Trademark law covers a family of marks, symbols, phrases and forms that are used to help a consumer recognize a product, service or company. The different members of the trademark family are:

Trademark - a word, name, symbol, or device used to identify and distinguish one's goods from the goods of others in the marketplace. Note that the symbol or device may include a color, fragrance or sound associated with the product. A trademark can be registered with the Patent and Trademark Office.

Trade name - identifies the company. It cannot be registered with the Patent and Trademark Office unless it is associated with a product or service. It can be registered with a state.

Service mark - similar to a trademark, except that it identifies and distinguishes one's services from the services of those in the marketplace. As with a trademark, it can be registered with the Patent and Trademark Office.

Certification mark - identifies a region or other origin, material, mode of manufacture, quality or accuracy of a person's goods or services. This mark can be a "seal of approval" from a group.

Collective mark - a trademark or service mark used by members of a cooperative, association or other membership group.

Trade dress - the design and packaging of materials used with goods. (Example: Coca-Cola bottle).

Product configuration - design and shape of packaging or product configuration. (Example: the outside of a McDonald's restaurant).

Protecting your trademark

You must take steps to establish your trademark rights. Your success will be determined by the distinctiveness of your trademark and the priority of your marks.

Distinctiveness

There are two classes of marks - inherently distinctive marks and not inherently distinctive marks. In each class, there are subclasses. Inherently distinctive marks consist of arbitrary, fanciful and suggestive marks. An arbitrary mark is a made-up word, like Exxon. A fanciful mark is a known word that is used with a product unrelated to the meaning of the word. Think "Apple Computer". A suggestive mark suggests what the product is. An example is Solar Roller. Within the not inherently distinctive marks, there are two subclasses: descriptive and generic. Descriptive marks describe the product. To obtain trademark protection, they must obtain secondary meaning in the marketplace. In other words, consumers must associate the name with the product and know it designates goods from a single source. An example is Samuel Adams Beer. Generic marks are words for the class of goods - examples are bananas, rakes, aspirin - and do not have trademark protection. It is important to protect a trademark, because once it becomes associated with a goods from other sources, then it loses its association with the unique goods. Aspirin, escalator, scotch tape were once trademark names until they fell victim to "genericide".

Priority

You may establish priority by either using the trademark in commerce or registering it with the Patent and Trademark Office with the intent to use it in commerce. If others have applied for the same trademark, you will need to establish priority to be able to use it on a nationwide basis. Sometimes, one trademark owner can obtain nationwide rights, but another person who used the trademark prior to the time the other owner filed his or her trademark application, can raise a "limited area" defense. This would allow him or her to continue to use the trademark in areas where he or she has established the trademark's use prior to the date the registered trademark owner filed his or her trademark application with the Patent and Trademark Office.

Infringement

Trademark infringement can occur in several ways. If the use of a trademark is likely to cause confusion among consumers, then trademark infringement has occurred. Dilution, another form of infringement, occurs when the consumer is not confused, but the infringing trademark is the same as another one which belongs to one of the stronger sub-classes of inherently distinctive marks. An example would be if a company started selling Exxon shoes. The consumer recognizes the name, but the use of the name by another company dilutes the strength of ExxonMobile's trademark. Contributory infringement and false advertising can also result in liability for trademark infringement.

Defenses

If accused of infringement, a defendant can raise several defenses.

Genericness - as described earlier, if a trademark name is being used by multiple merchants, then the trademark loses its connection to the one source of goods. Many companies take steps to prevent their trademark from suffering the same fate as aspirin, escalator, and scotch tape. Xerox has an advertising campaign to protect its trademark, so that consumers don't substitute "Xerox" for "copy". Coca-Cola also takes steps to protect its "Coke" trademark, so that "Coke" doesn't become a generic name for cola.

Functionality - the trademark or trade dress protection, if not protected by a patent, must not hinder competition. If it does, then competitors will be permitted to use the trademark or trade dress.

Abandonment - if the trademark owner does not use his or her trademark, then the trademark is abandoned and others may use it. A trademark may become abandoned if the trademark owner grants a license to another party to use the trademark, but the owner does not supervise the use of that trademark and it loses its association with the owner's product or service.

Non-trademark or nominative use - a defendant may use the trademark name in news articles or to identify the trademark owner.

Parody - a defendant may use the trademark in a parody.

If you have questions about trademark law, please contact our offices. We would welcome the opportunity to assist you with your trademark matter.

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