Establishing, Strengthening and Protecting Your Brand:
A trademark or service mark is a word, symbol, phrase, design or combination thereof which the public associates with a single source of a product or service. Trademarks and service marks are generally the same, except that a trademark refers to a single source of a product (or “good”), while a service mark refers to a single source of a service. Knowing whether a product or service can be mark-protected, how to register a product or service, and how to enforce trademark or service mark protection laws are important issues facing businesses.
Trademarks and service marks are regulated by both federal and state law. The Lanham Trademark Act of 1946, the federal statute governing trademark rights, defines a trademark as[A]ny word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,
to identify and distinguish his or her goods, including a unique product, those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
The Act similarly defines a service mark as “any word, name, symbol, or device, or any combination thereof . . . [used] . . . to identify and distinguish the services of one person . . .” Therefore, ownership rights in trademarks and service marks require either (1) the filing of an “intent to use” application to register a mark with the U.S. Patent and Trademark Office (USPTO); or (2) actual use of the mark in commerce. A trademark is typically considered “used” when it is placed on a product or the product’s container and the product is sold or transported for sale. A service mark is “used” when it appears in advertising and the service is actually being provided.
State trademark statues protect the use of trademarks and service marks within a particular state. Thus, Minnesota Statues sections 333.18 through 333.45 apply to marks used wholly within Minnesota, while chapter 132 of Wisconsin Statutes apply to marks used wholly in Wisconsin.
“Trade Names” Distinguished
A “trade name”—a name, style or symbol used to distinguish a company, rather than a particular product or service—is not a mark, but may function like one because trade name infringement is evaluated much like infringement of a trademark or service mark. “Likelihood of confusion” is the test of infringement in both cases. However, registration with the USPTO or appropriate state trademark body is limited to marks. Accordingly, where a company’s name and the name of its product or service are the same, use of the name as a mark (and not just a trade name) is crucial.
A common misunderstanding occurs when a business believes that its filing of a trade name automatically confers the right to use the trade name as a mark. This is not the case. Rather, the filing of a trade name, articles of incorporation, or qualification to do business merely notifies the public that an entity is operating under specific name. It does not confer trademark rights beyond providing some evidence that the name has been used since at least the filing date.
Classes of Marks
In selecting marks, businesses should be aware that the “strength” of a mark will both distinguish a product or service and facilitate protection against infringement. The relative strength of marks is often described by ordering marks (from “strongest” to “weakest”) as: (1) fanciful or arbitrary; (2) suggestive; (3) descriptive; and (4) generic.
A “fanciful” mark is one which is invented solely to function as a mark (i.e., new words or words previously unknown to average consumers). Classic examples of fanciful marks include Kodak film (trademarked by the Eastman Kodak Company) and Exxon gasoline (trademarked by the ExxonMobil Corporation). An “arbitrary” mark is a common word used in an uncommon way, such as Blackberry (a fruit and a mobile phone and internet device) and Amazon (a rainforest and an online retailer). Such marks are highly distinctive and the strongest against infringement.
“Suggestive” marks are marks that suggest qualities that are appealing for a product or service without literally describing them. These are weaker that fanciful or arbitrary marks, but also highly protectable. Examples include Jaguar (suggesting a sleek and speedy automobile) and Downy (suggesting a product that will leave your clothes feeling soft and fresh).
“Descriptive” trademarks describe, rather than suggest, the attributes of a product or service. These are weaker trademarks that may only be protectable if they take on a secondary meaning that readily identifies the product or service with the mark. Examples include the Yellow Pages (describing the color of pages in a telephone book) and Shredded Wheat (describing the composition and main ingredient in a breakfast cereal).
Finally, a “generic” mark is one that is, or becomes, the generic name for the class of products or services in which the mark is, or was, meant to identify only a single product or service. A marks that becomes generic may have been protectable at first, but, due to the manner in which the mark is used (e.g., as a noun or verb instead of a proper adjective), becomes unprotectable. Classic examples include Aspirin and Escalator, while Google may be approaching generic status.
Mark Searching and Registration
Once a business selects a mark, it should determine whether the mark is already in use. As noted earlier, because rights in marks are determined by actual use or federal intent to use filings, the first person to use a mark or to apply to register a mark owns it.
Unfortunately, no single database exists that compiles all marks currently in use. However, many marks can be eliminated by checking one or more of a number of resources, including USPTO records; trade publications such as dictionaries, directories, and magazines; the trademark registration department of each state in which the mark is expected to be used; and even internet searches or the telephone book. Professional search companies and trademark attorneys may also have access to other comprehensive search options.
Once a search is complete and a mark is chosen and used, federal registration should be the next step. Although use of a mark alone does confer some rights on the owner, registration expands and adds to those rights. The Lanham Act created two separate registers on which marks may be registered, the Principal Register and the Supplemental Register. Most federal registration of marks occurs in the Principal Register, which offers significant advantages such as (1) nationwide notice to the public that the mark is in use; (2) clear evidence of the validity of the registration, ownership of the mark, and the registrant’s exclusive right to use the mark in connection with the specified product or service; (3) access to federal courts to sue infringers; and (4) after five years of continuous use following registration, incontestability of the registrant’s exclusive right to use the mark, with limited exceptions.
An application for federal registration requires a $325 filing fee (for electronic filing), examples of how the mark is used, and a “drawing” of the mark. Once filed, applications are reviewed by trademark attorneys at the USPTO. If an application is approved (approval can take six months or more) and a mark is registered, the owner may (and should) begin using the registration notice “®” or “REG. U.S. PAT. & TM OFF.” Use of such notice before the mark is officially registered is improper and may result in denial of registration. If a mark is not yet federally registered, the letters “™” should follow a trademark and “sm” should follow a service mark.
Most states provide a registration mechanism for registering marks used solely within a state or otherwise not qualifying for federal registration. A mark that is used in more than one state may be registered separately in each state. State registration is typically quicker and less expensive than federal registration, but affords little in terms of protection against infringement. Thus, state registration is typically recommended only when federal registration cannot be accomplished.
Use and Monitoring of Marks
Once a mark is placed in commerce, it is up to its owner to promote proper use of the mark. Mark use is not regulated by law, but is rather a matter of common sense and is based on the use of marks as proper adjectives, which they are. Proper use is important, particularly for stronger marks, which are prone to becoming common usage (e.g., Xerox, Kleenex, or Google) and thus less protectable.
Proper mark usage includes the following:
- Distinguishing marks in print through capitalization, bold or italics, or other means.
- Attaching notices such as “™”, “sm”, “®” or “REG. U.S. PAT. & TM OFF” to marks, as applicable.
- Using, whenever possible, the common name of the actual product following the mark, such as “Specialized bicycles” or “Titleist golf balls.” The word “brand” may also be inserted to further reduce the potential that the mark will be thought of as the generic name for a product or class of products (e.g., “Band-Aid brand adhesive bandages”).
- Avoiding use of a mark in plural form, because it is a proper adjective, not a noun. (Of course, this cannot be avoided with some marks that actually end is “s”, such as “Jelly Bellies” or “Nerds” candy.)
- Avoiding use of a mark as a verb (e.g., “Windex your glass surfaces clean.”).
Apart from promoting proper use of their marks, businesses have different options for policing mark use. Mark owners should watch for the use of similar marks by competitors or others within their industry. This can be done by simply remaining vigilant of other businesses’ activities or by retaining a “trademark watching” service, which can monitor new applications to register marks and likely observe a broader spectrum of mark use in a given industry.
Any time a potential infringement is discovered, businesses should notify their legal department (if they have one) or an outside attorney. It is important to determine the identity of the potential infringer, the products or service advertisements on which the infringing mark appears, how long the mark has been in use, the marketing channels through which the mark has passed, and other issues before a “cease and desist” letter is sent or other legal action is taken.
A well-chosen trademark or service mark is the first step to establishing a product or service’s identity in the marketplace. However, registration, proper use and vigilant monitoring must follow in order to maintain it. With these steps, a mark can last forever, potentially endowing a business with a proprietary right of immeasurable value. Often, consultation with a trademark attorney through any or all of these steps will assist businesses in maximizing the strength and protectability of their marks.
Time and money devoted to establish, strengthen and protect a trademark or service mark is a continuing investment, which, if carefully made, can yield commercial success and longevity for both brands and businesses alike.
By: Eric Johnson
Published in Business North, April 2011.