- Posted by Holmes Weinberg, PC
- On July 20, 2015
I’ve been away from this blog for a while winning a lawsuit, doing some cool deals, setting up a new YouTuber business and taking a bucket list vacation. And now I’m back with a lot of new posts coming your way.
In my last post, we started unlocking the world of intellectual property, starting with the basics of protection for ideas and expression, the center point of what is loosely referred to these days as “content.” As we saw, the spectrum of protection from new ideas to creative expression to invention varies. In future posts we’ll examine these areas, primarily copyright, in more depth, including important exceptions like fair use – how much of other people’s stuff can you use without worrying about a lawsuit.
Today’s post moves from ideas to brand protection. Starting with the basics, the legal epicenter of a brand is the symbol or symbols by which the brand is recognized. These can be:
- Words (AMERICAN IDOL)
- Names (GEORGE FOREMAN)
- Designs (NIKE SWOOSH, SUPERMAN illustration )
- Logos (the McDonald’s Golden Arch)
- Combinations of names and designs (the word BAREFOOT and foot design for wines)
- Packaging designs (the Jack Daniels bottle design)
- Color (pink asbestos, Tiffany blue)
- Product shapes (the Coca-Cola bottle)
- Sounds (the NBC chime)
- Scents (plumeria blossom scent for yarn)
- Domain names (usually a dot something version of a word trademark)
and anything else by which a brand can be recognized and understood to be the designating symbol of a single source. The “single source” piece is critical — if the same designation is used by different sources for products or services normally associated with each other (for example, sweatshirts and running shoes), it’s status as a brand is diluted or lost. For example, NYLON was once a brand and later became public domain.
The technical legal term for this kind of symbol, when used for products, is a trademark (derived from the “mark of one’s trade”, the earliest trademarks being product guild marks) and when used for a service, a service mark (for ease of reference, I’ll refer to both as a trademark or a mark). In the United States, rights are obtained by actually using the trademark or service mark, although exclusive national rights are easiest obtained through the federal registration system. Outside the USA, with few exceptions, rights are only acquired through registration, and then on a country by country basis, the exception being the European Union, which grants rights in a mark that covers all of the countries in the Union.
In the US, you can use the ™ symbol for any name or other designation you consider to be a trademark (or the SM symbol for service marks) without first getting the mark registered. The ® symbol can only be used when registration is secured. Note that there is no such thing as “trademarking” something – the trademark is the designation itself and registering is what you do to get state or federal exclusivity.
But just getting registration is NOT enough to stop someone else from using the same or similar mark. This concept of not being able to automatically win a dispute with a third party, which also applies to registering copyright claims and obtaining a patent, is very troubling to many people who are able to obtain these registrations. The law requires more — in the case of trademarks, that the other’s use is likely to cause relevant consumers to mistakenly believe that there is a connection or approval between the uses; in the case of copyrights, that the copy is “substantially similar” to the copies work (there’ a similar standard for design patents) and in the case of patents, that the alleged infringer is making, using, selling, or offering to sell a patented invention, or importing into the United States a product covered by a claim of a patent without the permission of the patent owner. Infringement lawsuits can, and often do run into the millions of dollars.
Getting back to trademarks, the law is very complex and, like all intellectual property, is evolving. There are lots of misconceptions ad bad information in the blogosphere about trademarks, so caveat emptor (beware) when it comes to the info. A good place to get an overview is the federal Trademark Office website www.uspto.gov. And of course, you can always call me.
More in the next post in this series