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Trademarks: A Primer
Presenters: Karen Tyler and Justin McCabe, Partners at
Dunkiel Saunders Elliott Raubvogel & Hand, PLLC
Trademarks
• Purposes and Types• Conflicts and Issues• Selecting a Mark• Developing a Brand• Registration Process
What is a Trademark?• Definition of Trademark:
– Any word, name, symbol, or device, or any combination thereof:• Defines the source of goods/services; • Distinguishes the goods/services from those of others; and• Stands for the goodwill associated with a product/service.
Policy
• Benefits of Trademarks:– Early thoughts:
• Advertising protection• Use to prove manufacturer; ownership resolution• Guarantee of quality (or not)
– Modern• Reduce information and transaction costs by allowing customers to estimate
the nature and quality of goods before purchase
What can be a TradeMark?
• Made up words (XEROX)• Common words (APPLE)• Alphanumeric combinations (V-8)• Logos • Packages or labels (think Campbell's soup can)• Colors• Product shapes (Coca-Cola bottle)
What cannot be a Trademark?
• Generic or merely descriptive words or symbols• E.g.,
– Tissue for tissues– Computer for computers
For pies
Types of Trademarks
• 5 Categories (from strongest to least strong)– Fanciful
• XEROX, GOOGLE, EXXON– Arbitrary
• APPLE for computers• FORD, SEQUOIA, TUNDRA for automobiles• CAMEL FOR CIGARETTES
Types of TM’s Cont.– Suggestive
• MICROSOFT• COPPERTONE• LAND ROVER• TICKETMASTER• PURELY SOFT
– Somewhat Descriptive• TRAILER SUPPLY• STAPLES• TTABLOG
– Generic – car, computer, aspirin, etc.
Trademark Type v. Strength
Inherently Distinctive
Generic Descriptive Suggestive Arbitrary Fanciful
No Protection Strong Protection
Why is Strength Important?
• Strength of mark defines scope of protection– Inherently distinctive marks are given broader scope than other marks
• Example: – If someone tried to register APLE for consulting services, APPLE for computers would have a
strong case– If someone tried to register APLE for pies and the existing mark was APPLE for bakeries, may
have weak case
• Descriptive marks may not be registrable and may be more likely to have a crowded field:
• E.g., TRACTOR SUPPLY coexists with TEXAS TRAILER SUPPLY, etc.
Conflicts and Issues• Trademarks (in the U.S.) are established by using the mark in
commerce– It is possible to register your mark before using it
• Issues arise when:– You want to register a mark that is similar to an already registered mark
or a mark that is already in use for similar goods/services– You begin using a mark that is already in use or has been registered
• Using a mark that is already registered or in use can cost a lot of $$$ to fix…
Allagash v. Pelletier
• What’s the situation?– ALLAGASH WILD proposed for registration– ALLAGASH (the beer company) opposed based upon their registration
• Rule– “[a]lthough confusion, mistake or deception about source or origin is
the usual issue posed under Section 2(d), any confusion made likely by a junior user’s mark is cause for refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or connection.”
Allagash v. Pelletier
• Analysis – Similarity of Marks– Mark evaluated in entireties – Focus is primarily on ALLAGASH despite existence of WILD in
Applicant’s mark.• Wild is descriptive, not sufficient to distinguish marks on its own
– Chose marks with a distinctive feature if a part of mark is similar
• Marks are found similar in appearance, sound, meaning, and overall commercial impression– Note that this is done in a vacuum
Allagash v. Pelletier
• Analysis – Strength– No other users in food field
• Allagash (beer) has developed significant following– Same channels
• Doctrine of Natural Expansion• Are the goods related?
– Other registrations for beer, jam, and jellies– Beer and food go together– No limitations in Applicant’s application as to channels of trade – therefore all usual trade
channels presumed– Applicant admission: “I assume I first saw Allagash Beer in a Fort Kent, Maine grocery store since
the name would most likely catch my attention.”
Likelihood of Confusion
• Many factors:– Strength of mark– Proximity of goods– Similarity of the mark
• Sight, sound, meaning– Evidence of actual confusion– Channels of trade– Degree of care of purchaser– D’s intent in selecting mark
Options
• If using similar mark to another, be sure to include a distinctive feature along with it – May not be enough, but you’ll have an argument
• Two Primary Rules– More similar the mark, less similar the goods and services need to be– More similar the goods and/or services, less similar the mark needs
to be
Selecting a Mark
• Research before committing!– USPTO and web– Compare similarity of mark and similarity of goods/services offered
• Remember that the more unique your mark is (e.g., coined) the more different the goods and services need to be if you find the same mark
– Example: You wouldn’t be able to use XEROX for anything computer related or paper related, but XEROX diapers? Maybe.
• Ideally – coin your own• Still good – arbitrary• Suggestive marks are going to give you headaches…
Developing a Brand
• Consistent (read as exact) use – do not stray!– Vermont Trading Company and Vermont Trading Co. and VT Trading
Company are NOT the same marks.• Have usage guidelines (next slide)• Do not let unlicensed uses of your mark fester• Protect your mark
– Registration– Regular review of use
Trademark Use Guidelines
• Trademarks are adjectives, not NOUNS.– BISSELL® vacuum cleaner– Trademark’s should not be used possessively
• Trademarks have to be used EXACTLY AS REGISTERED– No plurals– No changing “and” with “&”
• Trademarks should be distinguished:– Capital letters, italics, bold type, different font size, etc.
Proper Attribution
• Symbol ® should only be used in connection with a registered mark– Can result in claims of unfair competition– Mexico -> criminal charges possible
• TM and SM symbols:– Unregistered marks
• Descriptive term in a stylized form– Strategy – don’t use so that “fair use” can be claimed (in other words,
the mark is either not be used in a trademark sense or is descriptive)
Registration and Use
• Application filed– Wait 3 to 7 months
• Examiner evaluates– Issues office action (or not)– Common issues:
• Likelihood of confusion• Descriptiveness• Disclaimer• Revisions to goods and services
Registration and Use (cont.)
• Mark is published– 3rd Parties may opposed if they believe they will be harmed by
allowance• No opposition or (unsuccessful opposition)
– Mark proceeds to registration• After registration, rights are not completely secure –
cancellation proceedings are possible• Continued maintenance required
Thanks!
• Karen Tyler, [email protected]• Justin McCabe, [email protected]
Find out more about Dunkiel Saunders and trademark/ip law at:www.dunkielsaunders.comwww.greenmountainip.com
Or follow Justin: @justinip
