Dept. of Legal Affairs: Intellectual Property, Part 2: Trademark

In this two-part article, we examine the two types of intellectual property that relate to language, copyright and trademark. There are two other types of intellectual property, patent and trade secrets, that apply to physical inventions and commercial business information.

The point of intellectual property laws is to encourage the advancement of the art, science, and commerce by giving the creators of original works, ideas, and products a limited period within which they can exercise exclusive control over their works and derive profit from them.

In this second of two parts, we examine the concept of trademark and its effect on the language. We often hear of companies trademarking words and phrases, claiming them for their own. But can they do this, either realistically or legally? Can Fox News prevent someone (Al Franken, for instance) from using the phrase fair and balanced? Can Microsoft limit your use of the word windows? If you are named McDonald, can the McDonalds Corporation limit your ability to use your own name in your business? And how do trademark rights differ from copyright? There are many myths and misunderstandings regarding the concept of trademark; we hope to clear some of these up with this article.

The term trademark only dates to 1838, but the concept is far older. Traditionally, a craftsman would mark his products with a distinctive sign, so that customers could recognize his handiwork. This principle is the basic one behind the modern concept of trademarks, distinctive signs that identify a particular product or service.

Most commonly, trademarks are brand names or logos, but many other things can fall under the definition of trademark. Trademarks can include words, phrases, graphic symbols, shapes, sounds, letters, numbers, titles, fictional characters (e.g., the Maytag repairman) unique packaging (e.g., the Coca-Cola bottle), décor, and clothing. These last are often called trade dress.

Another term one often hears is service mark. A service mark is identical to trademark in all respects, except that it denotes a service provided instead of a product. Throughout this article the term trademark is assumed to include service marks and the term product to include services.

A key concept in trademark law is distinctiveness. The point of trademark law is to distinguish the products of one company from another. A trademark must be unique enough so that it can reasonably used as an identifier for the specific product.

What can be protected under trademark law?
To be protected, a trademark must be distinctive. Inherently distinctive trademarks include:

  • Unique logos or symbols
  • Words coined as product names (e.g., Kodak)
  • Fanciful or arbitrary marks that are imaginative or surprising in context (e.g., Guess? jeans or Penguin Books)
  • Suggestive or evocative marks that cleverly connote some aspect of the product (e.g., Roach Motel insect traps or Presto Valet dry cleaning)

Many product or business names, however, are not inherently distinctive. These include products named after:

  • People (e.g., Joe’s Diner)
  • Places or geographical references (e.g., Northern Plumbing Supply); but geographic names arbitrarily chosen to evoke images of a region can be distinctive, e.g., Arizona Iced Tea
  • Ordinary descriptive terms (e.g., fair and balanced)
  • Generic names for classes of products (e.g., Raisin Bran)

Generic names cannot fulfill the basic function of a trademark—that of distinguishing one’s product from those of one’s competitors. Makers of raisin bran cereal, for example, distinguish their product by adding their company name (e.g., Post Raisin Bran, Kellog’s Raisin Bran). Microsoft is currently in litigation trying to protect its Windows trademark from a Linux software manufacturer who claims that the word windows was in use to describe a layered user interface long before Microsoft produced their operating system and therefore others are free to use that term.

Non-distinctive names are less likely to be protected. If you own Speedy Delivery Service, there is probably little you can do to prevent a competitor from using the word speedy in their advertisements. Names that start out as non-distinctive may, however, attain distinction through public recognition or long use. A good example is Ben and Jerry’s ice cream.

Some types of trademarks are flatly prohibited or reserved. These include trademarks that:

  • Are immoral, deceptive, or scandalous
  • Disparage or falsely connect another person or institution with the product
  • Comprise the flag, seal, or other insignia of the United States, the several states and municipalities, foreign nations, or simulate these things
  • Use the name, likeness, or signature of a living person (or a deceased US president during the life of the widow) unless written consent is obtained
  • Are likely to be confused with previously registered trademarks.

There are several situations where a trademark cannot be protected or loses its protected status. The most common ones are:

  • Abandonment. When a product is discontinued and the trademark is not shifted to another product by the same manufacturer the trademark is no longer enforceable. In the United States, after three years of non-use a trademark is presumed to be abandoned. After that date, the original owner must prove that they had an intention to resume use of the mark in order to maintain protection.
  • Genericide. The process of a trademark becoming the common name for an entire class of products is known as genericide. Once a trademark becomes a generic it is no longer protected. Cellophane, escalator, and thermos were all once trademarks but have lost their protection through genericide.
  • Likelihood of Confusion. A trademark will not be registered or will lose its protection if it is deemed to be likely to cause confusion with other, existing trademarks.
  • Weak Marks. These are simple descriptive terms, geographical descriptors, and surnames.
  • Functional Features. This applies to product shapes or packaging. Trademark protection does not apply to functional aspects of the product. To the extent that the shape or packaging of a product is derived from its function, it cannot be protected. The shape of an automobile, for example, that is determined by efficiencies of aerodynamic flow cannot be trademarked. But features that are not determined by engineering principles, such as the distinctive grill of a BMW, can be trademarked.

When does trademark protection start and how long does it last?
Protection starts when the product bearing the mark hits the market. In the United States companies can file intent-to-use applications with the Patent and Trademark Office, in which case protection starts when the application is filed. If a company files an intent to use application, it generally has up to three years to market a product bearing the trademark.

Since trademark protection in the United States is federal, the commercial use the product is put to must be such that Congress can regulate it (i.e., it is or affects interstate or international commerce). Most businesses fall within this boundary (e.g., a restaurant that has serves patrons from out of state or a bicycle messenger service that delivers items originating from out of state), but occasionally there may be a product or service that is truly local, in which case its trademarks would not qualify for federal protection.

Unlike copyright, some US states have their own trademark laws. These, of course, vary from jurisdiction to jurisdiction.

Unlike patents and copyrights, trademarks are of potentially unlimited duration. The protection is perpetual, unless lost through abandonment or genericide. Registration, however, is of limited duration. Once registered, a trademark remains on the official register for ten years (20 years if registered before November 1989). Registrations can be renewed an indefinite number of times.

Who owns a trademark?
In the United States, the first to use a trademark is the owner. In most other countries, however, the first one to register the trademark is the owner.

What are the symbols that denote trademark status?
There are three major symbols used to denote the fact that a name or logo is trademarked. The first two are the TM and SM symbols, for trademark and service mark, respectively. These are used for unregistered trademarks. Anyone can slap a TM on their product name. The use of these symbols is not required for trademark protection, but their use can increase the amount of damages awarded if a violation is found to have occurred since the offender has less credibility in claiming they were unaware of the trademark.

The ® symbol, however, is different. This can only be used on trademarks that have been registered with the US Patent and Trademark Office. Failure to use the ® symbol on registered trademarks can result in a decrease of the protection afforded them.

Is there “fair use” for trademarks?
Yes. But first one must understand that trademark protection only extends to commercial contexts involving similar products. Outside of the product’s commercial context, one is free to use the trademarked words and phrases. Apple Computer has trademarked the term Apple, for example, but that does not keep the rest of us from using that word to refer to the fruit or in phrases like the apple of my eye. But if we were to sell computer products under that name, a lawsuit would quickly follow and no doubt be successful.

Even in the commercial context, though, there are situations where it is permissible to use a word or phrase that has been trademarked by another, even by a competitor. These include:

  • Descriptive uses. If the trademarked term is descriptive, others can use it. For example, a candy maker can use the word crunch in their advertising without incurring a lawsuit because of the competing Nestlé Crunch bar.
  • Comparative advertising. A company is allowed to name competing products in its advertising for comparative purposes.
  • Journalism and commentary. Media stories are free to use the trademarks to refer to the products in articles and accounts.
  • Parodies. One can make a joke about Microslack Windoze for example without fear.

The common theme in all these instances of fair use is that there is little chance of a customer confusing these uses with the company’s own products or advertising. Deceptive use of another’s trademarks is generally forbidden.

Fair use does not, however, extend to unlimited use of your own surname. One does not have an unalienable right to open a business under one’s own name. Someone with the name McDonald, for example, does not have the right to open a restaurant with that name because of potential confusion with the fast food chain.

Are there international trademark rights?
No. Unlike copyright, there is no body of international law that governs trademark. The laws can vary widely from country to country and registration in one country has no bearing on use in another. Occasionally, two nations will have signed a treaty that extends trademark rights in one nation to the territory of the other, but usually a company has to establish separate trademark rights in each of the countries where its products are marketed.

There is the World Intellectual Property Organization (WIPO) which centrally registers trademarks from its member states. But registration with WIPO is a courtesy and member states are not obligated to extend protection for WIPO registrations. All European Union countries are members of WIPO; the United States is not.

US trademark law does, however, recognize foreign trademarks that have achieved widespread international fame (e.g., Wimbledon).

So, does trademark law limit one’s ability to express oneself or to use specific words and phrases? Outside of advertising and other commercial communications, not to any significant degree. Trademark does not give ownership of words and phrases to particular individuals. Instead, it permits vendors to differentiate their products from those of their competitors in the marketplace and nothing more.

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