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If you have a business, or want to create a business, you also want to create distinguishing marks to associate your product with your business in order to increase customer awareness and loyalty. To this end, you will likely want to come up with a memorable mark or phrase to set your business apart from others. This memorable mark or phrase is a trademark or service mark (hereinafter "trademark" unless otherwise noted). Registering your trademark protects it from use without your express authorization.
The trademark: what it is
Trademarks are intended to protect your identifying business mark and distinguish it from other products in the marketplace. Trademarks indicate the source or origin of goods or services; assure customers of the quality of goods bearing the mark; and create business goodwill and brand awareness.
Generally, trademarks may be words (e.g., Google), symbols (e.g., Nike "swoosh"), slogans (e.g., Just Do It), and product or packaging designs (e.g., the Coca-Cola bottle). Other examples of less traditional trademarks include sounds, colors, fragrances, designs of business establishments, and product configurations (however, only the non-functional aspects of the product configuration are protectable as trademarks; the functional aspects may be protectable by patent registration). The difference between trademarks and trade names is that trademarks identify the goods or services of a company and the trade name identifies the company.
Trademarks fall under several different classifications. The classifications are not categorical, rather they describe a spectrum of potential trademark strength. Trademarks are described as fanciful (i.e., coined or made-up words that have no meaning in relation to the associated goods or services), arbitrary (i.e., existing words which do not have meaning in relation to the associated goods or services), suggestive (i.e., words and symbols suggestive, as opposed to descriptive, of the associated goods or services), descriptive (i.e., words that describe the goods or services or a characteristic of the goods or services), or generic (i.e., the common name of the product or service with which they are associated). The spectrum of trademark strength therefore runs from fanciful (strongest or most distinctive) to generic (weakest or least distinctive).
Fanciful, arbitrary, and suggestive trademarks are automatically protectable and available for registration with the U.S. Patent and Trademark Office ("USPTO"). Descriptive trademarks may be protected only upon showing a secondary meaning whereby consumers, through repetition and continuous use, associate the trademark with the goods or services offered. Generic marks may not be protected.
How to obtain trademark protection
The two means to obtain trademark protection are through use and registration. Common law rights (i.e., those obtained without the registration requirement) arise through use of the mark in the U.S., are (1) bound by the geographic area or region in which the product or service is marketed, (2) available only after the product or service is actually available for sale in the marketplace, and (3) may be lost if someone else brings a good or service to market under the trademark before you do (so, time is of the essence).
Rights arising by way of federal registration (1) include the right to use the trademark throughout the entire country, (2) receive priority based on the date of application, and (3) may arise upon filing an "intent to use" application (however, in the third case, the rights are not enforceable until the mark is actually used in the U.S.).
The registration process
The registration process is as follows. First, the mark must meet legal requirements (i.e., be trademarkable in accordance with the spectrum of classification, above and not immoral). Next, the mark must not conflict with earlier registrations. If it meets these two requirements, the USPTO will publish the mark for opposition so that interested parties may oppose the registration if those parties believe the mark infringes on trademarks they already own. Note that descriptive marks can be published on a "secondary register" if accompanied by proof of a secondary meaning. Finally, to maintain the registration, you must show use of the trademark within 6 years of registration.
A final note before discussing the elements of trademark infringement is that you should use the "TM" moniker for unregistered trademarks to provide notice to would-be infringers and "®" only for registered trademarks.
Trademark infringement and dilution
Moving to trademark infringement, there are four elements necessitating proof in a trademark infringement case. In other words, if you have a trademark and you believe someone is infringing on your exclusive rights to the mark, you must show:
- that you (the plaintiff) own the trademark (i.e., that the mark is entitled to protection whether registered or not);
- that the other person (the defendant) is using either your mark or a mark which is confusingly similar for his/her business activities without your permission;
- that the defendant's use of the mark in his/her business is likely to cause confusion, mistake or deception regarding the source of defendant's product; and
- that the defendant has no valid defense.
A crucial determination is the likelihood of confusion over the origin of the product bearing the mark. Many factors come into play regarding the likelihood of confusion, including the degree of similarity between the marks; the alleged infringer's intent in using his/her mark (which is similar to yours); evidence that people actually confuse the two marks; relationships in the use and marketing between the goods marketed by the different companies; whether purchasers are likely to use care in distinguishing products bearing similar marks; and the strength or weakness of the different marks. Courts will assess the presence or absence of the above considerations in determining whether a defendant is infringing on your mark. Note that these factors do not form a checklist, but rather articulate considerations for finding infringement or not.
For successful trademark infringement actions, the prevailing party may be able to obtain an injunction prohibiting the other from using the mark. Other possible remedies may be recovery of damages in the amount of the defendant's profits derived from the infringing use of the mark, any damages which the plaintiff (you) may have sustained (upon proper showing of actual lost profits, etc.), and the cost of pursuing the legal action against the infringing party. If you can show that the defendant willfully infringed on your trademark, or that he/she acted particularly reprehensibly in the lawsuit a court may, in its discretion, increase or reduce recoverable damages.
A common defense to trademark infringement action is providing proof that the trademark is or has become generic ("Kleenex" and "Xerox" are examples of trademarks which have become so common as to be generally associated with tissue paper and photocopying and therefore not subject to trademark infringement). Other defenses include fair use of the trademark (such as use of the mark where customer confusion is unlikely to result or in cases where the public is not being led to believe that the "non-owner" of the mark is the source of the goods associated with the mark), showing that the defendant used the mark before the plaintiff, situations where the different marks are so dissimilar that confusion will not occur, acquiescence in the use of the mark, and "unclean hands" (e.g., where the trademark owner has somehow caused the defendant to use the mark in an inappropriate way).
A similar concept to trademark infringement is trademark dilution. Dilution claims may be brought where (1) the plaintiff owns a famous mark; (2) a person (again, the defendant) has begun using the mark for business purposes that allegedly dilute the fame of the particular mark; (3) the defendant's mark and the famous mark are sufficiently similar that an association between the famous and "diluting" mark forms in the minds of the public; and (4) the association between the marks is likely to impair the uniqueness or distinctiveness of the famous mark or harm is likely to result to the reputation of the famous mark.
Notably, for dilution claims, actual dilution need not be proven, only the likelihood of dilution. Courts look at several factors (again, not a checklist, but considerations) for the likelihood of dilution: the degree of similarity between the "diluting" mark and the famous mark; the extent of inherent or acquired distinctiveness of the famous mark; how exclusive the use of the famous mark is by the owner; the degree of recognition of the famous mark; the intent of the "diluting" mark owner to create an association with the famous mark; and any actual association between the famous mark and the "diluting" mark.
Relief available for trademark dilution may be injunctive (i.e., a court order prohibiting the use of the "diluting" mark) and monetary damages. Monetary damages are available only if the plaintiff can prove the defendant acted willfully and intended to harm the reputation of the famous mark or intended to trade on the recognition to the famous mark.
A note on domain names
While domain names may be protected by trademark registration, it is important to note that trademark protection and domain name registration are not synonymous. Specifically, if one wishes to protect one's domain name as a trademark, independent registration of the trademark is required. For example, the characteristic logo for apple computers does not, of itself, protect the domain name apple.com.
The same spectrum of arbitrary to generic applies for domain names associated with a company's product. For example, if one uses the domain name carpets.com for a website selling carpets, the term "carpets.com" will likely fall within the scope of a descriptive moniker and will not be available for trademark protection on those grounds. If, however, the domain name carpets.com is used for a website, and prominently displayed on the website, for selling tree trimming devices (as opposed to being simply the address for the site and not used throughout the site), "carpets" obviously does not relate specifically to tree trimming devices and may be trademarked as an arbitrary mark.
In short, independent trademark protection must be obtained for one's website domain name. This area of the law is nascent and firm rules have not been established, but one should know that simply registering a domain name does not afford trademark protection, and the same process for determining the strength of trademark protection applies separately for Internet names and trademarks attached to tangible goods.