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What's In A Word - Patents and Trademarks
What's In A Word
WHATS IN A WORD
Perhaps the oldest form of what is now referred to as Intellectual Property is the TRADEMARK. Since the memory of man runneth not to the contrary, people, products, and services have been identified by one or more names or symbols such that when a member of the consuming public sees the word or symbol, or combinations thereof, it virtually automatically associates the word or symbol with the source of that product or service.
The almost subconscious association of such words or symbols with a product and the source thereof is the essence of a TRADEMARK.
A TRADEMARK IS...
By statute and decisional law, a trademark is defined in the following terms:
". . . any word, name, symbol, or device or any combination thereof" used by any person "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, even if that source is unknown."
HOW ARE TRADEMARKS ACQUIRED?
Of all of the proprietary rights available, the venerable TRADEMARK is perhaps the easiest to acquire. In its most simplistic form, a TRADEMARK is acquired by proper use of the mark in connection with the solicitation and sale of a product or service, without causing confusion in the minds of the consuming public as to other existing marks in the same channels of commerce.
Trademarks Come in All Shapes and Sizes
TRADEMARKS, like Baskin Robbinsâ Ice Cream, come in a variety of flavors. There are the ordinary garden variety of marks, simply trademarks, on products; there are SERVICE MARKS that are used in the solicitation and sale of "services"; there are families of marks, e.g., Orlonâ , nylonâ , rayonâ , krylonâ ... and so on, a family of product marks belonging to DuPontâ . Families of marks are strong and provide enhanced association of product and source.
There are Collective and Certification marks, e.g., Good Housekeepingâ , and there are marks registerable on the Principal Register and the Supplemental Register (a repository for marks that do not qualify, for some reason or another, for the Principal Register), but for purposes here, we will focus on basic trademark acquisition.
The Mark Must Be Used in a TRADEMARK SENSE
I told you it was simple to acquire a mark, and then I throw a whole bunch of caveats at you. Since a monopoly in the United States is disfavored, Congress decided that, at a minimum, some hoops would have to be jumped through before a monopoly would be granted. Thus, in order to capture a particular word or combination of words and symbols, it is essential that one use the proposed mark in a manner which will 1) make it clear that its use is INTENDED to be as a TRADEMARK, and 2) that the mark as used is capable of acquiring a secondary meaning.
Secondary Meaning is a term of art which simply means that in addition to its ordinary meaning, a TRADEMARK will additionally suggest the source or origin of the product or service with which it is associated.
REGISTER ... STATE? FEDERAL? WHY BOTHER?
Registration is a relative paper blitz; it is not cheap, and it can take over a year. Then, after you have spent the time and effort to convince an examiner at the Patent and Trademark Office that your mark is worthy of registration, he publishes it in the Official Gazette so that your competition, your "wanna be" competition, and the world in general is free to take shots at your effort. SO WHY BOTHER?????
Probably the two most important benefits of trademark registration, whether state or federal, are that it establishes the registrant's ownership of the mark and the registrant's prima facie right to exclusive use of that mark in commerce.
Registration also places the public on notice of such rights. For these reasons, the owner of a registered mark is better able to protect and enforce trademark rights, both because of the respect generally accorded trademark registrations and because, by virtue of the presumptions of ownership and validity which are achieved through registration, courts seem to be more willing to enjoin the use by another of any confusingly similar mark, and, of course, award appropriate damages.
A mark used in interstate commerce may be accorded a Federal Registration.
Federal registration, and only federal registration, grants the right to use the distinctive and imposing 9 symbol in connection with the registered mark. Instead of this symbol, the owner of a federal registration may choose to use the words "Registered in the U.S. Patent and Trademark Office"' or the abbreviation "Reg. U.S. Pat. & Tm. Off." By using at least one of these three designations, the registrant need not give actual notice of the registration to an infringer to be entitled to recover profits and damages; the designation is deemed by law to be constructive notice to all.
The federal registration process, while seldom quick, is not particularly complex, but once registered, the current term extends for ten years, subject to a Section 15 Affidavit, indicating continued use, and is renewable for successive ten year terms.
A mark used exclusively in intrastate commerce may qualify only for a state registration; it being understood that a mark used in interstate commerce may also qualify for state registration.
A state registration of a mark typically is in force for a term year. For example, in Arkansas, a mark is registerable for a term of five years, and if in continuous use during the term, it is renewable for successive five-year terms.
QUALIFICATION/REGISTRATION OF MARKS
Title 15, and the rules and regulations relating thereto, provide for the qualification of marks that are in use in interstate commerce, or, since 1989, are intended to be used in interstate commerce, for Federal registration in the following general terms:
"In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others." Section 1052.
.Marks are often classified in categories of generally increasing distinctiveness; following the classic
formulation set out by Judge Friendly, they
"No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it -
b. Consists of or comprises the flag or coat of arms or other insignia of the United States ....
c. Consists of or comprises a name, portrait, or signature identifying a particular living individual....
d. Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office...
e. Consists of a mark which; (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,.. .
f. Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce ...
What Makes a Good Mark?
Is a Good Mark Registerable?
The best possible mark from the standpoint of product recognition is one that describes the product or service, or what it does, and regrettably, such a mark is almost impossible to register.
The best possible mark from the standpoint of registration is one that is both ARBITRARY and FANCIFUL. Such a mark has the best possible chance of acquiring that magical, and sometime elusive, secondary meaning.
Words Intended as TRADEMARKS May Be Generic, Descriptive and/or Suggestive, and Registration May Depend on Which
THE DREADED GENERICTRAP
The name of a product or service itself - what it is - is the very antithesis of a mark in that, for presumptively obvious reasons, the generic name of a product can never acquire secondary meaning to indicate origin.
The terms "generic" and "trademark" are mutually exclusive. As noted previously, the function of a mark is to identify and distinguish the goods or services of one seller from those sold by all others. A mark answers the buyer's questions "Who are you? Where do you come from?" "Who vouches for you?" On the other hand, the name of the product answers the question "What are you?"
Most competitive products necessarily give the same answer, regardless of source of origin - e.g., a tissue, a cellophane tape, or a bar of soap. Such generic designations tell the buyer what the product is, not where it came from. The term "THERMOS", in and of itself, is innocuous enough. Trouble arises, however, when the public chooses to call a product to which the name is attached, a "Thermos" bottle rather than a "THERMOS brand vacuum-insulated bottle". Then, in the public mind's eye, the otherwise perfectly usable trademark "Thermos" is not serving as a mark - it is used as a generic name, regardless of the intentions of the producer. More than one otherwise valuable trademark has been lost because it became generic to the product it once distinguished as a trademark. Electric iceboxes, for example became a Frigidaire, and General Motors worked hard to reestablish that mark.
Really good TRADEMARKS have, from time to time, become in such common use that the public adopted the mark as the identifying name for the product. Such a consequence, far from flattering, is the bane of the trademark proprietor's existence.
The concepts of "generic name" and "trademark" are mutually exclusive. Thus, if, in fact, a given term is "generic," it can never function as a mark to identify and distinguish the products of only one seller. Case law is legion to the effect, as one famous judge observed: "A generic term is one that is commonly used as the name of a kind of goods.... Unlike atrademark, which identifies the source of a product, a generic term merely identifies the genus of which the particular product is a species."
Clearly, one seller cannot appropriate a previously used generic name of a thing and claim exclusive rights in it as a "trademark" for that thing. Similarly, if one seller develops trademark rights in a term, which a majority of the relevant public then appropriates as the name of a product, the mark is a victim of "genericide" and trademark rights may, and do, cease. Sometimes this occurs as a result of the trademark owner's failure to police the mark, and as the flyer from Xerox, attached as Exhibit A, attests, policing of one's mark is a continuous effort, without which widespread usage by competitors, and just folks, leads to a perception of genericness among the public.
Sometimes, a term intended by the seller to be a trademark for a new product is taken by the public as a generic name because customers have no other word to use to name this new thing. Such was the fate under U.S. law of words like "aspirin," "cellophane," and "escalator."
American Thermos, the mark of which is referenced above, made an all out effort between 1954 and 1957, faced with an awareness of the widespread generic use of "thermos" and of the need to educate the public to the word's trademark significance. It diversified its products to include those not directly related to containers designed to keep their contents hot or cold. It changed its name from the American Thermos Bottle Company to The American Thermos Products Company and intensified its policing activities of trade and non-trade publications. A court found, however, that the generic use of "thermos" hod become so firmly impressed as a part of the everyday language of the American public that plaintiffs extraordinary efforts commencing in the mid- IR50s came too late to keep "thermos" from falling Into the public domain. In an unusual, but certainly equitable move, the same court also held that appellant's trademarks are valid and because there is an appreciable, though minority, segment of the consumer public which knows and recognizes plaintiff's trademarks, it imposed certain restrictions and limitations on the use of the word "thermos" by defendant. (KING-SEELEY THERMOS CO. v. ALADDIN INDUSTRIES, INCORPORATED)
The fact those buyers often call for, or order, a product-by a term does not necessarily evidence that that term is a "generic name." For example, if at a lunch counter one says, "I'll have a cheeseburger and a COKE." Or if a new car buyer brags to a neighbor, "I've just been polishing up my new FORD!", as distinguished from my FORD brand automobile, does the neighbor respond, "FORD? A FORD what?" The generic names "cola" and 11car" are understood and so, dropped in common speech. Such usage does not evidence genericness of COKE or FORD - quite the contrary. It shows that these terms are such strong, well-known trademarks that they need no generic name to convey the message. The generic name is understood by all and dropped off.
Buyers or users of a product may often use a trademark in a generic sense in casual conversation even though when questioned, those persons are fully aware of the trademark significance of the term. For example, persons may use XEROX or KLEENEX in a generic sense when asking someone to "Make me a Xerox of this" or asking a friend for "a Kleenex," even though when going to purchase a photocopy machine or a box of tissues, they know that XEROX and KLEENEX identify the commercial source of those products. Such casual, non-purchasing uses of terms are very weak evidence of generic usage.
The Beer Wars
One of the most well-known examples of generic adjectives is the decisions finding "Light Beer" and "Lite Beer" generic names for a type of beer light in body or taste or low in alcoholic and caloric content.
Appended hereto as Exhibit B are some examples of familiar terms that have been held generic, and some that have avoided that status.
Careless Usage Can Turn a Good
Mark Into a Generic Term
Even if a seller starts selling a new product under a protected mark - whether it be coined, or descriptive, a personal name or a geographic name - such a mark can become generic merely by use by the public in such a way as to be recognized not as a mark, but as the very name of that genus of goods, no matter what the source. The situation of a new product with a name, which is first used by the seller, is the classic context in which a name becomes generic. That is, a seller comes on the market with a product the public has never seen before. What will the public call it? If the public adopts as the generic name of the thing the word that the seller thinks is a mark, then it is no longer a mark at all.
This "failing into the public domain" of a word that the-seller struggles to make a mark may be traced to an "abandonment" by the seller. Such abandonment may be purposeful or merely negligent. However, the critical inquiry is not to the actions of the seller, but to the usage of the public.
LIKELIHOOD OF CONFUSION
The standard by which marks are judged in terms of registrability, and in terms of infringement, is a standard in phraseology only, because there
is, in fact, no objective standard, or standards, by which one mark may be judged relative to another. Indeed, the only real kind of objective aspect of the test is that the products or services are to be in the same (or similar) channels of commerce, whatever that means.
In any event, whether it is an examiner in the PTO, or the trier of fact in a courtroom, your mark is compared to a potentially confusing mark and a determination is made as to whether: members of the buying public would be confused as to the source of the goods or services offered under the two marks when those marks are used in connection with the solicitation and sale of those goods in the same or similar channels of commerce.
The determination is exceedingly difficult in many cases as evidenced by some of the decisions that have heretofore been made.
As the following examples show, in some cases confusion would be likely.
"AMS" versus "MS-2" for microbiology instruments "Medi-Alert" versus "Medic Alert," both for medical emergency devices; "Traq" for racquets versus "Trak" for skis and boots; "Brew Miser" for coffee ground containers versus "Coffee Miser" for coffee makers; "Ultra Velvet" for velvet fabric versus "Ultra Suede" for synthetic suede fabric; "Lamps R Us" for electric lamps versus "'Toys R Us" for retail toy stores; "Endal" versus "Intal" both for pharmaceuticals.
At other times, it has been held that confusion would not be likely:
"'Rejuva-Nail"' for nail repair kits versus "Rejuvia" for skin care products; "Match" versus "Macho," both for men's toiletries and cosmetics; "Taco Town" versus "'Taco Time," both for restaurant services.
To illustrate the closeness of still other cases, "Little Miss USA" was held to be confusingly similar to "Miss USA" but "Mister USA" was held to not be confusingly similar to "Miss USA", and "Miss Venus-USA" was held to not be confusingly similar to "Miss USA". Similarly, "Oxon Italia" was held to be confusingly similar to "Exxon," but "Car-V was held to not be confusingly similar to "'Exxon".
What is instructive, of course, from the standpoint of the quest for the perfect mark, is the reasoning process employed by courts in deciding the close, difficult cases that often arise in this area.
Courts faced with such questions, considered such factors as:
Identity and similarity of the marks on a side by side basis, which includes an examination of such factors as appearance, sound, connotation, and commercial impression (which is right out of In re DuPont).
Another factor used in testing likelihood of confusion is prior mark's fame, as measured by volume of sales, advertising, and length of use; the fact that one of the marks has acquired considerable fame weighs in its favor in determining likelihood of confusion.
Yet, another factor in the mix is similarity, or dissimilarity, and nature of goods and services on which marks are used. While the average consumer, for example, tends to make a distinction between fast food restaurants and supermarkets, customers of fast food restaurants such as McDonald's might be likely to believe that, when faced with a McDonald's (in red block letters) in a supermarket, or a supermarket with golden arches, the supermarket was owned, sponsored, or supplied by the fast food icon.
THE ESSENCE OF A GOOD TRADEMARK
A good trademark often has most, or all, of the following attributes:
1. Speech stream visibility. When spoken, it should stand out from the other words surrounding it. One way to achieve this is to use sharp or harsh sounds, sounds such as "K" and "C."
2. Notational visibility. When incorporated in a printed sentence, it should stand out from the other surrounding words. As an example, a mark such as Compaq tends to stand out because of its distinctive "q" ending. It has been shown that the more visible a mark is in the speech stream, and in the
printed text, the greater its retention by potential consumers. Such a mark will significantly assist in pre-selling the product or service it designates. In addition, the more visible a mark is, in this sense, the cheaper its cost per retained impression by the consumer.
3. Suggest favorable qualities. All marks, even coined ones, convey a meaning inherent in the word itself. It is prudent to think of what image the term may convey in ordinary usage, and if it has a different meaning in another language, that must be factored in. Obviously, if the mark is to designate goods or services to be used by consumers of more than one language group, it should have suitable characteristics in all relevant language groups. If a slant on the generally accepted image of the mark is contemplated, does the term lend itself to such manipulation.
4. Reinforce positioning. The mark should help position its owner's product or service relative to the competition. For example, marks designating various brands of aspirin can be ordered in a range of primary characteristics ranging from safe to potent, aspirin being in the middle. Bufferin
is promoted as a safe headache remedy, while Excedrin is promoted as a potent remedy. A new remedy could be positioned as even more potent -e.g., Super Excedrin - and use a mark that conveys the primary competitive advantage of the product.
Suggestive vs. Descriptive Marks, a Distinction Without a Difference
Some general criteria for determining "descriptiveness".
In evaluating a rejection based upon descriptiveness in any one of its various forms, it is important to focus on the language of the Lanham Act. As in so many other areas, the language used in framing a rejection, or other requirement, can tend to diverge from the statute. The courts of appeal seem to, repeatedly, remind those involved in the federal registration process of this tendency by recounting the words and clear meaning of the Act. In the "descriptiveness" area, phrases are used such as "merely descriptive," "deceptively misdescriptive," "primarily geographically descriptive," and 11primarily merely a surname." These qualifications must be kept in mind when evaluating a mark for descriptiveness.
It is possible to conceptually define a descriptive mark and how it differs from a suggestive or generic mark. A generic term is the name of the thing; it is the ultimate in descriptiveness. A suggestive mark requires imagination, thought and perception to reach a conclusion concerning the nature of the goods or services designated. A descriptive mark describes a desirable characteristic, purpose, function, quality or use of any of the goods or services to which it is applied. A term is "merely descriptive" of goods or services if it immediately describes an ingredient, quality, characteristic, or feature thereof, or if it directly conveys information regarding the nature, function, purpose, or use of the goods or services. These categories are exemplary, not restrictive.
In evaluating a descriptiveness rejection, it is essential to focus on its meaning to the relevant group; does the ordinary purchaser understand the term to describe the goods applicant sells? Evidence to answer this question may be obtained from any competent source, including purchaser testimonials, surveys, dictionaries, trade journals and other publications.
The appearance of a product (its "trade dress") or of a building from which services are offered (e.g., a restaurant) may or may not be deemed descriptive. The fact that some aspects of such trade dress may be dejure functional and, therefore, unregistrable, does not necessarily render the trade dress, as a whole, unregistrable. To be unregistrable, the mark sought to be registered must at least have a clear utilitarian purpose or clearly hinder competition by being the best design, or one of a few superior designs. To support a rejection of such a trade dress mark, it is incumbent on the examiner to come forward with evidence supporting such a conclusion.
While it is possible for a sequence of initials to become so associated with, or synonymous with, descriptive words as to be descriptive themselves, as a general rule initials are not considered to be descriptive. At times, however, initials have been held to be descriptive. Laudatory marks are descriptive.
Inclusion of the word in a standard English language dictionary is prima facie evidence that the term was generic when the dictionary was published. For that reason, many trademark owners monitor a variety of
publications - newspapers, magazines, dictionaries, etc. - as part of a program to insure that their marks do not become generic. However, simply because a word is not found in the dictionary does not mean that it cannot be descriptive.
A combination of words in a mark, which words each of themselves are descriptive, may result in a mark that is not descriptive.
A word with two or more meanings, one of which is descriptive, is not necessarily descriptive if used as a mark. Or a word may be descriptive for one article but not for another. An acronym for a descriptive phrase is not necessarily itself descriptive.
Doubts concerning the descriptiveness of a mark are to be resolved in favor of the applicant during ex parte prosecution. Decisions in this area often acknowledge thereto be a "thin line"' between descriptive and suggestive terms. Tests for distinguishing between suggestive and descriptive marks are often stated in decisions. But the results can be difficult to rationalize. Indeed, some courts have said that the distinction is often made on an intuitive basis rather than as a result of logical analysis susceptible of articulation.
Descriptive marks must be distinguished from generic marks. It is possible for a descriptive mark to be capable of distinguishing goods or services and, therefore, registerable on the Supplemental Register, or to become distinctive of the applicant's goods or services and, therefore, registerable on the Principal Register pursuant to §2(f) of the Act. However, a generic mark can do neither of these things, and will not be registered on either register.
For a mark to be descriptive, it must be understood by the average or ordinary consumer to describe the goods in some way, rather than to designate their origin and distinguish them from goods from other sources. For example, book titles are always descriptive. They describe the copyrighted work; it is the only name by which the book is known. However, if the title is of a series publication, such as a magazine, the title is not descriptive and may be registered. Similarly, titles, character names, and other distinctive features of radio or television programs are also registerable.
Just as there may be a "thin line"' between descriptive and suggestive terms, so too may there be at best only a slight difference between generic and descriptive terms. Indeed, one author has suggested a fifth category - marks deemed "highly descriptive."
Examples of descriptive and non-descriptive marks.
It may be helpful to give some examples of marks that have been held to be descriptive and non-descriptive. The examples presented in the following paragraphs have been selected to be fairly illustrative of their respective categories. Marks closer to the "'thin line" referred to by many courts do exist, and could have been cited, yet probably would only serve to blur the categories.
It is possible to conceptually define a descriptive mark and how it differs from a suggestive or generic mark. A generic term is the name of the thing; it is the ultimate in descriptiveness. A suggestive mark requires imagination, thought and perception to reach a conclusion concerning the nature of the goods or services designated. A descriptive mark describes a desirable characteristic, purpose, function, quality or use of any of the goods or services to which it is applied. A term is "merely descriptive" of goods or services if it immediately describes an ingredient, quality, characteristic or feature thereof, or if it directly conveys information regarding the nature, function, purpose, or use of the goods or services. These categories are exemplary, not restrictive.
The following marks were held not to be merely descriptive: "Formula" for degreasers; "Two All Beef Patties, Etc." for hamburger sandwich; "Savings Shop" for savings and loan services; "Roach Motel" for a cockroach trap; "Psychocalisthenics"; the University of Georgia Bulldog symbol.
The following marks were held to be merely descriptive: "Bagel Nosh" for a bagel snack or sandwich (since "nosh" means a snack); "Super Steel Radial" for steel-belted radial tires; "Beefalo" for meat from CI buffalo/cattle cross; "UPC" for the Uniform Product Code symbols; "'Hoagie" for a sandwich; "Gas Badge" for a badge to detect certain gases; "Video Buyers'Guide" for a video equipment publication; and "Apricot" for dolls having an apricot scent.
NUTS AND BOLTS
Once you have chosen your mark, and identified its appearance, to the extent that it is intended to have a look of its own, the prudent business man will conduct a search to determine its availability as a viable mark for his business.
A search can save a lot of grief down stream, and given the cost, which is nominal in the scheme of things, it would be shameful if it were not explored in advance of setting up an advertising campaign, packaging and the like with a TRADEMARK which might be confusingly similar to another whose pre-sense in the market is not timely discovered.
Once the entrepreneur is satisfied that he has protected himself against the unexpected, the next step is to go to market. Keep firmly in mind that, unlike most forms of protectable intellectual property, TRADEMARK rights are acquired, and enhanced, by usage. In fact, the more familiar the public becomes with your trademark, the stronger it becomes.
While there is now a procedure for filing an Intent To Use application, in this man's view, the better procedure is to wait until the mark is in use. The obvious danger is that your effort will be usurped by a competitor.
As in regular applications, an Intent to Use application requires a drawing of the mark, a filing fee and must recite the applicant's " bona fide intention to use the mark". The application is then assigned to an examiner. Within six months after the date on which a notice of allowance is issued, the applicant must file a statement of use with regard to the mark. The statement of use may be filed at any time during the prosecution of the application, but in no event later than the six months noted above, unless an extension of time is received.
Once in use in intrastate commerce, a state application is available. After the usage is in interstate commerce, a Federal application is available.
Appended hereto as Exhibit C is a copy of the form for use in Arkansas, which form is available through the Secretary of State at State Capitol, Little Rock, Arkansas 72201, telephone (501) 682-3424. The current filing fee is $50.00.
Exhibit D is a copy of a Federal Registration. There is no printed government form for filing, but one form of an application, which at least demonstrates the kind of information called for by the PTO, is appended as Exhibit E. The current filing fee is $245.00, but, as in any government agency, the amount of the fee is eternally in a state of flux, and one who wishes to file without the benefit of counsel should check on the fees before filing, because if
it is wrong, the PTO will kick it back, and that will inevitably cause a delay.
In order to view Exhibits A # E, please visit the Small Business Development Center located at 100 Main Street, Suite 401 in Little Rock, AR 72201.
The addresses and phone numbers you will need are:
In the PATENT AND TRADEMARK OFFICE:
The Honorable Commissioner of Patents and Trademarks
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