Trademarks - A Quick Introduction
By Shannon Moore
With the combined advent of the internet/dot-com boom and the prevailing trend of individuals going into business for themselves, the focus and importance surrounding intellectual property has been in the forefront of the minds of entrepreneurs, artists, inventors and anyone wanting to protect the fruits of their labors.
Because intellectual property and the laws therewith can change as rapidly as our ever-increasing technological world, it is imperative that when doing research on these topics to use accredited resources – contact either the appropriate governmental agencies, attorneys or private companies that specialize in these topics.
Trademarks are frequently thought of as those items that identify either a product or a service. This can include names of services (e.g. McDonald’s ® for restaurant services) or products (e.g. Coca-Cola ® for soft drinks), logos (e.g. Nike’s ® swoosh design), slogans (e.g. American Express’ ® Don’t Leave Home Without It ®), packaging, sounds and smells.
There are over 2,500,000 Trademarks, and over 16,000,000 commercial Common Law trade names in use! An existing Federal Trademark, State Trademark or commercial Common Law use can take precedence over your new business or product name, IF there is a conflict or similarity in sound, appearance or meaning!
SIMILARITIES IN SOUND, APPEARANCE & MEANING:
What exactly is a similarity in Sound, Appearance or Meaning? This is the most complex portion of any legal name research. In order to determine what may or may not be a similarity, one has to be as open minded as possible to include any & all variations that could possibly confuse the common consumer. Some examples may help with this:
Joe has a pending Federal trademark for his auto detailing service called It’s in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance, their crossing of trade areas & Joe’s pending Federal application.
Mary has a Federally registered trademark for her clothing line, Scary Mary’s Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary’s Federal registration.
Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.
Lorena’s online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names. No claim is made to the ownership, knowledge or liability of the above personal and/or company names. The above examples are merely for informational purposes and should only be seen as such.
Naturally, there will be exceptions to every situation. For instance, similar trademarks (in name and goods/services) can coexist peacefully if both parties are comfortable with one another’s existence. This can happen if trade areas do not cross (e.g. located on opposite coasts), if they appeal to different consumers (e.g. one sells to private industry while the other sells to the general public), etc.
Trademarks that are famous are afforded slightly different protection based on the very nature of their recognizability. Simply, the argument for famous marks is that since their brand name is recognized by a vast majority of consumers, any marks similar to it, even in different industries, could be construed as an infringement. The main justification for this is if "the owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark."
Of course, like with all trademark issues, there are gray areas. Each potential infringement is taken on a case by case basis. Not all cases end up favoring large corporations either. Take the famous case of Victor’s Secret & Victoria’s Secret (Moseley et. al. d/b/a Victor's Little Secret v. V Secret Catalogue, Inc., et al.), in which the smaller company won their case.
The best route to take if there is a possibility of an infringement, famous mark or not, is to speak to a trademark attorney. She will assist you in determining what the next best step is as well as offer assistance with any preparation and filing of documents.
While trademark law can be intimidating to the uninitiated, obtaining the help of a trademark attorney or an experienced private company will make the entire process go much smoother. There are preliminary steps one can do when starting a business and/or renaming a business:
Choose a name that is unique & distinctive – generic or descriptive names are not generally allowed registration by the USPTO and are more difficult to enforce. Do as much free research as you can before hiring an attorney or a private company. Check the internet, yellow pages, domain names & the USPTO. Be aware that any research you do for free online is merely preliminary and only comprehensive research will tell if the name is available. Once you receive the trademark, it is your responsibility to enforce your trademark rights. To do this, either have research conducted every 2-3 years OR hire a monitoring service.
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Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at www.tmexpress.com.
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