Have you ever noticed various ads on TV where a name has the ® symbol right next to it? Or, the ™ symbol and/or ℠ symbol? These symbols stand for being a trademark that is either (1) federally registered (the ® symbol) with the U.S. Patent and Trademark Office (USPTO), (2) an owner’s assertion that a mark or phrase is pending registration (the ™ symbol), or (3) an owner is asserting that this is a service mark (the ℠ symbol).
At a thousand foot view, trademarks are source identifiers. Their unique and distinctive characteristics are what helps create a brand, and when consumers see such a mark, they associate that mark with that trademark holder’s enterprise, goods, and/or services.
Trademarks can be registered at both the federal level (USPTO) and/or state level (usually with the state’s secretary of state).
Generally, the state level review and potential approval is fairly quick, while the federal level review and potential approval (or denial) can be several months, or much, much longer.
The Lanham Act, 15 U.S.C. s. 1127 defines a trademark as “any word, name, symbol, or device, or any combination there of [that is] used by a person, or [ ] which a person . . . use[s] in commerce . . . to identify and distinguish his or her goods, including a unique product from those manufactured or sold by others and to indicate the source of the goods . . . .”
Common examples can be a phrase associated with a company, such as Just Do It® (Nike), or the company name, Dunkin’ Donuts®. Each are source identifiers and the general consumer is not confused as to the source of the product, and the consumer knows they are buying directly from the trusted source. Each of those source identifiers are registered and protected marks. For a third party (not the owner of the trademark) to use them in the commercial sense, absent license or consent from the owner, there may be grounds for an infringement claim. The same goes for third parties attempting to use a name, mark, or phrase for anything with the ™ or ℠ symbols.
Trademarks must be distinctive. A generic mark is easy to replicate or use because either the name, symbol, or device are already in the common domain and are thus diluted enough that it would be impossible to stand alone. Companies and owners of such generic marks use of them all the time. But their use—absent a distinctive quality and use—may mean that each party has limited enforcement rights to the extent that any alleged confusion is created in the marketplace. However, highly distinctive marks that have been a substantial factor in a company’s revenue and success are worthy of submitting an application for protection in order to prevent its misuse or dilution. Nike surely doesn’t want other companies to place the phrase Just Do It® on their products as it would dilute Nike’s marketing and advertising efforts.
Additionally, trademark law focuses on how the mark is “used.” Just because a company registers a mark doesn’t mean that it can prevent others in the world from either using it or repeating something. For example, a character in a movie can tell someone to “just do it.” That doesn’t mean that Nike has an infringement claim as the phrase was generally used. But it does mean that a small t-shirt shop on the Main Street corner probably should think twice about printing clothing apparel with the same phrase for sale to the public. That would potentially cause market confusion and Nike would have grounds to stop the misuse of the phrase or sue for damages.
Trademark law is also focused on the mark’s use in a geographical region. An owner has rights to the mark as soon as its in use (keeping in mind that a generic mark has a diminished ability to have enforcement rights). If that mark crosses stated lines (“using the mark in commerce”), then it is recommended to register it at the federal level (or at least try to while using the ™ or ℠ symbols. Once registered, the registration can last forever as long as the mark is still used and is maintained with the federal government. Remember, it’s about continuous “use” of the mark, which maintains the protection.
If you have questions about whether your mark is worthy of seeking protection, contact Beantown Law Group, LLC.
-Kyle and Niles