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Understanding Trademarks

A trademark is any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods or services which distinguishes them from goods manufactured or sold by others or services provided by others. Goods are protected by trademarks while services are protected by a service mark.

 

A trademark provides the consumer or the public with an identification for the products or services indicating its origin. Trademarks and service marks offer no functionality, but simply form the identity of the goods or services. Origin in this case does not mean what country it was manufactured in but rather the source of the goods or services. It is intended to distinguish the goods or services from those provided by other entities.

 

A word and/or design for which trademark or service mark protection might be requested can fall into one of four categories. The four categories are (1) Fanciful or (2): Suggestive or (3) Descriptive or (4) Generic. A “Generic” mark cannot be registered. An example of a “generic” mark is “Blue Sky”.

 

A “descriptive” mark can only be registered if it has achieved secondary meaning. Secondary meaning is achieved when the word(s) will invoke the reader to associate or think of the specific product or service rather than just the ordinary description. Secondary meaning is a subjective test and is usually proved by showing wide-spread commercial success and providing consumer research reports to support the recognition amongst the public. An example would be UPS, the delivery service, and “Brown” which has become associated with their package delivery service.

 

A “suggestive” mark is one which requires the reader’s imagination to determine the goods or services which the mark represents. An example would be “Virgin” representing the airline and record company. Another example is “Apple” which is the trademark for the computer company. Many times the difference between a generic mark and a suggestive mark is blurred, as with the “Apple Computer” example. In that case, the mark can be registered only if the owner can show a strong presence of “secondary meaning”.

 

A “fanciful” mark is completely arbitrary and bears no relation to the goods or services which is represents. An example of a “fanciful” mark is Rebok, the sports shoe company. Another example is “Toyota”, the car manufacturer or “Verizon”, the telephone company.

 

A “fanciful” (arbitrary) mark has the highest degree of protectability because it means nothing except in the context of being associated with a particular manufacturer’s goods or a business’s services. 

 

“Suggestive” marks, while not given the latitude of coverage that a fanciful mark receives, does provide significant protection because it requires the reader “to connect” the words with the specific goods or services by “suggesting” (associating) to identify the source.

 

The mark with the least coverage is a “descriptive” mark. This is because the mark requires that a secondary meaning has been formed in order for the words to form in the mind of the reader recognition associated with a particular good(s) or service.

 

When we speak of “protectability” or “latitude of coverage”, we are not saying that there are different “levels” of trademarks. All trademarks, once approved by the appropriate governmental agency (in the United States this is the US Patent and Trademark Office) receive the same statutory protection. However, the greater the protectability, in essence the broader the “shadow” cast by the mark. Where a mark casts a broad shadow, its owner can prevent others from adopting confusingly similar marks.  An example is “Kodak” , the photographic company. Because its mark is fanciful, it would most likely prevail in preventing other companies for using a mark called “Kodeck” or “Codeact” for the same goods.

 

This brings forward another point about trademarks and service marks, called “identification of goods or services” and “international classifications”. Your protection extends only in the “class(es)” (international classifications) where you have registered. This is why “Nike” can be trademarked to represent the sneakers and also be a name associated with missiles (from the 1960s cold-war era).

When registering a mark, you can file for protection in multiple classes. Each class represents a particular range of products (goods) or services. For instance “clothing” is listed under several different classes depending on whether it is leather jackets or dress suits. Another example is “automotive” where tires are listed in one classification and engines are listed in yet another. This is why both Nike the tennis shoes and Nike the missiles are permissible as trademarks yet they represent the same word.

 

In the United States trademark rights are based on the use of the mark in commerce. The first person to use the mark usually get priority over later users. Many times however you want to protect your mark before you actually start using it. So recently the US added an “intent-to-use” provision to the trademark law. Under “intent-to-use” one can file a trademark application indicating that they have not yet started to use the mark but intend to do so. They are afforded protection for the mark for 12 months, after which time the applicant must demonstrate actual use or they will lose their trademark protection.

 

A trademark offers its owner the ability to prevent others from using the same or similar marks or names. Depending upon whether the mark is fanciful (which gives the highest and broadest scope of coverage) or on how much notoriety the mark has will determine how remotely similar the opposing mark can be and still infringe upon the rights of the registered owner. While “confusingly similar” is a legal term of art much to complicated to discuss in this brief article, the point to remember is that the opposing mark need not be exactly the same if the registered mark has significant “secondary meaning”. Unfortunately for the mark’s owner, a determination of secondary meaning can not be found literally in the law, but must be decided by the courts during litigation.

 

Some of the factors or tests used in determining similarity are appearance, pronunciation, suggestiveness, the relationship of the goods or services of the two businesses, and the degree of care which is expected from the purchasers. Therefore before one invests money marketing a product or service, it is an excellent idea making sure that the chosen name is not already protected by a trademark registration or already in use by another company.

 

At a minimum you will be forced by the rightful “first in time” owner to change your product or service name to one which is not confusingly similar. In many cases, the result can much worse and the trademark’s owner will sue in court to have the infringing use stopped.

The process of obtaining a trademark registration starts with a thorough search of commercial names, the records at the US Patent and Trademark office, and also the various Secretary of States. After a search is conducted, and it indicates no potentially similar marks, an application is submitted to the US Patent and Trademark office. The application includes a specimen of the mark showing it in actual use and a filing fee of $325 per classification.

 

Care must be taken in preparing the application, because the simplest of incorrect wordings can cause an application to fail or deny the application registration in the preferred classifications. When amendments to the application are allowed, the application can never be “broadened” beyond the initial filing. This is why it is a good idea to consult with an intellectual property attorney who is familiar with the nuisances of trademark practice.

 

The trademark office receives all applications and approximately six months after submission you will receive either a rejection letter or a notice of allowance for publication. If rejected, a response must be filed within six months that overcomes or rebuts all the examiner’s points of rejection. Once the notice of allowance for publication is received, the application moves to the next stage of its approval process.

 

In the publication phase, the trademark office publishes the proposed mark so that the public can comment. This is where most often objections are raised that a proposed mark is confusingly similar. The owner of the similar mark will file an opposition(which also carries fee of $325) relating to the trademark office why it should not allow the mark.

 

However, if no oppositions are received or the trademark office denies any opposition motions, the trademark will be allowed for registration. Typically this take anywhere from 9 months to 24 months to complete the process. While the application is pending, it is advisable to place the letters “TM” adjacent to any use of the mark. Once the mark is registered the “TM” is replaced with the circle “R” or .

 

The initial registration is valid for five years, after which time the mark registration must be renewed. The renewal application once again requires the submission of a sample specimen of the mark in use. At the five year time when the renewal is submitted, you can also apply for “incontestability”.  A registered trademark has two stages of registration: the “contestable” stage and the “incontestable” stage.

From the time the mark is first registered the registration provides prima facie evidence of validity of the mark including a presumption that the mark is inherently distinctive or has acquired distinctiveness through secondary meaning.  However any legal challenger of the mark can attack the validity of the mark.

 

Once the mark has been registered for five years and has been in continuous use during that period, the owner can file an affidavit of “incontestability”. Usually these are filed simultaneously with the filing of the five year renewal application.  An incontestable registration matures into “conclusive evidence” of the validity of the mark and establishes a cutoff to challenges that the mark is not inherently distinctive and that the mark lacks secondary meaning. It also removes the challenge that the defendant has a right of prior use because of an earlier priority. Thus in any lawsuit the registered mark will be viewed as the “senior” mark.

 

While an incontestable mark provides its owner many benefits, the owner in an infringement action must still prove that there is a likelihood of confusion between its mark and the alleged infringing mark. Having an incontestable mark is not of itself enough based to preclude all challenges to an allegation of infringement.

 

If you need more information or wish to discuss specific aspects of a trademark issue, contact our office and we will be happy to arrange a fee-based consultation.

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