Trademark Protections and Registrations
This blog post contains a transcript from a video presentation. This content is for informational purposes only and should not be considered legal advice. No attorney-client privilege is created.
How to Acquire Trademark Rights
The first step is to make a “use in common” of the desired trademark. “Use in common” means a bona fide user of the mark in the ordinary course of business. In English, this means you are actively using the mark in selling products or providing services.
For goods, a use in common is defined as: When a mark is placed on the goods or their container or associated displays or documents associated with the goods for sale.
For services, a use in common is defined as: When a mark is used or displayed in the sale or advertising of the goods and that the services are rendered in commerce.
Trademarks before usage
It may be desirable to federally register a trademark in advance of a new product or service. In this case, the business will file an “Intent-to-use” (ITU) application.
This is helpful once a brand is selected but the product or service is not ready for advertising/sale. The ITU will prevent competitors for snatching the trademark during the interim period. Once the mark is being used in commerce the ITU owner must file a statement that the mark is in use and the ITU will convert to a traditional trademark.
Why should I register a Trademark?
Registration gives national priority to a trademark owner Without priority the trademark user only has rights in the geographic areas it is being used.
Registration gives guaranteed access to federal courts. It provides evidence of ownership during litigation. It also provides access to enhanced remedies in courts like triple damages and attorney fees.
The rights a trademark owner has are in proportion to the strength of the trademark:
There are five different forms of trademarks:
- Fanciful Trademarks (strongest): Newly coined terms/words. Ex: Google, Oreo, Nickelodeon, Microsoft
- Arbitrary Trademarks: Dictionary words being used for a novel meaning. Ex: Apple, Amazon
- Suggestive Trademarks: Dictionary words being used to suggest something about the product. Ex: Playboy, Greyhound (bus), Jaguar (car)
- Descriptive Trademarks: Dictionary words that describe a products attributes. Ex: Tubeless (computer monitors); “cold and creamy” ice cream
- *Note: In order to be protectable, a descriptive trademark must achieve “secondary meaning” (see below)
- Generic Words: A generic word or phrase is so inherently descriptive of a product or service or an entire class of products or services as to be incapable of ever functioning as a trademark.
***Secondary Meaning: occurs when consumers believe a descriptive term refers to only one product in the marketplace.
Ex: Toys ’R’ Us — once a sufficient number of people become so familiar with the brand that they associated the term with only the one particular brand the term became a trademark.
There are 8 factors to be considered when determining whether the use of another’s mark is likely to cause consumer confusion:
- Strength of the Trademark
- Degree of similarity between the original mark and the infringing mark
- Proximity of the products of services
- Likelihood that the infringing party will “bridge the gap” into the original trademark’s business
- Evidence of actual confusion between the marks
- Whether the infringer intended to “pawn the others products off as his own”
- Quality of the infringer’s products or services
- Sophistication of the consumers
Defenses to Trademark Infringement
Descriptive Fair Use à This occurs when you use someone else’s descriptive trademark to describe your own product or service. For example, if a frozen yogurt company used the trademarked slogan “Tastes Like Ice Cream, Feels Like Healthy”, a competitor would still be able to run an advertisement that stated “Our frozen yogurt is just as tasty as ice cream, but it will leave you feeling healthy”
Comparative Advertising and Nominative Use à In this instance, Company A (or person A) uses Company B’s trademark in order to refer to Company B or its products.
During highly publicized events (such as the Super Bowl), the event coordinators will create and then sell advertising opportunities to sponsors. These opportunities allow the sponsors to take advantage of the media coverage of the event. Commonly, these sponsors will be labeled the “Official Sponsor of the Super Bowl” or the “Official Beer of the World Cup”.
Ambush marketing occurs when advertisers try to take advantage of the publicity of the event without paying the premium for the “Official” designation. An example of this may be a sports drink company running advertisements leading up to the Super Bowl. The ads would depict football players but make no direct reference to the Super Bowl of the National Football League. Some more aggressive marketers may even have a slogan stating “The official sponsor of the ‘big game’” of “the official sponsor of you-know-what”.
For the most part, Ambush Marketing is not illegal so long as it does not use the trademarks or make explicit reference to the publicized event. However, if an ad toes the line these large companies may decide to make legal claims against the advertiser, even if no law was actually broken.
Registering a Domain Name Containing Some Else’s Trademark
Merely registering a domain name which contains the trademark of another does not generally amount to trademark infringement. However, doing anything else with the domain will open up liability such as publishing a website or even putting the name up for sale. Essentially, these acts amount to “use in commerce” and that is what triggers trademark infringement.
Use of Trademarks in Keyword Advertising
As this method of advertising is relatively new, the law has not yet fully evolved in making an official determination.
The issue here is when competitors bid on keywords that contain the trademarks of another. While courts are still exploring this subject, the general direction seems to be that it is very difficult to win a trademark infringement case against a competitor for using their trademark for the purposes of keyword advertising.