Choosing and protecting the right logo and brand name can make or break a new business. Choosing the wrong name or mark can trigger costly litigation. The following overview provides some basic rules about selecting, registering and enforcing trademarks and service marks in the U.S.
What's a Trademark?A trademark is a business' exclusive label for identifying the source or origin of a particular business' goods or services. A trademark may be a name, symbol, word, color, number, sound, picture, package or even a fragrance indicating a particular source or origin of goods or services. For example, the musical notes "GEC" for the General Electric Corporation, but not the theme song for a musical artist; "Exxon" for petroleum products; the color gold for dry cleaning mats or the color pink for fiberglass insulation; the storybook character Peter Rabbit for F. Warne & Co. The United States Patent and Trademark Office ("PTO") classifies goods and services in 34 International Classes of goods and 8 classes of services for a total of 42 International Classes. "Certification marks" indicate a quality standard such as the "Good Housekeeping" seal of approval or the "UL Laboratories" inspection label. "Collective marks" indicate membership in a group or association such as the "NFL" or the "PGA Tour".
The spectrum of trademarks ranging from the strongest types of marks to the weakest marks include fanciful or 'coined' marks such as "Xerox" or "Kodak", arbitrary marks such as "Yahoo" for web services, suggestive marks such as "Greyhound" for bus transportation or "Coppertone" for suntan lotion, descriptive marks such as "Food 4 Less" for grocery stores, and generic marks, which are not entitled to trademark protection, such as "escalator", "aspirin" and "cellophane".
Domain names alone are not trademarks.
How to Get a TrademarkTrademarks rights are acquired by selecting a word, symbol, name or logo and using that designation in connection with selling goods or rendering services. A "service mark" is a type of trademark designating the source of services, rather than goods, such as painting, animating or musical services. Unlike copyright infringement, original creation is not a defense to trademark infringement. In other words, if another company (the "senior user") is using the same or similar mark to sell the same or related goods or services creating a likelihood that consumers will be confused as to which company is the source of the goods or services, the junior user's mark will not qualify for trademark registration because of the likelihood of consumer confusion, even if the junior user's mark was a totally original creation and not copied from the senior user. For this reason it is essential that a trademark search be conducted to ascertain whether any similar marks already exist before adopting a particular designation as a trademark.
Trademark RegistrationTrademark rights come into existence automatically when an available mark is actually used in commerce. Like copyright registration, registration of a trademark is not a prerequisite to acquiring a valid trademark. Unregistered trademarks, acquired by exclusive use of an available mark, are call "common law" trademarks.
Unlike copyrights, which are generally governed exclusively by federal law, trademarks are subject to both state and federal law and may be registered at both the state and federal levels. State law trademark protection does not extend outside the state where the mark is registered. Because many businesses market and sell goods over the Internet into other states, registering a mark at the federal level with the U.S. Patent and Trademark Office ("PTO") protecting the mark in all 50 states may be preferable to state registration. Federal registration permits use of the "(R)" registration symbol and provides the benefits of presumption of ownership, constructive notice, national geographic protection, federal forum for infringement lawsuits, and incontestability after 5 years of continuous use.
A mark qualifies for federal trademark registration after it has been used in commerce. Before the mark has been used, a federal "Intent to Use" application may be filed. Complete information on trademark registration may be found at the Website of the U.S. Patent and Trademark Office ("PTO"): www.uspto.gov. Unlike copyright registration which must be physically delivered to the Copyright Office by courier or mail, the preferred (and less expensive) method of filing trademark registration applications is electronically through the PTO at the PTO web site. Expedited registration is available for copyrights, but not for trademarks.
Trademark DurationTrademarks can last as long as the trademark is in continuous use, potentially forever. Federal trademark registrations must be renewed every ten years and are subject to other maintenance filings.
Trademark NoticeCommon law (unregistered) and state-registered trademarks use the trademark notice symbol "(TM)" (or "?"for service marks). Only after a mark has been successfully registered with the PTO should the "(R)" federal trademark registration symbol be used.
Trademark Licensing, AssignmentWhen a trademark owner grants permission to another company or individual to use the mark it is called a trademark "license". Because trademarks signify an exclusive source of goods and an established standard of quality, every trademark license must also license the "goodwill" associated with the licensed mark and provide that the licensing party shall exercise quality control over goods bearing the licensed mark. If a license is granted without licensing the goodwill or without quality control, the license may be considered a "naked" license or a license "in gross" which may result in invalidation of the trademark and loss of trademark rights.
Trademark EnforcementTrademark infringement lawsuits may be brought in either state or federal court. State courts have jurisdiction over state trademark claims. State courts may even cancel federal trademark registrations. Although copyright registration is required for copyright suits, trademark registration is not required for trademark suits in state court, only in federal court. The Lanham Act is the federal law governing trademarks. State and federal Courts have concurrent jurisdiction over Lanham Act claims.
Many trademark infringement claims begin with a written "cease and desist" demand from the party claiming the infringement, notifying the unauthorized user of the infringement claim and demanding that the user voluntarily stop using the offending mark. If the infringement is willful or highly damaging, the complaining party may dispense with the cease-and-desist letter and immediately file a lawsuit in state or federal court, together with an application for a temporary restraining order, a seizure order authorizing state police or federal marshals to confiscate infringing goods, and a preliminary injunction prohibiting the infringer from using the mark in any way pending the outcome of trial.
Where the unauthorized use is innocent and causes no damage or actual confusion, a settlement or "consent agreement" may be negotiated permitting both parties to continue using the mark.
Statutes of limitation for commencing trademark suits vary from state to state. Federal courts usually adopt state limitation periods. The defense of "laches" or unreasonable and prejudicial delay is more common than the statute of limitations defense.
Exceptions to Trademark Protection - First Amendment - Free SpeechNotwithstanding ownership of a valid trademark, the public is permitted to make certain uses of trademarks under the Lanham Act, the free speech protections in the First Amendment of the U.S. and State Constitutions. These trademark 'safe harbors' are especially important to artists who may incorporate trademarks in their works. For example, several cases have been brought over references to Mattel's iconic "Barbie" doll in music and visual art. Even though artistic, certain so-called "expressive" uses of trademarks have been held to be infringements such as an "Enjoy Cocaine" poster in Coca-Cola script which was held to be an infringement of the Coca-Cola trademark.
Parody is considered a non-infringing "fair use" using only where another's trademark is used to comment upon or to criticize the particular mark, its owner or the goods or services it represents, not as "satire" (i.e., to comment on society in general.) For example, in the case of Anheuser Busch, Inc. v. Balducci Pubs. a parody featuring "Michelob Oily" was held to be infringing and likely to cause consumer confusion and dilution. In Dr. Seuss Ent. v. Penguin Books, USA , a book about the O.J. Simpson murder trial called "The Cat Not in the Hat", was held to be infringing and likely to cause confusion with registered marks such as "The Cat in the Hat", the cat's stovepipe hat, and other indicia.
Non-trademark uses of actual surnames or geographic terms are also considered "fair use" and not infringing under the Lanham Act. Trademarks may be used in a descriptive sense if used in good faith and not as a trademark. In Zatarain's Inc. v. Oak Grove Smoke House, the words "Fish fry" were permitted where "Fish-Fri" was a registered trademark.
Statements truthfully comparing the trademarked goods with those of another are also not considered infringing. In August Storch v. Nabisco, Inc. a Lifesaver's advertisement claiming that Lifesavers were "25% lower in calories than Werther's(R) Original Candy" was held to be non-infringing of the Werther's(R) trademark.
The "nominative use" defense permits use of another's mark when necessary to identify the services, goods or owner associated with the mark. One of the most famous cases illustrating this rule was Playboy Enterprises, Inc. v. Welles in which Playboy's trademark "Playmate of the Year 1981" was permitted to be used to identify former Playmate Tori Wells on her website and in meta-tags. In New Kids on the Block v. News America Publishing , the unauthorized use of the registered trademark "New Kids on the Block" in a paid advertisement was held to be a non-infringing use because it was used merely to identify the name of the musical group.
Criticism or comment are also defenses to the unauthorized use of trademarks, In Bally Total Fitness Holding Corp. v. Faber the web site name "BallySucks.com" was permitted as non-infringing criticism and commentary protected by the First Amendment.
Trade Dress - Protection "On Beyond Copyright"Another type of trademark protection is called "trade dress". Trade dress protects non-functional design elements used as an indicator of the source of goods or services. Distinctive non-functional packaging such as the shape of a Coca Cola bottle qualifies for trade dress protection and may be federally registered as a form of trademark.
Trade Dress also protects distinctive artists' style from look-a-like imitations. The best reported examples of this are the cases of Romm Art Creations, Ltd. vs. Simcha International upholding trade dress rights in an artist's style and Hartford House, Ltd. v. Hallmark Cards, Inc. , finding trade dress protection for two fold non-occasion greeting cards on high quality uncoated, textured art paper with short poems, "soft" colors, deckle edge and wraparound illustrations.