Originally posted on March 18, 2008
Part of what we espouse at Swider Medeiros Haver LLP (www.swidermedeiroshaver.com) is treating the hopes, dreams and desires of innovative and creative people as a business. This is not more true than in selection of a trademark. Choosing the right trademark can be complex and emotional. It should be a strictly data driven logical decision. A United States trademark protects a word, symbol, sound, device, or any combination thereof that is used as a source identifier for goods or in association with services. In the latter case, the source identifier is sometimes called a service mark.
Choosing a “strong” mark can help avoid many problems in the future. New businesses rightly labor over which mark to choose and the usual suspects may not be the best: surnames, geographical indicators, and generic names all wilt in the light of a creative and fanciful mark. But determining what marks are “generic” and which are “fanciful” requires more than testing the mark with a focus group; a working knowledge of trademark law is needed. A branding expert recently told me that the Madison Avenue style of focus group in selecting a good mark, one that will imprint itself in the mind of your customers and potential customers, is falling out of favor. The issue is that strong marks are personal and must appeal on the individual level. If we see someone like a mark, we will like it also. Researcher Robert Cialdini calls this phenomenon “social proof” and its ultimate manifestation has the legal corollary of the “famous mark” doctrine. A good trademark attorney is required to do the job right and nothing in this article should be acted upon as legal advice as your facts and circumstances vary; therefore, obtain competent counsel in your jurisdiction.
A trademark can be “strong” or “weak” depending on the mark selected and how it is used. The following graphic demonstrates the relative strength of different types of marks. Let’s assume we just opened a business and nobody has heard of these marks outside of a handful of people who shop at the store.
| Mark Category |
Book Retailer Name |
Protection |
Notes |
| Fanciful |
Alantra |
Strong |
|
| Stylized |
Foondis (stylized spelling that suggests the Swahili word for expert) |
Strong |
For foreign translations, the word “expert” should be searched as well |
| Arbitrary |
Amazon (for an online bookstore) |
Strong |
|
| Suggestive |
WeeRead (for a children’s bookstore) |
Strong-Medium |
|
| Surname |
Powell’s Books |
Medium |
|
| Geographical Descriptor |
Portland Books |
Weak |
|
| Generic |
The Book Store |
Not Protectable |
|
The look and feel of something that acts as a source identifier may also be protected by trademark law. This “holistic” trademark is called trade dress, which is “essentially [a business'] total image and overall appearance.”[1] Trade dress can encompass many features, including “size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”[2] Popular examples of trade dress are the shape of a car, the architectural decoration of a chain restaurant, or the layout of a retail establishment.
Trademark rights may be acquired by common law, state registration, and federal registration. Common law trademark rights come into existence by mere use of the trademark in commerce. To provide notice of common law rights, the superscript “TM” for trademark or “SM” for service mark should be used after the source identifier. In the example AcmeTM Books, the word “Acme” followed by TM is a trademark. In the example AcmeSM Window Washing, the word “Acme” followed by SM, is a service mark. In both cases, the marks are used as adjectives. A mark should never be used as a noun. In addition to providing notice of common law trademark rights, the superscript TM or SM also helps a mark to acquire secondary meaning and to accumulate goodwill to the identified goods or services. Acquiring secondary meaning is important because marks that are relatively “weak” can become stronger if they have been used for a period of time, and the consuming public has come to associate the mark with a particular good or service.
State trademark registration is often a non-selective process. If the owner of a mark applies to register the mark in a particular state, and if the mark is not already registered in that state, the state will likely grant the registration without further inquiry. Upon registration, the owner of the mark will have an exclusive right in that state to use the registered mark in conjunction with the goods or services described in the application.
Federal trademark registration is more rigorous. The owner of the mark must submit an application to register the mark with the United States Patent and Trademark Office (“USPTO”). The application must identify one or more fields of use, or “classes”, of goods and services that the mark identifies. If an applicant desires to file for the same mark in different classes, a separate application must be filed for each class. If the mark is not yet being used in commerce, the applicant may file an intent to use application. If the mark is being used in commerce, the applicant must also submit a specimen showing how the mark is used. The USPTO assigns an examiner to review the application and search for other similar marks. If the examiner agrees that the mark is eligible for registration in the specified class, a notice of allowance is issued. Often, the examiner disagrees and issues an office action. The applicant then has several opportunities to make changes and negotiate with the examiner to get the application allowed.
Once the application is allowed, the mark will be placed on the Principal Register, and the owner will have the exclusive right to use the mark in the United States in connection with the goods or services specified in the registration.[3] In some cases, a mark is not eligible to be placed on the Principal Register right away. Such marks are placed, instead, on the Supplemental Register. After five years of continuous use, the owner of a mark on the Supplemental Register can apply to have the mark moved to the Principal Register on the grounds that the mark has acquired secondary meaning.
Federal trademark registration[4] is expensive relative to state registration or common law rights. However, federal registration is generally worth pursuing because it provides several advantages, including: (i) constructive nationwide notice of the trademark owner’s claim; (ii) evidence of ownership of the trademark; (iii) access to federal courts for enforcement; (iv) the ability to obtain trademark registration in foreign countries based on the United States registration; and (v) the ability to prevent importation of infringing foreign goods by filing the trademark registration with the United States Customs Service.
1. Geographical Indicators
Geographical Indicators (“GIs”) are indicators that identify a good as originating in the territory of which a member desires association, such as a farmer’s association, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographic origin. GIs are valuable to producers for the same reason that other types of trademarks are valuable – they operate as source identifiers and help to accumulate goodwill. Because GIs are relatively weak marks, they must have acquired secondary meaning in order to obtain federal trademark registration. An example is “Champagne” which is a region in France that makes sparkling wine.
2. International Trademarks
There are no “international” trademark registrations that provide protection in multiple nations around world, but there are various mechanisms and regimes that purportedly simplify the process of registering trademarks outside of the United States. The Madrid Protocol is one such mechanism. The Madrid Protocol is essentially a centralized filing system managed through the World Intellectual Property Organization (“WIPO”). WIPO does not confer trademark rights, and the Madrid Protocol does not include substantive trademark law. Rather, the Madrid Protocol provides a mechanism to simplify international registration of a trademark after it has been registered in the office of origin of one of the 72 participating nations.[5] The United States participates in the Madrid Protocol. For example, a United States business seeking trademark protection in the European Union, China, and Japan can file a single application through the USPTO (the office of origin for US-based applicants)[6] to WIPO’s International Bureau, and thereby potentially extend protection of the trademark to all three foreign jurisdictions.
Generally speaking, using the Madrid Protocol can lead to savings in translation costs, legal costs, and application fees. The simplified application process thereby lowers one of the barriers to global market entry. Filing for trademark registration under the Madrid Protocol is not, however, the most effective approach for all businesses. There may be costs associated with clearance and prosecution that are not eliminated by using the Madrid Protocol.[7] Companies focused on South East Asia or Latin America do not benefit as much from using the Madrid Protocol since many nations in these regions do not participate.[8] Moreover, the Madrid Protocol does not yet allow applicants to “tweak” their international trademark registrations to localize branding, so a company that does this as part of its business strategy must be prepared to register anew with each change in its trademark.[9]
There are administrative benefits to using the Madrid Protocol in that it acts as a “one stop shop” for administrative procedures and maintenance, but there are also risks. For example, an error in the original registration may be replicated in all Madrid Protocol applications filed in the member states. If the original registration is attacked or cancelled within the contestable period (generally five years after issuance in the United States), all dependent Madrid Protocol registrations will also suffer because of the central filing.
[1] Blue Bell Bio-Medical v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989). [2] John J. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1983). [3] In some circumstances, a trademark may provide exclusive rights beyond the scope of the goods or services specified in the registration. If the additional goods or services are “logically similar” to the original goods or services, the owner of the mark may be able to claim that the additional goods or services are within the “zone of expansion” for the mark. For example, if a business has a famous trademark for women’s scarves, and a second business begins using the same mark for women’s perfume, the first business may be able to prevent the second business from using the mark because women’s scarves and women’s perfume are both logically considered “first floor department store items.” Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167 (2d Cir.1976). [4] Lanham Trade-Mark Act, § 43(a), as amended, 15 U.S.C. § 1125(a). [5] http://www.wipo.int/madrid/en/members/ last visited April 15, 2007. [6] Applicants are required to submit their international application through an Office of Origin. Protocol Article 2(2). The Office of Origin is the office of the nation or organization responsible for mark registrations where the applicant is qualified to file. Protocol, Article 2(3). An applicant is qualified to file in a jurisdiction by establishment, domicile or nationality, where establishment means a real and effective commercial establishment in the jurisdiction. Protocol, Article 2(1)(i), (ii). The Protocol provides guidance as to the meaning of these terms, but the contracting party’s laws determine their interpretation. Guide to the International Registration of Marks, Part B, Chapter 2, supra, Section 02.04-02.08. [7] SME’s or Micromultinationals? Leveraging the Madrid System for International Branding, Roya Gafele, at http://www.wipo.int/sme/en/documents/madrid_system_branding.html , last visited April 15, 2007. [8] http://www.wipo.int/madrid/en/members/ , supra. [13] SME’s or Micromultinationals? Leveraging the Madrid System for International Branding, Roya Gafele, supra. [9] SME’s or Micromultinationals? Leveraging the Madrid System for International Branding, Roya Gafele, supra.
