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A trademark identifies the source and quality of product or service to the public. A mark can be a word, phrase, logo, design or combination of these. Examples include “Yamaha,” for pianos and motorcycles, “color so sure only her hairdresser knows for sure,” for Clairol’s hair color products, and Nike’s ‘swish’ logo or symbol for athletic shoes. When the trademark identifies and distinguishes a service instead of a product, it is a service mark. A service mark appears in the advertising for services whereas a trademark usually is affixed to the product or packaging of the product. Both trademark and service marks are commonly referred to as trademarks. The trademark protects the expectation of the buyer - that those goods or services come from a particular source. By thus protecting the public, the trademark permits you to protect the goodwill your business earns in the marketplace. Trademark rights arise from use and there are but two ways to gain trademark rights from use. First, actual use of the mark to identify and distinguish products or services in the marketplace establishes common law rights. These rights are limited to the geographic area where the mark is actually used. Second, upon the federal registration of an application based upon a bona-fide intent to use the mark, the owner has constructively used the mark nationwide. This provides the owner priority nationwide irrespective of his actual use. It is important to note that federal registration does not give an owner rights over a prior common law user. Thus, if a subsequently adopted federally registered mark conflicts with a pre-existing common law mark, the common law trademark owner can be prevented from using his mark beyond his existing geographical market. Likewise, the federally registered mark owner cannot use his mark within the common law mark owner’s existing market. When
consumer confusion between two marks is likely, trademark law is applied
to resolve the dispute. The
legal test “likelihood of confusion” requires that consumers
are likely to be confused as to the source, sponsorship or affiliation
between two users of similar or identical trademarks.
Consider two marks for perfume – lunar and moon.
While the marks do not look nor sound close, they conjure up the
same image. It is not difficult
to imagine the consumer being confused as between these two identical
products. If a likelihood of confusion is found, trademark law provides
the prior user the legal tools necessary to stop others from using such
confusingly similar terms. Not
all product or service designations are protectible as trademarks. Terms
that merely describe the goods or services cannot distinguish the source
or origin from another. ”Sun
Tan Oil” tells the consumer what the product is, but cannot assist
him in knowing which sun tan oil manufacturer made the product.
To help the consumer, marks should be unique in the marketplace
and may possibly hint at the product or service or the benefit the product
or service confers. “Coppertone”
tells the consumer that the product is from the Coppertone folks and not
the Banana Boat folks. Consumers
can thus discriminate between the two sun tan oil makers.
Marks such as Coppertone are called suggestive marks because they
provide a hint that the product might be sun tan oil by giving a clue
as to the product benefit. Marks
that are made up, fanciful marks, and marks that are seemingly mismatched
to the goods or services, arbitrary marks, are also capable of distinguishing
origin. Kodak and Exxon are
examples of fanciful marks whereas Apple (computers), and Banana Boat
are arbitrary marks. Suggestive, arbitrary and fanciful marks are entitled
to federal registration appropriation.
Descriptive terms are not unless there has been an acquired distinctiveness
termed secondary meaning. Federal registration confers substantial benefits on the trademark owner.
A
search for prior users of the same or confusingly similar mark is necessary
to determine priority. Learning
of prior rights after investing in a mark can be devastating to a business.
Blindly appropriating a mark may subject you to a claim of trademark infringement. Even an innocent appropriation could subject you to expensive
litigation and substantial damages.
It bears noting that businesses may now have an affirmative legal duty
to uncover other federally registered users of confusingly similar marks.
Undiscovered users with prior rights may also waste the effort
and cost in an application. The services of an attorney can be invaluable particularly in the evaluation of a proposed mark. Counsel can guide the selection to insure that if the mark is available, it can be federally registered. You can do a basic form of knock-out searches yourself by viewing the US PTO Database and a basic internet search by viewing one or more of the search engines - Alta Vista is recommended. Once a mark has been so prescreened, a professional search should be commissioned. It is prudent to first run an inexpensive identical search. If a selected mark is thus knocked-out by an owner with prior rights, the time and cost of a full or comprehensive search is avoided. Once a mark has cleared a screening search, a comprehensive "full search" is often suggested. The
full search is much broader both in query and scope. The full search
retrieves relevant records from federal registrations, all 50 states,
common law (unregistered) uses and internet domain names. Counsel
will insure the search is structured to retrieve those relevant marks
that are identical, that have similar meanings that sound alike or that
look similar. The query thus
seeks variations that may be confusingly similar - for example, moon and
lunar, curve and kurv, aquascapes and waterscapes. The goods or services
in the retrieved records are evaluated with an applicant’s proposed
goods and services for possible consumer confusion.
This evaluation is based upon a multifactor test used by the courts
to determine likelihood of confusion. Once a mark has been cleared and
the issues of ownership have been addressed, an application can be prepared. An applicant for a federal registration is entitled to have his mark registered unless the mark is descriptive or confusingly similar to another existing trademark. While the registration process is not complicated, it requires expertise to shepard the application through to registration. If
the goods are sold or the services are advertised across state lines or
internationally (in commerce), the trademark owner can base the application
on actual use. If the application matures into a registration, the owner’s
priority will extend to his first use.
If the applicant intends to use the mark, his application will
be based upon his intent to use.
The intent to use applicant will have a limited time in which to
use the mark in commerce or lose the application. The recitation of goods and services in the application must be drafted with care and based upon the results of the search and the actual and intended commercial activities of the applicant or trademark owner. The trademark attorney will also consider the manner of use of the mark to insure that the specimens required to be submitted with the application will meet the examiner’s review. Once
the application is submitted, the delay begins.
The PTO usually does not respond to the merits of the application
for many months. After all
issues raised by the Trademark Examiner have been satisfactorily addressed,
the mark is approved for publication in the Trademark Gazette.
Publication gives anyone who feels he would be damaged by the grant
of registration an opportunity to oppose.
If there are no opposers, a registration should issue.
Note that registration does not foreclose later attacks.
Prior to filing for incontestability, a registered mark is subject
to cancellation. Trade names or business names are the names used to identify a particular company or corporation whereas trademarks identify a business's goods or services. For example, Johnson & Johnson is the trade name of the company that sells bandages under the trademark "Band-Aid." Business names can become trademarks when they are used in the marketplace to identify a product or service. For example, the computer giant Microsoft uses the Microsoft name both as its corporate name and also as a trademark. Registering a business name through state corporate name registration or state fictitious business name registration secures the right to use that business name with respect to bank accounts, debts, invoices, lawsuits, etc., but it does not create (or affect) the right to use that name in the marketplace as a trademark. If you advertise your products or services under your business name, your rights to that use derive principally from trademark law.
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