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Aug 07 2012

So You Think You Can Trademark?

Because most folks are unclear about what a trademark actually is or how it can help protect your business and because not a week goes by that someone doesn’t call me with a great idea they want to “trademark” I thought I would draft a quick basic guide to trademark that should address the most basic issues. AGAIN – this is a basic guide, law schools devote whole semesters to trademark law and there are lots of nuances, so please contact me (or another Intellectual Property lawyer) if you have specific question about your business and your desire to “trademark.”

What is A Trademark?
A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. For example, the trademark “Pepsi,” along with the Pepsi logo identify the beverages made by Pepsi and distinguish them from drinks made by other companies (e.g. Coke or Vitamin Water). When such marks are used to identify services (e.g. “H & R Block”) rather than products, they are called service marks, although they are generally treated just the same as trademarks.

Under some circumstances, trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging. This is traditionally called “trade dress.” For example, the pink color of Owens-Corning fiberglass insulation or the unique shape of a Coca-Cola bottle might serve as identifying features. Such features fall generally under the term “trade dress,” and may be protected if consumers associate that feature with a particular company rather than the product itself. However, such features will not be protected if they confer any sort of functional or competitive advantage. (Most people think the opposite was true – that is, if it provides an advantage or a function, then you should be able to protect it, but that’s not the case) So, for example, a manufacturer cannot lock up the use of a particular unique bottle shape if that shape confers some sort of functional advantage (e.g. is easier to stack or easier to grip)(though in some rare instances, a design patent may get you that protection). That’s why Owens-Corning was allowed to protect the color pink as its trademark for insulation because the color in no way serves a function. I recently blogged that Christian Louboutin could not get trademark protection for his well known red-soled shoes because the in his testimony before trial he stated he chose the color red because it denotes “sex” and “sexiness.” The court found that this meant the color had a function and therefore was not merely a trademark.

What Law Applies?
Trademarks are governed by both state and federal law. Originally, state common law provided the main source of protection for trademarks. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. Since then, federal trademark law has consistently expanded, taking over much of the ground initially covered by state common law. The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. Today, federal law provides the main, and by and large the most extensive, source of trademark protection, although state common law actions are still available.

Trademarks do not need to be registered to be enforceable; just by using the name in the marketplace you can establish your trademark rights to it. You can freely add the “TM” symbol to your business name or logo without registration. Registration is always best however as it makes it easy to prove your ownership and also often entitles you to more and different damages should somebody infringe on your intellectual property. Registration also allows you to use the encircled “R” symbol next to your mark.

You can go online and file a trademark through the US Patent and Trademark Office’s website (http://www.uspto.gov/). You can also search their Trademark Electronic Search System (TESS) to see has already registered a similar mark. It’s best however to work with an intellectual property lawyer when registering a mark so a thorough search can be made and the lawyer can advise you on the likelihood of having a protectable trademark.

How Do I Choose a Trademark and Can Any Word Become a Trademark?”

The strength of the trademark will depend on the type of word you are talking about. Fanciful marks are terms specifically created to function as a mark. Think of Polaroid, Exxon and Xerox. These words were unknown to consumers before being created as marks. They are the strongest marks and are very protectable, meaning you probably can’t use the word even if you are using it for a different product like “Polaroid T-Shirts” of “Exxon Fertilizer.” Suggestive marks suggest qualities which are desirable for a product, but do not actually describe them. Think of “7-Eleven” for a convenience store, “Seventeen” for a teen magazine, or “Best Buy” for cheap electronics. Though not as strong as fanciful or arbitrary marks, suggestive marks are distinctive and highly protectable. Descriptive, surnames, and geographical marks which are merely descriptive of goods or services, are much weaker than fanciful, arbitrary or suggestive marks. To be protectable, these marks must have secondary meaning. That means that out in the marketplace when people hear that mark, they don’t just think of the generic word, they think of the product. It is this “secondary meaning” that generates the most litigation. This also applies to slogans that use common English words. For example, “Just Do It” was a common expression long before Nike ever used it in an ad campaign. But because they flooded the marketplace with it as their slogan and put it on their labels and packaging, when you hear “Just Do It” you know think of Nike, not the common English phrase – it has acquired “secondary meaning.” (“Got Milk?” is another example of this).

Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term “Computer” is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law. So, a manufacturer selling “Computer” brand computers (or “Apple” brand apples, etc.) would have no exclusive right to use that term with respect to that product. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage. Under some circumstances, terms that are not originally generic can become generic over time (a process called “genericity”), and become unprotected (like “Band-Aid” or “Monopoly” for example).

Conclusion

A trademark is a company’s “mark in trade,” the symbol that identifies the source of the goods or services. Having a strong trademark allows you to stop your competitors from suing a similar mark and allows consumers to readily identify your product. It is preferable to register your trademark with the US Patent and Trademark Office as it is the definitive proof of when you began using the mark and may entitle you to greater damages and legal fees if you have to sue to enforce your rights in the mark. It’s also ways best to spend a little time with an intellectual property lawyer before launching your business or sending a cease and desist letter to a competitor to try and assess if you have an enforceable trademark that’s worth protecting.

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