Every business owner should consider getting trademark protection for their business. Trademark protection may include any word, name, symbol, or device used to identify and distinguish a business’s goods or services from other businesses, indicating the source of the product – even if the source is unknown. For example, the Nike “Swoosh,” the McDonald’s “M,” and the Apple “iPhone” are all examples of trademarks. While words, logos, and symbols tend to be the most commonly trademarked, trademarks can also be issued for colors, smells, and shapes, and sounds. This benefits both the consumer and the producer: the product is verified as authentic for the consumer, and the producer is able to claim the product as his/her own to develop a brand.
Other substantial benefits in having trademark protection include: 1) the producer can use the trademark symbol, either TM or “®,” depending on whether the mark is registered; 2) the public has notice of the trademark ownership; 3) the owner gains the ability to bring a lawsuit against anyone who infringes upon the trademark; 4) the owner has the ability to protect the trademark in other countries; and 5) the owner has permission to prevent foreign goods from entering the country that infringe upon the trademark.
However, in order to receive these benefits, trademark rights need to be established. In the United States, establishing trademark rights requires that the mark be used in commerce. When trademarks are used in commerce, they will only be protected in the area where they are used. Alternatively, nationwide protection will be granted if the mark is used in interstate commerce and the mark is registered with the USPTO.
The mark must also be distinctive to receive protection. Different levels of distinctiveness permit different levels of protection – the more distinctive, the more protection a mark receives. There are four levels of distinctiveness: arbitrary/fanciful, suggestive, descriptive, and generic. “Arbitrary/fanciful” marks have no relationship or connection to the good or service they represent (e.g. the Apple logo – an apple with a bite taken out – has nothing to do with technology), and therefore they are viewed as inherently distinctive and receive a lot of protection. “Suggestive” marks suggest/evoke an element of the good or service they represent, and additionally receive a lot of protection as inherently distinctive (Sunkist orange soda, for instance). “Descriptive” marks describe the goods or services that they represent, and therefore are not inherently distinctive. In order for them to receive trademark protection, they must also receive secondary meaning in the marketplace (i.e. the public must associate the mark with a particular producer). Lastly, “generic” marks signify the category of the product and hold no distinctive value; they are afforded no protection (e.g. a logo of a vacuum cleaner for a cleaning company would be generic).
Depending on the type of goods/services that a business produces, a specific kind of trademark may be appropriate over another. The most common types include: service marks, collective marks, and certification marks. Service marks are used to distinguish between the specific services of one company and another – they apply to actions of the trademark holder (services) and not the goods. If the service mark is federally registered, it will be signified by ®, but if it is not federally registered it will be signified by ℠.
A collective mark is used to demonstrate membership to an organization, association, or collective, or to distinguish goods/services coming from that group. Certification marks are used in the marketplace to identify goods/services by an individual or entity that does not actually own the mark. The owner of the trademark will not be the one using it, but rather the owner sets the standards by which the trademark users need to conform. These provide the consumers with guaranties, of which there are three kinds: 1) region of production, 2) method of manufacture, and 3) background of employees. Essentially, those using a certification mark are showing that their products have the characteristics that the mark guarantees (e.g. the Champagne mark certifies that the goods originated in the Champagne region of France).
Once a trademark is established, a trademark owner may be afforded various types of protection. Two common examples of trademark protection include trade names and trade dress. Trade names are the names by which companies transact business. For example, “The Coca-Cola Company” usually is known and advertised as simply “Coca-Cola” or “Coke” rather than its full legal name “The Coca-Cola Company.” Trade dress alternatively protects the look and feel of the good, and the packaging encasing it. An example of this might be the feel and shape of certain liquor bottles.
One major purpose of having a trademark is so competitors cannot use your mark and benefit from your brand name (or hurt your image); therefore, it is crucial to know when a competitor is infringing upon the trademark so the owner can enjoy the full benefits of trademark protection. For there to be infringement, three requirements must be met: 1) there must be unauthorized use of the trademark, 2) the unauthorized use must be in the sale of goods or services, and 3) this unauthorized use confuses consumers about the true origin of the goods or services. This encompasses the “likelihood of confusion” test, which the courts use to ask whether two marks are so similar that consumers would be confused regarding their origins (i.e. would not be able to tell which producer it came from). A court will consider a variety of factors in trying to determine whether or not the unauthorized mark causes consumer confusion, such as: the similarity of both marks, the goods/services that each represents, actual consumer confusion, the defendant’s intent, and the means each party used to promote and distribute their goods/services.
A trademark may still be lost by the owner even after they have taken the appropriate steps to secure the mark. Loss of trademark rights occurs where the mark has been abandoned, improperly licensed, or reaches a point where it is considered generic (eg. “Escalator” used to be a trademark of the Otis Elevator Co. that referred to, well, escalators). If an owner does not intend to use a mark for an indefinite period of time (courts will assume around three years of not being used if there is not a clear indication of abandonment), then the mark will be considered abandoned and the owner loses his/her rights. Additionally, it is important to enforce sufficient guidelines when crafting the trademark or else it is possible to forfeit certain rights to use the trademark. Finally, if a mark is no longer distinctive, it will become generic. Basically, if it comes to the point of signifying a type of product or class of products rather than a specific source of goods and services, then it will be considered generic. For example, it is now common practice to refer to a tissue as a “Kleenex” rather than a “tissue,” even though technically “Kleenex” is a brand of tissue. All in all, if you want to protect your brand and the goodwill that you establish between yourself and your customers, you will want to strongly consider getting a trademark.
© 2016 John V. Robinson, P.C.
