Trademarks

Trademarks and service marks are valuable business properties. From screening prospective marks and right-to-use opinions to representing clients before the Patent and Trademark Office; from negotiating licenses to litigating landmark trademark issues; from obtaining one trademark registration to maintaining multi-national trademark portfolios, our attorneys possess the depth of knowledge and the skills necessary to protect and promote these unique business assets.

Trademark Primer

A trademark is any name, symbol, slogan, or logo which is used by a business to identify the goods provided by it. For example: the trademark WORD is used by Microsoft Corporation to identify its word processing software and distinguish that software from other vendors’ word processing software. If services are provided under a mark, the mark is referred to as a “service mark.” A name for a business, be it corporate or fictitious, is referred to as a “tradename.” A tradename can also function as a trademark or service mark if it is used on the goods or in connection with the services provided by the business so that the consuming public associates that name with the goods or services and not with the business per se. The law of trademarks and service marks is essentially the same.

Trademark law is designed to protect the trademark owner’s goodwill and reputation by giving the owner the exclusive right to use the mark on the type of goods or services for which the owner is using the mark. If the mark is to be used in interstate commerce or has been used in interstate commerce, federal trademark protection is available under the Lanham Act. Many states, including Pennsylvania, have trademark registration statutes. Moreover, all states protect unregistered trademarks under the common law.

To be a viable mark it must be capable of distinguishing the owner’s goods or services from the goods or services of others. A mark that merely describes a class of goods rather than distinguishing the mark’s owner’s goods from goods provided by others is not protectable. Generic terms are ones that define the product/service rather than the source of origin or sponsorship for the product/service. Generic terms do not, and cannot, function as a trademark and will not be protected. Many, if not most, dictionary words by themselves are generic when applied to the particular product or services to which they seemingly relate. For instance, words like “soap” or “napkin” would not qualify as a trademark for soap or napkins. In addition to words or terms that have always been generic, there are words or terms that initially functioned as a trademark but later become generic; usually through continuous improper use of the mark to define the product rather than the source of origin. Examples of words that initially were important trademarks but that subsequently became generic are: aspirin, cellophane and escalator. At the other end of the spectrum from generic terms are the so-called “arbitrary” or “fanciful marks.” An arbitrary or fanciful mark is one that has been invented for the sole purpose of functioning as a trademark without having or suggesting any relationship with the specific product or service in connection with which it is used. These tend to be the strongest and most easily enforceable marks. KODAK and EXXON are examples of marks that fall into this category. However, such legally outstanding trademarks may have little marketing value unless heavily promoted.

The great majority of marks fall within the “descriptive” or “suggestive” category. Marks which are merely descriptive of a product are not inherently distinctive. They do not inherently identify a particular source, and cannot be protected unless they acquire what is known as “secondary meaning.” “Secondary meaning” means that the consuming public associates the mark with a single supplier, not with the goods or services, and is typically acquired through a large amount of promotion, advertising, or sale over a sufficiently long period of time. For instance, the mark HERSHEY has a strong secondary meaning, although it also is descriptive in the sense of being a geographic word, i.e., the name of a city. Suggestive marks are marks that, while having some connection with a product or service, do not necessarily conjure up what the product or service is. They require some imagination on the part of the consumer to draw a connection between the mark and the type of product/service embodied in the mark. For instance, a mark such as BAN for a deodorant or CYCLONE for a fence in this class. The significance of the difference between a descriptive and a suggestive mark is that a suggestive mark is registrable without the necessity of proving secondary meaning. Moreover, such a mark can at times be enforced at common law without a showing of secondary meaning. On the other hand, where a descriptive mark is involved, it is necessary to show that the mark has acquired secondary meaning.

Under the common law the first user of a mark in a geographic area acquires trademark/service mark rights in that area. Actual use of the mark on the goods or in connection with the services provided is required before any rights are acquired. Common law marks are enforceable even without registration. In fact, the Lanham Act includes provisions establishing a federal unfair competition cause of action that can be used to enforce common law trademark and service mark rights.

Once a potential trademark/service mark is proposed, it is a common, and well advised practice, to have a search conducted to determine the availability of that mark, (i.e., if some other entity is using that mark on some goods or service). The search can be accomplished through a commercial trademark search service, such as Thompson and Thompson, or directly through the records of the relevant state and federal agencies, or through other sources. Commercial search services generally offer the most comprehensive searches available and even include common law searches and registered Internet domain names. Unfortunately, too many times no search is made, with the result that the mark selected for subsequent use has previously been adopted and/or used by another, which could prevent the acquisition of trademark rights therein and also subject the subsequent user to a potential suit for infringement. Moreover, even when a search is made it is frequently too limited in scope to be of any value. For example, it is a very common practice when a business is started to have a search made of the corporate and/or fictitious name records of the state in which the business will operate to see if the proposed corporate or tradename is available for use in that state. Even if that name had not been previously registered by another in the state that does not mean that the use of that name for the business or as a trademark/service mark for the goods/services of the business can be used with impunity. In particular, if that name/mark is a federally registered trademark or common law trademark of another which has been used in the state, the subsequent user will be exposed to a suit for trademark/service mark infringement, and could be enjoined from the continued use of the tradename even though its use is authorized by the state.

The most effective trademark protection is obtained by filing a trademark registration application in the PTO. An application to register a trademark/service mark can be filed before use, based on a bona fide intention to use that mark (called an “Intent-To-Use” application), or after use in interstate commerce (called a “Use” application). While one can apply to register a mark prior to its use, no rights in the mark are obtained until there has been actual use of the mark by the business. This means that for a trademark, the mark must be applied to the goods or on packaging for the goods that have been introduced into commerce. For a service mark, use on advertising or other promotional material in connection with the provision of the service(s) in commerce will suffice.

Federal law also protects unregistered (common law) trademarks, but such protection is limited to the geographic area in which the mark is actually being used. State trademark protection under common law is obtained simply by adopting a trademark and using it in connection with goods or services. This protection is limited to the geographic area in which the trademark is actually being used. State statutory protection is obtained by filing an application with the state trademark office.

A trademark that so resembles one already in use as to be likely to cause confusion or mistake is not registrable or protectable under federal law. In order to determine if there is a likelihood of confusion, the PTO (and courts) ask: Would an appreciable number of the relevant class of consumers be confused as to the source of origin of the goods/services by the use of the respective marks? If that class of purchasers would be likely to think that the goods/services sold under the respective marks came from the same source (or from different sources that are in some way connected, affiliated or sponsored), a likelihood of confusion exists, and the mark is not registrable.

Any person who uses a mark in connection with goods or services in a way that is likely to cause confusion is an infringer. The basic test for infringement is the same as for registrability, i.e., a “likelihood of confusion.” Moreover, it isn’t necessary to prove actual confusion, as long as confusion is likely to occur. Instances of actual confusion are generally considered strong proof of a likelihood of confusion. Confusing similarity of the marks doesn’t require exact identity. Criteria for determining likelihood of confusion are the degree of similarity in pronunciation or sound, appearance, and meaning of the mark, and/or similarity of the respective goods/services. Intent to infringe is frequently considered as evidence of a likelihood of confusion.

A trademark owner can obtain an injunction against any confusing use of the trademarks by another, and can collect damages for such infringement.