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By Attorney Lloyd J. Jassin
Article Menu What's the Purpose of Trademark Law? What's the Purpose of Trademark Law? The U.S. Supreme Court said it best. The basic objectives of trademark law are as follows:
In short, trademark law is about informed purchasing decisions and commercial morality. Copyrights vs. Trademarks: Related but Different Copyrights and trademarks, which are sometimes confused, provide different forms of protection. Copyright law protects the way authors and artists express facts and ideas (but not the underlying facts and ideas). Unlike copyright law, trademark law protects names, titles, short phrases and other symbols that distinguish the source of one product (or service) from another. Trademarks -- which are a form of commercial shorthand -- are important in a marketing sense because they establish goodwill between a purchaser and seller. A service mark relates to services in the same way a trademark relates to products. Just about anything that identifies and distinguishes products and services in the marketplace can function as a trademark. A trademark can be a word, symbol, distinctive phrase, design, product shape, combination of letters or numbers, or even a sound or a smell that identifies and distinguishes particular goods from those of others. Unlike copyrights that exist from the moment of creation, trademarks generally
develop over a period of time -- gathering strength through public recognition.
While copyrights grow old, die and fall into the public domain, trademark
rights can continue indefinitely if there is continuous use, and the mark
(shorthand for trademark) is not permitted to lose its trademark significant
by becoming a generic term. Even the tests for copyright and trademark
infringement differ.
Take the Trademark Infringement Test Copyright infringement requires "substantial similarity" of protected elements, whereas the test for traditional trademark infringement is "confusing similarity." That is, the test for trademark infringement asks whether the ordinary buyer -- not looking for subtle differences or fine details -- would believe both products (or services) came from the same source. The key to trademark infringement is "likelihood of confusion," i.e., whether two marks are sufficiently alike to cause consumer confusion as to their source or origin. Courts consider the following factors in determining likelihood of confusion: 1. Similarity of the conflicting marks; Caution! The test for trademark infringement is somewhat pliant. Some factors are given more weight than others, and the relative importance of each individual factor will vary on a case-by-case basis. Moreover, these factors are not the only ones a court may consider.
Trademarks protect consumers from being misled. They ensure free competition by protecting the goodwill of the entity that owns the mark. Unlike copyrights that deal with the marketplace of expressive ideas, trademarks deal with the marketplace of goods and services. A trademark represents the goodwill of a business or a particular manufacturer
or producer. Trademark symbols provide powerful source-identifying cues
that allow us to make value judgments about the quality of certain goods
before we sample them. For example, when we see (and hear) Leo the Lion
and the phrase "Ars Gratia Artis" at the beginning of a motion
picture, we immediately associate this trademark with "MGM Studios,"
home of Garbo, Crawford, Gable Tracy and Hepburn, Mickey Rooney and Judy
Garland. Similarly, when you see the distinctive shape of a bottle of
"Coca-Cola" you know, without having to read the label, what
is in inside.
How Are Trademark Rights Earned? Trademarks are earned not born. They come into being through actual use. Trademarks are an alliance of law and marketing. If there are no prior rights attached to a name, phrase, design or logo, you may be able to asset trademark rights in that particular. That is, the first person to use a word, or symbol in connection with the sale of goods or services may across state lines. Trademarks are protected under both federal and state law. You do not have to register a trademark to have it protected, although there are advantages to doing so (e.g., exclusive nationwide ownership of a mark). By using a "mark" on or in connection with goods, or displaying it in connection with services offered, you can acquire trademark rights.
What Authors, Artists and other Creators Need to Know About Trademarks. How does trademark law affect authors, artists and other creators? Fortunately, the First Amendment provides fairly broad protections for creators and their business partners, provided, the unauthorized use of a trademark does not confuse people into thinking that the use as authorized by the trademark owner. The following are some brief examples of where the worlds of art and trademark law meet. a. Trade Dress. A product's distinctive image is known in trademark law as "trade dress." It can refer to a product' distinctive shape, color, graphics, sales technique, or any combination of these elements that the purchasing public associates with a particular source. The familiar cover design of "National Geographic Magazine," or the series look of "Frommer's Travel Guides," are examples of distinctive trade dress. Trade dress is protectible under the same general theory that protects trademarks. b. Titles. Titles, while not protected under copyright law, are sometimes protected under trademark and unfair competition laws. However, one-shot titles, no matter how clever they are, are not automatically entitled to trademark protection. To be protected, titles must achieve "secondary meaning." Secondary meaning is akin to the commercial magnetism of a title. As a rule, to be protected, titles must be "broadly known." Series titles, unlike one-shot titles, make good trademarks candidates. In addition, a title in one medium, will be protected in another. c. Literary Characters. To the extent a literary character becomes associated with a particular producer or source, it can be protected under trademark and unfair competition laws -- even if the character is no longer protected by copyright. For example, "Popeye," who made his first appearance in 1929 in a weekly cartoon strip called "The Thimble Theatre," will slip unconscious into the public domain on January 1, 2024. The fact the original "Popeye" character will fall into the public domain, does not preclude King Features from claiming trademark rights in the character, or protecting later strips or non-trivial changes to the original character. However, it is debatable whether they could stop you from copying the public domain strips if you carefully alerted purchasers that you were not doing it with the authority of King Features, and it was a faithful reproduction. d. Domain Names: Domain names, which are unique computer addresses assigned to each computer on the Internet, are widely used by publishing, entertainment and information companies. Unauthorized use of a "famous" mark as a domain name, even in connection with an unrelated product or service, may violate someone's trademark rights. One federal court stopped the use of the Internet address "candyland.com" which offered sexually explicit material, because it tarnished Hasbro's federally registered "Candy Land" trademark for children's games. Domain names, provided they are used in commerce to identify products or services, may be registered with the United States Patent and Trademark Office. In addition, recent legislation has made it easier to combat "cybersquatters" -- individuals who wrongfully register a domain name with the intention to resell the domain name to the rightful owner. e. Misuse of an Author's Names: Under federal and state unfair competition laws, an author can sue for false advertising, or false designation of source, if their contribution to a work is inaccurately described. Likewise, an author's rights may be violated if they are attributed, without their consent, as the author of a substantially altered version of their work. Of course, the changes must be broad enough to make the new work materially different from the original. If the work is distributed outside the United States, the author may also have a claim for violation of their "moral rights."
Not All Trademarks Are Created Equal Not all trademarks are created equal. The law of trademarks rates trademarks on a scale of one to four -- with four the highest rating. A high score means the trademark has greater commercial magnetism, or distinctiveness, and is entitled to a broader scope of protection than second, third and fourth runner ups. A distinctive trademark identifies a single source for particular goods or services. By denying protection to merely descriptive terms, trademark law ensures that competitors can use appropriate terms to describe their own goods or services. Arrayed in ascending order to reflect their eligibility for trademark protection and degree of protection afforded, the four categories of marks are: 1. generic; Generic terms, or common descriptions, receive no trademark protection and may be used with impunity. Giving generic terms trademark protection might unfairly monopolize common speech or set up a barrier to communication. A descriptive term that conveys some idea about the nature of the goods or services offered is given trademark protection only if the owner can prove secondary meaning due to the public association of the mark with the holder's product or service. As a rule, no matter how clever, the titles of books and entertainment properties require secondary meaning before they will be protected. Suggestive terms (e.g., Ivory Soap), which imply something without describing any one thing in particular -- receive trademark protection no matter if there is secondary meaning. At the top of the list are arbitrary or fanciful terms, which have no pre-existing association with the underlying product (e.g., CAMPY, 7-UP, XEROX, KODAK). As you move up on the trademark ladder, trademark owners receive additional trademark protection. For example, the mark McDonald, which has no association with fast food restaurants (other than that which they created through brilliant marketing), receives extremely broad protection. Indeed, they have prevented all sorts of "McFreeloaders" -- many of whom do not even compete in the food service industries. In addition, fanciful marks are presumed to be valid trademarks.
Trademark dilution refers to the whittling away of a famous trademark's distinctiveness through unauthorized use. Under federal trademark dilution law, the owner of a "famous" mark is entitled to stop another person's commercial use of its mark that dilutes, blurs or tarnishes its "distinctive quality." Unlike traditional trademark infringement, neither likelihood of confusion, nor competition between the parties' goods is required. What the federal trademark dilution statute does (15 U.S.C. 1125(c)) is make parody and satire, especially in advertisements and commercials, a high risk endeavor. For example, where there's a negative or unwholesome connotation about a "famous" mark, courts are likely to enjoin use.
Registration is not a prerequisite to either copyright or trademark protection. However, both the Copyright Act and Trademark Act provide several important incentives to register promptly. a. Copyright Registration. Under the Copyright Act, prompt registration may entitle the copyright owner to attorneys'' fees and enhanced damages if his or her copyright is infringed. If you are a U.S. citizen, or your work was first published in the United States, registration is a condition to bring suit. In addition, registration with the Copyright Offices serves a public record -- not unlike the Recorder of Deeds -- enabling permission seekers and licensees to locate you. b. Trademark Registration. Registration on the principal register of the United States Patent and Trademark Office offers a number of advantages, including: (I)exclusive nationwide ownership of the mark: (ii) the Trademark Office will refuse to register closely related marks used in connection with similar goods or services; (iii) it entitles you to use the familiar "R" in a circle; (iv) after five years of continuous use from the date of registration, your rights to the mark become "incontestable"; and (v) your registration serves as a public record putting later users on notice of your superior rights. Trademark Searching: Practical Tips for Choosing a Trademark The trademark search is the most important step in the process of selecting a new mark. Since trademark rights are granted on a first come basis, it is important to determine whether anyone else has prior rights in the same or similar mark. If you do not do a comprehensive search, you run the risk of infringing someone's mark. In addition to defending an unnecessary lawsuit, you may be required to change your mark, destroy your inventory, or pay significant licensing fees. A comprehensive trademark search includes a search of state and federal trademark applications and registrations, common law uses, including business directories, company names, and domain names. Ideally, a trademark search should be done by a professional search firm close to the time you plan to adopt the mark. However, you can rule out certain marks by conducting a "knock-out" or "screening" search. You can do this yourself using, for example, trade directories and the Internet. An assessment of whether a mark is confusingly similar is best done by a trademark attorney who can decode the results of your search. Bear in mind that "clearing" a corporate name with the secretary of state is not the same thing as determining its availability for commercial use. Moreover, relying on the records of the United States Patent and Trademark Office (www.uspto.gov/) alone is not enough, since trademarks arise out of use and may not be federally registered. Assuming the mark is available and there are no potentially conflicting marks, you can register it on the federal or state level, or use it without registration.
Trademark Grammar: Correct Usage of Trademarks Systematic misuse of a trademark can result in the term becoming generic. Words such as "aspirin," "cellophane," and "elevator" slipped into the public domain because of improper usage. Remember. Trademarks are adjectives not nouns. Adjectives limit, or make more definite the meaning of a word. Therefore, a trademark should be used with a generic, or common descriptive, term. Ask for a Xerox photocopy, not a Xerox. Xerox is a trademark for document copying, not a descriptive term for photocopying. When a character in a novel slips into his convertible and lowers the top, he should reach for his Ray-Ban brand sunglasses, not Ray-Bans. At least, make certain to use the trademark with a generic term at least once in your writing. Failure properly to use a trademark may result in a nasty letter from the trademark owner's attorney alleging trademark misuse. Since trademarks are used to distinguish products and services,
proper trademark grammar also requires that you set the trademark apart
from adjacent text. For example, use italics, initial caps, or quotation
marks to contrast a trademark with a merely descriptive term.
NOTICE: This article represents copyrighted material and may only be reproduced in whole for personal or classroom use. It may not be edited, altered, or otherwise modified, except with the express permission of the author. This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article. LLOYD J. JASSIN is a New York-based publishing and entertainment attorney in private practice. He is co-author of the bestselling Copyright Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors and Publishers (John Wiley & Sons, Inc.), available at bookstores or at www.copylaw.com. Mr. Jassin has written extensively on negotiating contracts in the publishing and entertainment industries, and lectures frequently on contract and copyright issues affecting creators. He is counsel to the Publishers Marketing Association and Vice Chair of the Small Press Center. He may reached at Jassin@copylaw.com or at (212) 354-4442. His offices are located at 1560 Broadway, Suite 400, New York, NY 10036. |
DISCLAIMER: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article. © 1998-2018 The Law Offices of Lloyd J. Jassin. All rights reserved. Copylaw is a trademark of The Law Offices of Lloyd J. Jassin Law Offices of Lloyd J. Jassin
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