Introduction to Trademark Law
Names of Marks
The name of a business or company is a trade name. The terms “trade name” and “commercial name” mean any name used by a person to identify his or her business or vocation. Trade names must be distinguished from trademarks and service marks because there is no provision for the registration of a trade name which is used solely as a trade name. However, wording which constitutes a trade name may be used in such a manner that it also functions as a trademark or service mark.
Presently, the federal government provides for registration of a trademark with the Patent and Trademark Office. A mark, when registered, is entered upon one of two registers, the principal register and the supplemental register. The Principal Register is a list of trademarks that have all rights associated with them. The supplemental register is a type of waiting list. A mark listed in the supplemental register does not have all rights, but after being on the Supplemental Register for five years, a mark is eligible for registration on the principal register and all rights.
Not all marks are eligible for registration on the Principal Register. A mark must be distinctive before it may be registered upon the Principal Register. A mark may be inherently distinctive, such as a suggestive word, an arbitrary word or a fancifully made-up word. Or the mark may gain distinctiveness by gaining what is called secondary meaning. Secondary meaning is when the public recognizes that a mark that is not inherently distinctive takes an a meaning that is connected with the product or service. Below is a brief tutorial containing the elements and some of the issues concerning trademarks.
A trademark is a word, name, symbol or device or any combination thereof which is used to identify and distinguish the goods of one person from goods manufactured or sold by others and to indicate the source of the goods, even if the source is unknown.
A service mark is a word, name, symbol or device or any combination thereof which is used to identify and distinguish the services of one person from goods manufactured or sold by others and to indicate the source of the services, even if the source is unknown.
The term “certification mark” means any word, name, symbol, or device, or any combination used by a person other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
Certification marks, by their very nature, are unlike any other types of marks. Although certification marks are used or intended to be used in connection with goods or services and might therefore seem to be like trademarks and service marks, they differ from trademarks and service marks because they do not indicate origin of the goods or services. Moreover, they are neither used by the owner of the mark nor used on the owner’s goods or with the owner’s services. Although certification marks are used or intended to be used by more than one person and might therefore seem to be like collective marks, they are very different from collective marks in nature.
Collective membership marks are marks used by members of a group for the purpose of indicating their membership in the group or collective. Ownership of such marks properly lies in the parent body, group or collective organization because of its exercise of legitimate control over use of the mark by the members of the group.
House marks are trademarks owned by a company that are attached to all goods produced by that company, even though the goods are unrelated. The house mark is used to denote that the goods all come from the same “house” or manufacturer.
Registerable Types of Marks
Fanciful words are words that have no other meaning. They are typically made-up, or newly coined words. They are usually excellent words for trademark purposes since they are considered inherently distinctive. Famous examples of fanciful marks are: KODAK, EXXON, and XEROX.
Care must be taken for products that are revolutionary or unique. Revolutionary or unique products frequently have no simple descriptive name or description. When this happens, the fanciful mark gets pressed unto service for use as a generic product name and all of the value of the trademark is lost. Famous examples of fanciful marks converted into generic names are: ASPIRIN, CELLOPHANE, and VELLCRO.
Arbitrary words make excellent trademarks since they are also considered inherently distinctive. An arbitrary word is a word that has an ordinary meaning, unconnected to its use as a trademark. Since an arbitrary word already has a common or generic meaning, there is little chance of it being coopted for use as the generic use of a successful product. A famous example of an arbitrary marks is: APPLE (for computers).
Suggestive marks indirectly describe or refer to the product. Imagination must be used to draw the inference of connection to some element of the product. Suggestive marks are also considered inherently distinctive and therefore make good trademarks.
Unregisterable Types of Marks
Descriptive marks are marks that the public feels
- Describe the product or services.
- Describe the geographical origin of the goods or services
- Constitute a surname and not the origin of the product.
Some of these marks may be registerable with a showing of secondary meaning. A showing of secondary meaning makes a merely descriptive mark distinctive, and thereby registerable. Secondary meaning is when the public comes to identify the mark with the goods or services instead of the ordinary meaning of the mark. A merely descriptive mark does not function as a totally effective trademark. In order to maintain the good will attached to the mark, the owner may have to spend extra effort enforcing the trademark. This enforcement frequently leads to expensive court battles.
If a marks is viewed as describing a product or service and it does not do so accurately, then the mark is deceptively misdescriptive. A mark that is deceptively misdescriptive will not be registered unless there is a showing of secondary meaning.
A generic word is a common descriptive name of goods or services. Typically, they are words necessary for competitors to refer to their own products. Since these words are so common, they cannot serve as an indicator of the origin of the goods.
Frequently, generic words originate from highly successful trademarks and are co-opted into service as a descriptive label of new products. Some good examples of generic words that originated as trademarks are: ESCALATOR and THERMOS.
Geographically Descriptive or Deceptively Misdescriptive
A geographically descriptive or deceptively misdescriptive mark will not be registered unless there is a showing of secondary meaning. This is to protect the interest of businesses in advertising the origins of their goods for geographically descriptive marks, and protect the consumers in geographically deceptively misdescriptive marks. A showing of secondary meaning overcomes these concerns.
Surnames, generally, will not be registered as trademarks. This is since the federal government is concerned that an individual should be able to use his own name in connection with his business. If secondary meaning has been attached to a surname, then it may be registered.
Scandalous or Immoral
Scandalous marks give offense to the conscience or moral feelings. Exciting reprobation, calling out condemnation for a substantial portion of the public. Courts will generally refuse to find any common law rights in such trademarks. Furthermore, the Patent and Trademark Office routinely refuses to register such marks.
Deceptive marks will not be registered as trademarks. This is to protect consumers from fraud.
Registration of Marks
Common Law Trademarks (not registered)
No registration of any form is required for ownership of a trademark under the common law. A business may claim common law ownership as soon as the mark is used in commerce. If the mark is of the type that typically cannot be registered without a showing of secondary meaning, then ownership may be claimed as soon as the secondary meaning is developed.
State Registration of Trademarks
All states provide for trademark registration within their borders. State registration of trademarks provides more protection than common-law protection provides, but less than federal registration provides. The cost of state registration is usually less that federal registration, typically around $10. This fee provides protection within the state, but not outside the state.
Federal Registration of Trademarks
Federal registration of trademarks provides the most trademark protection available.
Cancellation of Federal Registration
Trademark registration is good for a ten year period, but must be renewed during the sixth year. If the registration is not renewed then the registration is canceled. The purpose of this procedure is to remove from the registers those marks which are no longer being used in commerce, so that there will be reasonable assurance that the registrations in force on the registers are for marks in use in commerce.
Trademark registrations may be renewed for additional ten year periods. This renewal may repeated indefinitely. In actual practice, renewals occur until the mark is no longer used in commerce. One should be aware that marks may be canceled through judicial process. This cancellation usually occurs when an opposing party can prove that they will be damaged by the continuation of registration of a mark.
Infringement of Marks
The purpose behind trademark law is to protect a business’ good will and the publics interest in accurately determining the source of goods and services. The test for infringement of a trademark is whether a second mark is “likely to cause an appreciable number of consumers to be confused about the source of her goods or services”. Factors involved in an infringement determination are:
- Similarity of appearance.
- Similarity of sound.
- Similarity of meaning.
- Similarity of purchasers.
- Similarity of outlet.
- Sophistication of Buyers/cost of goods or services.
- Manner of presentation.
- Strength of the primary mark.
- Similarity of product or service.
- Defendant’s good faith.
- Plaintiff’s interest in entering the market.
Defences to Infringement
There are several defenses to trademark infringement.
- Fair Use.
- Challenges to the validity of the mark and ownership rights.
- Federal registration incontestability status.
Remedies to Infringement
There are also many different remedies to infringement listed below.
- Monetary damages
- Actual damages
- Defendant’s profits
- Attorney fees
- Special remedies for counterfeit marks