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A trademark is a word phrase, symbol, design, or combination thereof, which
identifies and distinguishes the source of the goods or services of a particular
party or craftsman or group of craftsmen. A trademark is also used to gain an
edge over competitors. The current trademark statute, the Lanham Act, 15 U.S.C.;
1051 et seq. provides the owner of a federally registered mark with protection
against use of similar marks if the use of such marks may result in confusion
to the consumers. Thus, a trademark really serves two functions: 1) protecting
the consumer from confusion regarding the source of goods or services and 2)
protecting the vendor from losing his market by protecting his goodwill.
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The most important right is the right to use the trademark in commerce or enter a related field. This right is related to an unfair competition claim and is considered to be a part of unfair competition law. However, a party may use another's trademark if it does not mislead the public and there is a fair use defense. Fair use includes fair comment or comparisons as long as they do not mislead. Fair use also includes collateral use; such as if a product uses trademarked component parts, the trademarks on the component parts do not have to be removed.
This right fits neatly with the right to protect the trademark owner's reputation from association with inferior goods. It is not clear whether proof that the second user's products are superior to that of the first user's would be successful as a defense to infringement.
A third right is the right of the public to be free from confusion and mistake.
The consumer cannot enforce this right though. Only the trademark owner that
was infringed upon can enforce it.
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Trademark rights are established by use of the mark. Priority of appropriation, i.e., first use in commerce, is important to trademark ownership. However, it is priority of use in a particular geographic area or market. Thus, the second user of a trademark may gain trademark ownership of that mark in a particular area (e.g., Kansas) to the exclusion of the first user of the trademark in another area (e.g. New York). This will usually occur as long as the second user was the first to use it in the second area (Kansas), and is thereby the first user in that geographic area.
An easier way of establishing rights is to register the trademark federally, that way you can reserve the trademark for some time even before you are doing trade in all areas or even any areas at all. This is called intent-to-use instead of actual use. Federal trademark registration gives constructive notice nationwide so that a second user cannot claim innocent use due to lack of notice.
Registration of the trademark gives the owner of the registration the presumption of validity. This is only a presumption; it may be rebutted, or proven that the owner of the registration was not truly the first to appropriate it and is not truly the owner of the trademark. The presumption granted by the registration certainly helps though. It puts the burden of proof on the user not registered to prove that he or she should be the true owner of the trademark.
A trademark user can prove the validity of an unregistered mark without the
benefit of the presumption of validity that registration confers. The claimant
user must show that the mark has become identified with the manufacturer by
acquiring a "secondary meaning" and that the other user, or defendant,
has created a likelihood of confusion as to the origin of its products. If there
is no likelihood of confusion, then the claimant loses and the defendant may
continue to use the mark that allegedly infringes.
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There are many factors relevant to a finding of a likelihood of confusion. Some of which include:
1) type of trademark, that is the strength of the plaintiff's or prior owner's mark. The stronger the mark, the more likely it is to be protected;
2) relatedness of the goods, or the degree of similarity between the two products, i.e., there should be no problem with a hardware store named McDonald's;
3) degree of similarity of the two marks. Many people believe that if you spell your trademark differently it is enough of a difference to not be an infringement. This is incorrect. Just try to open a hamburger restaurant chain called MacDonald's and see how far you get. Remember the touchstone is confusing the public;
4) evidence of actual confusion. Evidence of actual confusion is not essential to a finding of a likelihood of confusion, but even if you have a minimal amount of such evidence, it will be strongly considered by the courts;
5) similarity of the area and manner of concurrent use;
6) marketing channels used, or identity of advertising media utilized, including the identity of retail outlets. If you use similar marketing channels, a finding of infringement is more likely;
7) likely degree of purchaser care, including sophistication of the buyers. Purchasers of business computer systems may be less easily confused than point-of-purchase or impulse buyers for pens or razors;
8) defendant's intent in selecting the mark. Intent to capitalize on the plaintiff's mark is not enough. In order to raise the inference of a likelihood of confusion, a plaintiff must show that the defendant intended to profit by confusing consumers; and
9) likelihood of expansion of the product lines, i.e., a company that tries
to trademark a sandwich the "McTurkey" is probably going to lose if
McDonald's sues. Even though McDonald's does not have a McTurkey sandwich now,
there is too great a likelihood that the McDonald's product line will expand
to include such. Thus, a court would probably find this to create a likelihood
of confusing the public because people would incorrectly associate it with McDonald's.
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A mark must be distinct to receive protection and if it is distinct, it must receive protection absent some policy reason such as being a surname, a geographic description, or being immoral. A trademark must be recognizable, identifiable, and distinct from other marks in order to protect consumers from confusion of the origin of the goods.
There are two main reasons for the distinctiveness requirement. The first reason
is that the first user of a mark may object to the second user of a similar
mark because the second mark is not distinctive as it too closely resembles
the first. The second reason is that public policy demands that common or descriptive
terms should not be taken out of the public domain, but should instead remain
available for others to use.
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A mark may receive protection even though it is descriptive by gaining a "secondary
meaning". A "secondary meaning" occurs when and where the consuming
public associates the descriptive mark with the product. For the most part,
there is a bar against registering a descriptive mark or misdescriptive mark.
However, if a descriptive mark acquires secondary meaning it may be eligible
for trademark protection. In a marketplace where secondary meaning is obtained,
the meaning has been developed to the point that people of that area see it
is a "Firm" mattress and know it is from that manufacturer. In other
words, that the word "Firm" connotes the origin of the goods, not
necessarily that the mattress is firm. If that mattress producer uses the descriptive
mark "Firm" for five continuous years, it is presumed to have acquired
secondary meaning under federal trademark law. This presumption can be rebutted
however. In addition, if the mattress is mushy and not firm, "firm"
cannot be the mark because it is misdescriptive.
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The four types of marks are as follows: 1) generic, 2) descriptive, 3) suggestive,
and 4) arbitrary or fanciful. The ability to establish rights varies with the
type of mark. An example of a generic term is the term "mattress"
as a mark for a product that is a mattress. Generic terms can never be eligible
for trademark protection even if it gains a secondary meaning. Other manufacturers
need to be able to describe what their product is. In addition, the second category,
descriptive, is ineligible for trademark registration unless it has gained secondary
meaning. An example of a descriptive term is the term "firm" if the
product is a mattress. A suggestive mark is partly descriptive and partly distinctive.
It describes the product, but only with the some thought or imagination. There
is no need to prove secondary meaning to get a suggestive mark protected as
long as it is not primarily descriptive. The last category, arbitrary or fanciful,
encompasses marks that convey no information about the product whatsoever except
to those knowledgeable about that trade.
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When a mark becomes so well known and has gained a secondary meaning that conveys not just the origin of the product but the product itself, it becomes generic and loses its protection. The best way to explain this is by example. The Bayer Company made a drug compound, acetylsalicylic acid, which was a pain reliever, fever reducer, and anti-inflammatory. The trademark they sold this drug under was "aspirin". "Aspirin" was the Bayer Co. version of the drug acetylsalicylic acid. The term lost its status as a protected trademark because the drug became so well known as aspirin that consumers identified any acetylsalicylic acid drug as "aspirin". Another way a legitimate trademark user loses protection of the trademark is to find out he or she is not the true owner of the trademark after all. In that case, the mark has not lost its status, but the user who legitimately used the protected mark finds out he or she has lost status. This problem happens often with a partnership that breaks up. For example, who owns the name of a band once it breaks up or as members enter and leave the band? There is no answer. The key to this is the same as all trademark questions. What is the likelihood of confusing the public?
To answer this question, the courts will sometimes ask who has artistic control
over the band or which band member was the first to use the name or who was
in the band when the name gained secondary meaning and the name became associated
with the band by the public.
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Certain marks cannot receive trademark status. The trademark statute forbids registration of immoral, deceptive or scandalous matter or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute. Trademark registration status for an offensive mark may not be obtained even if the mark has gained a secondary meaning. However, an offensive mark may gain trademark registration status, if it is no longer considered offensive.
If a mark is a geographically descriptive or misdescriptive, the mark may be registered if its primary meaning to the consuming public is not geographic. In other words, the geographic description must have obtained a secondary meaning to the public in that market. Thus, in that market, the geographic mark is not really a geographic term because the secondary meaning predominates. This prohibition on registration of surnames as trademarks is to prevent a geographic description from being taken out of the public domain. The prohibition against misdescription is to prevent misleading the public.
Also, if a mark is a surname, it may not be registered unless it has obtained a secondary meaning. If the purchasing public associates the name with the product and not primarily with its surname status, it is eligible for registration. If the user's surname is the same as the mark, the courts will usually try to form some remedy where the user may still identify that he or she is associated with the product, often by the use of a disclaimer or explanation near the mark to avoid confusion.
Remember, in making judgments regarding trademarks, the marks are not to be
dissected, but rather examined in their entirety.
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Dilution has long been a common law concept, especially in state law. It is now a part of the federal law, so it may preempt many state law dilution claims. It is similarly known as injury to business reputation. In dilution cases, you may be liable to anyone who believes he or she may be damaged, if you use a mark, any false designation of origin, or misleading representation of fact, that is likely to cause confusion or cause to mistake or deceive as to the origin of goods.
In addition, if the act is in advertising or promotion and it misrepresents
the characteristics or geographic origin of goods, then the person committing
the act may be liable whether there is a likelihood of confusion or not. It
is a code of business ethics.
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Parody is a form of artistic expression protected by the First Amendment. However,
to satire successfully, one must conjure up the image of the protected original.
Thus, where expressive work is alleged to have infringed upon a trademark, the
courts weigh public interest in free expression against the public interest
in avoiding consumer confusion. There is no requirement in the law that a disclaimer
be carried on the satirical matter saying that it is not produced by the subject
of the parody (but it may help). Commercial speech is given less protection
than non-commercial speech under the First Amendment, however. So don't hang
your hat on whining "It's my right." It is your right to express yourself,
but not to make money at the expense of another in the process.
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Injunctive relief, accounting for profits, damages, including the possibility of treble damages when appropriate, attorney's fees in "exceptional cases," and costs are available remedies to the plaintiff. A plaintiff may recover all of these cumulatively and is not restricted to just one form of remedy or another.
A plaintiff seeking preliminary injunctive relief must demonstrate: 1) a substantial likelihood of success on the merits at trial; 2) an immediate and real threat of irreparable injury; 3) the harm to the plaintiff without such injunction outweighs the harm to the defendant emanating from the granting of such injunction; and 4) the granting of the injunction is consistent with the interests of the public.
The court is entitled to adjust the award of profits either up or even down
when the court is satisfied that the amounts demonstrated are punitive in nature
instead of compensatory. The court will not use this remedy to punish. It will
not use the remedy of damages to punish either. An award of damages is to compensate
the plaintiff not to punish the defendant.
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You do not want to have to litigate a trademark claim. I urge you to contact
any party whose mark you believe infringes yours. You may choose to have an
attorney do so for you. Judges do not like to deal with intellectual property
issues. There are no bright line rules or guides to follow in most cases. It
is a judgment call as to whether the public may be confused. "Trademark
infringement is a peculiarly complex area of the law. Its hallmarks are doctrinal
confusion, conflicting results, and judicial prolixity." So, even judges
admit it is a confusing area of the law and judges tend to just go on and on.
H.M.H. Publishing Co. v. Brincat, 504 F.2d 713, 716 (9th Cir.
1974). When it comes to confusing the public, bear in mind that courts have
determined that this includes the "vast multitude which includes the ignorant,
the unthinking and the credulous." Florence Mfg. Co. v. J.C. Dowd &
Co., 178 F. 73, 75 (2d Cir. 1910). The threshold for likelihood of confusion
may appear to be very low, however, the other side is the First Amendment allowing
free speech including satire and parody. You can see why going to court is a
gamble. Try to come to an agreement with the other party.
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****The foregoing is not intended as an exhaustive review of trademark law. This information is not to be regarded as legal opinion applicable to all circumstances. Each factual scenario is different and requires unique and individual advice. The information provided herein should not be relied upon and any person with inquiry or concern should consult an attorney.
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