Signs, Signs, Everywhere There's Signs
"The protection of trade-marks is the law's recognition of the psychological function of symbols.
If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark
is a merchandising short-cut which induces a purchaser to select what he wants, or what he has
been led to believe he wants." Justice Felix Frankfurter
The business of America is business. This pithy saying succinctly captures the reality that buying and
selling is, fundamentally, what we do--individually, in groups, and as a society. Inducing those
transactions are creative and intelligent souls who strive to persuade us that particular goods and services
are worth buying. If the purchasing need does not yet exist, they try to create it. But if the need already
exists then they must distinguish Product A from Product B and so they present us with Golden Arches
and Burger Kings, Clydesdales, the Magical Kingdom and "What Happens Here Stays Here." They know
that it is the perception of value that sells and that the actual value--in our affluent society--is often
secondary and, in any event, the responsibility of those who create the product or provide the service.
And so we are awash in signs, symbols, images, and messages that flow into--and indeed shape--our
collective consciousness. The law recognizes that both buyers and sellers have expectations in these
symbol-induced transactions: the buyer expects that every time he purchases Product A it really is Product A
while the seller expects that it alone will profit from the significant investment made in branding and
promoting Product A. These expectations are protected by unfair competition law; specifically trademark
law. A trademark is a word, name, symbol, or device that is used to identify and distinguish goods or
services from those offered by others.
This tidy definition of "trademark" may lead the unwary to believe that the creation and enforcement of
trademark rights is likewise neat and orderly. It is not, however, because trademarks are merchandising
shortcuts that arise in the minds of consumers.
Trademark lawyers do not ask whether another's infringing mark causes confusion in the marketplace,
but whether its use would likely cause confusion in the marketplace. Which means that the standard fare
for trademark lawyers and advertising executives is not hard facts, but rather informed opinion of how
consumers will likely perceive a mark in light of our everyday language and in light of other trademarks.
This is an area of law where a person's intuition, a sampling of one, is often wrong. Innumerable branding
efforts have had to be unwound because excitement--and often ego--supplanted a more dispassionate
review of the existing trademark landscape.
A trademark attorney's role in branding and marketing efforts is to provide advice during the creation of the
brand, to assist in maintaining the marks used as the brand-identifiers, to enforce the trademark rights, and
to help exploit those marks through licensing.
It is fundamental that trademark rights arise only by use of the mark in commerce--not by registering the
mark with any Trademark Office or by any amount of planning to use a mark. In addition to words, phrases,
and designs other devices such as sounds (the NBC chimes), colors (the Owens-Corning pink for insulation),
and smells (Clark's plumeria blossom-scented yarn) may function as trademarks. A product's packaging
or design may also be protectable under the related concept of "trade dress" rights.
In addition to helping select the mark, the trademark attorney may apply to register the mark with the
federal Trademark Office. This adversarial process allows anyone who believes he will be damaged by
the mark's registration to oppose registration--which makes for interesting, and unpredictable, proceedings
before the Trademark Trial and Appeal Board. Trademark rights can also be licensed and sold on the
conditions that the licensor exert some quality control over the mark's use and so long as the sale includes
the goodwill created by the mark.
The internet has changed trademark law and the way we think about trademark rights--the current
hot issue being whether the use of a competitor's trademark in keyword advertising is infringing.
The internet has also upended the rule that trademark rights can only arise and be enforced in the
geographic area where the mark is actually being used--a fundamental principle difficult to apply now
that the internet has effectively dissolved geographic boundaries.
Quite different from normal contractual and statutory rights, trademark rights spring from, and are
reliant upon, the collaboration between a seller and the consumers who are exposed to the seller's
mark. Proper attention to trademark rights can generate value for a business, can focus and support a
business' marketing efforts, and can protect the economic investment in those efforts.