INTELLECTUAL PROPERTY BASICS: TRADEMARKS
December 10, 2015
By John Lindsey
In parts one and two of this three-part series, Intellectual Property Basics, we explored what most businesses need to know about patents, trade secrets, and copyrights. In this week’s post, let’s explore the fundamentals of trademarks.
Trademarks and Service Marks
A trademark is any word, phrase, symbol, or design (or combination of these) used to identify the source of a product and to distinguish it from the products of someone else. A service mark works the same as a trademark except that it identifies the source of a service and distinguishes that service from services of others.
Rights in a mark come from use of the mark as a mark in commerce. The mark owner uses the mark to let the public know that the product or service comes from the owner and no one else.
If the mark is not registered with the U.S. Patent and Trademark Office (USPTO), the symbol “TM” is used with marks for goods, and the symbol “SM” is used with marks for services to let the public know that trademark rights are being claimed on the mark.
Marks can also be registered with the USPTO and, once registered, the owner can use the registered mark symbol ® with the mark. It is not necessary to register a mark with the USPTO, but additional benefits to registration include:
• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with U.S. Customs to prevent importation of infringing foreign goods.
Registration is done by filing an application with the USPTO. Once registered, the mark must be renewed between the fifth and sixth years after registration, and then every 10 years thereafter, provided the mark remains in use in commerce.
Make Sure Your Mark is a Strong Mark
What makes a strong mark, i.e., one that lets consumers know your products or services come from you and no one else, and one that can be protected to prevent other parties from using your mark?
Generic terms will not be protected because they are the name for the product or service. For example, you could not protect the term “apple” as a mark for apples you may wish to sell. Other apple producers would also need to use this term as the name for their product. Generic terms are the weakest marks because others have the right to use these terms to refer to their products or services, meaning you would not be able to protect these terms as marks and generic terms do not identify your product or service as coming only from you.
Descriptive terms are also not likely to be protected as marks since these terms merely describe a feature, function, quality, or characteristic of the product or service, and are left unprotected so that others may also use these terms to describe what they are selling. As a result, descriptive terms are also weak marks because of the ability of others to use these terms to describe their products or services, meaning you will likely be unable to protect such a term from use by others, and unlikely to be able to distinguish your products or services from those of others by using such a term.
Suggestive terms used as a mark will likely be protected, since they suggest something about the product or service without actually being a generic or descriptive term for the product or service. A suggestive mark causes the consumer to think about the nature of the products or services offered under the mark. Suggestive marks may be used to let your customers know your products and services come only from you, may be protected as marks, and as a result make strong marks.
Arbitrary or fanciful terms make the strongest and best marks, since they have no relationship to the underlying product or service, yet are viewed as “inherently distinctive” for purposes of identifying a source for the product or service. The “Apple” mark is a strong mark for Apple computers, for example. The mark uses a word with a known meaning but no relationship to computers, i.e., an arbitrary term used to distinguish “Apple” computers from computers provided by others. “Exxon” is a strong mark for gasoline products as a fanciful or made-up term. Arbitrary and fanciful marks are the easiest marks to protect, as well, and provide a great way to identify your products or services as coming only from you.
Use of a mark, particularly a word or phrase, must stand alone or modify another term to maintain the mark as a mark. A mark should never be used as a noun, since it may become the descriptive term (or even a generic term) for the product or service for which it was being used. Some examples where this has occurred are “escalator” for a moving staircase, and “aspirin” for a pain relief product.
Don’t Pick a Mark that Causes a Likelihood of Confusion
A mark is used with a particular good or service in a particular industry, and may be protected if use of that mark by another party with its product or service will create a “likelihood of confusion” as to the origin of the product or service. A “likelihood of confusion” exists when two marks are similar (in appearance, word, sound, meaning, or commercial impression, for example) and the products or services offered under the marks are related in such a way that consumers are likely to believe they come from the same source. I could not use “Apple” as a mark for my own brand of computers, for example, since it would create a likelihood of confusion in the public over the origin of my computer and the Apple computer. So, when picking a mark, make sure it is not only a strong mark, but also a mark that does not create a likelihood of confusion as to origin of your product or service and the product or service offered by another party under its mark.
Search for Prior Use
Before using a word, phrase, symbol or design as a mark, we recommend a search be done to make sure it is not already being used by another party as a mark for the same or similar products or services. If the same or a similar mark is already being used by another party, you may not be able to distinguish your goods or services from the other party, making that mark less beneficial to you. You may also risk a trademark infringement claim from the other party if your use creates a likelihood of confusion as to origin of your goods or services and those of the other party.
If you find someone else using your mark with different goods or services, you may still be able to use it as a mark for your goods or services. The same mark may be used, protected, and registered by two different parties, provided the mark is used with different goods or services in different industries to avoid any likelihood of confusion.
At the Forrest Firm, our attorneys believe that Triangle entrepreneurs are going to change the world. But changing the world is a big project that can’t be accomplished alone. If you have questions about protecting your ideas, products, services, and more, the attorneys of the Forrest Firm are here to help you. We educate our clients and present legal options that represent best paths forward and consider your business development and risk management needs. Call us today to find out more.