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Businesses work hard to establish their own unique and strong identity and reputation, which is often referred to as their “goodwill” in an industry. Trademark law protects identity and goodwill. Trademarks, and their closely related cousins of service marks and trade dress, are some of the most common and important business assets. The most valuable intellectual property assets in the world are brands – world famous marks.
We assist businesses with the full range of legal services necessary to establish a strong and lasting mark and with managing portfolios of brands. From brand selection, to clearance, to local and international registration and litigation, we are in the trenches every day helping clients build, defend, and enforce their trademarks, service marks and trade dress.
For more information on trademarks, please see the links below.
One of the most common forms of intellectual property is the trademark, or your mark in the trade. Nearly every business, service, and good sold in commerce has a name and develops at least some reputation amongst its consumers. A trademark is any word, name, symbol, or device or any combination thereof used in commerce to identify and distinguish goods from those manufactured or sold by others.
A trademark tells the consumer from whom the good originated (even if the “legal” identity of the source is unknown). The trademark is generally synonymous with “goodwill.” A service mark is essentially the same thing as a trademark, but it is used in conjunction with services. For ease of reference, when people talk of “trademark” issues, they often intend to include “service marks” within the definition of “trademark,” which is consistent with how we use the terms in these explanations.
The appearance of a product and/or product packaging may also be a source indicator and is known as “trade dress.” Trade dress is given protection similar to trademarks for non-functional and distinctive aspects of products and product packaging, to include the shapes, colors, decorations, and other “look and feel” aesthetics. For purposes of product design trade dress, it is also necessary to show that the trade dress elements have enjoyed commercial success in commerce over a meaningful amount of time, typically at least five years.
Trademark law protects your identity in the market and protects against consumers confusing your business, goods and services with those of another or from incorrectly assuming there is an association or endorsements between the companies.
The first consideration for brand management is proper selection of a trademark that is inherently strong and distinctive. As a general rule, a brand should be something unique and distinctive that allows your consumers to readily identify you and your goods and/or services in the marketplace. The best brands are those that are inherently arbitrary to their goods or services or that cleverly suggest their nature or benefit. To the extent a business wants to immediately communicate with a good or services who might want it, or benefit of using it, consideration should be given to including a tag line that provides the description. A distinctive brand is more likely to imprint itself onto the mind of consumer and courts afford distinctive brands a broader scope of protection. In contrast to an inherently distinct brand, “descriptive” marks immediately communicate an attribute or benefit or intended user of the good or service. Absent a showing of long standing commercial success of descriptive terms and commerce, the law does not recognize descriptive terms as trademarks. Generic terms are words that describe a whole group or genus of goods or services and cannot distinguish one product within that group from another. A mark that is generic cannot be protected as a trademark.
The second consideration for brand management is making reasonable efforts to investigate whether and to what extent the same or similar marks may already be in use in commerce. Such efforts are aimed at determining whether the mark would be in a crowded field of similar marks (and thus less memorable) and whether a prior user might object that the mark infringes its trademark rights. For some businesses, given the scope and nature of their anticipated use, a clearance may not be necessary. In conducting a full trademark clearance against uses in the United States, we often screen the new mark against state and federal trademark registrations and applications as well as against common-law databases of trademarks and Internet URLs. Such review includes analyses of any potentially confusing marks, such as those that deviate only slightly in appearance, phonetically, in spelling, or that share a dominant characteristic. Brands from all areas of industry should be reviewed to protect against treading on famous brands in unrelated fields. We also do more limited searches of just federal and/or state registries depending on the needs of the client. Images and foreign markets can also be queried.
Being granted a legal name from a state agency (such as a corporate name from a secretary of state) should never be confused with clearing a brand. Similarly, a refusal by a state agency to register a corporate name because it is too close to a previously incorporated entity does not mean that your trademark would infringe the other entity’s trademark rights. The other entity may not make trademark use of the legal name, and even if they do, there might not be a problem if they are in an unrelated areas of commerce. A company that sells pick axes in hardware stores under the name “HACKET” is not likely to infringe the trademark rights of a company that sells cough medicine over the Internet under the same name and neither is likely to be confused with the actor and comedian Buddy Hackett. An experienced trademark lawyer should be consulted to conduct your brand clearance.
Once you have selected a mark, there are important benefits to registering the trademark with either the United States Patent and Trademark Office or state registries. Federal registrations provide many benefits to include giving the registrant presumptive rights nationwide, providing constructive notice through the federal registry of your use of the trademark, and providing additional causes of action and evidentiary presumptions in the event your trademark rights are infringed.
You may also want to consider “policing” the brand for potentially confusing brand usage by third parties. If a brand was distinct upon adoption, its success will likely generate imitators. Increased third-party use dilutes the strength of a brand and reduces its power of source recognition. This makes the trademark less effective in the marketplace and more difficult to protect in court. In extreme cases, once protectable trademarks become generic through extensive third party use of the brand to refer the genus of goods or services. This is known as genericide, and examples of such “former” marks include ASPRIN, ESCALATOR, KLEENEX and JELLO. As a result of these threats, brand owners routinely retain trademark attorneys to monitor the U. S. Patent and Trademark Office and other databases for evidence of infringing and diluting brand usage by third parties.