Did you know that there are approximately 9,000 trademarks currently on the United States Patent and Trademark Office database1, which are either registered or seeking registration for the use of the word “Love” or some derivative of it, e.g., “Luv” “Lovey”, “Loved”? If the mark is federally registered, the owner may apply an ® next to it on its product or packaging or in its advertising anywhere in the United States. Those marks seeking registration need to wait for Office approval and public comment, which often can be extremely frustrating because of the standards set by statute.2 A proper mark, however, serves as a goodwill ambassador for the owner; it also protects consumers who will be purchasing the product or service on a quality-consistent basis.

Trademark or Copyright?

At the outset, let’s clear up the difference between a trademark and a copyright. A trademark (used for goods, e.g., cookies) or a service mark (used for services, e.g. dry cleaning) (collectively, “trademark”) identifies the source or origin of the goods or services and distinguishes them from all others. A copyright protects only the fixed expression of a work of authorship, e.g., the text of a book, the lyrics, music and recording of a song, a painting, sculpture or an architectural work, and only that portion of the work, which is original.  A trademark also must be used in commerce before it will be afforded any protection. An unpublished work that has never left an author’s desk or a recording studio still may be protected by a copyright as long as it is fixed.

What is a Trademark?

Next, a trademark can be a word (think Butterball® for turkey), a stylized word (think Coca Cola® for soft drinks), a slogan (“Like a Good Neighbor, State Farm Is There”®), a design or symbol (think the Swoosh for Nike, a color or a sound or a combination of any of these. It also includes a special type of mark known as trade dress, which are characteristics of the visual appearance of a product or its packaging or the way a service is provided  (think Taco Bell’s yellow and purple restaurants or Toblerone’s pyramid-shaped packaging.)

A trademark, however, may not consist or be comprise of any immoral, deceptive (including geographically deceptive), or scandalous matters, a flag or coat of arms, a name, portrait or signature identifying a living individual without written consent, matters which may disparage or falsely suggest a connection with persons, living or dead, or institutions, nationals symbols, and a few other bases for automatic refusal. The mark also cannot be functional (think the colors of Dippin’ Dots because they basically identify flavors.)3

Nor may a mark be just descriptive (“Fish-Fri” for batter mix)), consist of a surname (“Smith and Wesson“ for guns) or be primarily geographical (“Darjeeling” for Tea) until the mark has acquired a secondary meaning over a period of time (usually five years), i.e. consumers always identify that product or service with that particular origin or source.

Scope of Protection

Depending on where it is registered, a mark may have international protection, federal (interstate) protection, or state (intrastate only) protection. A mark also may be protected where it is actually used, e.g., in only a portion of a state, without registration. An unregistered or “common law” mark, however, may only apply the symbol TM or SM.

Trademark protection is also limited to the class of goods or services for which it is actually used. There are currently 45 international classes of goods or services from which an owner must choose (and more than one class may be chosen) as the class(es) to which the trademark will apply, e.g., used on clothing, on food products, or on paper products. No two trademarks, however, can be registered in the same or similar class if the mark would cause a likelihood of confusion among consumers as to the source or origin of the goods or services.

What is Likelihood of Confusion?

Assuming that a mark does not fall into any of the above categories, a trademark examiner next will determine whether the proposed mark is likely to cause confusion with an existing mark. There are a number of criteria used in determining “likelihood of confusion”, including the similarity in the overall impression created by the two marks, (including the marks’ look, phonetic similarities, and underlying meanings); the similarities of the goods and services involved (including an examination of the marketing channels for the goods); the strength of the plaintiff’s mark; any evidence of actual confusion by consumers; the intent of the later user in adopting its mark; the physical proximity of the goods in the retail marketplace; the degree of care likely to be exercised by the consumer; and the likelihood of expansion of the product lines.

How Do You Find a Trademark That Passes Muster?

The best way to avoid likelihood of confusion is to use a mark that is fanciful or arbitrary, i.e., it is a made-up word or bears no relationship to the particular product or service (think “Rolex” watches, “Exxon” for gasoline products, “Toucan Sam” for Fruit Loops and “Apple” for computer goods and services.) A suggestive mark also may past muster even if it consists of common words and suggests (but not describe) a quality or characteristic of the goods or services. In other words, there still is a need for the consumer to exercise some thought, perception or imagination in order to determine the source or origin (think “Coppertone” for sunbathing lotions, or “Microsoft” for computer software.  Finally, as stated above, a descriptive mark, a geographic mark, or a surname may also be registered once it has acquired secondary meaning. Unfortunately, many owners want to use a descriptive mark as an immediate marketing tool, but too often they will only be denied registration unless they can convince the examiner that the mark is only suggestive of a quality and not descriptive.

A generic mark, one that actually is the product or service, cannot be registered, e.g., Modem or Shredded Wheat. A previously acceptable mark may become generic because it actually becomes the product, e.g. Aspirin (starting out as the Aspirin brand of acetylsalicylic acid), Cellophane (starting out as the Cellophane brand of clear plastic wrap), and Murphy bed (starting out as a brand of concealed beds).  Companies such as Xerox (copying devices) and Kleenex (for soft paper tissue) have invested heavily in protecting their brands to prevent them from cancellation.

Conclusion

I have often told the story (made-up) of a two-year old sitting in the back seat of a car yelling out to her parents, “Look, there’s McDonalds – can we go so I can some chicken nuggets and play?” The mother then looks at the father as they zoom by the red arches and yellow M symbol and says, “Wow, honey. You’re doing a great job teaching her to read!”

Whether you are a recording artist providing entertainment services (think Rolling Stones or Lady Antebellum), Internet or retail store services (think I-tunes or Nordstrom) or musical recording services, clothing and accessories (think Def Jam) choosing your trademark may very well be the most important promotion and advertising decision you can make. Check to see whether there will be any likelihood of confusion with any existing marks before investing a lot of time and money. Be as creative as you can be.

1 www.uspto.gov

2 Title 15, U.S.C§§ 1051-1141n

3 15 U.S.C. §1052© 2014 Carolyn Herman, Esq.

Disclaimer: This article is intended for educational purposes only and is not to be construed as legal advice or creating an attorney-client relationship.