With the
combined advent of the internet/dot-com boom and the prevailing trend of
individuals going into business for themselves, the focus and importance
surrounding intellectual property has been in the forefront of the minds of
entrepreneurs, artists, inventors and anyone wanting to protect the fruits of
their labors.
Because intellectual property and the laws therewith can
change as rapidly as our ever-increasing technological world, it is imperative
that when doing research on these topics to use accredited resources - contact
either the appropriate governmental agencies, attorneys or private companies
that specialize in these topics.
TRADEMARKS :
Trademarks are frequently thought of as those items that identify either a
product or a service. This can include names of services (e.g. McDonald's ®
for restaurant services) or products (e.g. Coca-Cola ® for soft drinks),
logos (e.g. Nike's ® swoosh design), slogans (e.g. American Express' ®
Don't Leave Home Without It ®), packaging, sounds and smells.
There are over 2,500,000 Trademarks, and over 16,000,000 commercial Common
Law trade names in use! An existing Federal Trademark, State Trademark or
commercial Common Law use can take precedence over your new business or product
name, IF there is a conflict or similarity in sound, appearance or meaning!
SIMILARITIES IN SOUND, APPEARANCE & MEANING: What
exactly is a similarity in Sound, Appearance or Meaning? This is the most
complex portion of any legal name research. In order to determine what may or
may not be a similarity, one has to be as open minded as possible to include
any & all variations that could possibly confuse the common consumer. Some
examples may help with this:
1) Joe has a pending Federal trademark
for his auto detailing service called It's in the Details. Becky wants to call
her new auto detailing service, It is the Details. They are both offering the
same service and their trade areas cross. This is a Strong Similarity, based on
Sound & Appearance, their crossing of trade areas & Joe's pending
Federal application.
2) Mary has a Federally registered trademark for
her clothing line, Scary Mary's Apparel. Dan wants to use the name Mary
Frightful Wear for his clothing line. This is a Strong Similarity, based on
Meaning & Mary's Federal registration.
3) Sam has a California
state registered trademark for his restaurant, Crabtastic Eats! and has no
plans to expand outside of the state and primarily serves locals. Hannah's
restaurant, Crabtastic, is located in Maine. She also has no plans to expand
outside of the state and primarily serves locals. This is NOT a Strong
Similarity based on their different trade areas.
4) Lorena's online
payroll service, Pay Up, has been in use for 15 years and has clients across
the country. Gene wants to start an online payroll service called Wage Wizard.
Neither of them have trademarks. This is NOT a Strong Similarity based on the
dissimilarity in the names.
No claim is made to the ownership,
knowledge or liability of the above personal and/or company names. The above
examples are merely for informational purposes and should only be seen as such.
Naturally, there will be exceptions to every situation. For instance,
similar trademarks (in name and goods/services) can coexist peacefully if both
parties are comfortable with one another's existence. This can happen if trade
areas do not cross (e.g. located on opposite coasts), if they appeal to
different consumers (e.g. one sells to private industry while the other sells
to the general public), etc.
FAMOUS TRADEMARKS:
Trademarks that are famous are afforded slightly different protection based
on the very nature of their recognizability. Simply, the argument for famous
marks is that since their brand name is recognized by a vast majority of
consumers, any marks similar to it, even in different industries, could be
construed as an infringement. The main justification for this is if "the owner
of a famous mark shall be entitled, subject to the principles of equity and
upon such terms as the court deems reasonable, to an injunction against another
person's commercial use in commerce of a mark or trade name, if such use begins
after the mark has become famous and causes dilution of the distinctive quality
of the mark."
Of course, like with all trademark issues, there are
gray areas. Each potential infringement is taken on a case by case basis. Not
all cases end up favoring large corporations either. Take the famous case of
Victor's Secret & Victoria's Secret (Moseley et. al. d/b/a Victor's Little
Secret v. V Secret Catalogue, Inc., et al.), in which the smaller company won
their case.
The best route to take if there is a possibility of an
infringement, famous mark or not, is to speak to a trademark attorney. She will
assist you in determining what the next best step is as well as offer
assistance with any preparation and filing of documents.
SUMMARY:
While trademark law can be intimidating to the uninitiated,
obtaining the help of a trademark attorney or an experienced private company
will make the entire process go much smoother. There are preliminary steps one
can do when starting a business and/or renaming a business:
* Choose a
name that is unique & distinctive - generic or descriptive names are not
generally allowed registration by the USPTO and are more difficult to enforce.
* Do as much free research as you can before hiring an attorney or a
private company. Check the internet, yellow pages, domain names & the
USPTO.
* Be aware that any research you do for free online is merely
preliminary and only comprehensive research will tell if the name is available.
* Once you receive the trademark, it is your responsibility to enforce
your trademark rights. To do this, either have research conducted every 2-3
years OR hire a monitoring service.
Link to Above Quote
ABOUT THE AUTHOR Shannon Moore is the General Manager, East Coast
for TradeMark Express. Since 1992, TradeMark Express has met the needs of their
clients with comprehensive research, application preparation, attorney
referrals and trademark consultation. For further details, please visit us on
the web at
TradeMark
Express 
