TRADEMARKS, SERVICE MARKS AND TRADE NAMES
A trademark is a word, phrase, symbol, trade dress, product configuration, jingle or even scent which identifies the source, origin or sponsorship of the owner’s goods and distinguishes those goods from the goods of another. A service mark is a word, phrase, symbol, etc. which does the same thing for services. Trademarks, service marks and certain other indicia are often collectively referred to as “marks”. A trade name is used by its owner to identify the owner’s business or vocation; often, a company’s trade name also functions as a trademark, a service mark or both.
The purpose of a mark is to guarantee to a consumer or other relevant member of the public that the goods or services in connection with which the mark is used are genuine, and that the goods or services so marked have a certain consistency in their quality. Trademarks and service marks are representations of the “goodwill” that the owner enjoys in the minds of the public. Trademark law grew out of the “common law” (judicial case law) on unfair competition, which more generally prohibits the false representation of a product’s origin, materials or other characteristics, where that false representation is likely to confuse, deceive or mislead the public.
Types of Marks
The Federal Trademark Act (sometimes called the Lanham Act) recognizes four different kinds of marks: trademarks, service marks, collective marks and certification marks. A collective mark is a trademark or service mark that is used by members of a cooperative, association or other collective group or organization (such as a union) to indicate membership in that organization. A certification mark is a mark which is used to certify that goods or services have a certain regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics, where any person whose goods or services comply with such characteristics may use it, or where labor or work on the goods or services were performed by members of a union or other organization.
Marks of the above types are registerable in the United States Patent and Trademark Office (USPTO). A trade name (business entity name) that doesn’t function as one of the above types of marks is not registerable at the USPTO but its owner can still sue for its infringement in state or federal court.
The most prevalent form of a trademark is verbal, i.e., one or more words. The words used may be spelled in nontraditional ways to lend them distinctiveness, e.g. KRISPY KREME. The words may form a phrase or sentence, in which case the mark is regarded as a “slogan”, e.g., YOU’RE IN GOOD HANDS WITH ALLSTATE. But other things can signify the source or origin of products or services to the public. The trademark may have a design element to it, or even consist of a logo that has no verbal component. The packaging of a product may become trade dress that is protectable as a trademark. The public may even come to identify the configuration or shape of a product as indicative of its source.
Trade dress and product configurations are almost never initially registerable on the Principal Register of the USPTO: the USPTO takes the position that the trade dress or product configuration in question is not yet perceived by the public as a “trademark” but instead may be merely ornamental. Further, to be protected as a trademark, a product configuration must not be “functional”, i.e., dictated by the product’s function. The shape of the head of a Phillips-head screw is not protectable as a trademark (although it was protected by a utility patent in the early twentieth century). But some nonfunctional product configurations eventually become recognizable to the public as indications of source, such as the shape of the Volkswagen beetle, and as such become registerable as trademarks. Meanwhile, the business manufacturing the product may choose to protect the product shape with a design patent, if the shape is ornamental, and novel and nonobvious in view of what went before. A discussion on design patents can be found here.
Selection of Marks
When a business adopts a word or phrase for a new product or service, it should pay attention to how protectable the word or phrase is as a mark, that is, how well the business is going to be able to stop its competitors from using it. Some words and phrases are more protectable as marks than others.
The most protectable sort of word or phrase is one that conveys nothing to the public about the nature or characteristics of the goods or services the mark identifies. Such a mark is called “arbitrary”. Examples might be APPLE as applied to computers or BLUE BIRD as applied to a bus. “Arbitrary” marks automatically have the status of being “distinctive”, in the minds of the public, of the goods or services they identify; they automatically denote a source, origin or sponsorship of the goods or services in connection with which they are used. Assuming that the mark is not confusingly similar to a prior mark, the USPTO will not object to registering an arbitrary mark on its Principal Register.
Almost as strong are marks that are “suggestive.” A “suggestive” mark is one which connotes, but doesn’t straightforwardly describe, a characteristic of the goods or services. XEROX started out its life as a suggestive mark for photocopiers, as it suggested the xerographic nature of the copying, and MICROSOFT might have been suggestive of software meant to be loaded into microprocessors. Marks that are only suggestive (rather than straightforwardly descriptive) of a characteristic of the goods or services are initially registerable on the Principal Register of the USPTO.
A “descriptive” mark is one which describes a characteristic of the goods or services in connection with which it is used. A historic example of a “descriptive” mark might be WHIRLPOOL, as used to identify a clothes washer that set up a whirlpool agitating water current. A “descriptive” mark is not initially registerable on the Principal Register, but eventually it can be, if it acquires “secondary meaning” in the minds of the public as describing not only the goods or services, but also their source. Such a mark is said to acquire “distinctiveness through use.” Of course, WHIRLPOOL is now a famous and highly distinctive mark that is used in connection with many different kinds of appliances.
One category of “descriptive” marks are “geographically descriptive” marks, where the adopter wants to identify the place where the goods are sourced or the region where the services are rendered. For example, the adopter may want to use the city, county or state where its business is located. While geographically descriptive marks are not initially registerable on the Principal Register, eventually they can be, if the public comes to regard them as identifying a particular source or origin of the goods and services in question and not just the locale that they come from.
One step below descriptive marks are “generic” words. A “generic” word is not a mark at all. A “generic” word is a synonym for or highly descriptive of the goods or services in connection with which it is used. For example, the word BICYCLE could never function as a trademark for or be registered for bicycles. (It is, however, registered for playing cards.) “Generic” words may never be registered as marks as identifying the goods or services of which they are highly descriptive, and are incapable of ever acquiring the ability to function as trademarks or service marks. This is because they will never identify to the public a single source, origin or sponsorship of the goods or services in question.
In some instances, the adopter will want to adopt, as a mark, the surname of the founder or principal of the company. The USPTO will regard such a mark as “primarily merely a surname” and will initially refuse its registration on the Principal Register. But surname marks are very common and regularly acquire sufficient distinctiveness through use that they become registerable. Marks such as DISNEY and CHEVROLET started out as surnames but are now highly distinctive.
Prior to the adoption and use of a mark, it is an excellent idea to perform a search to see if the proposed mark is available. There are two reasons for this. The first is to assess whether the adopter itself will be able to get protectable rights in the mark. The second is to determine the relative danger that another entity will oppose registration or assert that the adopted mark is an infringement of its own.
A competent search for a US adopter should include at least a search of the Internet, the TESS database at the USPTO and the ROMARIN database at wipo.int. Other databases that historically were routinely consulted included state trademark and corporate name registrations, trade directories and telephone directories. It was more important to search these other, secondary sources of potentially conflicting marks and trade names prior to the popularization of the Internet. But now, almost all viable businesses have a web site or some other Internet presence such as a page on Facebook or eBay, and therefore almost all bona fide users of trademarks and service marks now may be found there. To find more obscure, non-Internet uses and to reduce their business risk even further, businesses occasionally request that their searches include the above secondary sources. A search of non-registration database sources such as an Internet browser search will also return information on whether the proposed mark is being used in a “generic” way by several users, indicating that no one will be able to secure trademark rights in the word at all.
After the results of a search are reviewed and the relative business risk assessed, the entity authorizing the search may decide to adopt the mark, or seek a new one; and if the mark is adopted, to apply, or not, for federal registration of the mark.
Registration of Marks
In the United States, trademark or service mark rights primarily are determined by use, not by registration. In fact, without such use, a domestic applicant will be unable to secure a federal registration. Thousands of unregistered or “common law” marks are now being used in the marketplace, and the owners of them may sue others for their infringement without ever obtaining a federal registration. Nonetheless, there are many legal benefits obtained by registering a mark on the Principal Register of the USPTO. Registration of a mark counts as “constructive notice” to the rest of the public that the mark exists. Once a mark is registered, the registration is prima facie evidence of the validity of the mark and its ownership, and may entitle its owner to enhanced damages for its infringement.
A person (either a natural person or a company) may apply for federal registration of a trademark or service mark if the person is actually “using” the mark on goods or services “in commerce”, or alternatively if the person has a bona fide intent to do so. “Use”, as applied to a trademark, must be use on the goods, their containers, labels, packaging or point of purchase displays. “Use” for a service mark must be made in the course of rendering the service itself or in advertising for the services. “Commerce” means interstate commerce or commerce between the United States and a foreign country. A registration will be granted if the mark is distinctive of the goods or services (e.g. it is not merely descriptive of one of their characteristics), the mark is not confusingly similar to other federally registered marks or applications for same, no one successfully opposes the application, the applicant’s specimen(s) demonstrating use in commerce are deemed acceptable, and certain other requirements are met. In an “actual use” application, the applicant submits specimen(s) of use at the time the application is filed. In an “intent to use” application, the applicant will have to submit such specimens later. But an “intent to use” application will never mature into a registration until bona fide commercial use of the mark has been demonstrated by the applicant to the USPTO.
The USPTO does not register trade names unless they also function as trademarks or service marks. When different from the corporate name of the business, trade names can be registered as assumed names with the Secretary of State in each state in which the company is conducting business.
Federal registrations are good for ten years from their dates of issue, assuming a declaration of continued use is filed between the fifth and sixth anniversaries of the date of registration. Most states also make provision for registration of trademarks and service marks, which might be of interest to an owner that is not entitled to a federal registration having nationwide effect.
The Supplemental Register
If a mark is deemed by the USPTO to not yet be distinctive of the goods or services, but is capable of becoming distinctive through use, the USPTO will permit the registration of the mark on the Supplemental Register. Marks that are descriptive or that are “primarily merely a surname” are registerable in this fashion. Registration of a mark on the Supplemental Register permits its owner to sue for trademark infringement in federal district court, and has a defensive value in that the mark will appear in the USPTO TESS database that is searched by others for availability. But a registration on the Supplemental Register carries none of the evidentiary presumptions that a registration on the Principal Register does. Therefore, it is often the case that the owner will want to “promote” its mark to the Principal Register after it has been in use for a while (typically for at least five years).
Most countries of the world maintain registers of trademarks, and the Paris Convention affords a US trademark owner the ability to register its mark in most of these countries if local requirements are otherwise met. The registration of trademarks in most foreign countries is mandatory rather than permissive, in the sense that the owner of a trademark has no rights at all absent such a registration.
In 2003, the United States joined the Madrid Protocol, an international treaty which (at the time of writing) has 98 signatories. Most important countries of the world are now members of the Madrid Protocol, with Brazil and Canada being the most important exceptions. Through the Madrid Protocol, a US applicant may apply for an International Registration that will cover those signatory countries which the applicant designates. The US applicant must already have filed an application for federal registration of the mark at the USPTO and the international application must be made through the USPTO. An application will be examined by the International Bureau at the World Intellectual Property Organization (WIPO) and, if its requirements are met, an International Registration will issue. Each country which had been designated by the Applicant will then determine whether the internationally registered mark meets local requirements, and if so, will grant an “Extension of Protection” of the International Registration into that country. At least for the first five years, the validity of an International Registration thus obtained will depend on whether the basic US registration remains valid.
A US trademark owner also has the ability to register its mark as a European Union Trademark, with effect throughout the European Union. This is sometimes more advantageous than seeking protection in European countries (or in the EU as a “country”) only by means of the Madrid Protocol. An intellectual property attorney can advise an appropriate course of action when a foreign trademark protection program is indicated.
Ownership and Abandonment
Like other forms of intellectual property, a trademark is intangible personal property and can be assigned, licensed or used as collateral for a loan. Assignments of trademarks must be made in writing and must be made together with the goodwill represented by the mark. A license must be granted only with appropriate controls over the quality of the goods or services to be sourced or rendered by the licensee. An assignment of a federal trademark registration should be recorded in the USPTO. In the United States, a license does not have to be in writing although this is greatly preferred. The recordation of licenses in the USPTO is voluntary and uncommon.
In the United States, the existence of a trademark depends on its continued use, and a mark will be presumed abandoned if it has not been used for three years. The owner of a federal registration periodically has to demonstrate such use to the USPTO in order to keep the federal registration alive.
Assertion of marks
The owner of a mark has a right to sue an unauthorized user for infringement. But a trademark does not give its owner an exclusive right to use a word, regardless of how it is used. The property of a trademark is connected to the goods or services with which it is used. The test for infringement is “likelihood of confusion”: does the use of the mark by an accused infringer cause the public to be confused, mistaken or deceived on whether there is some connection between the goods or services so marked, and the trademark owner? Take the mark CONTINENTAL. One company uses this mark to identify itself as a source of tires. Another company uses this same mark to identify itself as a source of airline transportation services. Despite the identity of the marks in sound and appearance, there is no likelihood of confusion on the part of the public that the tire company has anything to do with the airline, because in the minds of the public, tire manufacturers do not normally offer commercial air travel services, and airlines don’t normally sell tires for passenger cars.
There is a multiple-factor test used by the courts to determine whether likelihood of confusion exists. The United States Court of Appeals for the Seventh Circuit (covering Illinois, Indiana and Wisconsin) looks at seven factors: (1) the degree of similarity between the marks in appearance and suggestion; (2) the similarity of the products for which the name is used; (3) the area and manner of concurrent use; (4) the degree of care likely to be exercised by consumers; (5) the strength of the complainant’s mark; (6) actual confusion; and (7) an intent on the part of the alleged infringer to palm off his products as those of another. No one factor is determinative. Other Circuit Courts of Appeal formulate these factors differently but they are generally similar. Where likelihood of confusion is found, the infringer may be liable for up to treble plaintiff’s damages and the defendant’s profits resulting from the infringement, depending on the type of infringement and other circumstances, and in many instances attorneys’ fees, as well as an injunction.
A mark may become widely known by the general consuming public as a designation of source of the goods or services of the owner. Such a mark is said to be “famous”. Examples of “famous” marks include CHEVROLET, COMCAST and STATE FARM. When a mark becomes “famous”, its owner may object to uses of the mark that “dilute” it. “Dilution by blurring” impairs the distinctiveness of the mark. “Dilution by tarnishment” impairs the reputation of the mark. The “dilution” theory expands the famous mark’s owner’s rights of action against unauthorized users, even where the complained-of use is not in connection with goods or services competitive with those of the owner.
How Marks Should Be Used
It is important for a mark to be used in a prominent way. A trademark owner should not just bury the mark somewhere in advertising copy. A mark should be used so that a member of the public will readily associate it with the goods or services. This can be done by setting the mark apart from other text and in close association with an image of the goods, and putting the mark in a larger or different font and/or a different color.
Ideally, a mark should be used by its owner in a consistent way on all packaging, advertising and other print and electronic media. Companies often issue “style guides” to show how their marks should be used. This enhances the uniqueness and strength of the mark in the minds of the public.
Marks further are set off with “notices”, the shortest of which are “TM”, “SM” and “®”. For unregistered marks, “TM” and “SM” preferably should be used, adjacent to the mark itself. For registered marks “®” should be used the same way. If it is not feasible or aesthetically desirable to use these forms of notice, a legend somewhere on the packaging or printed piece will suffice, e.g., “ACME is a registered trademark of XYZ Company.” If a trademark owner fails to use the federal registration symbol (“®”) with its federally registered mark, the owner may be precluded from recovering damages from acts of infringement occurring prior to the infringer being put on actual notice.
Recently, the following sentence or something like it has become popular: “All trademarks, service marks, trade names, trade dress, product names and logos appearing on the site are the property of their respective owners.” This is useless, as it neither identifies the trademarks, etc. in question nor their owners. It puts the public on notice of nothing.
The best way to use a mark is as an adjective that modifies a noun: an IPHONE cellular phone. It should never be used as a noun for the product itself, or as a verb that describes the use of the product or service. There is a tension here between what advertising folks want and what trademark law demands. The marketing people want the mark to be used as much as possible, to identify not just one source of the product, but the only one; and if a consumer buys an IPHONE, or XEROXES a document, so much the better. The problem is that such use by the public may unmoor the mark from its owner. People will start “Xeroxing” their photocopies on photocopiers made by companies other than Xerox, or “googling” a search term using another web search engine. When this happens, what used to be a valuable mark turns into a generic word that is no longer protectable. ASPIRIN, ESCALATOR, REFRIGERATOR and THERMOS all used to be protectable trademarks. REALTOR is dangerously close to losing its service mark significance as the public is now widely using it as a synonym for “real estate agent.” A trademark owner may not be in complete control of how the relevant public uses its mark, but it may influence what the public does by how it uses the mark itself in its own marketing materials, and may even generate corrective advertising emphasizing that its mark is a trademark and not the generic name for the product or service.
Trademarks and the Internet
Every device node connected to the Internet is identified by an IP address, consisting of a group of four numbers in the range of 1 to 255 separated from each other by periods, e.g., 18.104.22.168. Because humans have difficulty remembering these numeric IP addresses, IP addresses often have assigned to them “domain names” such as “perkinsip.com”. Domain names on the Internet are issued to “registrants”, by “registrars”, in an automated process. A domain name applicant does not have to have any trademark rights to acquire a domain name, the registrant’s possession of such a domain name confers no such trademark rights, and the ownership of a domain name is not a defense to an assertion of trademark infringement. A domain name registrant may begin to acquire rights in a mark by displaying the mark in certain ways on its web site – and the mark so used may happen to be the same as the domain name, or the same word with a top level domain (TLD) appended to it, e.g., “.com”, “.org” or “.biz”. Some domain names are used by their owners in ways that make them function as trademarks or service marks. But many, if not most, domain names aren’t.
A domain name will be issued by a registrar if it is not identical to any other domain name, and regardless of what the applicant intends to do with it; for most popular top level domains, the registrar does not attempt to regulate what goods or services (if any) that will be offered for sale on the web site the domain name identifies. The registrar makes no attempt to determine whether the sought domain name, as used in connection with those goods and services, would infringe the rights of a trademark owner. It’s up to the trademark owner to enforce those rights.
More than occasionally, the domain name registrant is a “cybersquatter” whose sole purpose in acquiring the domain name is to hold it for ransom and sell it, for a profit, to a legitimate trademark owner. This activity may be stopped by the initiation of a proceeding under the Uniform Domain Name Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). The owner of a federal registration may also file an action in federal district court under the anti-cybersquatting statute, 15 USC § 1125(d). Obtaining a federal registration for a mark makes it much easier to pursue these remedies.