Trademark is Not a Verb

by | Feb 21, 2015 | Blog, Featured, Tax Planning

Guidelines From a Trademark Lawyer

Brad Frazer Trademark

Brad Frazer, Partner at Hawley Troxell
Guest Author

I bet I get one call or email per day from someone wishing to “trademark” something.  “Hey, Brad,” they will say, “I want to trademark my new logo. Can you help me with that?”

As has become my mantra, I explain to them that “trademark is not a verb. It is a noun.” Depending on my mood, I will sometimes then go on to discuss common-law trademarks versus trademark registration, and the “Circle R” symbol versus the small superscript “TM.” (By the way, “®” is used with trademarks that have been registered with the United States Patent and Trademark Office.  “TM” is for those that have not.) But not always. After explaining it several hundred times, my patience sometimes wears thin, especially if the call or email comes late on a Friday afternoon.

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The true nature of trademarks is, admittedly, confusing, especially when they are so often confused with copyrights and patents—two completely different forms of intellectual property protection. In a broad sense, “intellectual property,” as contrasted with real property (dirt) and personal property (cars and computers), has four main subgroups: patents, trademarks, copyrights and trade secrets. They are all different, and they all do different things.  Hammers and saws and cement mixers are all tools and they all help you build a house, but one would not use a cement mixer to drive a nail. In like sense, one does not use a patent to protect the name of a product or service, and one does not use copyright law to protect an invention. Patents protect inventions and processes. Copyrights protect books and movies and sculptures and photographs. Trademarks are that broad category of intellectual property that performs a commercial identification function—they tell you about the source of the good or service you are consuming.  You know that a Big Mac®-brand hamburger comes from McDonalds, that a shoe with a Swoosh on it comes from Nike, and that insurance being sold by a gecko comes from GEICO.

In the United States, trademark rights arise by USING something—a word, a logo, a sound, a color, a smell—to make consumers think of your company as the source of a product or services, as R ??????? ???? Trademark copyrightin the above examples. Once rights are created by using the mark in this fashion, many people pursue federal trademark registration. Federal registration can be a lengthy and sometimes difficult process accomplished by filing the necessary application materials and fees with the United State Patent and Trademark Office. Registration permits the owner to use the “®” registered trademark symbol with the mark. This symbol puts the world on notice that the mark is federally registered. Registration also gives the owner greater remedies and enforcement opportunities in the event of infringement. In fact, many online infringements are virtually impossible to address without a registered trademark.

Simply having obtained registration, however, does not absolve the owner of responsibility for preserving and defending her proprietary interest in the mark. A Idea Stealingmark is best used to identify the source of goods or services by using it as an adjective to describe a noun or noun phrase that follows. The goods or services are embodied in the noun phrase, e.g., Big Mac® Sandwich, TCBY® Frozen Yogurt, or Kleenex®-brand tissues. Repeated failure to use the mark as a form of identification for the goods or services associated with the mark may be seen as an acknowledgement that the mark has lost its inherently distinctive quality as a trademark and has become generic. Even a registered trademark is subject to cancellation if it is permitted to become generic by the mark’s owner. Cancellation is a proceeding in which another entity wishing to use the mark to describe its goods or services petitions a court to cancel the registered status of the mark and declare it to be generic.

Consider the situation in which a product is referred to so frequently by its brand name alone that even competitive brands are called by the same name. For example, aspirin, thermos, cellophane, and escalator were all once enforceable trademarks that have become generic words. “Thermos” was declared generic and its registration was cancelled due in part to the efforts of a competitor, Aladdin Industries. In the federal court case in which Thermos’ registration was cancelled, the court set out facts upon which it based its finding “thermos” had become generic:

[F]rom 1907 to 1923, [Thermos Company] undertook advertising and education campaigns that tended to make “thermos” a generic term descriptive of the product rather than of its origin. This consequence flowed from the corporation’s attempt to popularize “Thermos Bottle” as the name of that product without including any of the generic terms then used, such as “Thermos vacuum-insulated  bottle.” . . . [B]y 1923, the word “thermos” had acquired firm roots as a . . . generic word.

 Aladdin and all of Thermos’ competitors thus acquired the right to use the generic term “thermos” to describe their particular brands of vacuum-insulated bottles without having to pay license fees to the original owner—and registrant—of the mark.

An occasional reference to the mark by itself to describe the goods or services is not fatal. McDonald’s would probably not be deemed to have lost its trademark rights to the Big Mac® mark if one of its advertisements simply encouraged consumers to “eat Big Macs” instead of “eat Big Mac®-brand sandwiches.” But the bottom line is that your mark should be used and referred to as often as possible as a brand name for your company’s goods or services— not as a synonym for those goods and services.

Please email me at bfrazer@hawleytroxell.com if you have any questions.

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