Lott & Fischer is an intellectual property law firm in Coral Gables, Florida. The firm concentrates its practice exclusively in intellectual property law, including U.S. and international patent, trademark, copyright, unfair competition, Internet, and entertainment law and related litigation.
ABA Chicago August 6, 1995
by Leslie J. Lott
A. Basics of Trademark Practice
B. Practical Considerations Potential Difficulty
II. What is a Trademark/What is not a Trademark?
A. Statutory Definition
1. Matter which can function as a Trademark
Most trademarks are words or designs - EXXON, KELLOGG'S, IBM, APPLE, FORD - designs include Shell Oil's shell, Exxon's tiger, the Morton salt girl, the Mustang picture on a car
a. Sound - "NBC"
b. Color - Qualitex case - Qualitex Co. v. Jacobson Products Co. , Inc., No. 93-1577- (U.S. March 28, 1995)
c. Three dimensional - Rolls Royce hood ornament
d. Scent - yarn case - In re Clarke, 17 USPQ2d 1238 (TTAB 1990).
2. Statutory prohibitions - 15 U.S.C. § 1052
a. Common commercial name/primarily merely descriptive/deceptively misdescriptive
b. Geographically descriptive or misdescriptive
c. Primarily merely a surname
d. Living individual, deceased President
e. Flag, coat of arms, insignia
f. Immoral, deceptive, scandalous matter
g. Likely to cause confusion
Virtually anything that can be perceived and that doesn't fall within prohibitions can serve as a trademark, so long as it serves to identify goods and services of one source and distinguish them from another source.
3. Kinds of marks
a. Trademarks - identify goods, products- physical objects that are sold or otherwise transferred in commerce - cars, clothing, machinery, gasoline, computers
b. Service marks - identify services provided to others - hotel and restaurant services, accounting, medical, attorney, architectural services, banking and financing services, sales services
CAVEAT - Remember when filing for service marks, the services must be provided to others...if services are part of the applicant's own business, it is not a true service mark.
EXAMPLE - A hospital with an accounting department does not offer accounting services to the public, but only hospital services. A magazine with a sales department which sells advertising space in the magazine, is not offering advertising services, it is selling magazines. The key is what is being offered to the public.
c. Certification Marks - used by someone other than the mark owner to vouch for the quality or contents or origin of goods or services....the GOOD HOUSEKEEPING seal of approval, UNDERWRITERS LABORATORIES certification of consumer products, Florida Citrus Association seal of approval.
d. Collective Membership Marks -designate club or organization memberships, such as Kiwanis, Girl Scouts, labor unions.
B. Not Trademarks
1. Generic Name
"Car", "hotel", "computer", "accountants", cannot function as trademarks because they are the common commercial names of goods or services and cannot identify the goods or services of one source and distinguish them from those of another. If they are included as part of a trademark, i.e. HYATT HOTELS, APPLE COMPUTERS they must be "disclaimed".
Practice Note - disclaimers are required by the Patent and Trademark Office of any matter which is not registrable, such as generic names, descriptions of goods, geographic descriptions, surnames, misdescriptive elements, etc.
CAVEAT- The law is that disclaimed material is still a part of your trademark. you are only disclaiming exclusivity. This is technically true, however, a disclaimer is an admission of non-registrability, usually descriptiveness. and if you ever have to litigate the trademark, it will be held against you. Once you have admitted that part of your mark is descriptive or otherwise unregistrable, courts and juries are not inclined to consider that as part of the mark you are seeking to protect.
2. Trade Names/Corporate Names
A trade name is the name of the business entity, or the name under which the business entity trades. It can be the corporate or partnership name or a fictitious name or d.b.a. The difficulty comes because trade names are often also used as trademarks.
CAVEAT-People frequently believe that obtaining a corporate charter "protects" the corporate name or serves as "permission" to use the name. Neither is true. Secretaries of State search only their own records before approving a corporate name, and will approve any corporate name that is not exactly the same as a name that is already on their records. The only concern is that the name be "distinguishable" on their records from other names. Most Secretaries of State would allow me to register Leslie Lott Coca Cola Inc. as a corporation, leaving it to our friends in Atlanta to object.
Practice Note - One of the primary indicia the Patent and Trademark Office uses to distinguish a trademark from a trade name, is whether it appears in conjunction with the address. If you submit to the Patent and Trademark Office, a label which shows your client's trademark, followed by the address, the Office will take the position that this is the company's name, not the designation by which the product is known.
Only trademarks are registrable in Washington or on state trademark registers, not trade names. Only trademark registration is refused on the basis of "confusing similarity". Trade names can be protected against a "confusingly similar" trade name or trademark under § 43(a) of the Lanham Act or under the anti-dilution laws of many states.
"Mere ornamentation" is not registrable as a trademark. Originally, this was easy. The label in the tee shirt is the trademark, the design on the front of the tee shirt is "ornamentation". Since Ralph Lauren began embroidering polo players on the front of his shirts and Chanel began printing interlocking "C's" in bold black letters on the front of their tee shirts, it has gotten more and more difficult to make the distinction. Still, if a design appears only as ornamentation on the product itself and not elsewhere, such as on packaging or a hang tag, you still may get an "ornamentation" rejection. "Ornamentation" may also be a basis for attacking a mark in litigation.
The line between trademarks and ornamentation is now considerably blurred. As a result, there are strong arguments to be made against a finding of ornamentation.
III. Obtaining Trademark Rights
1. Common Law vs. Civil Code countries
Worldwide, there is still a difference between the legal systems in the old British Commonwealth countries and the countries whose law is based on the Napoleanic Code. The common law countries include U.K., Canada, United States, Hong Kong, India, and parts of Africa, essentially the British Empire. Civil Code countries include primarily Europe and Latin America.
In the Common Law countries, trademark ownership is based on use. The first to use a trademark owns it. In Civil Code countries, ownership is based upon registration.
2. Ownership is based on use
Use of a trademark must be bona fide use in the ordinary course of trade, the placement of the mark on the product, and the sale or shipment of the product in commerce. Use in commerce is use which may be regulated by Congress. The right of the United States Patent and Trademark Office to register trademarks comes from the Commerce Clause of the Constitution.
3. Intent to use
The Trademark Law Revision Act, effective Nov. 16, 1986, brought United States Trademark law into line with the rest of the world in allowing an applicant to file an application to register a trademark prior to actual use of the mark. Use in commerce is still required to obtain registration.
a. Options for searching
Because U.S. trademark rights are based upon use, rather than registration, it is critical to conduct a search for possible prior users before clearing a mark. Because you are looking nationwide for unregistered users, you can spend thousands of dollars on an investigation. Other searches can be as simple and inexpensive as a telephone call to the Secretary of State to see if there is a state registered trademark. Options include on-line searches of the U.S. and State Registers and physical searches of the Trademark Office search room in Washington. You have to evaluate what level of search is best in any given situation.
In most situations, the best search will be what is known as a comprehensive trademark search. These are computerized searches offered by the major search firms, such as Trademark Research Corporation, "TRC" in New York and Thomson & Thomson "T&T" in Boston. Their databases include pending applications and registrations in all 50 state registers and the Federal Register, trade directories, trade journals, telephone directories and extensive trade name directories.
b. Timing, extent of search
With the advent of ITU (intent to use) applications, the question of when to search a mark has gotten much tougher. Since trademark rights relate back to the date of filing, with constructive use as of that date, do you delay filing long enough to obtain search results.
The safest thing to do is to file the application and order the search simultaneously. You may not have that option, or it may not be necessary. If you don't have the option due to cost concerns, or time constraints, consider an on-line search of the trademark registers only, followed by a common law search if necessary. If, for example, the client's mark has been in use for some time, and has been fairly visible in the industry, you may want to risk filing an application without conducting a search.
IV. Protecting Trademarks
A. Registration / two tier system
Registration on the federal or state level provides presumptions of ownership and exclusive right to use within that state or in the United States. Trademarks are territorial in nature and not entitled to protection beyond their area of use, without such registration.
B. Maintaining Trademarks
1. Section 8 affidavit
Filed between the fifth and sixth year of registration, required to maintain registration in effect.
Practice Note - A Section 15 affidavit may be filed any time after the fifth year of registration, and renders the mark "incontestible". Because the filing dates coincide, Section 8 and Section 15 affidavits are generally filed together, and may be combined.
CAVEAT- A Section 15 affidavit may not be filed if there is any action pending and not yet finally resolved which affects trademark ownership rights, so you must satisfy yourself that there is no such pending litigation before preparing a Section 15 affidavit for your client.
Prior to Novermber 16, 1986, the date of the TLRA, trademark registrations expired 20 years from the date of registration, with renewal possible for successive 20-year terms. For registrations issued or renewed after that date, each term, whether an initial term or a renewal term is 10 years.
CAVEAT - The most common problem on renewal is that the mark has been used in a form other than the form in which it was registered. Insubstantial changes in a mark will not affect the validity of the registration, but you need to advise your client, well in advance of the due date, of the requirement of use in substantially the same form.
C. Policing marks
1. Trademark watching services
Offered by search companies at a cost of approximately $75-100 per mark per year
2. Official Gazette
Published weekly and available from the United States Government Printing Office by subscription
3. Reports from vendors or licensees
D. Necessity of Taking Action
Use of the mark by others, improper use by owner or licensees, can result in genericism.
EXAMPLE - This has happened in the past to marks such as "aspirin", "cellophane" and "escalator", among others.
CAVEAT- Be certain your client is advised about proper use of a trademark. Set it apart by special typeface or script. use "tm" for an unregistered mark and "®" for a registered mark, and NEVER use a trademark as a noun or a verb. Trademarks must only be used as adjectives, to modify the generic or common commercial name of the product.
2. Loss of distinctiveness
Loss of distinctiveness can result from third party use of the same or a confusingly similar mark, and can make it very difficult to protect the mark. Third party uses of the same or a similar mark may lead to a finding of lack of likelihood of confusion, or, with a mark which is considered descriptive, may result in loss of validity.
3. Cease & desist letters
Make the letter fit the situation. Some letters will just be a request for information, others will be strong demands to immediately cease all use and to provide complete sales information.
CAVEAT - Investigate before sending a cease and desist letter. There is nothing worse than sending a strong letter to someone and learning that your target has trademark rights that are superior to your client.
4. Laches problems
If you threaten a lawsuit, be certain the client is willing to go forward with filing a lawsuit. Otherwise, the defendant could have a very good laches defense to a later action.
Practice Note - Laches requires a justifiable belief that the plaintiff was going to take no action. This might possibly be defeated by a letter expressly advising the potential defendant of your client's intent to take appropriate action in the future.
CAVEAT - Under the federal declaratory judgment statute, once a defendant is accused of trademark infringement, and certainly once he is threatened with a lawsuit, the accused infringer will likely have the basis for filing an action for declaratory judgment against your client.
V. Key Terms
Assignment - The transfer of trademark rights to another - must include the goodwill of the business
Counterfeiting - Deliberate use of duplicate of another's mark
Dilution - Unauthorized use of the well known mark of another in such a manner as to blur its distinctiveness or tarnish its image, even absent likelihood of confusion
Gray Market Goods - Genuine trademark articles (not counterfeits) diverted to a market for which they were not intended
Infringement - Use, intentional or unintentional of a mark which is so similar to the mark of another, whether registered or not, so as to cause a likelihood of confusion, mistake or deception
Licensing - Permission for another to use one's mark - must be accompanied by quality control provisions - may be exclusive or not and with or without payment
Trade Dress - The overall graphics and shape of a product or its packaging