Much like a brand’s seasonal garments and accessories, trademarks are valuable assets. They help consumers to identify a brand’s products; for instance, the consuming public largely knows that a bag with an interlocking “G” pattern comes from Italian design house, Gucci; a necklace with a double “C” design is Chanel; and shoes with red soles are Christian Louboutins. In addition to the value that a brand derives from public recognition of its marks, there is the implicit goodwill associated with its trademarks – for the design houses noted above, this comes in the form of associations of luxury, quality and a level of “fashionability,” so to speak.
What is a trademark?
In accordance with the Lanham Act, a trademark is any word, name, symbol, or design (including logos, colors, sounds, product configurations, etc.), or any combination thereof used in commerce to identify and distinguish the goods of one brand from those of another. (15 U.S.C. § 1127). They serve to indicate the source of a brand’s goods. Celine is a registered trademark for a line of garments and accessories. Nike is a registered trademark for a line of footwear.
As a Harvard Law trademark primer states: “Trademarks make it easier for consumers to quickly identify the source of a given good. Instead of reading the fine print on a can of cola, consumers can look for the Coca-Cola trademark. Instead of asking a store clerk who made a certain athletic shoe, consumers can look for particular identifying symbols, such as a swoosh or a unique pattern of stripes. By making goods easier to identify, trademarks also give manufacturers an incentive to invest in the quality of their goods. After all, if a consumer tries a can of Coca-Cola and finds the quality lacking, it will be easy for the consumer to avoid Coca-Cola in the future and instead buy another brand. Trademark law furthers these goals by regulating the proper use of trademarks.” (Harvard)
For a fashion example, the Hermès trademark on a bag or scarf informs a consumer of its source. Also, it enables a consumer to know that he or she can get the same quality bag or scarf in an Hermès store in Paris as he or she can from an Hermès store in New York. “Given our global economy, the importance of trademarks cannot be overstated. The law of trademarks is designed to prevent competitors from confusing customers into thinking that they are buying products and services from a trusted, known source when in reality, this is not the case.” (TMS).
A service mark is similar to a trademark, but it is used in connection with services to identify and distinguish the services of one source from those of others. Net-a-porter is a service mark for online retail store services.
Trademark protection can extend to nontraditional marks, such as sound, color, smell and product configuration. For example, the Christian Louboutin red sole trademark protects the color red on footwear that is a not all-over red. Similarly, Tiffany & Co. has trademark protection over the robin’s egg blue color it uses on its packaging. Fabric designs that have obtained secondary meaning, such as Burberry’s plaid design, are also protected by trademark.
What are the different types of trademarks?
The following types of trademarks are listed in order of the strength of the mark – from those that receive the strongest protection to those that do not receive protection at all:
(a) Fanciful Marks: those that have been invented for the sole purpose of functioning as a trademark and have no meaning other than acting as a mark. These are considered to be the strongest type of mark. Examples: EXXON, KODAK, and XEROX.
(b) Arbitrary Marks: those that have been created from existing words but have no meaning in relation to the goods or services. Examples: APPLE for computers; TIDE for detergent; LOTUS for software.
(c) Suggestive Marks: those that suggest a quality or characteristic of the goods and services, rather than describing. Examples: COPPERTONE for suntan lotion; BURGER KING for burger restaurants; MICROSOFT for software for microcomputers.
(d) Descriptive Marks: those that merely describe the services or goods on which the mark is used. These are often difficult to enforce unless the trademark owner can show that the mark has become distinctive, such as if it is advertised so heavily that secondary meaning can be proven in the mind of consumers. Examples: American Airlines; Sharp televisions.
(e) Generic Terms: these refer to the common names of the goods or services to which they are applied. They are not capable of acquiring secondary meaning when used in their generic sense, and, thus, are not protectable as trademarks. Examples: Social Network; Email; Smart phone.
Trademark Rights and Registration
In the United States, a trademark must be used in commerce (meaning: it must be used in the ordinary course of trade) before it can be subject to registration - either at the state or the federal level. (USPTO). A federal registration establishes nationwide rights, plus certain other benefits exclusive to federal registrations. (USPTO). A state registration represents rights that are generally similar, within the state of registration, to a user’s common law rights.
Common law trademark rights are those obtained only by use and without federal registration. Such rights are limited to the geographic area in which the mark is actually used.
A federal registration is not valid outside of the United States. (USPTO). However, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties.
Using and Protecting Your Trademark
In most countries, including the United States, a trademark registration is valid for 10 years and can be renewed indefinitely through the filing of a renewal application. Failure to properly and timely renew the registration, however, can result in a loss of rights.
Proper use of a trademark is essential for the protection to last. Trademark owners must properly use their trademarks (meaning: use them to aid consumers so they can depend upon the marks and identify the source of the goods/services). In addition, trademark owners must take steps to prevent the marks from becoming generic. (USPTO).
If a trademark is used properly, it will remain the exclusive property of its owner, with no limit on duration. If, however, the consuming public begins to treat a trademark as the name of the product, it will no longer “identify” and “distinguish” the goods or services of one company. This is commonly referred to as “genericide” or the “genericization” of a trademark. (INTA). Examples of former trademarks that started as strong, fanciful or arbitrary marks but that lost their distinctiveness include aspirin, videotape, linoleum, trampoline, laundromat, and even heroin.
In order to avoid genericization, trademark owners must “police” their trademarks. (INTA). Policing consists of monitoring the use of a mark by third parties in the marketplace in order to avoid unauthorized use of the mark by other parties, improper use that may cause genericide, the use by competitors of similar marks that can cause confusion in the marketplace, dilution of the mark, etc.
What amounts to trademark infringement?
Trademark infringement is the unauthorized use of a trademark or service mark (or a mark that is substantially similar to the underlying mark) on competing or related goods and services. (USPTO). The key inquiry in a trademark infringement lawsuit is whether the defendant's use of the trademark causes a likelihood of confusion in the average consumer. (LII).
According to the U.S. Patent and Trademark Office, a trademark owner who believes its mark is being infringed may file a civil action (i.e., lawsuit) in either state court or federal court for trademark infringement, depending on the circumstances. (USPTO). However, in most cases, trademark owners choose to sue for infringement in federal court.
As indicated above, the success of a plaintiff’s trademark infringement claim turns on whether there is a likelihood of confusion between the plaintiff’s and defendant’s trademarks. [Note: a likelihood of confusion is a lesser standard than proof of actual confusion, which is not required to establish infringement.] A plaintiff trademark holder will be successful if he can show that the defendant’s similar mark causes a likelihood of confusion amongst consumers. In short: Does the defendant’s use of the trademark lead consumers to believe that the plaintiff has in some way endorsed defendant’s goods/services or is connected or affiliated with the defendant and its goods/services.
When determining likelihood of confusion, courts use several factors derived from a 1961 case. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).) These factors, sometimes known as the “Polaroid factors,” may vary slightly as federal courts apply them throughout the United States:
1 - Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion.
2 - Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
3 - Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion.
4 - Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.
5 - The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely.
6 - Evidence of actual confusion. Proof of consumer confusion is NOT required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
7 - Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
8 - Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.
9 – Relatedness of the products and services at issue.
If the trademark owner is able to prove infringement, available remedies may include the following: a court order (injunction) that the defendant stop using the accused mark; an order requiring the destruction or forfeiture of infringing articles; monetary relief, including defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.