Trademark law basically prevents a business from using a name, or a logo, or a service, that is likely to be confused with one that a competing business already uses. Trademark law is really just a catchall term referring to a large body of statutes, regulations, and court decisions.
Why Do We Need Trademark Laws?
Trademark law allows businesses to have exclusive use of names that help their customers identify, and recognize, goods and services in the marketplace. For example, when you buy Starbucks coffee, you know that will be similar to the Starbucks coffee you bought last time. By contrast if any coffee shop was allowed to call itself Starbucks coffee, customers would never know what they were getting. Starbucks wouldn’t be able to build customer trust or goodwill. So, consumers, and businesses, benefit from trademark protection.
What’s a Trademark?
Trademarks are any word, phrase, logo, or other device, used to identify products or services in the marketplace. You can include names of products, or services and even the names of the businesses that are selling the products or services. Using the name in public commerce is enough to make a trademark. There’s no registration requirement. However, registration with the U.S. Patent and Trademark Office greatly strengthens your ability to enforce your rights to your trademark.
A trademark law fundamental is that trademarks must be used in public. So, if you have this great product name, that you only refer to in internal memos, then it’s not available to the public. And it’s not trademarked.
What Rights Do I Have To Trademarks?
Trademarks allow you to exclude others from using the same mark. If you were the first to use a trademark, you own certain rights to it and can take legal action against others that use it illegally. In trademark law legal terminology, others “infringe on your trademark” by acting in a way that’s likely to confuse your customers. If others act in a way that has “diluted” your trademark, you can take them to court and stop them from using it.
It would be great if trademark law and trademarks were simple. But they’re not. Just because you own a trademark doesn’t mean you can always prevent someone else from using it. Likewise, another owner of a trademark can’t always prevent you from using that trademark.
Here is a FUN TRADEMARK law infringement story. — Patrick Wensink commissioned a cover for his book: “Broken Piano For President”. He received a “cease-and-desist letter” from Tennessee whiskey maker Jack Daniels! Is anyone surprised?
Comparing the book cover with a bottle of Jack Daniels, it’s not difficult to understand why Jack Daniel’s parent company was concerned! They had every right to start a hellacious lawsuit.
Instead, Mr. Wensink received the friendliest, nicest “cease-and-desist letter” any trademark law attorney might ever see!
The lawyers at Jack Daniel’s Properties (the holder of the trademark) had every right to be concerned with the book cover design. While the fonts are not identical, the border and overall “look and feel” looks IDENTICAL to the classic Jack Daniels black label of their renowned Tennessee whiskey.
You might think that Patrick Wensink was in BIG trouble and was facing a horrendous lawsuit.
You’d be wrong!
Instead, Mr. Wensink received the friendliest, nicest “cease-and-desist letter” any trademark attorney might ever write. The compassionate people at Jack Daniel’s Properties not only took the time to politely explain the trademark infringement issue to Patrick, the magnanimous company offered to pay for Mr. Wensink’s cost of designing a new cover.
But Jack Daniel’s Properties went further. They did not insist Wensink pull all his books down that were already published, but instead, simply requested him to change the cover on the next printing.
The kind, soft-glove gesture of a mammoth corporation even resulted in increased sales for Wensink’s book, following all the warm and fuzzy publicity surrounding this rare instance of lawyer empathy.
On Wensink’s BLOG, Patrick states the publisher (Powell’s) is already sold out of the paperback, though at the time Amazon still had some copies in available. THe author stated” “that baby’s going to be a collector’s item.”
This trademark law infringement case was a small and fun win for the trademark violator and a HUGE PR WIN for Jack Daniels. Jack Daniels demosstrated a recipe for building a better brand and brand loyalty to a customer base that expected nothing short from the well-run company.
What Makes a Strong Trademark?
“Distinctive” business names like Google or Coca-Cola, receive the strongest legal trademark protection. A truly distinctive trademark is one that clearly distinguishes the product or service that it represents from others. Memorable, and unusual names like Xerox or Google or Kleenex are good examples of distinctive trademarks. Distinctive name such as Pepsi or Xerox make strong connections in the minds of consumers and play a big role in buying choices. So, the more distinctive a name, the more likely it is that the customers will be confused by more than one business using the name. On the flipside, weak trademarks consist of ordinarily descriptive words that merely describe aspects of the product like McCarthy Law. But, weak trademarks can get stronger with use.
How Do I Make My Trademarks Stronger?
Weak trademarks can get more legal protection if they become distinctive and therefore stronger through the years. It’s called “acquiring a secondary meaning”. This is likely to occur when a product or service with the weak mark becomes a lasting success. For example, Ralph Lauren, Ben & Jerry’s and McDonald’s were all just names until they became popular, worldwide brand names.
Can I Protect My Weak Trademarks?
Just because you have a weak trademark doesn’t mean that others can use it. Unfair competition laws may allow you to prevent others from using your descriptive name as long as you use it first. It’s different than trademark law. But, the idea is the same. It’s not fair for someone else to tread on your business is good reputation. For example, you have been selling marketing services in San Diego under the name, “Awesome Internet Marketing” and someone else in San Diego opens “Awe Some Internet Marketing”, you could claim unfair competition.
When Do Trademarks Conflict?
You can probably think of several companies that have similar names. United Airlines and United Healthcare share the same name. The St. Louis Cardinals and the St. Louis Cardinals shared the same name before The St. Louis Cardinals became the Arizona Cardinals. How can that happen? It’s perfectly legal, because in trademark law, trademark infringement happens only when the use of the mark by two different businesses is likely to cause customer confusion.
Multiple uses of the same, or similar, mark can cause customer confusion if it’s unclear which company actually makes a product or service or, if customers will be misled as to the source of the product. No one is confusing the St. Louis Cardinals, that play baseball, with the Arizona Cardinals that play football. But what if customer confusion is likely? Courts generally look at how strong the original trademark is, how much the products or services really compete against one another, and how similar the trademarks are in appearance, sound, or meaning.
Distinctive, or strong, marks receive the most protection because they’re likely to stick in customers’ minds and play a role in buying choices. To protect consumers from such confusion, courts typically prevent more than one company from using a strong trademark. In addition to protecting consumers, prohibiting multiple uses of a strong trademark prevents one business from stealing customers or riding on another business’ coattails. For example, Microsoft is firmly implanted in the minds of millions. If a company called itself Microsoft Consulting, people might think that Bill Gates had something to do with it. But, compare that to Smith Auto and Smith Electrical. If they exist in the same town, people may wonder if they were owned by the same family. But, trademark law won’t protect the name of either business since the name Smith is so common.
If the products or services that share the same trademarks are in totally unrelated fields or industries, or if they’re sold in different geographical regions, there’s much less chance customers will be confused. For example, a restaurant, specializing in grilled food, named Fireside Grill is unlikely to be confused with a record store specializing in old-timey records called Fireside Records…even if they’re in the same city. An auto repair shop in Dover, Delaware named Rapid Repair is unlikely to be confused with an auto repair shop in Chula Vista, California also named Rapid Repair.
Trademark Law in the Internet Age
But what about online marketing? With the prevalence of online marketing, the expansion of mail order catalogs, more frequent travel, and Internet sales, the old rule that the small, local businesses don’t have to worry about trademarks from other geographical regions has gone out the window. What if you want to open up Fireside Records in Escondido, but there is already an established company called Fireside Records, headquartered in Boston, Mass, that sells records everywhere in the United States? You might not be able to call your business Fireside Records. In fact, Fireside Records in Boston can probably sue you and make you change your name.
There are plenty of gray areas in which to businesses aren’t head-to-head competition, but they use the same marks for products that are similar enough to make a customer stop and think. For example, are Parker pens and Parker calendars made by the some company?
Obviously, multiple uses of identical trademarks can cause customer confusion. But what if the trademarks are just similar? If two marks look alike, sound alike, or have the same meaning, courts can decide that they conflict with each other just as if they were identical. Differences in spelling like Google vs. Gewgal aren’t enough to avoid trademark problems for Gewgal.
What is Dilution of a Trademark?
“Dilution” is the big exception to the rule that one trademark infringes on another only where there’s a likelihood of customer confusion. Even when customer confusion is unlikely, courts will prevent one business from using a trademark that’s the same or similar to someone else’s if it diminishes or has “diluted” it’s distinctiveness. For example, a court will probably stop you from calling your pet shop “Twitter”. Customers aren’t likely to confuse a social media platform with a pet shop. But, it still is illegal because allowing others to use the very famous trademark can chip away at its distinctiveness.
How do I Avoid or Deal With Trademark Disputes?
As you can see, trademark law disputes are thorny. To avoid potential trademark hassles later on, you need to do some early examination. The main way to accomplish this is to do a thorough name search. You can check, the Internet, phone directories, industry sources, federal trademark databases, California Secretary of State databases, California’s Trademark Unit, and county fictitious business name databases. Of course, even if you check all these things, you will still need to analyze them. Assuming there are no conflicts, you should register your trademarks with the State and Federal agencies.