Trademark Advice

Trademark Advice
Written by David Diamond
 


*Disclaimer* : The following article is for informational purposes only and should not be used in place of professional legal advice. Anyone interested in trademarks and copyright related issues should consult a lawyer.


(NOTE: The following was written in reply to a post from someone whose company’s name had been challenged by another company for trademark infringement. It is the opinion of the author who is *not* an attorney, and should not be considered legal advice.)

First off, I’m not a lawyer. I once wrote a feature story on domain name issues with regard to legal use of names, etc. I had to interview a slew of copyright lawyers and experts in the field. Further, my company (http://www.herocompany.com) develops customer communications materials (user guides, Web sites, product brochures, white papers, CD-ROMs, etc.) for business, so I’m exposed to the legal considerations that we need to make when developing content for clients. I have an opinion about how trademark law works, and it follows:

1. Trademark law is based on the likelihood of consumer confusion, not necessarily technically similar or phonetically similar language. So, for example, a company selling hamburgers could not call themselves “MacDonalds.” Though it is *technically* not the same word as “McDonalds,” it is similar enough to cause consumer confusion.

2. Part of the determination of the likelihood of consumer confusion is the type of business. The “McDonalds Tire Company” would probably have no problems using that name. But the “McDonalds Bakery” might. (Notice I say words like “probably” and “might.” This is because trademark law is determined by the opinion of a court. It’s tough to guess the outcome of all cases.)

3. Terms that are generic to a given industry will probably not be granted trademark protection. For example, the word “digital” would be hard for any one computer-related company to “own” as it is generic and therefore may be seen by a court to be essential to the description of other companies in the same field. A food service company would most certainly not be granted trademark protection for the name “Cooked Food.” Those words are generic in that industry and could therefore be considered essential to other companies needing to describe themselves. On the other hand, a video production company calling themselves “Cooked Food Video Productions” may indeed get trademark protection for the phrase. In this case, the terms would be considered unique to that field.

Making matters even more confusing, in the United States (and elsewhere), trademark protection is not, in and of itself, *absolute* protection. The first business using the name for legitimate commerce actually owns the name. This is why Microsoft has had to buy off so many smaller companies along the way that have claimed trademark infringement for products that Microsoft has similarly named. Even though Microsoft may have gotten a trademark (or even gone the extra mile to get a registered trademark), if another company comes along that can prove they were using the term for legitimate commerce first, a court will uphold that. This is, in part, why companies are (or should be) so adamant about the proper use of their trademarks in documentation and advertising. Proper use of the trademark symbols establishes a public track record.

Equally important, the proper and consistent use of a trademark symbol tm, (sm), or ® also establishes public “claim” to a mark that helps prevent it from becoming a industry-generic term. Believe it or not, even after having a mark for years and having a brand name that is so popular that people start using the term generically, you can still lose the protection. One of the ways to protect against this is to use the marks that describe *your* particular product or company adjectivally. This is why you will always hear the makers of the following items describe them as:

Band-Aid ® Brand Bandages
Jell-O ® Brand Pudding
Kleenex ® Brand Facial Tissues

In these examples, the protected words are used as adjectives to describe a particular product, thereby ensuring that specific notice is given as to *which* brands of bandages, pudding and facial tissues are mentioned. Remember, this is all about consumer confusion. “I cut my finger, so I put on a band aid.” “I went through several boxes of Kleenex when I had a cold.” “Can you xerox these for me?” In cases like these, a court could rule that it was likely that the consumer was not aware of the specific brand of product that he/she was using, and that these terms had become generic in those industries. This is why the makers of those products use their protected marks adjectivally.

I can think of one software product whose name is in danger of become a generic term for what it does: I say “paint program” and you think… The very first line of the Photoshop manual reads, “Welcome to the Photoshop program.” They do not say “Welcome to Photoshop,” as someday “Photoshop,” due to its overwhelming popularity, might be ruled a generic term for a computer-based paint program. The phrase “Photoshop program” establishes exactly what Adobe has received protection for: a software program. This helps protect their mark. As soon as paragraph two, they drop the adjective structure.

“I am stuck on Band-Aid brand, ‘cuz Band-Aid’s stuck on me.” This moves us in to another area important for those who do documentation or publishing of any kind. Notice in the Band-Aid jingle that the phrase “Band-Aid brand” is not repeated in the last part of the sentence. Not only would it have been musically awkward to do so, but it’s also legally unnecessary. Once a proper claim has been made once in a piece–usually at the beginning–the protected word can be “abused” elsewhere in the same document. Different companies’ legal departments will argue this point. We had one client whose legal department insisted that their mark be used as an adjective on a Web site in every case. You can imagine how awkward this was to read. Other companies (thankfully!) are more realistic and use the marks, as needed, without going over board the point of alienating readers.

Trademark law is a very gray area. Even the so-called experts that I spoke with when doing my feature admitted that no one can guess how courts will rule in every case.

Here are a few guidelines and resources to consider when choosing a name for a company or product:

1. Pick a name that is unique in your business field. Better yet, make up a word of your own. “Java” is not a new word, but it certainly had nothing to do with technology before Sun adopted it. “Starbucks” is a new word. Marks like this are easiest to protect, should the need arise.

2. Search public resources to see if anyone has already sought protection for the same or a similar mark. Two resources that I find useful are:

a. The Network Solutions domain name registry. In this day and age, if a mark has been protected, it has also probably (but not always) been registered as an Internet domain name. Domain name registration is *not* the same thing as trademark protection, but remember, it’s who used the word/term first that will ultimately matter. If someone has registered it as a domain name, then there is at least some record of them already using it. (http://www.networksolutions.com/)

b. Search the US Patent and Trademark Office’s Web database. Using this free service, you can easily see if a mark you’re seeking has already been taken. This is not considered a complete search: just because you don’t see a mark listed, doesn’t mean that it isn’t protected. Read the site’s disclaimers in that regard. But at least if you find the mark you’re seeking already protected for someone else, you need to think of a new one. (http://www.uspto.gov/tmdb/index.html)

You can also search your city’s fictitious business listings to see if anyone has a company named similarly to the name that you want to use. And, if you’re anywhere near Sunnyvale, California, you can call or visit the Sunnyvale Center for Innovation, Invention and Ideas. They handle trademark searches and such for the West Coast of the United States. They have some official affliction with the US Patent and Trademark office, but I’m not sure what it is.

For a really great look into the ins and outs of trademark law as it pertains to running a small business, I recommend the book: “TRADEMARK: Legal Care for Your Business & Product Name.” It’s written by Kate McGrath and Stephen Elias and is published by Nolo Press. I read it and learned much from it.

And, most importantly, remember that this is all about consumer confusion. Don’t press your luck by choosing something that might be considered similar to a competitor. If it’s challenged, it will require Big Bucks for you to defend yourself. Be creative in your naming ideas, do some initial searches to see if any of them are immediate vetoes, and make sure that things look free and clear before you commit to anything. That way, should you ever find yourself in court defending your company or product name, you’ll be able to show a paper trail of the efforts that you went through to secure your name. And hire a trademark attorney that can take you through all the steps. I am not an attorney. This document is my opinion and should not be considered legal advice.

ABOUT THE AUTHOR: David Diamond works for The HERO Company, a San Francisco-based company that develops customer communications materials for business. (http://www.herocompany.com)

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