• Public Relations, Branding and Design Firms Must Make Trademarks a Priority
  • May 13, 2003 | Author: Zachary A. Wright
  • Law Firm: Short Cressman & Burgess PLLC - Seattle Office
  • You have created a brilliant new advertising campaign for your client's new product. It features a simple yet intriguing logo for the product, along with vivid designs, an eye-catching theme, and a catchy tagline. You have surveyed the local competition, and there's nothing like it. Your client loves it, and immediately agreed to spend $3 million creating printed marketing materials, a web site, store signs, and a print media advertising campaign. The web site is up. A big launch party is planned for Thursday, the local media have been invited, and the media campaign starts on Friday.

    Out of the blue, your client calls. He has received a nasty letter alleging trademark and trade dress infringement from a large New York law firm and is having a fit. The letter states that your great new tagline, logo and design theme are confusingly similar to those of a company which your client anxiously tells you is his largest East Coast competitor. The law firm's letter demands that he immediately cease all use of the tagline, logo, and theme that you created. It also demands that your client cancel all advertising using these materials, or face a court injunction, damages and attorneys' fees.

    The letter encloses copies of the competitor's marketing materials. "Wow," you think, "they are remarkably similar." Your client is close to a meltdown and barks some questions at you. "Confusingly similar??!" How can that be? You've created the entire campaign from scratch and reviewed the local competition. You even had your staff do some web surfing to look for comparable material.

    Unfortunately for you, there are more than one million registered trademarks in the United States and millions more unregistered marks and trade dress items, so it is quite possible that some or all of your clever ideas for a new marketing campaign are already being used by others. The law imposes a duty on those adopting new trademarks or trade dress to avoid being "confusingly similar" to existing trademarks or trade dress in the U.S.

    So what is a trademark? What on earth is trade "dress"? How similar is "confusingly similar"?

    A trademark is a word, phrase, design or attribute, or combination thereof, which identifies and distinguishes the source of a company's goods or services. Coca-Cola® and the Nike® swoosh are well-known examples of famous trademarks. In some cases, smells, colors and sounds can also be trademarks. Trade dress is a broad category which encompasses distinctive packaging, product designs which are associated with a product, and other product "dressing" which is not functional.

    Trademarks and trade dress do not have to be identical or used on exactly the same goods or services to be "confusingly similar." Choosing a trademark which is too similar to an existing mark can result in costly trademark infringement litigation and liability for damages, profits and attorneys' fees. In determining whether two trademarks are "confusingly similar," courts and the Trademark Office consider factors such as similarity in sight, sound and meaning, similarity of the goods or services with which the trademarks are used, where and how the goods or services are sold, and the level of sophistication of purchasers of the goods or services.

    It is much cheaper and easier to discover a conflicting trademark before putting your new trademark into use. The best way to discover conflicting marks is to obtain a comprehensive trademark search of registered and unregistered trademarks and have it analyzed by a competent attorney. A comprehensive search helps locate both registered and unregistered trademarks which may conflict with your new proposed trademark.

    Once a search has been performed and the mark is believed to be reasonably free of conflicts, the next step is to apply for a trademark registration. Federal registrations provide the best protection in the United States and are available for marks which are or will be used in interstate commerce. A federal trademark registration provides the nationwide right to use the trademark (subject to prior users) and prevents registration of confusingly similar trademarks, among other benefits. A federal trademark also provides the right to use ® with the trademark.

    Once the trademark is chosen and a registration application has been filed, it is important to undertake periodic investigations to see if the trademark is being infringed by others. A trademark is obviously of little value if it has been adopted by competitors and is used identically or in a confusingly similar form on similar goods or services. A systematic program of detecting trademark infringement includes a subscription to a "watching service," and regular searches of industry journals, competitors' marketing materials, and the Internet for infringing uses of the trademark.

    In short, trademarks can be the most valuable and most personal assets of a business. Public relations, branding and design firms serve an important role in helping their clients create these valuable assets and must also remind clients to make sure they properly screen and protect these assets. Failure to do so can result in awkward and expensive legal problems, as well as the inconvenience, embarrassment and loss of goodwill caused by a sudden switch of trademarks or marketing campaigns. If properly chosen and protected, trademarks can be a key asset rather than a liability to your clients and will provide a vital role in determining their identity and success.