TRADEMARKS AND TRADE DRESS
Trademarks and Service Marks
A Trademark or Service Mark is text, a symbol or logo, or a combination of these elements that identifies the source of a product or service.
A Mark should be fanciful not descriptive or generic. Trying to use the mark “SOAP” for soap would be descriptive and not enforceable. An example of an excellent mark is “IVORY SNOW” for laundry soap. Coined marks such as KODAK or XEROX typically provide the greatest enforceability and are more likely to achieve registration.
A Mark protects not only the manufacturer/seller but the consumer as well by allowing identification of the source of a product or service.
Marks derive their enforceability through two forms.
1. Common Law Rights (TM in the US)
Most marks are protected in common law or English law countries without registration. The owner of a mark acquires rights through use of the mark. However, international companies should proceed with caution since “Code” countries may have exactly the opposite requirements, (i.e. marks must be registered to be used and/or protected) or have marking regulations in conflict with US, e.g. Germany.
Registration of marks is possible in most states and with the United States Patent and Trademark Office (USC Title 15 Ch 22), if used in interstate or international commerce (a registered mark is typically designated with ® ). Marks can also be registered in most foreign countries . Additional statutory benefits for enforcement of registered marks makes registration desirable. Federal “intent to use” provisions allow filing of an application to register a mark before use actually commences. This gives limited protection by establishing a date for priority of the mark. A presumption of validity and, after five years of registration, incontestability of a mark is provided through federal registration. However, renewal of a registration is required every 10 years and the mark must be in use for renewal.
Thoughts on Trademarks for decision makers:
1. Descriptive/generic marks
Cannot typically be registered unless they have achieved secondary meaning, a legal term denoting recognition by the typical consumer of the mark’s designation of a specific source.
Marks that cannot be registered on the primary register can often be registered on the supplemental register. After five years of registration and continued use, a presumption of seconding meaning may be established.
2. Loss of rights through lack of enforcement
Even rights in good marks may sometimes be lost if the marks become “genericized”. Examples where marks have lost significant enforceability are Kleenex and Xerox where generic use by the public degraded the value of the mark
3. Classes and confusion
Trademarks and service marks are registered in “classes” depending on the goods or services offered. With some exceptions, marks that may be very similar may be used by different entities in different classes. The test for infringement of a mark is whether a consumer of the products/services would be confused as to source of the goods or service through use of the allegedly infringing mark.
United States Patent and Trademark Office
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Trade dress can best be described as a “style of doing business”. Various forms of trade dress can be used.
1. Packaging - the color, type, style and/or distinctive shape of a package may be protected as trade dress.
2. Product configuration – the color or distinctive configuration of a product itself may be protected as trade dress. In some cases, a novel shape of a product may be registered as a trademark.
3. Facilities – the color, décor and architectural style (sometimes referred to as the “look and feel”) of a facility used for business, such as a restaurant, may be protected as trade dress.
Important considerations in establishing trade dress are
1. Consistency – continued use of the trade dress in a consistent style, color, etc. for multiple locations, if facilities, develops the strength and enforceability of trade dress.
2. The form or style selected should be unique and easily recognizable.
3. Secondary meaning for potential registration as a trademark or service mark may be established.
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