Trademarks: Year End Review

The end of the year is a good time to take stock of your business's assets. If those assets include product names and slogans, which often serve as trademarks or service marks, they should be reviewed. A trademark is typically a name or a picture that identifies a product and serves as an indicator of origin (i.e., your company). A good example of a trademark is the Nike Swoosh®. Whenever it appears on a shoe or a shirt, we know that the product has been made or licensed by Nike (counterfeiting is beyond the scope of this article). Similarly, the phrase "Just Do It® " is a service mark for Nike.

Trademarks depend on use. Unless a business is actively using the trademark in commerce, it will not have the trademark for very long. Trademarks can be common law trademarks (meaning use of the name as a source indicator without federal registration), or a federally registered trademark (entitled to use the ®). Federal registration can provide enhanced rights. Those businesses dependent on their own brand named goods should consider federal registration. Some local examples of federally registered trademarks include: Bobbex® (a trademark for non-toxic plant growth regulators for agricultural use); The Taunton Press® (a trademark for printed publications, namely magazines and books in the fields of cooking, crafts, gardening, knitting, home building, home design, sewing, and woodworking); and Sonics and Materials® (a trademark for ultrasonic, vibration, spin, hot plate and heat staking machines and devices for the welding, joining and fastening of thermal plastic components, textiles and other synthetic materials). One of the most famous trademarks, with Newtown roots, is Scrabble®. It has been federally registered since 1950.

For those with federally registered trademarks, making sure they are up to date is important, as there are some periodic filing requirements. Also, the end of the year is a good time to search the Internet to see if any competitors are infringing the trademark. A hypothetical example of an infringing trademark would be the use of the name "Bobbet" for a similar product to Bobbex®. Were this an actual infringement, the owner of the Bobbex® trademark should take action to protect its rights.

Protecting a Character

I recently faced the issue of how best to protect a live action character, with distinguishing features and a definite message. Neither trademark nor copyright registration alone would provide the full range of protection that combined filings would. what we decided to do was the register the character's name as a trademark (the name was available) and use as the description of goods and services, the message or meaning that the character stood for. This is what the public associated the character with. At the same time, we decided to file for copyright protection for the character's costume or design, linked to its name.

We believe this will provide the best protection possible.

Domain names and trademarks

Domain name serves as an address on the Internet. In the case of our law firm, www.danburylaw.com is the Internet address for the firm's website. In our case, it does not function as a trademark or service mark because we don't use it to identify our law firm as Chipman, Mazzucco, Land & Pennarola, rather we chose it as a convenient and hopefully memorable name that would enable clients and others to find us. In other cases, domain names do function as trademarks. One of the more famous is amazon.com. According to a recent search I performed at the USPTO website, there appear to be thousands of domain names registered. For each registered trademark, the applicant had to provide evidence that the domain name was being used as a source indicator for goods or services.

Should I Try to Register My Domain Name as a Trademark?

The answer to this question really depends on what use you intend to make of it and whether the potential protection that a trademark registration can provide warrants the time and expense. In our law firm's case, had we promoted "danburylaw.com" as a source for legal services, we could have likely obtained a federal registration. There is a good chance (given that our use began in 1998), that we could have prevented the use of danburylawyer.com from its use of the name. Its domain name was created in October 2000. However, given the nature of our practice, that of our colleague at www.danburylawyer.com, there was never a reason to make an issue of our priority.

For some businesses, this will not be the case. A secondary user may be looking to trade on the good name and reputation of the prior user. In that case, federal registration may provide some benefits.

The Supplemental Register

The USPTO maintains two trademark registers, the Principal Register and the Supplemental Register. The Principal Register is the place for the traditional, good against the world, marks like Coke and Pepsi. A critical requirement of registration on the Principal Register is uniqueness, either initially or established over time.

The Supplemental Register is for those trademarks which are principally descriptive and won’t qualify for initial registration on the Principal Register. The marks must be capable of distinguishing goods and services (even though they may not actually serve that purpose). An example might be The Brewery, for a business that brews beer. A mark that has been on the Supplemental Register for 5 years has acquired “secondary meaning” and can be transferred to the Principal Register.

Certainly, if a mark can go on the Principal Register, that is the place to go. Many more rights flow from such a registration. Nevertheless, registration on the Supplemental Register is beneficial in that it permits use of the ®, the symbol of federal registration and serves as a deterrent to junior users of the mark.

Caveat: Any mark, whether on the Principal or Supplemental Register, is potentially subject to attack by a superior, common law user.

The difference between Trademarks and Copyrights

"I have a great name for a product – can I copyright it?"

"I developed a great software application, can I trademark it?"

As to the first question, the answer is no, but you may be able to trademark it (i.e., obtain a federally registered trademark). The answer to the second question is also no, but the software enjoys copyright protection and may even be patentable.

Copyright Law protects original works of authorship that are fixed in a tangible medium Those original works range from books and songs to paintings and photographs to software code. It is important to note that it is not the idea itself that is copyrightable but the expression of the idea. For example, Ansel Adams, a famous American photographer of the West, took many pictures of Yosemite National Park, the Grand Canyon and the Tetons. Once the image he saw in his camera was fixed on the negative, his copyright in it and the subsequent photographic print was created. If I photocopy one of his prints, I have violated his copyright. If, on the other hand, I manage to stand in the same place he did and capture an identical image, I have not violated his copyright. Rather, I have created my own copyrighted material. It is the expression of ideas that is protected, not the ideas themselves.

Copyrights arise the instant the work is fixed in a tangible medium. Federal registration of copyrights is handled by the Copyright Office, www.copyright.gov, a division of the Library of Congress. There is no need to register a copyright in order to own one but protection is enhanced if you do.

A trademark is commonly referred to as a source indicator. It is intended to identify the source of goods or services and to enable the public to distinguish among goods and services. Two great examples of strong trademarks are "Coke" and "Pepsi". While copyrights arise on creation, trademarks are dependent on use. The phrase "use it or lose it" is apt in the trademark world. Unlike copyright, priority is important in trademark use. In almost every reported case, the first user of a trademark, for a particular good or service, will have priority over a subsequent user of the same trademark, for a similar good or service.

Choosing a Trademark

Trademarks come in three basic flavors. They are, from strongest to weakest, Fanciful/Arbitrary, Suggestive and Descriptive. A fourth category, Generic, consists of those words that are too common to srve as trademarks. An example of a generic mark is aluminum foil. A suggestive mark in the same line would be Reynold's Wrap. It is suggestive because "Wrap" suggests something about the product - in this case, its use to enclose something.

If your slate is clean, an Arbitrary mark is the safest bet. An example might be "Dog" for brand of shoe polish. There is no discernable connection between the name and the product. A Suggestive name for the same product might be "Buff It!" A Descriptive name might be "Murphy's Shoe Polish". The Generic name,is of course: "Shoe Polish".

Assuming there is not a conflicting mark, the Trademark Office should have little difficulty with the Dog mark. Buff It is somewhat weaker, but still a good mark. Murphy's Shoe Polish may require some aging - a chance for the name to be associated with the product, before a registration would issue. Shoe Polish is open to all users - and hence, of little value to anyone, including the consumer.

A Book Review

There are a number of good books for lawyers covering trademark law. One book that I believe is useful for both lawyers and laypersons alike is Trademark Law: A Practitioner's Guide by Sigrun D. Kane. The book is published by the Practising Law Institute, 810 Seventh Avenue, New York, New York 10019 and is currently in its fifth edition. It provides a good overview of the law and is full of practical advice. The book gives the reader insight into the world of trademarks in an accessible, user friendly way. There are illustrations to explain many of the concepts and conflicts discussed in the book.

The book gives insight into the workings of both the Trademark Office and the Trademark Trial and Appeal Board. It is not a substitute for legal advice, but it can give a leg up.

A Useful Site

There are a number of useful trademark oriented websites. One worth checking out is www.trademarkia.com. This site facilitates a search of the Trademark database located at www.uspto.gov. The search available throught the Trademarkia website is no subsitute for a more thorough search, but is is a good place to start.

I will periodically highlight other useful sites.

The Care and Feeding of Trademarks

Once you have a federally registered trademark, and are a proud recpient of the certificate complete with gold seal, your job is not done. There is periodic upkeep, such as filings with the Trademark office between the 5th and 6th years. It is important to continue to use the trademark in commerce, as abandonment can be found from lack of use. If you expand the good or services you provide under the trademark, consider filing a new application for them.

In addition to the above, you should, at the very least, make regular searches of the USPTO Trademark database to determine if any competing trademark applications have been filed. While the USPTO will regularly refuse to register what it believes are conflicting trademarks, it doesn't catch everything. Early contact with the owner of the proposed trademark may avoid a costly dispute.

Intent to Use Registrations

Say you have a great name for a product in development, but you are not ready to go to market with it. Even though you are not yet using the name in commerce, you can still preserve your priority by filing an "Intent to Use" application with the Trademrk Office. You need to have a bona fide intent to use the trademark, and there are some time limits on the life of an intent to use application, but it can be a great way to secure rights for that great product in the making.

Kool-Aid versus Kool

For the past 75 years, Kool-Aid(R) has been a staple of summer time rereshment stands (I sold a gallon or two myself in my day) and an American icon (Jim Jones, notwithstanding). An upstart, with the name of "Kool", tried to get a trademrk for "Non-alcoholic beverages, namely carbonated beverages". Kraft Foods Global Brands, LLC, the owner of the Kool-aid trademark, opposed the "Kool" registration.

Faced with an ocean of evidence (including 450,000,000 gallons of Kool-Aid consumed per year), the Trademark Trial and Appeal Board had no difficulty in sustaining the opposition (TTAB opposition #91186494) in a decision dated August 20, 2009.

The proponent of the Kool mark attempted to distinguish its proposed mark and product from the Kool-Aid line, but was unsuccessful. There were just too many similarities for the TTAB to swallow.

Trademark law for Artists

TRADEMARK PROTECTION FOR ARTISTS

Fine art has long enjoyed copyright protection. The law recognizes the right of a painter or sculptor to the following exclusive rights set forth in Section 106 of the Copyright Act (17 USC § 106 (1)):

1. The right to reproduce the art work.

2. The right to prepare derivative works based on the art work.

3. The right to distribute copies of the art work to the public.

4. In the case of audio visual works (i.e. performance art), the right to perform the work publicly.

5. The right to display the copyrighted work publicly.

Section 106 provides the legal basis for an artist to stop the distribution of unauthorized copies of her work. The sale of a painting, absent an assignment of the right to reproduce the work, does not give the purchaser the right to make copies. This is true even where the work was commissioned by the owner.

At times, however, copyright protection fails. While it is clearly impermissible to exactly copy a specific work by an artist, what about the artist's style? Would Dali have a protectable interest in his melting watches? It should be remembered that, while copyright law provides protection for creators of works of art for limited periods of time, the goal is to promote creative works for the benefit of the public. Once the artist's limited but exclusive period of time has passed, the work is in the public domain. At that point, anyone is free to make copies of and profit from the work.

Trademark law provides another potential source of protection for an artist. In the case of Romm Art Creations, Ltd., et al. v. Simcha International, Inc., 786 F Supp. 1126 (1992), the U.S. District Court for the Eastern District of New York considered the following: Itzchak Tarkay was an Israeli artist of international renown with a particular style. One of his lines was known as "Women in Cafes." The plaintiffs in this case had the exclusive right to distribute posters of that line. Patricia Govezensky was also an artist. She began to produce very similar posters to Tarkay's. When she persisted, the plaintiffs brought suit against her and her distributors claiming a breach of the Lanham Act.
Section 43 (a) of the Lanham Act, 15 USC § 1125 (a) provides a statutory remedy for trademark or trade dress infringement and unfair competition to a party injured by a competitor's false designation of the origin of its product (passing a product off as someone else’s work), whether or not the aggrieved party has a registered trademark…. In short the Lanham Act provides civil redress to one damaged by unfair competition through false or misleading advertising and/or trademark or trade dress infringement. Id., at page 1133-34. In this context, the Lanham Act is designed to prevent unprivileged imitation and the copying of the appearance of a product. In order to prevail, the plaintiff (Tarkay’s distributor) had to establish that the trade dress of the Tarkay work (in essence, appearance):

1. was non-functional (not part of the necessary utility of the object);

2. had acquired secondary meaning (i.e. was recognizable as a Tarkay); and

3. there was a likelihood of confusion as to the source of the competing products.

In making its decision, the Court considered both greeting card and book cover cases, each of which found a Lanham Act violation. Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268 (10th Cir. 1988) and Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946 (2nd Cir. 1981).

The Court in this case found, on the basis of the following, that Tarkay had a protected trade dress in the style of the "Women in Cafes" series:

1. His works entered the market prior to the defendant's.

2. His paintings met the criteria of an arbitrary or fanciful trademark based on their distinctive visual impression.

3. There was a likelihood of confusion between the works of Patricia and Tarkay.

4. There was evidence of actual confusion.

5. Patricia had the opportunity to view Tarkay's work.

The Court issued an injunction preventing the sale of Patricia's work.

This case has been criticized yet remains good law. It, along with the Hallmark and Harlequin cases, provides support for artists who have developed unique styles.

Danburylaw.com

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Do it yourself Trademark search

To be successful in registering a trademark, it is important to select one that is not already in use for the goods or services you offer or intend to offer. The simple searching described here is no substitute for a fromal trademark search, but can certainly help you determine if there are any ready conflicts.

Start with a Google search (or use the serch engine of your choice) of the words you intend to use, linked with the goods or services you intend to offer. Be creative and persistent in searching. if you find an obvious conflict, it is probably best to come up with a different word or phrase (if you have been using the word as a trademark for some time, you may have priority over other users, but tis can be a costly road to follow.)

If the Google search reveals no conflict, check with the U.S. Patent and Trademark website at www.uspto.gov. Go to the Trademark section and start with a simple search. Select Search TM Database (TESS), then new user form basic. hit the button for "live" marks, then type in the proposed trademark as a search term and see what comes up. if you get a list of uses, you need to look at the results to see if there is a problem. if you want to try it, I suggest using "Acme", the manufacturer of choice in virtually every Road Runner cartoon. when I did it, 135 records were found. If your use of Acme were unique, there is a good chance you can use it as a trademark.

Hiring an attorney to help with the process is not a necessity, but certainly a good idea.

Likelihood of Confusion

Likelihood of Confusion

A trademark identifies the source of goods, whether they are sneakers (Nike), soda (Coke), soap (Dove), hamburgers (McDonald’s) or cameras (Nikon). A service mark identifies the source of the services: “You’re in Good Hands” (Allstate Insurance) or “Let your fingers do the walking” (Yellow page advertising). Because very similar marks on competing goods and services can create problems for consumers, U.S. trademark law prohibits use of a trademark or service mark that is likely to cause confusion with an existing mark. This prohibition is found I 15 U.S.C. 1114.

While it may seem that the likelihood of confusion analysis is as simple as Justice Stewart’s description of pornography (“I know it when I see it”), the legal analysis is more complex. Each case has to evaluated on its merits, considering a multitude of factors. Identity of the trademarks is generally not enough, but is a strong predictor of the USPTO’s likelihood of confusion analysis

Trademarks 101

TRADEMARKS 101


Trademarks and Service Marks are a part of everyday commerce. A Trademark is a word, a name or a symbol used in trade with goods, which both indicate the source of the goods and distinguish them from others. A Service Mark is the same as a Trademark, except that it identifies and distinguishes the source of a service, rather than a product. Coke® is a nationally recognized Trademark. "The bank you keep for life"sm is a Service Mark of Newtown Savings Bank. Both Coca Cola and Newtown Savings Bank have registered with the U.S. Patent and Trademark Office and can use symbols denoting federal registration.
A federal registration does not establish Trademark status for either goods or services. That status comes from use in commerce. If Coca Cola did not use Coke®, it would not have or be able to maintain priority over all other users. Federal registration of Trademarks and Service Marks is not for everyone. Businesses that use a unique name to identify a product can add the letters tm after the name to indicate the Trademark rights claimed. The letters can prove to be a deterrent for unauthorized use.
Anyone contemplating promoting a product or service nationally, or even regionally, should consider federal registration. It provides added protection and can help establish priority.
Unfortunately, the process of obtaining a federally registered Trademark or Service Mark is slow. The process can easily take two years. At the present time, it takes close to six months before the U.S. Patent and Trademark Office will even look at an application. Additional information about Trademarks can be found at www.uspto.gov. The Patent and Trademark Office maintains a comprehensive and informative site.

Why are trademarks important? For consumers, they provide a measure of consistency and an indicator of quality. Whether you like them or not, a MacDonald's (r) hamburger is pretty much the same no matter where you buy it. For businesses, they can be vaulable assets, allowing separation from the competition. In the next installment, we'll discuss how you acquire a trademark.

Hello and Welcome

Welcome to the Trademark Shop, a blog devoted to trademark and other intellectual property issues. We'll cover interesting cases and other topics of interest to a general audience.