This is part three of a four-part series on the basics of intellectual property law. The goal of this series is to provide individuals and business owners with a primer on the different types of intellectual property in the United States, including patents, trade secrets, trademarks and copyrights. The previous posts in the series include the introduction and a discussion of patents and trade secrets.
Trademark protects words, phrases and symbols that identify the source of goods or services
Trademark law protects companies as they develop brand recognition with a particular word, slogan or logo when used in connection with goods or services. In order to be protectable, a trademark must be distinctive, which is determined on a sliding scale by the United States Patent and Trademark Office (USPTO). Examples of trademarks include Nike Inc.’s use of the following marks when used in connection with clothing, shoes and various other goods and services: the name “Nike”, the Nike “Swoosh” logo and the slogan “Just Do It.”
However, in several well-known examples, including Kleenex, Xerox, and Tabasco, a trademark runs the risk of becoming so well-known in connection with certain goods or services that the owner may lose its exclusive rights to use the mark. For an interesting discussion of that phenomenon and how companies attempt to combat it, check out: ‘Kleenex Is a Registered Trademark’ (and Other Desperate Appeals) via The Atlantic.
In general, trademark protects the owner’s right to use the mark in connection with goods or services. Certain common law intellectual property rights to a particular trademark (or service mark) arise automatically when you actually use the mark, but in order to gain state or nationwide rights to use a particular mark, registration is required with a state agency, or for a federal registration, with the USPTO. Once a mark is registered, the rights to use that mark in connection with the goods and services does not expire so long as you continue to use the mark in commerce and you renew the mark at the required statutory intervals.
Trademark designations include TM, SM and ®. TM and SM may be used by anyone to attempt to establish their own trademark or service mark rights in connection with a particular mark, however ® may be used only in connection with a federally registered trademark.
A common misconception is that by registering your business name as a fictitious name, you get exclusive rights to use that name. In Pennsylvania, this is incorrect – in fact, there is no limit to the number of identical fictitious names that can be registered. For a more in depth discussion of fictitious names, check out my post: What’s in a (Fictitious) Name? As discussed above, the proper way to protect a name is through trademark law.
The general standard for whether trademark infringement has occurred is whether there is a likelihood for consumer confusion by virtue of the allegedly infringing use. Courts tend to use the following factors (from a case involving Polaroid) to determine whether consumer confusion exists:
- the strength of the mark;
- the proximity of the goods;
- the similarity of the marks;
- evidence of actual confusion;
- the similarity of marketing channels used;
- the degree of caution exercised by the typical purchaser; and
- the intent of the alleged infringer.
When someone copies the mark and tries to sell the same goods or services, infringement might be clear and easy to establish. For example, if I started my own trendy fast food restaurant, Matt’s Paleo Burgers, and decided that my logo would be a golden “M” with two arches, I would expect to hear from McDonald’s for unauthorized use of their famous trademark because it is likely that the average consumer may be confused as to whether my use was actually an offshoot of McDonald’s.
However, some uses may not be infringing if the marks themselves are sufficiently different or if the use itself is unlikely to cause consumer confusion. A classic example involved a lawsuit where the owner of the trademark for Lexis, which is a computerized legal search system, sued Toyota when it launched the luxury vehicle brand Lexus. A court ultimately found against the owner of Lexis, because they believed there was little chance for a consumer to be confused between the goods and services of each.
Interested in searching a database of pending, current and former trademarks? You can access TESS, the USPTO’s online database, by clicking here.