Trademarks are valuable assets of businesses and non-profit organizations. A carefully-selected trademark can help a business distinguish itself in the marketplace and create a lasting impression with consumers. Through continual use, trademarks enable businesses and organizations to generate goodwill with the public. This goodwill can become the most valuable asset of the business or organization. Because trademarks are so important, businesses and non-profit organizations should carefully consider which trademarks to use and adequately protect those marks.
A trademark or service mark is any word, name, symbol, or device, or any combination thereof used to identify and distinguish goods or services from those of others and to indicate the source of the goods or services, even if that source is unknown. Words or graphic logos are the most common types of marks. You are probably familiar with word marks such as Microsoft, Kraft, or Habitat for Humanity, and graphic logos like these:
The above definition also encompasses product designs, colors, and sounds, among other things. For instance, the shape of the Coca-Cola bottle is a registered design mark and the colors green and yellow for tractors is a registered trademark of John Deere. Provided that it serves a source-indicating function, almost anything can be a trademark or service mark.
When a business or organization has selected its mark, it should be registered with the U.S. Patent and Trademark Office (USPTO). Registration provides many benefits, the most valuable of which is nationwide priority for use of the mark or any similar mark. This means that if another party uses the mark or a similar mark after the application date, you will be able to take action to stop such use. Registration also provides notice to others of your rights in the mark and may dissuade others from adopting a similar mark. If a business or organization does not register its mark it could be difficult to prevent others from usurping rights to the mark. For instance, another party (the junior user) could begin using the same or similar mark after the senior user has started use. If the junior user registers its mark it could attempt to use its nationwide priority to stop the senior user’s use. The senior user would own the rights to the mark, but it may need to petition to cancel the junior user’s trademark registration or file a lawsuit against the junior user to preserve its right to the mark. Both of these options can be expensive and time-consuming.
Trademark registration is not automatic. Once a trademark application is filed, the USPTO examines the application to determine if it meets the criteria for registration. Prior to filing the application, the applicant should retain legal counsel to research the mark to determine if it meets the requirements for registration. If legal counsel concludes that the mark would be refused registration, the applicant may be able to modify the mark to meet registration requirements or develop a new mark.
Three common substantive reasons trademarks are refused registration are: 1) failure to function as a trademark, 2) mere descriptiveness, and 3) likelihood of confusion. As to the first reason, a mark “fails to function as a trademark” if it does not indicate the source or origin of a good or service. A mark could fail to indicate source or origin for many different reasons. For instance, if a mark is merely informational matter, or it identifies the title of a single creative work, or it is used solely as a domain name, then it does not serve a source-indicating function. The second reason, “descriptiveness,” has to do with the name itself. If the mark does nothing more than describe an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services, then it cannot be protected. “Very Best Coffee” will not qualify for registration, for example, because it simply describes a quality of the coffee produced by the business.
The third reason, “likelihood of confusion,” is usually the most complicated part of the trademark analysis. A mark may be refused registration if it so resembles an already-registered mark that the consumer will be confused as to the product’s source or sponsorship. Confusion is more likely if the marks and the goods or services bearing the marks are similar. “Victor’s Coffee” will be denied trademark protection if another business is already registered as “Victoria’s Coffee.” Determining if goods or services are similar enough to create a likelihood of confusion can be difficult, especially since registered marks have protection for a zone of expansion. Using the above example, tea is within the zone of expansion for “Victor’s Coffee.” A more difficult case is determining if soft drinks or restaurant services are within the zone of expansion.
The firm regularly advises clients on the selection and registration of trademarks, including registrations in foreign countries. If you would like a trademark review or help with a registration, please contact us.
This article is provided for general information and should not be relied upon as legal advice for a specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.
by Daniel J. Mays
©2014 Bea & VandenBerk