Trademarks: How to Ask the Right Questions
I’m Steven Thrasher; and earlier today, a client called and he asked, “Hey Steve, can I trademark this logo?” And after I spoke to to him for a few minutes, I realized what he was really asking is, “Can I use this particular logo?” He wasn’t really interested in registering it at all. And that motivated me to get in front of the camera today. Because it’s important to understand: To ask the right question and then understand the answer, you have to know the framework that you’re talking about –the framework in which the question that you’re thinking of lives.
There are three frameworks in Trademark Law. The first framework is the Use Framework. It’s really where you’re asking the question that this client asked, “Can I use a particular mark?” which is a name, a logo, or slogan.
The next framework is the (2) Exclusivity Framework. And this is the one people tend to just kind of default to. It’s really asking the question, “Can I register my particular name, slogan, or logo?” But as you’ll see, the way the questions asked and the information we need to answer them are completely different. The third framework of questions kind of flows from the second.
The third framework is the (3) Process Framework. So, let’s kind of turn to the the first — to the Use Framework and the Exclusivity Framework because that’s really where the questions begin. In the Use Framework, what you’re really starting to think about is the questions that sound kind of like, “Can I sell this particular product or service using this mark?” or “Can I call it this name? Can I use this particular slogan or this logo that I like?” Sometimes the questions asked — “Will I be sued if I use this particular mark?” And a little bit more rare is a situation where you’ll think, “Well I’m using this mark, it’s great, I love it.” And oops, a truck just drove by, and he has that slogan that I’ve been using and, “Oh boy, am I going to get sued?” So those are all questions that really distill down to you wanting to use the mark, you wanting to use the name, logo, or slogan.
The next framework is the Exclusivity Framework. That’s really asking the question of, “Can I stop someone from using or copying my logo, my slogan, or my name?” You know, these kinds of questions and this Exclusivity Framework kind of take the form of, “Hey, I’ve been knocked off. I just found somebody on Amazon who’s using my slogan or copying my name.” You know, you want “Exclusivity.” You want to stop someone from using that name, logo, or slogan. The Process Framework is how you get your particular mark protected through a registration that could be a State Registration or it could be a Federal Registration. I want to talk about those in another video. But for today, again, I just wanted to cover the Use Framework and the Exclusivity Framework.
The fundamental of the Use Framework is that you want to use a particular name, logo, or slogan. The fundamental idea behind the Exclusivity Framework is you want Exclusivity — you want to stop someone else from using a name, slogan, or logo in the market. So, when you get these frameworks down and you understand the context of your question, then I would be able to — and maybe your trademark attorney, would be able to look for the right kinds of information that are needed to answer these questions. Because without the right framework, you might get an answer that you think is addressing the question that you have, but it’s actually unrelated, and that could lead you to make bad business decisions, and you don’t want that. The ultimate conclusion here is that to answer these questions is going to require research and different kinds of trademark searches. But the type of trademark search we look for and the kind of opinion we write completely depends on the framework that’s at play.
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