understanding trademarks & intellectual property

Word marks, trade names, service marks, design marks, trade dress, and slogans —

although each of these terms have distinct meanings, they all may be considered to fall

under the broad category of “trademarks.”

UNDERSTANDING:

TRADEMARKS & INTELLECTUAL PROPERTY

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The content of this presentation does not constitute legal advice.

WHAT IS A TRADEMARK?

Trademarks provide a way for businesses to build brand awareness for their goods and services, though this is not their primary function. Although businesses undoubtedly benefit from the use of trademarks, their primary purpose is to protect consumers and help eliminate confusion in the marketplace.

Trademarks are a promise to consumers that they can expect the same purchasing experience and quality of products every time, regardless of whether that quality is subjectively good or bad. For example, every McDonald’s should provide the same general experience: inexpensive and consistent food, clean facilities, and fast service.



EXAMPLES OF TRADEMARKS The most obvious examples of trademarks are word marks, such as “COCA-COLA” and “APPLE.” Short, punchy phrases that serve as company slogans may also be protectable, such as Nike’s “JUST DO IT,” McDonald’s “I’M LOVIN IT,” or CapitalOne’s ubiquitous commercials that pry “WHAT’S IN YOUR WALLET?”

Even the overall shape, color scheme, or look of a product may serve as a source indicator known as trade dress. For instance, even if all the words were covered, many consumers would still be able to identify the shape of Coca-Cola’s famous glass bottle or the well-known and distinctive roof-lines and color schemes of a Howard Johnson or Pizza Hut.

Even more unusual fare may serve as source identifiers, such as sounds (NBC’s three-note chime, Lucasfilm’s THX chord), smells, tastes, and textures.



STRENGTH OF A MARK

Not all trademarks are created equal. Instead, trademarks (or purported trademarks) are categorized by how ordinary consumers are likely to perceive them. These categories, ranked from weakest to strongest, are as follows: • Generic terms • Descriptive marks

The next three categories of marks are considered inherently distinctive. This means that they are considered to be trademarks that are automatically protectable without the need to show secondary meaning. • Suggestive marks • Arbitrary trademarks • Fanciful / coined marks



STRENGTH OF A MARK: GENERIC TERMS

At one end of the spectrum are generic terms, which are actually not trademarks at all. These are terms that are incapable of serving as trademarks because they are considered to be broad categories for the goods themselves. For instance, “APPLE” may be a great trademark for use in connection with computers, but it would be a terrible trademark for use in connection with the sale of apples. Instead, all competitors have a right to use generic terms in order to convey to consumers exactly what it is that they are selling. Escalator, aspirin, and thermos are former trademarks that became generic for the goods themselves.



STRENGTH OF A MARK: DESCRIPTIVE MARKS

Descriptive marks may or may not serve as trademarks, depending on consumer perception. These marks describe an aspect or quality of the goods or services and are not protectable absent proof that they have acquired distinctiveness (or “secondary meaning”) in the marketplace. Secondary meaning indicates that consumers viewing the mark do not just understand it to be a description of the goods or services, but rather see it as an indication of the source of the goods or services.

Examples of descriptive marks that have acquired secondary meaning are “CHAPSTICK” (for a medicinal stick for chapped lips) and “AMERICAN AIRLINES” (for an airline based in America). Whether a mark has secondary meaning in the minds of ordinary consumers may be shown through a variety of factors, including volume of sales, type of advertising, length of use, consumer testimony, and surveys. A determination that a proposed mark is descriptive may serve as the kiss of death for that mark, as proving secondary meaning can be both difficult and expensive. For this reason, descriptive marks are considered to be the weakest type of trademarks.



STRENGTH OF A MARK: SUGGESTIVE MARKS

Suggestive marks are similar to descriptive marks in that they describe aspects or qualities of the goods. The difference, however, is that suggestive marks require a cognitive leap to tie the mark to the goods or services.

Examples of suggestive marks are “COPPERTONE” and “CHICKEN OF THE SEA.” There is often a fine line between whether a mark is descriptive or suggestive, and reasonable minds often differ on this issue.



STRENGTH OF A MARK: ARBITRARY TRADEMARKS

Arbitrary trademarks are those where there is no connection between the chosen mark and the goods or services.

Returning to an earlier example, “APPLE” is an arbitrary mark because apples have nothing in common with electronics. Arbitrary trademarks are typically considered to be very strong marks.



STRENGTH OF A MARK: FANCIFUL / COINED MARKS

The strongest types of trademarks are fanciful / coined marks. These are typically words that are invented for the brand, having no other significance or meaning.

Examples of these types of marks are “KODAK,” “REEBOK,” and “STARBUCKS.”



HOW TO OBTAIN TRADEMARK RIGHTS

The laws governing trademark rights differ by country, so for products and services that are sold internationally, it is important to contact a trademark practioner to ensure protection of the brand in those countries. Some countries allow for trademark rights to be obtained by simply registering the mark with the country’s trademark authority. Others allow for trademark rights without any form of registration.

The United States is a use-based country, meaning that trademark rights are only obtained once the mark is actually used in commerce. That said, trademark owners may file an “intent-to-use” (ITU) trademark application with the United States Patent & Trademark Office (USPTO) prior to actually using the mark in commerce. Although the USPTO will not grant trademark rights until the mark is used in commerce, once that occurs, the trademark’s priority date will be the date that the ITU application was filed.




If a trademark registration is unnecessary to obtain trademark rights, then what is the purpose of registration? Rights based on use and not registration are called “common law” trademark rights.

Common law rights are good in a pinch, but come with distinct drawbacks. First, the trademark rights are limited to the geographic area in which the goods or services are actually offered. So, for instance, if a trademark holder wishes to protect the name of a restaurant chain in New Orleans, a competitor may be free to open a similar restaurant with a similar name in New York, as the common law trademark rights to that name would be limited to the market(s) in which the restaurant chain operates. Moreover, proving what the relevant market is for common law marks can be difficult and expensive.




Registering trademarks with the USPTO is ideal because the trademark owner does not have to worry about what geographic area the mark will be protected. Instead, a federally registered mark is given nationwide priority.

Next, once the mark is registered, the trademark owner will be able to use the ® symbol. Use of this symbol is extraordinarily helpful for warding off would-be infringers and helping to build brand awareness amongst consumers.

Lastly, after five years of registration with the USPTO, the trademark becomes incontestable in subsequent litigation, meaning that the strength and registrability of the mark can only be questioned in extremely limited circumstances.



ISSUES FOR TRADEMARK OWNERS

A trademark cannot be used if it creates a likelihood of confusion with an existing trademark. For this reason, it is important to contact a trademark attorney in order to clear the proposed trademark prior to using the proposed mark in commerce. Doing so may help to avoid costly and potentially crippling trademark litigation.

Once the new trademark has been selected and cleared by competent trademark counsel, it is equally important to property use the mark in commerce.

Unlike patents and copyrights, a trademark that is properly used and maintained may last forever. However, improper use may lead to the mark becoming generic, such as the case with former trademarks like “trampoline,” “escalator,” “yo-yo,” and “aspirin.” Each of these words were once trademarks, but through routine improper usage amongst consumers, the marks lost all trademark rights.



ISSUES FOR TRADEMARK OWNERS

One example of a company fighting against its trademark becoming generic is the case of “Xerox.” Xerox launched a very famous campaign to save its mark from becoming generic due to consumers’ routine statements about “Xeroxing” a document, regardless of the type of machine used to create the photocopy.

The company ran ads in newspapers and magazines letting people know that they should not “Xerox” their documents, but instead photocopy documents on a Xerox brand copier.

A more modern twist are statements indicating that individuals should “Google it” to indicate that they should perform an internet search, regardless of which search engine is actually used. Google has thus far been successful in its efforts to fight back against its mark becoming generic through court action and educating consumers, but this issue is unlikely to go away until consumers stop using the company name as a verb.



For almost 15 years, Lugenbuhl attorney Brad E. Harrigan has helped companies and individuals achieve their goals in commercial and intellectual property disputes. Brad has repeatedly been named by Louisiana Super Lawyers as a Rising Star in intellectual property law.

From our New Orleans office, Brad focuses on intellectual property and insurance defense. As part of his intellectual property practice, Brad has managed trademark portfolios for Fortune 500 companies, small businesses, and individuals consisting of hundreds of domestic and international trademark applications and registrations.

Brad has significant experience representing clients in trademark prosecution matters such as USPTO Office Actions, TTAB proceedings, and ICANN UDRP arbitrations. Brad has also represented clients in IP litigation matters throughout the country, including state and federal disputes concerning trademark, copyright, trade secret, and unfair competition issues. His defense work includes a broad range of experience in property and commercial insurance disputes with a strong emphasis on mass disaster defense. He has successfully tried numerous high-value insurance defense cases to juries in both state and federal courts.



http://www.lawla.com/attorneys/brad-harrigan/