TRADEMARK

Marks are protected by state common law (state law can expand but not limit federal protections), are registrable in almost all states, are federally registrable, and are protected as unregistered marks in federal court under the Lanham Act, USC §§ 1051-1127. Congress enacted the Lanham act under its Constitutional grant of authority to regulate interstate and foreign commerce. A mark registered under the Lanham Act has nationwide protection.

A mark owner’s rights in its mark derive from the mark owner’s use of its mark. Upon using a mark, the user gains goodwill in the mark. Every company has at least one mark, its name. Some examples of different types of marks:

• Words (WSP)
• Slogans (“Just Do It”)
• Logos (Nike Swish)
• Shapes (Coke bottle)
• Colors (Dow Corning pink insulation)
• Smells
• Sounds (NBC three-tone logo)

Unlike patents and copyrights, the life of a mark is dependent on how long the mark is in use – in theory, marks can last forever. For example, the mark ZILDJIAN for cymbals has been around since 1623, and the mark LÖWENBRÄU for beer has been around since 1383.

In addition to stopping use of a mark, trademark rights can be lost through inaction or improper action. Some potential problems include:

• Failure to clear rights before adopting trademark (house without title search), cease and desist letter
• Failure to register (permits good faith junior users to establish rights/without registration can’t suppress)
• Failure to monitor/police the marketplace (crowded field, dilution, encroachment – hard to enjoin)
• Failure to use trademarks properly (genericide)
• Improper licensing (badge of quality; quality control; forfeiture of rights through naked licensing)

An applicant that has already begun using a mark in commerce may file a federal trademark application based on that use (a “use-based” application). An applicant that has not yet used its mark may file a federal trademark application based on a bona fide intent to use its mark in commerce (an “intent to use” or “ITU” application).

It is generally recommended that marks be protected through federal registration. There are two registers on which a federal registration may appear – the Principal Register and the Supplemental Register. Federal registration (whether on the Principal or Supplemental Register) provides the following benefits:²

Designation of Mark as Registered Trademark. You may, and you should, use the ® symbol or the legend “Registered in the U.S. Patent & Trademark Office,” or “Reg. U.S. Pat. & TM Off.” in connection with each use of the mark to give notice of federal registration. Failing to provide this notice requires that actual notice of registration be given to an infringer before rights begin to accrue to recover profits or damages for any infringement under the Federal Trademark Act. Failure to provide such notice would not limit your common law rights in the mark.

• Protection Against Confusingly Similar Registrations. Your registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).
• Appearance on the Federal Register. Your registration will appear on the Federal Register (Principal or Supplemental) and will appear in search results of the Federal Register conducted during mark clearance. This tends to deter others from using a similar mark.
• Access to Federal Courts. You may bring suit for infringement of your registration in Federal court regardless of the amount in controversy. Federal courts allow recovery of profits, damages and costs, and treble damages and attorney’s fees may also be available.
• Foreign Filing. Your registration may serve as the basis for filing in a foreign country under the Paris Convention and other international agreements.Federal registration on the Principal Register provides the following additional benefits:
• Constructive Notice. The public is put on constructive notice of your claim of ownership and use of your mark as of your application date.
• Prima Facie Evidence of Ownership. Registration provides a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.
• U.S. Customs Filing. Registration gives you the ability to file your U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
• Incontestability. After five years registration and continuous use, you may file a §15 Affidavit to make your mark incontestable as exclusive evidence of your right to use your mark.

The following categories are generally used to describe the meaningfulness of marks:

1. Fanciful Marks. These marks have no established meaning and have been invented solely to serve as trademarks (e.g., they are made up) such as EXXON.
2. Arbitrary Marks. These marks are comprised of arbitrary words having an established meaning, but not in the context in which it/they are used. When used to identify particular goods or services, arbitrary marks do not suggest or describe a significant ingredient, quality or characteristic of such goods or services. One example is the mark APPLE for computers.
3. Suggestive. These marks indirectly describe the goods or services that they represent. However, some imagination, through thought or perception, is required to draw the inference. An example is the mark COPPERTONE for sun lotion.
4. Descriptive. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services the mark represents.
5. Generic. Generic terms are terms that the relevant purchasing public views primarily as the common/class name for the goods or services sought to be represented by such term. Generic marks are never registrable. An example of a generic mark would be the mark GROCERY STORE for a grocery store.

We find that the United States Patent & Trademark Office (USPTO) trademark application process for a text mark costs around $3000 for a single class trademark application from start to finish, assuming that there are no issues. However, before filing a trademark clearance search is an absolute necessity to uncover any potential issues arising from previous third party marks that are similar. Clearance searches uncover prior trademark registrations that bear phonetic similarity and are used for similar goods or services.

1. Logo/Design Protection. If a mark holder also has a logo/design that it uses or intends to use as a trademark (in the manner of the Nike® swoosh) and would like to protect it, a full design search should usually be completed as with any text mark.Combination of Text and Logo/Design. Any unique design that is used in conjunction with a text mark can be registered along with the text mark, but this may limit the scope of trademark protection.
2. Descriptive Mark Pitfalls. As noted above, descriptive marks (i.e., marks where all or a significant portion of the mark merely describes the goods or services provided under the mark) tend to present more registration challenges than non-descriptive marks, particularly where the descriptive mark has not yet been used (known as an “intent to use”, or “ITU” application). Often, a descriptive mark applicant is required to prove that its mark is not descriptive else disclaim a portion of the applicant’s mark. A disclaimer means that the applicant only has rights in the disclaimed portion of its mark when the disclaimed portion is used in combination with the non-disclaimed portion. Sometimes, an entire mark is found descriptive, in which case the applicant is required to register its mark on the Supplemental Register. Registration with a disclaimer or registration on the Supplemental Register are still Federal registrations, and still provide important benefits to the mark holder.