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1. What are trademarks and service marks?
A trademark is a distinctive word, phrase, logo or other
graphic symbol that's used to distinguish a manufacturer's or
merchant's products from anyone else's. Some examples: Ford cars and
trucks, Kellogg's cornflakes, IBM computers, Microsoft software. In
the trademark context, "distinctive" means unique enough
to reasonably serve as an identifier of a product in the
marketplace.
For all practical purposes, a service
mark is the same as a trademark--except that trademarks promote
products while service marks promote services. Some familiar service
marks: McDonald's (fast food service), Kinko's (photocopying
service), ACLU (legal service), Blockbusters (video rental service),
CBS's stylized eye in a circle (television network service), the
Olympic Games' multi-colored interlocking circles (international
sporting event).
A trademark or service mark can be
more than just a brand name or logo. It can also be a shape,
letters, numbers, a sound, a smell, a color or any other
non-functional but distinctive aspect of a product or service that
tends to promote and distinguish it in the marketplace. Titles,
character names or other distinctive features of movies, television
and radio programs can also serve as trademarks or service marks
when used to promote a service or product. Finally, the distinctive
packaging of a product is protected under the federal trademark
statute (the Lanham Act) as trade dress, although trade dress can't
be placed on the federal trademark register.
2. How do trademarks differ
from copyrights?
The copyright laws protect original works of expression, but
specifically do not protect names, titles or short phrases. This is
where trademark protection comes in. Under state and federal laws,
distinctive words, phrases, logos, symbols and slogans can qualify
as trademarks or service marks if they are used to identify and
distinguish a product or service in the marketplace.
The trademark laws are often used in
conjunction with the copyright laws to protect advertising copy. The
trademark laws protect the product or service name and any slogans
used in the advertising. The copyright laws protect any additional
literal expression that the ad contains.
3. Can corporate and business
names be protected under trademark laws?
Generally not. Names for businesses are commonly called "trade
names." A business's trade name is the name it uses on its
stock certificates, bank accounts, invoices and letterhead. When
used to identify a business in this way--as an entity for
non-marketing purposes--the business name is subject to some
protection under state and local corporate and ficticious business
name registration laws, but it is not considered a trademark (thus
is not entitled to protection as such).
If, however, a business name is also
used to identify a product or service produced by the business, it
may qualify for trademark protection if it is distinctive enough.
For instance, Apple Computer Corporation uses the trade name Apple
as a trademark on its line of computer products, and Nolo Press,
Inc. uses Nolo as a service mark for its online people's law
services.
Although trade names by themselves
are considered trademarks, they may be protected under federal and
state unfair competition laws if a competing use is likely to lead
to customer confusion.
4. What types of trademarks
receive protection?
As a general rule, trademark law confers the most legal protection
to names, logos and other marketing devices that are
distinctive--that is, memorable because they are creative or out of
the ordinary (inherently distinctive), or because over time they
have become well known to the public.
Trademarks said to be inherently
distinctive typically consist of:
- unique logos or symbols
- made-up words ("coined
marks"), such as Exxon or Kodak
- words that invoke imaginative
images in the context of their usage ("fanciful
marks"), such as Double Rainbow ice cream
- words that are surprising or
unexpected in the context of their usage ("arbitrary
marks"), such as Time Magazine or Diesel for a bookstore,
and
- words that cleverly connote
qualities about the product or service ("suggestive or
evocative marks"), such as Slenderella diet food products.
By contrast, trademarks consisting of
common or ordinary words are not considered to be inherently
distinctive and receive less protection under federal or state laws.
Typical examples of common or ordinary words are:
- people's names (Pete's Muffins,
Smith Graphics)
- geographic terms (Northern Dairy,
Central Insect Control), and
- descriptive terms--that is, words
that attempt to literally describe the product or some
characteristic of the product (Rapid Computers, Clarity Video
Monitors, Ice Cold Ice Cream)
As mentioned, it's possible for
ordinary marks to become distinctive because they have developed
great public recognition through long use and exposure in the
marketplace. A mark that has become protectible through exposure or
long use is said to have acquired a "secondary meaning."
Examples of otherwise common marks that have acquired a secondary
meaning and are now considered to be distinctive include: Sears
(department stores), Ben and Jerry's (ice cream) and Park'n Fly
(airport parking services.)
5. Aren't there marks that
aren't protected by the trademark laws?
Typically referred to as "generic marks," these marks are
the equivalent of common words used to describe the type of product
rather than a brand of the product. For instance, assume that a new
cellular telephone manufacturer calls its product "The
Cellular." Because the term "cellular" is the
descriptive name for the product itself, it cannot legally be
considered a trademark or service mark. However, if the term
"cellular" were used on a facial creme, it would be
considered suggestive, and therefore distinctive, in that context.
Some marks that start out distinctive
become generic over time, as the public comes to associate the mark
with the product itself. When this happens, the mark loses
protection as a distinctive trademark. Aspirin, escalator, and
cellophane are all examples of distinctive marks that lost
protection by becoming generic. The Xerox mark was in grave danger
of losing protection because of the common use of the term as a noun
(a xerox) and a verb (to xerox something). To prevent this from
happening, Xerox launched an expensive campaign urging the public to
use "Xerox" as a proper noun (Xerox brand photocopiers).
6. How is trademark ownership
determined?
As a general rule, a trademark is owned by the business that is
first to use it in a commercial context--that is, the first to
attach the mark to a product or use the mark when marketing a
product or service. Once a trademark is owned by virtue of this
first use, the owner may be able to prevent others from using that
(or a similar) trademark for their goods and services. Whether this
is so depends on such factors as:
- whether the trademark is being
used on competing goods or services (goods or services compete
if the sale of one is likely to preclude the sale of the other)
- whether consumers would likely be
confused by the dual use of the trademark, and
- whether the trademark is being
used in the same part of the country or is being distributed
through the same channels.
In addition, under a number of state
laws known as anti-dilution statutes, a trademark owner may prevent
a mark from being used if the mark is well known and the later use
would dilute the mark's strength--impair its reputation for quality
or render it common through overuse in different contexts (even if
it is unlikely that any customers would be confused by the second
use).
Acquiring ownership of a mark by
being the first to use it is not the only way to own a trademark. It
is also possible to acquire ownership by filing an
"intent-to-use" (ITU) trademark registration application
with the U.S. Patent and Trademark Office. The filing date of this
application will be considered the date of first use of the mark if
the applicant later actually puts the mark into use within the
required time limits (between six months and three years, depending
on whether extensions are sought and paid for).
7. How do trademarks qualify
for federal registration?
Registering a trademark with the the U.S. Patent and Trademark
Office (PTO) makes it easier for the owner to protect the trademark
against would-be copiers, and puts the rest of the country on notice
that the trademark is already taken.
To register a trademark with the PTO,
the mark's owner first must put it into use "in commerce that
Congress may regulate." This means the mark must be used on a
product or service that crosses state, national or territorial lines
or that affects commerce crossing such lines--such as would be the
case with a catalog business or a restaurant or motel that caters to
interstate or international customers. Even if the owner files an
intent-to-use (ITU) trademark application, the mark will not
actually be registered until it is used in commerce (as defined
above).
Once the PTO receives a trademark
registration application, it determines the answers to these
questions:
- Is the trademark the same as or
similar to an existing mark used on similar or related goods or
services?
- Is the trademark on the list of
prohibited or reserved names?
- Is the trademark generic--that is,
does the mark describe the product itself rather than its
source?
If the PTO answers all of these
questions in the negative, it will publish the trademark in the
Official Gazette (a publication of the U.S. Patent and Trademark
Office) as being a candidate for registration. Existing trademark
owners may object to the registration by filing an opposition. If
this occurs, the PTO will schedule a hearing to resolve the dispute.
Even if existing owners don't challenge the registration of the
trademark at this stage, they may later attack the registration in
court if they believe the registered mark infringes a mark they
already own.
8. What does trademark
registration accomplish?
If there is no opposition, and use in commerce has been established,
the PTO will place the mark on the list of trademarks known as the
Principal Register if the mark is considered distinctive (either
inherently or because it has acquired secondary meaning). Probably
the most important benefit of placing a trademark on the Principal
Register is that anybody who later initiates use of the same or a
confusingly similar trademark will be presumed by the courts to be a
"wilfull infringer" and therefore liable for large money
damages. However, it is still possible to obtain basic protection
from the federal courts for a trademark without registering it. (See
Question 9: How Are Trademark Owners Protected?)
If a trademark consists of common or
ordinary terms, it may be placed on a different list of trademarks
known as the Supplemental Register. Placement of a trademark on the
Supplemental Register produces significantly fewer benefits than
those offered by the Principal Register, but still provides notice
of ownership. Also, if the trademark remains on the Supplemental
Register for five years--that is, the registration isn't cancelled
for some reason--and also remains in use during that time, it may
then be placed on the Principal Register under the secondary meaning
rule (secondary meaning will be presumed).
9. How are
trademark owners protected?
Whether or not a trademark is federally registered, its owner may go
to court to prevent someone else from using it or a confusingly
similar mark. To win, the owner must prove that the imitation will
likely confuse consumers. If the owner can prove that it suffered or
that the competitor gained economically as a result of the improper
use of the trademark, the competitor may have to pay the owner
damages based on the profit or loss.
If the court finds the competitor
intentionally copied the owner's trademark, the infringer may have
to pay other damages, such as punitive damages, fines or attorney
fees. On the other hand, if the trademark's owner has not been
damaged, a court has discretion to allow the competitor to also use
the trademark under very limited circumstances designed to avoid the
possibility of consumer confusion.
10. Do I have a right to use
my name on my business even if someone else is already using it on a
similar business?
Yes and no. A mark that is primarily a surname (last name) does not
qualify for protection under the trademark provisions of the Lanham
Act unless it becomes well known as a mark through advertising or
long use--that is, until it acquires a secondary meaning. A
trademark is "primarily a surname" if the public would
recognize it first as a surname, or if it consists of a surname and
other material that is not registrable.
If a surname acquires a secondary
meaning, it is off-limits for all uses that might cause customer
confusion, whether or not the name is registered. Sears, McDonald's,
Hyatt, Champion, Howard Johnsons and Calvin Klein are just a few of
the hundreds of surnames that have become effective marks over time.
Under the laws of many states, a
person or business who tries to capitalize on his or her own name to
take advantage of an identical famous name being used as a trademark
may be forced, under the state's anti-dilution laws, to stop using
the name if the trademark owner files a lawsuit. (See Question
6: How is Trademark Ownership Determined?)
In order to register a mark that
consists primarily of the surname of a living person (assuming the
mark has acquired secondary meaning), the mark owner must have the
namesake's written permission to register the mark.
11. How can I find out
whether anyone else is already using a trademark I want to use?
A "trademark search" is an investigation to discover
potential conflicts between a proposed mark and an existing one.
Generally done before or at the beginning of a new mark's use, a
trademark search reduces the possibility of inadvertently infringing
a mark belonging to someone else. This is extremely important,
because if the chosen mark is already owned or registered by someone
else, the new mark may have to be replaced. Obviously, no one wants
to spend money on marketing and advertising a mark, only to discover
it infringes another mark and must be changed. In addition, if the
earlier mark was federally registered prior to an infringing use,
the user of the infringing mark may have to pay the mark's rightful
owner any profits earned from the infringing use.
Usually an attorney or professional
search agency conducts a trademark search by checking both federal
and state trademark registers for identical or similar marks. Then
the searcher checks the Yellow Pages in major cities (nationwide,
for a national mark, or regionally, for a mark in regional use), as
well as trade journals and other relevant publications. The search
report notes all uses of identical or similar marks and the goods or
services on which they are used.
Federal lists of registered
trademarks are available for searching in book and database forms.
For example, the Trademark Register of the U.S. lists all registered
trademarks by their product or service classifications. The public
can use it at any of the 68 Patent Depository Libraries throughout
the country, which are mostly major public or university libraries.
The U.S. Patent and Trademark Office also puts out on CD-ROM a
federal trademark database called Cassis, available to the public at
Patent Depository Libraries. In addition, several private
subscription-based companies, such as Dialog, CompuServe, and
CompuMark, offer online databases that list federal, state and some
international trademarks (including Canada, the U.K. and Japan).
12. What is the significance
of trademark symbols--"TM" or "R" in a circle?
Many people like to put a "TM" (or "SM" for
service mark) next to their mark to let the world know that they are
claiming ownership of it. There is no legal necessity for providing
this type of notice, as the use of the mark itself is the act that
confers ownership.
The "R" in a circle ® is a
different matter entirely. This notice may not be put on a mark
unless it has been registered with the U.S. Patent and Trademark
Office. The failure to put the notice on a mark that has been so
registered can result in a signficiant handicap if it later becomes
necessary to file a lawsuit against an infringer of the mark.
© NOLO Press
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