THIS IS THE FOURTH IN A FIVE PART SERIES ON INTELLECTUAL PROPERTY.
“Should I get a trademark? What is a trademark?”
The U.S. Patent and Trademark Office says that:
“TRADEMARKS protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods.”
Examples of trademarks are the Nike “swoosh,” the logo for Starbucks, McDonalds’ golden arches, or Apple’s apple (with a bite taken out). Trademarks can also include the roar of the MGM lions, the scent of perfumes, the pink color of insulation and the Burberry plaid. These are “corporate symbols.” They are there to represent:
TRADE DRESS, a concept similar to trademark, protects the visual appearance of a product or packaging that shows a consumer the source of the goods or services. Examples of trade dress include the appearance and decorations in a Mexican restaurant, the design of magazine covers and the shape of children’s clothing.
Trademarks are critical to business success as these marks are used to identify a company’s goods or services and distinguish them from the products and services of others. A trademark is often the best vehicle for capturing the value of goodwill in the marketplace.
When selecting a trademark, the more inherently distinctive the mark, the better. Marks are usually classified as generic, merely descriptive, suggestive, fanciful or arbitrary. Marks that are generic are never protectable and those that are merely descriptive (marks that describe the product or service) are protectable only when they take on a secondary meaning after extensive use. The best marks tend to be arbitrary (like Apple for technology) or fanciful (made-up terms like Google).
The selection of a trademark and branding, particularly clearing the mark before launching, can help avoid infringing on preexisting marks. To assess potential infringement, courts will look to the likelihood of confusion factors: the strength of the mark, the similarity of the marks, the similarity of the products or services, the likelihood that the original user will expand their services, the intent of the new user in choosing the mark, actual confusion, sophistication of the buyers, and the quality of the new user’s goods or services. As an example, Louis Vuitton was successful in asserting trademark infringement for the use of its logo in a car commercial but was unsuccessful in fighting Warner Brothers for the use of its handbags in the movie The Hangover Part II.
A side issue that often faces new businesses in the digital realm is that of domain names and trademarks. Under certain circumstances, a trademark owner can force a domain name registrant to relinquish ownership of the domain name. As a strategy, many companies preempt this problem by registering the domain names of all possible combinations of their trademark and verifying that their chosen domain name is available before selecting their trademark.
Trade secrets will be explored in the fifth part in this series of blog postings.
ABOUT THE AUTHORS:
STEVE CZERNIAK – Mr. Czerniak retired after a successful career that culminated in fifteen years of experience as an internal consultant and “change agent.” He is currently an Expert-in-Residence at the Macomb-Oakland University Incubator and a volunteer with the Troy Historic Village and Historical Society.
JENNIFER A. DUKARSKI for BUTZEL LONG – Founded in 1854, Butzel Long is one of the oldest firms in the Midwest United States and has offices in Michigan, New York, Washington, D.C., and alliance offices in Mexico and China. Since our inception, we have played a prominent role in the development and growth of many industries in Michigan. Our firm has over 3,000 geographically diverse clients that are active in national and international markets. These clients come from many sectors, including advertising, automotive, banking and financial services, construction, energy, healthy care, insurance, manufacturing, media, pharmaceuticals, professional services, publishing, real estate, retail and wholesale distribution, technology, transportation, and utilities.
REFERENCES: 1) http://www.uspto.gov/learning-and-resources/glossary#sec-i; 2) https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=10&ved=0ahUKEwimwcejx5HOAhWnx4MKHT-EAooQFgiKATAJ&url=https%3A%2F%2Fwww.entrepreneur.com%2Fencyclopedia%2Ftrademark&usg=AFQjCNGjcwX6b_Qq0lb-bGjLXxvHhsitEw&bvm=bv.127984354,d.amc