Trademarks
- A Quick Introduction
by Shannon
Moore
by
Tom Forrest
With more business shifting to the
Internet everyday and the combined advent of the
internet/dot-com boom including the prevailing trend of individuals going into
business for themselves, the focus and importance surrounding
intellectual property has been in the forefront of the minds of
businesspeople, attorneys, entrepreneurs, artists, inventors and anyone
wanting to protect their intellectual property.
Because intellectual property and the
laws can change as rapidly as our ever-increasing technological world,
it is imperative that when doing research on these
topics to use accredited resources - contact either the appropriate
governmental agencies, attorneys or private companies that specialize in
these topics. The Internet is a double edged sword, if you trust
the wrong or incorrect information you can have big problems. So
the question becomes what sources of information on the Internet can you
trust?
TRADEMARKS :
Trademarks are frequently thought of as
those items that identify either a product or a service. This can
include names of services (e.g. Burger King ® for restaurant services)
or products (e.g. Pepsi ® for soft drinks), logos (e.g. Nike's ® swoosh
design), slogans (e.g. American Express' ® Don't Leave Home Without It
®), packaging, sounds and smells.
There are over 2,547,000 Trademarks,
and over 16,200,000 commercial Common Law trade names in use! An
existing Federal Trademark, State Trademark or commercial Common Law use
can take precedence over your new business or product name, IF there is
a conflict or similarity in sound, appearance or meaning!
SIMILARITIES IN SOUND, APPEARANCE &
MEANING:
What exactly is a similarity in Sound,
Appearance or Meaning? This is the most complex portion of any legal
name research. In order to determine what may or may not be a
similarity, one has to be as open minded as possible to include any &
all variations that could possibly confuse the common consumer. Some
examples may help with this:
1) Joe has a pending Federal trademark
for his auto detailing service called It's in the Details. Becky wants
to call her new auto detailing service, It is the Details. They are both
offering the same service and their trade areas cross.
This is a Strong Similarity, based on
Sound & Appearance, their crossing of trade areas & Joe's pending
Federal application.
2) Mary has a Federally registered
trademark for her clothing line, Scary Mary's Apparel. Dan wants to use
the name Mary Frightful Wear for his clothing line.
This is a Strong Similarity, based on
Meaning & Mary's Federal registration.
3) Sam has a California state
registered trademark for his restaurant, Crabtastic Eats! and has no
plans to expand outside of the state and primarily serves locals.
Hannah's restaurant, Crabtastic, is located in Maine. She also has no
plans to expand outside of the state and primarily serves locals.
This is NOT a Strong Similarity based
on their different trade areas.
4) Janettete's online payroll service, Pay
Up, has been in use for 15 years and has clients across the country.
Gene wants to start an online payroll service called Wage Wizard.
Neither of them have trademarks.
This is NOT a Strong Similarity based on
the dissimilarity in the names.
No claim is made to the ownership,
knowledge or liability of the above personal and/or company names. The
above examples are merely for informational purposes and should only be
seen as such.
Of course there will be exceptions to
every situation, for instance similar trademarks (in name and
goods/services) can coexist peacefully if both parties are comfortable
with one another's existence. This can happen if trade areas do not
cross (e.g. located on opposite coasts), if they appeal to different
consumers (e.g. one sells to private industry while the other sells to
the general public), etc. Internet advertising is another
interesting topic regarding Trademarks, if you want to learn more about
issues relating to Internet advertising, if you should
buy text links, if you may violate others Trademarks, etc. you may
need to hire an expert Attorney. Or make sure you hire an
advertising company that that has at least some understanding of these
issues.
FAMOUS TRADEMARKS:
Trademarks that are famous are afforded
slightly different protection based on the very nature of their
recognizability. Simply, the argument for famous marks is that since
their brand name is recognized by a vast majority of consumers, any
marks similar to it, even in different industries might be construed as
an infringement. The main justification for this is if "the owner of a
famous mark shall be entitled, subject to the principles of equity and
upon such terms as the court deems reasonable, to an injunction against
another person's commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes dilution of
the distinctive quality of the mark." Today with Google
Adwords these types of issues can arise.
Of course, like with all trademark
issues, there are gray areas. Each potential infringement is taken on a
case by case basis. Not all cases end up favoring large corporations
either. Take the famous case of Victor's Secret & Victoria's Secret (Moseley
et. al. d/b/a Victor's Little Secret v. V Secret Catalogue, Inc., et al.),
in which the smaller company won their case.
The best route to take if there is a
possibility of an infringement, famous mark or not, is to speak to a
trademark attorney. She will assist you in determining what the next
best step is as well as offer assistance with any preparation and filing
of documents.
SUMMARY:
While trademark law can be intimidating
to the uninitiated, obtaining the help of a trademark attorney or an
experienced private company will make the entire process go much
smoother. There are preliminary steps one can do when starting a
business and/or renaming a business:
* Choose a name that is unique &
distinctive - generic or descriptive names are not generally allowed
registration by the USPTO and are more difficult to enforce.
* Do as much free research as you can
before hiring an attorney or a private company. Check the internet,
yellow pages, domain names & the USPTO.
* Be aware that any research you do for
free online is merely preliminary and only comprehensive research will
tell if the name is available.
* Once you receive the trademark, it is
your responsibility to enforce your trademark rights. To do this, either
have research conducted every 2-3 years OR hire a monitoring service.
Link to Above Quote
About the Author
Shannon Moore is the General Manager, East Coast for TradeMark Express.
Since 1992, TradeMark Express has met the needs of their clients with
comprehensive research, application preparation, attorney referrals and
trademark consultation.
