While copyright protects expression of an idea, not the idea itself, patent and trade secret law protects ideas. Trademark law is not concerned with the content of words or the development of new technology, but rather with the protection of underlying symbols, names, and phrases used in conjunction with the sale of goods and services. A trademark gives the owner the right to prevent use of the mark by others when that use is likely to cause confusion or mistake, or to deceive. As trademark protects your company’s distinctive names and brands, it should be a component of your marketing strategy. As you know, a well placed trademark has great value. Think Coke®, Yahoo!®, MONSTER.com®, and of course Google®.
Whereas the U.S. Federal Courts have exclusive jurisdiction over patent and copyright disputes, trademarks can be enforced in both state and federal courts. In the U.S., trademark rights vest on first use. Therefore, trademarks based on first use that have not been registered with the U.S. Parent and trademark Office (but may or may not have been registered under state law) are known as common law trademarks and are enforceable under state law and federal law under the Lanham Act. Trademarks that have been registered with the U.S. Parent and Trademark Office are known as registered trademarks and are enforceable under federal law. Federal Registration gives an owner of a mark certain advantages in litigation over the assertion of its rights in common law. Federal Registration provides many benefits including superior rights in the mark, the presumption of validity, as well as procedural rights in the event of litigation. By registering a trademark on your company name, product or service you protect the mark from unfair competition and exploitation of the mark in interstate commerce.
Trademark issues also arise defensively. In seeking a company or product name, you should conduct a trademark screening search to insure that the mark is no already in use by another. By merely calling your local Secretary of State to determine name availability, you do not know if any third parties already have rights exist in the name. A check on name availability at the Secretary of State is not a defense to trademark infringement as it is not a determination if a name is likely to be confused with another because they are looking for exact name matches. The test of trademark infringement is the likelihood of confusion. The test for likelihood of confusion is based on an analysis of the sight, sound and meaning of the mark within a given channel of trade to a given class of consumers. Therefore, before using a proposed mark it is advisable to conduct a full trademark search on the State and federal levels.
By registering your mark for each new product, the value of your brand may increase. As a key element of the marking process your product name is distinguished, and a brand is seeded which may be nurtured through the marketing process.
By registering a mark and demanding compliance and recognition of the mark, the mark may gain secondary meaning though promotion use. By example Coke is such a strong mark through years of success that the term “Coke®” has acquired secondary meaning as a soda product. “I’ll have a coke®” is more common than “I’ll have a Cola.” Even quickly a product can be branded by exploding with great commercial success. “Download the song from your IPOD®” may be more familiar phrase on college campuses than “Download the song to your Mp3 player.” We see IPOD has acquired secondary meaning in the Mp3 world and channels of trade in a relatively short period of time. Do a Google® search has become synonymous with conducting internet research.
Whether you are developing a software tool for a nice sector of users or a better Hula Hoop® for teenagers everywhere, the trademark process can be valuable component of your product development and Marketing strategy.
TORTI FLANAGAN, P.C.
By John J. Flanagan, Esq.
Copyright 2008 All rights reserved.
Coke® is a registered trademark of the Coca-Cola Company.
MONSTER.com® is a registered trademark of Monster, Inc.
IPOD® is a registered trademark of Apple, Inc.
Google® is a registered trademark of Google, Inc.
Hula Hoop® is a registered trademark of Wham-O, Inc.