Trademarks and Trademark Infringement
Trademark law is the intellectual property law that covers the protection of a symbol, word or a phrase that is used to identify a source of goods, in essence a "brand name". In order for this mark to be protected it has to have been used in commerce and it will gain common law protection in state law from the time it is first used. As most commerce very quickly becomes interstate most companies require federal protection of their mark and that is gained under the federal statute called the Lanham Act.
A trademark or service mark gains this federal protection by being accepted on the trademark registry of the U.S. Patent and Trademark Office. When an application with the appropriate fee is received at this office it will be given to a trademark examiner to determine whether the mark meets the qualifications for registration. There are four categories that the PTO places marks in and from the strongest to the weakest these are:
- Fanciful marks are the strongest mark because they are nonsense words like GOOGLE for a search engine. They do start to lose some of their strength if they start being used as verbs such as "I'm going to google that name" or "Let's Xerox that file".
- Arbitrary marks come in as the next strongest mark as they are real words, but have absolutely no descriptive or other relationship to the product such as APPLE for computers.
- Suggestive marks are less strong as they are on the very edge of being descriptive. The mark itself has some relationship to what the product does or the service provides such as BURGER KING.
- Descriptive marks are sometimes the hardest marks to get registered as they actually describe something about the product or the service. An example of this type of mark would be THE MAIDS, for a house cleaning service. These marks generally require the addition of a "secondary meaning" to receive registration.
Names do not usually make good marks; however, if a mark has been used a long time in commerce it does gain strength through use (secondary meaning), names like "MC DONALD'S" receive trademark registration.
When a company comes up with a mark and it seems like a strong one, they should absolutely run a search through the trademark office to make sure that no one else has the mark or even has just made an application for it. Registration depends strongly on who got their application to the PTO first.
A trademark is infringed upon if a company other than the one that trademarked it starts using it in commerce. The point of having a trademark at all is that it will point consumers in the direction of your company each time it is used. Likelihood of confusion for the consumer of the product is the prominent element in a trademark infringement case. As usual courts have developed a group of factors to determine if this element is present.
- The strength of the mark.
- Are they the same type of goods (proximity?)
- How similar the marks are to each other
- Has real evidentiary confusion occurred
- The stream of commerce – are they being sold to the same customers
- How much caution a purchaser of the goods is when looking for a certain mark
- The intent of the defendant
Trademark Infringement Case Example:
Apple v. Apple There are two well-known companies that use the mark APPLE and both marks are registered. There are the well-known APPLE computer and electronics products and then there is the APPLE record company which at one time was owned by the Beatles. These two companies would not be confused as long as they stay in their own stream of commerce. Then APPLE computers went into the music business with iTunes, etc., and there have been at least two lawsuits over many years about this. Apple recording first sued APPLE computers in 1978 and their various battles continued until approximately 2007. This ended not with a court decision, but with an agreement that iTunes would carry Beatles songs and apparently they are both now happily making money again.
The moral to this case and all trademark infringement actions is there is always more than one way to look at a trademark and what it represents. A trademark examiner may refuse to register a mark and yet a trademark attorney is able to get it registered through good and thorough argument. The internet has also opened up an interesting bunch of cases regarding trademarks and domain names.