hopefully) simple answers.

Do I have to register my trademark?

No, simply using your mark in commerce is enough to establish rights in that mark. However, certain remedies and rights are unavailable without registration. Additionally, registering the mark gives “constructive” notice to all other would-be users of that mark.

Can you trademark a generic word like “candy”?

This is kind of a trick question, but here goes. No, you cannot register a mark for the word “candy,” or some other generic word, if it is used in connection with that product. The famous example is the word Apple. If you have an apple-selling company or brand, you would not be eligible for trademark rights. However, using the word in an arbitrary way, such as to describe a computer brand, would be registrable. See my post on trademark distinctiveness for more info.

If the trademark is approved and published, is it final?

The USPTO examines the mark and makes a determination. If they deem it registrable, then they publish the mark for opposition in the Federal Register. The whole process is public and can be viewed by anyone. The public then has a short period of time after this publication to oppose the mark. The opposition must be filed with the USPTO, and will then be considered by the trademark office prior to the mark being officially “registered.”

One famous opposition in game development is Blizzard’s opposition to Valve’s registration of the DOTA mark. It’s not over then, however. For the first five years, a mark is still open to being contested. After that five year period, the trademark owner can then file for “incontestibility,” meaning that it can no longer be opposed on its face.

How long is a trademark valid?

Trademark protection is indefinite, as long as the proper trademark renewals are filed in a timely manner.

What if someone registers a trademark I’m already using?

First of all, an opposition would be the appropriate move to make, in many cases. This answer is a little complicated, so check out this article for a (very) detailed look at the options.

What happens if a trademark owner doesn’t police their mark?

Unlike copyright, which allows for pretty broad licensing power, trademark owners will generally lose their exclusive rights if they do not properly police their mark. There are several ways to do this. Licensing the use of the mark without proper quality controls is one way. Allowing others to use the mark so that it loses its distinctiveness is another way (called dilution by blurring or tarnishment).

Another issue is “genericide,” which means that the trademarked term has become generic. “Aspirin” is an example of this. There are other ways that failure to police a mark can result in rights going away, so check out this page for more info.

Hopefully this clears up some common questions about trademark law. If there are any more, please leave them in the comments and I will address them on the blog. If you need help evaluating or registering a mark for you project, contact an attorney for advice.