The Public Is Trademark Conscious

Trademarks influence our daily lives and symbolize our system of free and competitive enterprise. We encounter them not only in the marketplace, but also in our work, recreation, reading, business and financial transactions, on the highways, and in every mode of transportation.

For example, consider the number of trademarks a person may encounter in just the first hour of a day:

After a refreshing sleep on a BEAUTY REST mattress, the average person may be awakened by music from a SONY radio-alarm clock. After brushing his or her teeth with CREST toothpaste using a REACH toothbrush, followed by a stimulating shower with IVORY soap while listening to the newscast from an RCA or PHILCO radio, he or she quickly dresses, puts on a ROLEX or PIAGET watch and rushes downstairs to breakfast.

Why Worry About Trademarks?

Business management may encounter significant trademark questions. Consider, for the following situations which often have serious trademark implications:

  • If you are selling goods or services under a distinctive name, is it to your advantage to protect that name as an asset of your business?
  • Assume that you are selling your trademarked product through independent distributors. Do you have the right or obligation to control how the independent distributor advertises your trademarked product?
  • What if you wish to contract with another company to manufacture and sell your trademarked product in another geographical area? Do you have any right or responsibility to control the quality of goods produced by the other company?
  • Suppose you are selling your entire business, including the right to manufacture and sell your trademarked product. Do you know whether rights to the trademark can be transferred? Do you have ongoing risk if the trademark has come to be identified with you?
  • When may you place the ® symbol on your goods and when should you simply use “TM” or “SM?”

These and numerous other business-related transactions can raise serious trademark questions which business management should recognize.

What Is A Trademark?

The subject matter of trademarks deals with words and symbols used in association with a company’s goods and services to distinguish or differentiate them in the marketplace. Trademarks are defined in the Lanham Act (found in Title 15 of the United States Code) as:

[A]ny word, name, symbol, or device, or any combination thereof [used by a person] to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

There is a distinction between a trademark and a trade name. A trade name is commonly a company name or a corporate name used to identify a business, vocation, or occupation. GENERAL MOTORS is the world-known trade name of a corporation, General Motors Corporation, which manufactures and sells products with varying trademarks like CHEVROLET, GMC and the like. CHEVROLET is a trademark because it is actually applied to particular goods (automobiles) which are sold by General Motors Corporation.

The definition of a service mark under the Lanham Act is:

[A]ny word, name, symbol, or device, or any combination thereof [used by a person] to identify and distinguish his or her services, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.

A service mark is generally treated the same as a trademark, except that it is associated with services, rather than goods. Service marks such as HERTZ, MARRIOTT, MCDONALD’S and DELTA illustrate the extent to which service marks are used in the mainstream world of commerce.

Words and Phrases

Contrary to popular belief, a word or combination of words does not need to be invented or coined to be a good trademark and, in fact, most marks are not. However, such words must differentiate the goods or services with which they are used from similar goods and services. Words that are the generic designation of a product or service are generally not available for exclusive use by one party by way of trademark protection. Similarly, one party may not immediately be able to appropriate words that describe the ingredients, character, quality, or intended use of the associated goods or services to the exclusion of other parties who use the same word in its accurate descriptive sense. However, over time and with substantial use, these initially descriptive words may become distinctive of a single source or origin of goods or services and become protectable as a trademark. Generally the use of a phonetic or foreign equivalent will not convert an unavailable word or phrase into a trademark.

Colors

A color may serve as an integral part of a valid trademark; for example, a red dot on rubber heels for shoes or a red crown painted on the necks of bowling pins can serve as a trademark. In fact, courts have recently recognized that under certain circumstances, color alone may function as a trademark, such as in the case of the color PINK for Owens-Corning fiberglass.

Pictures and Symbols

Trademark protection is sometimes sought for pictures that are used either alone or in conjunction with words or other symbols. The NIKE “Swoosh” symbol is a well-known symbol associated with athletic footwear and clothing, as is the silhouette of Michael Jordan flying through the air.

Numerals and Letters

Numerals and letters, individually or in groups that do not make up a word, can be very successful marks. Often used in a distinctive form or design, such marks are easily remembered. Among the most widely recognized numeral and letter marks are: IBM, GE, RCA, AAA, and CBS.

Label and Package Designs

Today more than ever, the purchasing public is conscious of package design, and almost every element of a product’s “trade dress” or its packaging (e.g., color, shape and size) may be an important factor in a customer’s decision to buy. However, only those distinctive features which function as an identification of origin may be exclusively appropriated under a claim of trademark significance.

Normally, configuration of containers and goods are not protectable trademarks, especially if the configuration is primarily functional. However, configuration of containers for goods may function as a trademark if the product it holds is identified by the distinctive shape. The famous hour glass shape of a COCA-COLA bottle is an example of a registered trademark for containers.

Slogans

Slogans or phrases adopted to advertise a product are not defined in the federal trademark statutes; however, they may function as a trademark depending upon how the slogan or phrase is used. If the slogan or phrase is used in a manner to associate a particular product with a particular manufacturer in the mind of the public, then the slogan or phrase may be protected as a trademark.

Limitations On Acceptable Trademarks

Not all words, names, symbols, or devices may be recognized as trademarks. To be a “trademark,” the word, name, symbol or device must be used to identify the goods or services with which it is used and also distinguish those goods or services from the goods and services of others.

Distinctiveness

If a mark distinguishes the goods or services with which it is used to identify the origin of those goods or services from the origin of other goods and services of the same kind, then it is “distinctive.” A mark may be distinctive when used in connection with one product (e.g., the mark “APPLE” when used on computer products) and yet may be non distinctive when used on another product (e.g., the term “apple” when used to describe the fruit).

A mark may lose its distinctiveness when it becomes the common or generic term for the goods or services. Under these circumstances, a trademark, even though distinctive in its initial use, may no longer be protected as a trademark as it acquires a generic character. When a mark becomes generic, (usually as the result of widespread public use of the word to identify the product or services with which the mark has been associated) the word is free for the whole world to use as such.

The owner of a mark must therefore walk a fine line. On the one hand the owner encourages recognition of his or her mark and, on the other hand, the owner takes steps to prevent a situation where the mark becomes used as a reference term for a class of products. A trademark should always be used as an adjective, never as a noun or a verb. For example, one does not make a xerox of a document, one makes a XEROX photocopy of a document. Similarly, care should be taken when referring to KLEENEX tissues or SCOTCH brand transparent tape.

Loss of distinctiveness has happened to many famous trademarks, including ASPIRIN, THERMOS, SHREDDED WHEAT, ESCALATOR, CELLOPHANE, and NYLON. The owners of the trademarks XEROX, FORMICA, BAND-AID, and KLEENEX, to name only a few, are working very hard to avoid loss of distinctiveness.

Secondary Meaning

Certain marks that are somewhat non distinctive may become eligible for trademark protection through the acquisition of secondary meaning. Factors considered in establishing secondary meaning include length of use, volume of sales resulting from that use, and the manner, extent, and target of any advertising campaigns.

Descriptiveness

Because there are only a limited number of words available in the English language to describe a product or service, or its characteristics, trademark protection will not be granted to a descriptive term or picture unless it has acquired distinctiveness or secondary meaning. A descriptive term is any term that would normally and naturally be employed by a manufacturer in describing the particular goods upon which the mark is used. However, there is a legal distinction between marks that are “merely descriptive” and those that are “merely suggestive.” “Merely suggestive” marks are inherently distinctive trademarks. The difficulty is that such marks may shade gradually, almost imperceptibly, from one type to another.

It is fairly well established that a word or phrase is “merely descriptive” with reference to the goods or services with which it is used, if it:

  • Describes the manner in which the product or service is packaged or marketed (MATCH BOX for miniature toys packaged in simulated match boxes);
  • Describes the function of the product (ASPHALT-PAK for shipping containers for asphalt);
  • Describes the essential ingredient of the product (RICH n’ CHIPS for chocolate chip cookies);
  • Describes a functional feature of the product (BLUE DOT for flashbulbs featuring a blue dot that indicates atmospheric pressure has been exhausted); or
  • Indicates the method of use of the product (NO CLAMP on glue).

Deceptive and Misdescriptive Terms

Terms that are deceptive or deceptively misdescriptive are not usually proper marks. However, a trademark is not invalid simply because it is misdescriptive. There are many such well-known marks that have become distinctive; for example, GLASS WAX for a metal polish and ENGLISH LEATHER toiletries (not made in England). The trademark laws only deny protection to those misdescriptive terms that would actually deceive the public if used as trademarks. One such case involved the mark AMERICAN BEAUTY for sewing machines and attachments that, with the exception of the driving motor and the cabinet, were manufactured in Japan.

Geographically Descriptive Terms

Geographical terms, like other descriptive words, may not be appropriated to the exclusive use of any one manufacturer or merchant, unless they become distinctive. Such terms include, American, Dixie, Antarctica, and Nationwide. When used in the descriptive sense, geographically descriptive terms cannot be exclusively appropriated as a trademark or trade name unless a secondary meaning has developed — such as HERSHEY for chocolates and AMERICAN for commercial airline services.

Establishing Rights In a Trademark

Trademark rights derive primarily from two sources — the common law and statutory law — which to some degree overlap and complement one another. Common law is that body of law developed over centuries through court decisions based on principles of fairness and equity within the commercial setting. Statutory law comprises federal and state statutes codifying certain aspects of the common law of trademarks and, in addition, providing a system of registering trademarks at the state and/or federal level.

Common Law

At common law, the only way to acquire the exclusive right to a trademark, i.e., the right to exclusively use and license it — is to actually adopt and use the mark on goods or in connection with services. Actual use of the mark, not plans or hopes to use, is paramount under the common law to the acquisition of rights in a trademark. Once a trademark has actually been used in connection with a product so that consumers have come to identify the trademarked goods as originating with the owner of the mark, a common law trademark right is established. The scope of the common law trademark right depends upon the geographical area of use and the goods or services with which the trademark is used. Unless a trademark is registered with the United States Patent and Trademark Office (discussion follows), the common law principles of trademark protection normally apply only to the specific trading areas of use where there are conflicting claims to the same mark.

Federal Registration

Federal registration of a qualifying trademark or service mark can provide the trademark owner with significant benefits. For example, federal registration provides access to federal courts for trademark infringement and also access to procedures for stopping imports of goods bearing infringing marks. Federal registration gives nationwide constructive notice of the owner’s claim for the exclusive use of the registered trademark in connection with its goods and services. Effective November 16, 1989, federal registration also constitutes constructive use of the mark throughout the country. Moreover, after registration has been in effect for five years, the trademark registration becomes subject to cancellation only upon limited grounds.

Prior to November 16, 1989, actual adoption and use of a mark by an applicant for registration was an absolute prerequisite to applying for federal registration. Effective November 16, 1989, the U.S. trademark statute, the Lanham Act, was amended to bring U.S. practice more in line with other countries around the world and to permit the filing of an application for federal trademark registration based on a bona fide intent-to-use the mark. In other words, effective November 16, 1989, applications for federal trademark registration may be filed on the basis of either (i) actual use of a mark (referred to as “use-based applications”) or (ii) a bona fide intent-to-use of a mark (referred to as “intent-to-use applications”). Under either basis, however, the use or bona fide intent-to-use must be in commerce that may be lawfully regulated by Congress. Sales of goods or services solely within the boundaries of a single state (intrastate commerce) may not satisfy the federal requirements. Such transactions must have occurred in commerce between two or more states, in commerce with foreign countries, or in intrastate commerce that affects interstate commerce.

The following information is typically required in order to prepare an application for federal trademark registration:

  • The legal name and state of incorporation or residence, as appropriate, of the entity that will own the registration;
  • A complete description of all the goods and/or services on or in connection with which the mark is being used or will ultimately be used and for which registration is desired;
  • If the application is based on prior use, the date of first use of the mark anywhere and, if different, the date of first use in interstate commerce (if the mark is used on a variety of goods and/or services, dates of first use for each of the goods and/or services are required); and
  • The name and capacity of the person who will sign the application.

The application must be accompanied by a filing fee and in the case of use-based applications, several specimens (e.g., labels affixed to the goods, packaging materials or, in the case of services, brochures or advertisements describing the services) showing the mark as actually used on or in connection with the goods or services.

After an application is filed with the United States Patent and Trademark Office, there is normally a waiting period of several months before it is examined by an examining attorney to determine whether it qualifies for registration. It is not unusual for registration to be rejected or minor objections to be raised upon the first examination. If registration is rejected or technical objections raised, the applicant is given an opportunity to respond to the examining attorney’s rejections and/or objections in a written response, and the application will be reviewed a second time in view of the applicant’s response. Generally, the applicant is given a period of six months in which to prepare and file a written response with the United States Patent and Trademark Office. If a written response is not filed within the six month period, the application automatically goes abandoned. If the mark is rejected a second time by the examining attorney, there are certain procedures to appeal the examining attorney’s decision to a United States Patent and Trademark Office board of review and ultimately to the courts, if necessary. However, if a mark is registrable, in most instances registration will be granted after the first or second review.

Once the mark receives preliminary approval from the examining attorney, it is published in the Official Gazette of the United States Patent and Trademark Office, which is distributed on a subscription basis to trademark attorneys and others throughout the United States. For a period of thirty days following publication, any interested party that feels registration of the mark would adversely affect their rights can file an opposition proceeding before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. If no opposition is filed within the thirty day period and the application is based on prior use, the registration will receive final approval and a Certificate of Registration will be issued within a few weeks thereafter.

With respect to an intent-to-use application, no registration will be issued until proof of actual adoption and use of the mark in commerce is submitted to the United States Patent and Trademark Office in the form of a document entitled “Statement of Use.” In practice, intent-to-use applications are initially reviewed and processed in exactly the same way as applications based on actual prior use. However, once an intent-to-use application receives preliminary approval and the application is published without opposition, the application is held in abeyance until the applicant actually adopts and uses the mark in commerce, submits evidence of such adoption and use to the U.S. Patent and Trademark Office, and such evidence of adoption and use is reviewed and accepted. In other words, if an intent-to-use application is not opposed, the United States Patent and Trademark Office simply issues a Notice of Allowance, and then the applicant has six months from the date of the Notice of Allowance in which to file a Statement of Use. The period for filing the Statement of Use may be extended in six month increments, not to exceed a total of 36 months from the date of issuance of the Notice of Allowance, by filing the appropriate requests and payment of the appropriate fees demonstrating need for extension of time. There is also a filing fee for filing a Statement of Use. Once the Statement of Use is examined and accepted, then the registration is issued in due course.

State Trademark Registration

Most states have trademark registration statutes based on a model state trademark law. These state statutes provide a procedure for securing state registration of a trademark adopted and used within the state. Typically, the filing procedures are simple, and examination of the trademark application is basically limited to matters of form and does not embrace more elaborate examination procedures provided by the U.S. Patent and Trademark Office. Marks that would not pass with the Patent and Trademark Office may be granted a state registration. Since rights in a trademark flow from its adoption and use, state registration laws generally provide little or no substantive rights to the owner of a mark not already available under common law principles of unfair competition.

Trademark Selection and Screening

Before investing a significant amount of time, money or effort in a particular trademark, serious consideration should be given to having a search performed to determine whether anyone else may have prior rights to that mark. However, no trademark search is perfect as there are certain risks associated with and limitations inherent in all trademark searches, regardless of scope.

First, trademark rights arise simply by virtue of adoption and use, and a trademark owner is under no compulsion to register a mark with the United States Patent and Trademark Office or any other authority. Accordingly, there could be others using similar, unregistered marks or names, who may have superior rights simply by virtue of their prior adoption and use, yet which may not be reflected in even the most comprehensive of trademark searches. In other words, the simple fact that a search may not reflect any serious conflict is no guaranty that the proposed name will be available for adoption and use under all circumstances.

Second, there exists an inherent time delay between the time an application is filed with the United States Patent and Trademark Office or other trademark authority and the time the information is processed and made publicly available for searching purposes.

Finally, budgetary considerations may and typically do impose practical limitations on the scope of search that is practical under the circumstances. Accordingly, there are a variety of searches that are available, varying in scope and cost.

A search of the records of the U.S. Patent and Trademark Office is strongly recommended under most circumstances in an effort to eliminate the possibility of a conflict with a mark already registered with the United States Patent and Trademark Office. Beyond that, there are several commercial search firms that specialize in trademark screening searches. Such search firms not only search federal and state trademark records, but also have access to certain common law sources, such as relevant trade directories, telephone directories and corporate name listings, which may turn up prior uses of unregistered names and marks that a search of federal and state trademark files, alone, would not.

Transfer of Trademark Rights

Licensing

Trademark law provides that a trademark owner may license a legitimately related company to use his or her trademark, and the use of the trademark by the related company will inure to the benefit of the trademark owner provided that the mark is not used in such a manner that it would deceive the public. A “related company” is defined in the federal statutes as one “whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services in connection with which the mark is used.”

The meaning of these somewhat complicated sections of the trademark statutes is that the owner of a mark may license others to use the mark so long as the licensor controls the “nature and quality” of the goods or services offered by the licensee. If he or she does not control the licensee’s use of the mark, the licensor’s rights in the mark may become unenforceable.

It is important to carefully consider the types of quality controls which should be employed to protect the licensed mark. The business value of a trademark rests on its ability to identify for consumers the source and origin of the goods or services with which the mark is used. In this way, the trademark becomes associated with the trademark owner’s reputation for quality, price or service. This does not mean that the products or services have to be “high quality” under any objective standard. Rather, consistency is the aim, and when someone other than the owner of the mark, because of a license, offers the same goods or services as the owner, the consumer who purchases the goods or services because of the trademark used on the label or in advertising should not face the risk of getting a different-quality product or service each time he or she makes a purchase.

If the owner of the trademark cannot control the nature and quality of the goods sold by his or her licensee, and if the mark cannot be viewed as some assurance of consistency, there can be no incentive in legal theory to allow the owner to stop the use of the mark by anyone who so chooses to use it. In effect, use without control can cause the mark to lose its distinctiveness to the point where the mark no longer functions as a trademark. Generally, the licensor can control the nature and quality of the licensee’s use of the mark by issuing specifications under which the licensee must make the product or implement the service.

Sale and Assignment

A trademark may be sold and assigned along with the goodwill of the business in which the mark is used or with that part of the goodwill of the business connected with the use and symbolized by the mark. The importance of transferring the accompanying goodwill cannot be overestimated in the sale and assignment of a trademark. If a trademark owner purports to sell a trademark without transferring to the purchaser everything relevant to the purchaser’s complete takeover of the production and marketing of the trademarked product, including the goodwill of the business, the purchaser may not acquire all of the rights of the trademark owner.

Notice

To apprise others of your ownership of a trademark, the designation ® should be placed on goods or services covered by a federally registered trademark or service mark. If the mark is used as a trademark or service mark, but it is not federally registered, then the symbol “TM” should be used in conjunction with the mark on the goods or the symbol “SM” if the mark is used on services.

Conflicts Between Marks

Infringement

Because trademarks serve to identify the source or origin of a company’s goods, protection of a company’s trademark rights in such goods extend to excluding the improper marketing of another’s goods in such a way as to constitute infringement. A mark is infringed whenever another market goods bearing a mark that is so similar to a protected trademark that there results a likelihood of confusion as to the source of the goods. In a trademark infringement action, the plaintiff must establish that:

  • There exists a likelihood of confusion in the mind of a purchaser resulting from the use of an identical or similar mark by another in connection with his or her products or services;
  • His or her exclusive right to use the mark in connection with the goods or services in a trading area;
  • His or her prior and continuous use of the mark; and
  • The validity of the protectable mark.

Trademark infringement actions can be brought on both registered and unregistered marks. Nevertheless, federal registration carries with it the advantage that the federally registered mark is presumed to be valid. This presumption removes the burden of proving the validity of the mark from the plaintiff and places on the defendant the burden of proving that the mark is invalid.

Related to the offense of trademark infringement is the common law tort of “palming off,” often referred to as “passing off.” This tort is committed when one manufacturer or seller attempts to deceptively market or “palm off” his or her goods as those of another. Moreover, for the tort to be completed, actual confusion as to the source of goods must usually result.

The offense of trademark infringement is not as difficult to prove as the tort of palming off. A principal difference in the standard of proof is that under the federal trademark statutes, and most state statutes, trademark infringement may be found where there is merely the “likelihood of confusion,” mistake or deception as to the origin of goods. Although the standard of “likelihood of confusion” is a legal one, resolution of trademark infringement actions must be decided upon a balancing of several factual considerations presented in each case. It is not surprising, then, that courts are fond of stating that prior legal precedents weigh little in this balancing process.

As may reasonably be expected from the foregoing considerations, the “likelihood of confusion” standard for trademark infringement often may lead to what appears to be inconsistent or even conflicting decisions. The factors involved in making a determination of the likelihood of confusion include: the similarity of marks, whether the trademark is strong (i.e., a unique mark) or weak (i.e., similar to other marks), the similarity of the goods to which the trademarks are applied, the geographical areas of sales, the channels and methods of distribution, customer identity and sophistication, defendant’s intent in selecting his or her mark and the existence of actual confusion.

Remedies

Generally upon a finding of trademark infringement by a court of law, the trademark owner is entitled to an injunction preventing the defendant from using his or her mark in a manner that would be likely to cause confusion. Injunctive relief is limited, however, by equitable considerations and is available only to the extent necessary to avoid confusion.

In addition to injunctive relief, a successful party in an action for trademark infringement may recover monetary damages where injury, in addition to confusion, may be established. Although monetary recovery under the common law was reserved for instances of intentional infringement or diversion of trade, as in palming off, the federal trademark statutes provide that monetary recovery can be had for damages suffered because of the infringing use of any reproduction or imitation of a federally registered mark in connection with the advertising or sale of goods in commerce provided that the registrant has given notice of the registration of his or her mark by using the symbol “®” or by use of the term “Reg. U.S. Pat Off.” or its equivalent.

In addition to compensatory damages, a court may award to the plaintiff the profits derived by the defendant from sales of products or services utilizing the infringing mark. It has traditionally been held that such a measure of damages provides the trademark owner with appropriate protection only where the defendant’s goods directly compete with those of the plaintiff. It has more recently been recognized, however, that an accounting for profit serves the additional purposes of deterring willful appropriation of another’s mark and preventing public confusion as to the source of defendant’s goods. Accordingly, an accounting for profits may be an appropriate measure of recovery even where the respective parties do not directly compete with each other.

Foreign Trademark Protection

With the ever increasing globalization of business, the importance of protecting trade identity is rapidly increasing both here in the U.S. as well as in other countries. A couple of important differences exist between U.S. trademark law and the trademark laws of many other countries. Under U.S. law, entitlement to registration is determined based on who was the “first to adopt and use” the mark in commerce in or with the U.S. In contrast, most other countries determine who is entitled to registration of particular trademark based on who was the “first to file” for protection in that country. Accordingly, obtaining an early filing date is advantageous when seeking trademark protection overseas. In addition, while the U.S. generally requires an applicant to adopt and use a mark in or with the U.S. before registration is granted, most other countries do not require use as a prerequisite for registration.

Most industrialized nations, including the U.S., are signatories to the International (Paris) Convention for the Protection of Industrial Property (the “Paris Convention”). A primary provision of the Paris convention provides that foreign trademark applications, if filed within six months from the filing date of a U.S. application, can receive the earlier U.S. filing date. Consequently, a subsequent application filed in any of the member countries before the expiration of the six-month period cannot be invalidated by any act that may occur in the interval, nor can such acts give rise to rights of third parties or any rights of personal possession. In general, trademark protection must be separately pursued in each country in which protection is desired.

The U.S. is also a signatory to the Madrid Protocol, which provides useful and cost effective procedures for initiating the process of obtaining trademark protection in multiple countries. The Madrid Protocol is essentially a filing mechanism, through which preliminary processing of the application is performed at a central location and then the application is distributed to individual national trademark offices. Many of the industrialized countries around the world are members of the Madrid Protocol. Filing through the Madrid Protocol permits U.S. applicants to file a single application that designates or requests trademark protection in any or all Madrid Protocol member countries. Ultimately, however, the Madrid Protocol application must be validated by the national trademark office in each country in which protection is ultimately desired.

Summary

Protection of a company’s trademarks and service marks is essential to the protection of the company. In order to make sure that those valuable assets are not unprotected, company management should periodically review the trademarks and service marks which they are using and ascertain whether the company is taking full advantage of the significant rights and benefits afforded by the federal trademark statutes.