Top Five Basics of Trademarks
Intellectual Property Blog May 10, 2017
5. There are two ways to obtain trademark protection.
Trademark protection is rooted in the Commerce Clause of the Constitution. A trademark gains common law protection as soon as it is used in commerce on the goods or services with which it is associated, either within the state or interstate.
The best way to obtain strong trademark protection is through federal registration. After filing an application with the U.S. Patent and Trademark Office (USPTO), an examiner will review the application to determine if the mark can be registered. If the examiner determines the trademark can be protected, the mark is then published in the Official Gazette. Anyone who would be damaged by the registration of the trademark, such as if it is similar or the same as another mark already in use, can oppose the proposed trademark prior to registration. If no one objects, then the USPTO will register the mark and boom! Federal Trademark Protection.
4. You can’t trademark anything you want.
Trademark protection is reserved for those marks that are fanciful, arbitrary, or suggestive. You may also protect a mark that is descriptive, provided that mark has acquired secondary meaning.
However, you cannot protect a mark that is generic. A mark is generic if it refers to or is understood as referring to the genus of which the particular product is a species. In other words, you cannot seek protection for the mark “Shoes” if you are planning on selling flip-flops.
Likewise, you cannot protect a mark that is factually inaccurate. For example, there is no protection for a mark that is deceptively misleading (LOVEE LAMB for fake sheepskin car seat covers) or is misleading as to the origin of the goods (GRAN HABANO for cigars made with Cuban seed tobacco, but not actually made in Cuba).
Finally, you cannot protect a mark that is deemed immoral, scandalous, or disparaging. Some argue that prohibition of these types of marks violates the First Amendment. We invite you to read about the ongoing Washington Redskins controversy here, and The Slants case currently pending decision by the Supreme Court.
3. You can trademark symbols, packaging, product design, features, even colors!
Just as we know a shoe is made by Nike when we see the swoosh, or a jewelry box is from Tiffany’s when we see the robin’s egg blue color, symbols, packaging, product design, features, and colors are protectable if they create an association between the goods or services and the owner thereof. These elements are called trade dress. Unlike trademarks (which may also include designs or symbols), trade dress is not usually registered.
For example, Chuy’s Mexican Food restaurants have a unique décor above and beyond the typical neighborhood Mexican-style restaurant, incorporating a stream of brightly colored wooden fish weaving throughout the restaurant, various bright color schemes and patterns, and framed portraits of dogs. Should another restaurant attempt to use similar elements, Chuy’s has the right to prosecute for infringement.
However, the trade dress cannot be functional. In other words, it cannot serve a specific purpose in the use of the goods. A cleaning products company cannot obtain protection for the product design of a spray bottle where the design is what makes the bottle work.
2. You can lose trademark protection if you fail to pay attention to your mark.
Trademark protection is based on the exclusive use of a mark, meaning use by the owner and those who have the owner’s legal permission under a licensing agreement. An owner can lose protection of that mark if he or she fails to pay attention to that mark, or “police” it.
When policing a mark, an owner must be aware of two things: (1) who is using the mark; and (2) how the public is using the mark. An owner can lose protection if he or she fails to stop those who are using the mark without permission, as well as those who are using a form of the mark to somehow associate their goods or services with those of the owner. Likewise, an owner can lose protection if he or she fails to ensure the proper quality of goods or services from those who have permission to use the mark, such as manufacturers, suppliers, or franchisees.
An owner will lose protection if he or she allows the public to use the mark in such a manner that it becomes generic. “Generocide” is a double-edged sword: a trademark can become so pervasive that people know it without reference to its specific associated goods or services, but when it becomes too commonplace the trademark can unexpectedly erode off the protectable scale. Marks that have lost their protection over the years include Aspirin (for acetylsalicylic acid), Dry ice, Escalator, and Trampoline.
1. If two people are using the same mark, the person with priority of use wins.
Sometimes, owners come up with the same name for their goods or services. For example, Owner A uses a mark on her restaurant operating in Central Ohio. She begins to expand the number of restaurants, and starts to think about franchising. She files for federal protection. However, she finds that Owner B has been using the same mark on his restaurant in Florence, Kentucky. Who gets to use the mark?
The ideal situation would be that both Owners can use the mark, provided that neither Owner enters the other’s “territory.” But Owner A won’t agree to that if she is trying to expand and later franchise, right? What can Owner B do?
Owner B can either request a concurrent use proceeding or oppose the federal registration. A concurrent use proceeding might force the Owners to agree to only use the marks in certain territories. If Owner B opposes, the USPTO will determine the priority of the mark by seeing which Owner used the mark in commerce first. That Owner will be able to continue to use the mark as protected. The “losing” Owner may still be able to use the mark, but without federal protection.