• Intellectual Property: What is it and Why Do I Care? Part I: Trademark Myths and Mysteries
  • August 13, 2009 | Author: Heather Bond Vargas
  • Law Firm: Cobb Cole - Daytona Beach Office
  • What is a Trademark Anyway?

     
                A trademark is simply a word or design that a person or company uses to identify the source of a product or service. There are many world famous trademarks, such as Coca-Cola, 3M, and Blackberry. Some trademarks are not words, but symbols, such as the unpronounceable symbol that was briefly used to signify the artist formerly known as Prince, or the five rings that signify the Olympics. Even certain shades of a color or a few notes of music may qualify as a trademark. Pink is a trademark of Olsen for insulation. Orange is a trademark of Tide for detergent. And the three note chime that seems to precede every show on NBC is a trademark of NBC for television programming.
     
    Myth 1: You have to have a Registration to have a Trademark.
     
                Ownership of a trademark vests in the first person to use the mark in commerce. While those of us who practice trademark law like to fight around the fringes of what "use in commerce" means, it essentially just means that you are selling a product or service using the mark. For example, if you have a client that sells globes under the name "Fred's Fancy Flat Planets," then Fred is entitled to prevent others from selling the same or a similar product under the same or a similar mark within the same geographic market. Fred does not have to register his trademark to be able to sue someone else for trademark infringement.
     
                However, there are a number of advantages to obtaining a registration. First, the owner of a federal registration is treated as though it is using the trademark everywhere in the country. As such, no one anywhere can use the same mark without the owner's permission. If the owner relies solely on common law rights, someone can set up a competing business just outside the market area and prevent the owner from expanding.
     
               Registration also gives notice of ownership to anyone searching a trademark (more on this later). Federal registration also provides a number of very useful presumptions in the event that the owner gets involved in infringement litigation.
     
    Myth 2: Registration of a Corporate Name with the Secretary of State Means that a Business Name is not Infringing
     
                This is the myth that I see tripping up so many folks, even attorneys. When you register a corporate or company name with the Florida Secretary of State, the staff checks to see if there is an identically named entity registered. If not, you get the registration. So, you could register Volusia County Pepsi-Cola Company as an entity in the state of Florida even if you have no association with Pepsi, as long as there is not another entity by this name.
     
                In order to determine if a proposed trademark is going to infringe another company's trademark, a comprehensive search is required. A comprehensive search is a document ordered from a search company. The search company reviews the federal Patent and Trademark Office database, state trademark registration databases, domain name registrations, business name databases, trade journals, newspapers, etc. and issues a report. These are not for the faint of heart. The average search report is between 200 and 600 pages long and the average opinion letter is between eight and ten pages.  
     
    Mystery 1: What kind of opinion takes 10 pages to give?
     
                The essence of trademark law is likelihood of confusion. In order to assess whether a later use of a mark is infringing a former user, the trademark lawyer has to assess whether the average consumer is likely to be confused into believing that the two products or services bearing the competing marks are somehow related. As you might imagine, with an amorphous test like that, there is a multi-factor test that is different in every jurisdiction. The essential factors have to do with the similarity of the marks, the similarity of the products and services, the trade channels, and the methods of sales and advertising. Of course, there is something akin to a silver bullet in infringement analysis. If people are actually confused, the courts find that to be pretty good evidence that there is a likelihood of confusion.
     
    Mystery 2: What do All of those Little Symbols Mean?
     
                This is one of the questions that I get most often when I do speaking engagements about trademark law. Here's the key:
     
    ® - This means that a trademark is registered with the United States Patent and Trademark Office.
     
    ™ - This means that the person selling the product claims common law (unregistered) rights in the trademark.
     
    SM - This means that the person selling the service claims common law (unregistered) rights in the trademark.
     
    © - This has to do with copyright law which will be the subject of next months Myths and Mysteries article.