The Trademark Guide

How You Can Protect and Profit from Trademarks (Third Edition)

Lee Wilson

• Publisher: Allworth
• Year: 2018
• ISBN:
  9781621536338
• Edition: 3
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

"A highly accessible text." — Lawyers Weekly
A User-Friendly Handbook on Understanding Trademarks
Trademarks are a crucial part of the American economy. In plain language with scores of real-life examples, this new edition of The Trademark Guide draws on Wilson's experience and addresses issues important to both would-be trademark owners and those who already own trademarks, including:

• How to choose a trademark without risking a lawsuit
• How trademark rights are gained and perfected
• How to use a trademark properly
• What constitutes trademark infringement
• What to do if your trademark is infringed
• How trademark law applies to new media
• And much more
• 
  Completely updated to reflect recent court decisions and changes in the law, this edition features an Internet trademark resources list and expanded information on trademarks in the digital world. Packed with examples, FAQs, and a glossary, The Trademark Guide, Third Edition, will become the go-to for anyone with questions about the complexities of trademark law.

CHAPTER 1

Understanding Trademarks

This is a short chapter because, beyond knowing what a trademark is (as you must already know if you live in the United States) and how trademark ownership arises (which is not a very long story), the main thing you need to know about trademarks is how not to infringe them. We’ll get to that just as soon as you really do understand trademarks.

The Lanham Act, which is a federal statute governing unfair competition and trademarks, defines a trademark as “any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.” The statute defines a service mark as “a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” A word or symbol qualifies as a trademark when it is both actually used in commerce to identify the goods or services of a manufacturer or merchant or provider of services and when it functions to identify and distinguish the goods or services from those of other manufacturers, merchants, or providers of services. More than one trademark may identify a product—think of the various logos and versions of the name used to market COCA-COLA® soft drinks.

In a free enterprise society, trademarks are everywhere. Trademarks are the guideposts of commerce. They embody the commercial reputations of products or services in the marketplace. Manufacturers use trademarks to communicate to consumers the origin of the products they market. Consumers use trademarks to help them find the particular products and services they want. Economists have declared that trademarks perform at least two market functions: 1) they encourage the production of quality products and 2) they make shopping easier by facilitating purchasing decisions. It seems clear that as long as you can’t thump a television set like a watermelon to decide whether to buy it, but must rely instead on what you know about the television manufacturer, trademarks will remain an important part of life in America.

We all rely on trademarks every day. Almost everything you use, from the coffee you drink to the mattress you sleep on, was bought by brand name, which is another way of saying “trademark.” Nobody shows up with a checkbook at the nearest auto dealer and asks, simply, to buy “a car.” You drive a TOYOTA® or a FORD® or a VOLVO®, and you bought your car by name because of the reputation, for prestige or economy or reliability, that attaches to that car by its name. We avoid products we dislike, by name, and we seek out the ones we want, by name. These names come to mean something to the consumer. When you ask for CHANEL NO. 5® cologne at the perfume counter of a department store, you won’t be satisfied by WHITE SHOULDERS® or OBSESSION®, and when you ask for a DIET COKE® at a fast-food drive-through window, you don’t want DIET PEPSI®.

In the United States, a trademark owner gains rights in a particular name or logo for a product or service by using the name or the logo in the marketplace. (“Logos,” short for “logotypes,” are simply design trademarks, as opposed to names, which are verbal trademarks.) Trademarks can also be combinations of names or words and designs or logos. Service marks are the variety of trademarks that name services. (For simplicity’s sake, the general term “trademark,” or simply “mark,” will be used hereafter to refer to both the names or symbols for services and those for products.)

It is very important to understand that in this country trademark rights are gained by use of a mark, not by registration of it. State or federal registration of a trademark enhances the rights of the owner of the trademark and serves as notice to others of ownership of the mark, but a business that uses a trademark in the marketplace owns the right to use that mark because of that use—unless some other business has a better claim to it through longer and/or wider use—whether or not the mark is ever registered. Trademark ownership is also determined by priority of use: to own a trademark, you must do more than simply use it in the marketplace. You must also be the first to use the mark. In other words, a company acquires rights in a trademark roughly commensurate with the length of use, the geographic scope of use, and the variety of commercial uses it makes of the mark. So, for example, a large company that has long marketed a variety of products across the United States under its trademark has a much stronger claim to its mark and is much better able to halt anyone else’s use of any similar mark for any similar products than does a recently established mom-and-pop company that sells its products only in the city where it is located.

Nor can registration perpetuate the existence of a moribund trademark. If a trademark owner ceases for too long to use a trademark in the marketplace, that owner can lose all ownership rights in the mark, regardless of whether the mark has been registered. Without use of a name to market a product or service, there is no trademark—the name has ceased to embody a current reputation for the product or service to which it was applied. Think of it this way: a person’s reputation dies with him or her—that is, the reputation that remains after someone’s death is only the memory of that person’s actions in life. Because a person’s activities cease at death, his or her reputation does not continue to accrue in the present. The same is true of trademarks, which are simply the reputations of products and services. If there is no use of a trademark in the channels of commerce, the reputation of the product or service formerly marketed under that trademark becomes defunct.

Anyone involved in the marketing process knows what enormous effort and expense go into developing and publicizing new products. Trademark law allows companies that spend time and money developing their market shares to reap the benefits of that effort. Trademark law lets you enjoy the benefits of your own commercial reputation and prohibits anyone else from taking a free ride on your commercial coattails. It also protects consumers by allowing them to spend their money on the products and services they have grown to trust. This is the heart of the concept of “branding” that has garnered so much ink in the US business press in recent years.

When marketers today speak of branding, they are talking about marketing efforts aimed at creating a relationship between their products and their customers. This relationship is a combination of old-fashioned brand loyalty combined with the newer concept of creating a mystique for the product. When such a relationship can be established, it is a very powerful connection. During the early decades of the twentieth century, when American advertising was just beginning to assume the incredible power and ubiquity it has today, people bought products almost solely for their utility. That is, the ability of soap to clean and the durability of work clothes were of prime importance to the buyers of those products. Now, although the utility of many products is still important, the buying decision may be more influenced by the feeling the product gives the customer—whether that feeling is the confidence that GERBER® baby food is safe and healthy or the self-assurance that an ARMANI® suit creates. The baby food is evaluated on a different basis than the suit—GERBER® baby food is recognized as healthy and nutritious for infants, but ARMANI® suits are valued as much for their cachet as their style and structure. Every brand that survives has its own personality, a halo of residual goodwill that attaches to it and surrounds any product it names. And in a world where almost all products are sold by brand—by trademark—and practically nothing is sold without a brand name, brands and the personalities they exemplify are the keys to the survival of a product in the marketplace.

Almost anything can be a trademark so long as it is used on a product or in advertising a service in such a manner as to indicate the origin of the product or service. In other words, trademarks answer two questions: who made the product and who renders the service. All the following can and do serve as trademarks because consumers have come to associate them with the products and services they are used to market.

• Words—ACE® bandages; PLEDGE® furniture polish; AERON® desk chairs; KODAK® film and cameras

• Names—WATERMAN® fountain pens; HARTMANN® luggage; DELL® computers; HEINZ® sauces; TOM’S OF MAINE® for personal care products; JIMMY DEAN® sausage

• Designs—the embroidered JORDACHE® jeans hip pocket design; the COCA-COLA® “dynamic ribbon device”; the NIKE® “swoosh” design; the UNITED WAY® outstretched-hand-and-rainbow design symbol

• Slogans—“WHEN IT RAINS, IT POURS®” (for MORTON® salt); “SOMETIMES YOU FEEL LIKE A NUT, SOMETIMES YOU DON’T” (for PETER PAUL MOUNDS/ALMOND JOY® candy bars); and “TASTES SO GOOD CATS ASK FOR IT BY NAME” (for MEOW MIX® cat food)

• Drawings—the Rock of Gibraltar logo for PRUDENTIAL® insurance; the GERBER® baby for baby foods and products

• Likenesses of fictitious people or characters—BETTY CROCKER® for cake mixes; RONALD MCDONALD® for hamburgers; the QUAKER OATS® Quaker man for oatmeal; the Energizer Bunny for ENERGIZER® batteries

• Likenesses and/or names of living people—Paul Newman’s image used as a logo for NEWMAN’S OWN® salad dressing and spaghetti sauce; Wally Amos’s likeness used on packaging for his FAMOUS AMOS® cookies

• Likenesses and/or names of deceased people—Colonel Harlan Sanders’s image on KENTUCKY FRIED CHICKEN® containers; a depiction of the SMITH BROTHERS® on Smith Brothers Cough Drops packaging; L.L.BEAN® for clothing and sporting goods

• Characters—the main characters in the STAR WARS® movies are trademarks for a variety of goods; so are the characters from the PEANUTS® comic strip; RONALD MCDONALD® and his buddies for restaurant services; the PILLSBURY® Dough Boy for ready-to-bake food

• Abbreviations and nicknames—BUD® for BUDWEISER® beer; VW® for VOLKSWAGEN® automobiles; HOG® for large HARLEY-DAVIDSON® motorcycles

• Initials—IBM®; CBS®; A&W®

• Radio and television station call letters and radio broadcast frequency designations—WSM® radio; WTBS® television; WGBH® television; RADIO 1430®

• Telephone numbers—1-800-HOLIDAY® (for Holiday Inn reservations); 800-SEND-FTD® for florists

• Numbers—A.1.® steak sauce; V8® vegetable juice; FORMULA 409® household cleaner

• Music or songs, and sounds—the SESAME STREET® television show theme song; the MR. RODGERS® television show theme song; the NBC® chimes; the roar of the MGM® lion

• Packa...