Basic Trademark Principles

While the following list is not all-inclusive, there are a few key trademark principles that become important to remember in determining the exact content of a marketing campaign.

A trademark is a sign, device, or mark by which the goods produced or services dealt in by a particular person are distinguished from those produced or dealt in by others. A trademark can be a word, logo, design, slogan, letters, numbers, shapes or containers (perfume bottles), music (Maxwell House coffee perk/drip music), or sounds (Harley-Davidson motorcycles - after market exhaust pipe and stock exhaust pipe sounds are protected by trademark. You will often see the terms “trademark” and “service mark” used interchangeably and should know that the protections are essentially the same with the only real difference in the two being that one is applicable to goods and one to services. It is important to note in the age of cyberspace that domain name disputes will involve the application of trademark law, since a problematic domain name may contain one or more trademarks.

Exclusivity is Limited

Trademark owners do not get exclusive use of a mark. The exclusivity that an owner receives by virtue of its trademark protection is only specific to a certain field of goods and services. For example, Delta is used by both Delta Faucets and Delta Air Lines, but each is exclusive to the type of goods and services offered by each company. Under trademark law the ability of a trademark owner to prevent third party use of its marks is greatly impacted by the goods and services in which the third party deals and whether or not the third party is attempting to trade on the owner’s mark by implying an endorsement of the third party by the owner of the trademark or by implying an affiliation or connection with the owner of the mark that does not exist.

Common Law Rights vs. Registration

Neither state nor federal registration of a mark is required for trademark protection to exist. While it may be desirable to have a state registration with the appropriate Secretary of State’s Office in order to put the public on notice of an owner’s rights in a mark, it is not required for protection of the mark to exist under law. A federal registration with the U.S. Patent and Trademark Office (“PTO”) is also not required, but is extremely desirable for notice purposes, including the right to use the trademark symbol ®, and because the PTO registration certificate serves as prima facie evidence that the mark is valid.  The critical element for claiming trademark protection under the law is prior use of the mark. Federal registrations have been subject to cancellation under actions brought by the owner of a mark with a prior use date preceding the first use date of the federally registered mark.

While intent to use applications are allowed at the PTO, once a mark is accepted for registration there is a specific time period under which use must occur for the registration to become final.  An applicant may file an Amendment to Allege Use any time between the filing date of the application and the date the Examining Attorney at the PTO approves the mark for publication. If an Amendment to Allege Use is not filed, then the applicant has six months from the PTO’s issuance of the Notice of Allowance for the mark to file a Statement of Use.  If the applicant cannot accomplish use of the mark within the six month period, the applicant will want to request an extension of time in which to file a Statement of Use. If the applicant fails to file either an Amendment to Allege Use or a Statement of Use within the time limits allowed, then the application will be declared abandoned. No registration will be granted.

Trademark Protection is Country Specific

Registration of a mark with the PTO provides protection only in the United States. Similarly, registration in other countries provides protection only in those specific countries.  While there are conventions and treaties in place harmonizing the procedural formalities of registration between various countries, protection does not exist in a country until use of the mark and/or registration has taken place in that country in compliance with that country’s laws on trademark protection.

Likelihood of Confusion is the Test for Trademark Infringement

To prevail on a claim of trademark infringement, a plaintiff must show that it owns a protectable mark and that there is a likelihood of confusion as to the origin, affiliation, or sponsorship of the defendant’s product. For a mark to be protectable, it must be inherently distinctive or have acquired secondary meaning. A fanciful, arbitrary or suggestive mark is considered to be “inherently distinctive”. A descriptive term is entitled to protection as a trademark only if it has acquired secondary meaning. Secondary meaning is achieved when a mark and the product are associated in the minds of relevant consumers. Generic terms are never entitled to protection as a trademark. When assessing whether the use of a mark infringes on a valid trademark, the analysis revolves around whether the allegedly infringing use is likely to result in consumer confusion. Likelihood of confusion is determined through a balancing test of several factors, including (i) strength of the mark, (ii) proximity of the goods, (iii) similarity of the marks, (iv) evidence of actual confusion, (v) channels through which the goods are marketed, (vi) the type of goods and the degree of care likely to be used by the relevant consumer, (vii) the intent of the defendant in selecting the mark, and (viii) the likelihood of expansion of the product