Recognizable brands and the intellectual property rights they embody are a driving force in business today. This is true whether it pertains to the pharmaceutical, software, manufacturing, retail or professional services industries.
The attorneys of Lipton, Weinberger & Husick have decades of experience in trademark practice. Branding strategy is vital in today’s marketplace. We help our clients secure, manage and enforce trademark rights, thereby increasing and protecting the value of their brands.
A trademark is any word, phrase, design or device that identifies the source of the goods identified by the mark. If the mark identifies services it is called a service mark. For purposes of this discussion, “trademark” will refer to both trademarks and service marks, unless reference is otherwise made. With a few exceptions, the most notable of which will be discussed below, the law is the same with respect to both types of marks.
Trademarks and trade names are often used interchangeably but actually serve different purposes and receive different types of legal protection. Trade names, as distinguished from trademarks, identify business entities, as opposed to the goods and services such entities market. Trade names are typically registered in the state in which the business entity does business; trade names do not receive federal protection as do trademarks. A word of caution is necessary. Trade names may also serve as trademarks. Thus, IBM identifies the IBM Company as well as some of its goods and services and is also deserving of federal trademark protection.
Trademarks were recognized as having commercial value centuries ago, particularly in England where much of our law has its roots. Then, as now, one established trademark rights primarily by being the first user of the mark associated with the particular goods or services ; provided, however, such use did not impinge on someone else’s rights to the same goods and services in the same geographical area of use.
While registration of your trademark is not required, lawyers generally recommend it is as the first level of protection. Registration of your trademark requires that the mark be “distinctive;” not merely “descriptive” of the goods or services it identifies. Distinctiveness of a mark may be measured against several criteria, from strong to weak. Marks are classified as (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic.
A “fanciful” mark – the strongest class of trademark – is created for no other purpose than to be trademark. For example, KODAK is a fanciful mark. It does not exist in the English language and was created for the purpose of identifying products of the Eastman Kodak Company.
An “arbitrary” mark is usually an existing word that arbitrarily identifies a product or service, which has nothing to do with the word. The APPLE mark is a good example of an arbitrary mark applied to computers.
A “suggestive” mark is a one that suggests a quality or characteristic of the goods or services. Suggestive marks require a level of imagination to make the connection between the mark and the product. For example, the MICROSOFT mark is suggestive of software for microcomputers.
A “descriptive” mark is a word that describes a quality or characteristic of the product being identified. Typically, descriptive marks are not entitled to trademark protection unless they have acquired “secondary meaning.” Secondary meaning, according to one respected source, Black's Law Dictionary (Fifth Edition), defines it in trademark parlance as the process of establishing in the minds of consumers as to the origin from one particular source of a trademark “through advertising or massive exposure ....” An example of a descriptive mark would be LIGHT for portable computers (describing the computer's weight).
Finally, a “generic” mark identifies a particular product just by its name. Generic marks are not entitled to trademark protection because nobody should be given exclusive right to use of words, which generically identify a product. For example, MODEM or E-MAIL identify products or services by their names. Much to the disdain of trademark owners, once what was a valid trademark can become “generic” if the public misuses the mark sufficiently for it to become the generic name for the product. ASPIRIN and CELLOPHANE are two examples, which come to mind, although XEROX and KLEENEX may also qualify in this category. XEROX, in particularly, has spent huge sums to prevent misuse of its mark.
The owner’s rights to a mark are infringed if someone else uses a mark which is “confusingly or deceptively” similar to his or her mark. The degree of such confusion, if any, is based upon the similarity of use and the graphical similarity of the two marks. A few examples may clarify these concepts.
The clearest type of infringement occurs when the identical mark is used to identify the same type of goods or services. For example another’s use of the mark COCA-COLA to identify soft drinks is clearly an infringement of the Coca-Cola Company’s rights.
The SHARP trademark identifies a particular manufacturer’s line of office machines, including copying machines. Does use of the mark, SHART to identify an office equipment repair business infringe the Sharp mark? Will a consumer believe that SHART is Sharp and that SHART is Sharp’s repair business? The answer it appears, is more difficult when both the product or service identified by the mark are similar but not identical. These very issues are frequently the subject of trademark litigation.
As these examples illustrate, trademark law usually focuses on whether use of the marks have confused or deceptively misled the consumer into believing that the goods or services of one company actually derive from another. The analysis is equally difficult when a particular word or phrase, say ACME, is used in multiple marks. For example, Acme food stores, Acme Tool and Die Co. and Acme Stationery.
In considering these issues it is worth mentioning the doctrine of trademark dilution. Dilution occurs when some famous trademarks lose their distinctiveness if other users of the mark use it in a way that detracts or diminishes the mark’s uniqueness. Trademark dilution often involves an unauthorized use of another's famous trademark to identify non-competing or unrelated products despite there being no confusion in the market place. To enable the owners of such famous marks to protect the large investment they have made in promoting the marks, Congress enacted an Antidilution Statute (Act), which enables owners of “Famous Marks” to sue others who are using the same or a similar mark to identify goods or services in instances where there may be no confusion. Under the Act, the owner of a mark may bring an action against any use of its mark that dilutes its distinctive through "blurring" or "tarnishment". Proof of confusion under a dilution theory is unnecessary. Blurring occurs when a mark is weakened by its association with goods that are dissimilar from those of the owner. For example, although Kodak brand bicycles or Xerox brand cigarettes would not cause confusion among consumers, each dilutes the distinctive quality of the mark. Tarnishment occurs when a mark is cast in an unflattering light, typically through its association with inferior or unseemly products or services. Such an association caused Toys-R-Us to successfully sue adults-r-us.com, a pornographic web-site.
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