Q: What is the trademark law based on?
A: The Federal Trademark Statute includes trademarks and service marks. In the United States Code, Chapter 15 is the federal trademark statute.
Q: How is a trademark defined?
A: A trademark is any word, name, symbol, device or combination thereof used by a person or company in commerce to identify or distinguish its goods from those manufactured or sold by others and to indicate a possible primary source for the goods, even if the source is not publicly known. There are marks that also exist to identify particular services involved.
Q: Has trademark law changed much in recent years?
A: In 1999, a new law known as the Anticyber Squatting Consumer Protection Act was passed. Basically, the Intellectual Property Law Bar has been pushing for a ruling or statute which would protect trademarks in light of or in spite of domain name registrations. This legislation in several sessions of Congress easily passed the House, but was stalled in the Senate. However, there was a registration on the Internet of the names of the members of the Senate Judiciary Committee. At that point, the Senate Judiciary Committee became interested in pushing this bill through their procedures and getting it through the Senate. As a result, the trademark holder has substantial protection against a person who registers the trademark on the Internet. Thus, what the courts have been holding regarding use of names on the Internet has now been codified.
Another major trademark litigation occurred before the Trademark Trial and Appeal Board: Kawasaki Motors Corp. U.S. A. v. H-D Michigan Inc., 43 U.S.P.Q. 2d 1521 (T.T.A.B. 1997), when the Harley-Davidson Company attempted to obtain trademark protection on the sound its motorcycle engine makes. While the trademark attorney approved the mark for publication, opposition to this trademark came from almost every motorcycle manufacturer. While Suzuki's motion for summary judgment was denied, the issue remains undecided. In June 2000, Harley-Davidson abandoned the opposition proceeding due to cost.
The sound of the National Broadcasting Company received trademark protection many years ago. Also, the Metro Goldwyn Mayer lion's roar was accorded similar protection.
The United States Supreme Court recently settled a dispute among the circuits regarding use of a particular color as a trademark. It has been held that color can be protected as a trademark. This decision provides a great advantage for the Owens/Corning Company and its pink insulation.
Q: Is an actual "mark" required for a trademark?
A: Due to a recent modification in the trademark law, it is possible to file an application for a trademark without actual use of the mark. However, before registration of the mark is actually obtained, it is necessary to prove use of the mark in interstate commerce. These applications are referred to as Intent to Use Applications, for which prosecution costs can greatly increase.
The best types of marks are either coined, arbitrary or suggestive. Descriptive marks and generic marks cannot be subjects for trademarks. A trademark can be registered if the goods of the applicant are distinguished from the goods of others thereby. In other words, is the mark distinctive when compared to other trademarks for the same goods and services? If the answer to that question is "yes," the trademark can be obtained. If the answer is "no," the trademark cannot be obtained.
To use a mark similar to a registered trademark on the same or similar goods is a major problem for the infringer. There is a civil action for recovery in the event of trademark infringement, with punitive damages including court costs and attorney fees being a possible award.
Q: What constitutes trademark infringement?
A: The key questions on determining an appropriate trademark infringement are:
If a proposed trademark has those three items in conflict with a registered trademark, the proposed trademark could infringe the registered mark and cause the infringer to suffer the appropriate penalties. However, if a mark becomes extremely powerful or famous, it may be possible for the mark to be extended to goods not inherently covered by the mark. For example, the Pirelli Tire Company of Italy has filed suit against a gentleman intending to use the name Pirelli for a pizza parlor in the Chicago suburbs. Another confrontation involves SPAM, which is a registered trademark of the Hormel Corporation. Hormel has already informed Cyber Promotions, Inc., that Hormel does not like the Cyber use of SPAM to describe cyberspace junk mail. Is SPAM a famous mark, which would preclude such use?
Also, BERETTA of Italy filed suit against the General Motors Corporation and CHEVROLET, in particular, for use of BERETTA on a type of CHEVROLET CAMARO. This suit was settled. The terms of the settlement were that each party would pay its own attorney fees, CHEVROLET would donate $500,000 to the American Cancer Society, and CHEVROLET could use BERETTA for its sports cars. No other use could be made of the term BERETTA. The president of BERETTA received a red BERETTA CAMARO, and the president of CHEVROLET received a matched set of ivory-handled, nine millimeter BERETTA pistols. Thus it can be seen that if the mark is very strong, it may be applicable to goods not normally covered by the mark.
The theory of this case and others has now been codified. If a mark can be shown to be famous and extremely well-known, it will be granted protection in fields beyond its normal use or service. This is commonly called the famous mark exception.
Q: What is the function of a trademark?
A: The original function of a trademark was to indicate the origin of the corresponding goods or services and to protect the consumer. The later function is to protect the marking advantage and to protect the vendor. There was a great difficulty in developing a federal statute for trademarks to cover these aspects. Finally, the federal trademark statute was based on the commerce clause.
Q: What is the key term in trademark law?
A: The key item in trademark protection is to avoid having the trademark become a generic term, whereby the trademark owner loses the exclusive use of the trademark. A number of trademarks have been lost as a result of becoming generic. Typical examples of those trademarks are aspirin, escalator and zipper. XEROX Corporation of Stamford, Connecticut, is making every effort to protect its trademark — especially by discouraging people from using XEROX as a verb. In this fashion, the XEROX Corporation hopes to keep its trademark from becoming generic.
Q: Can trademarks be renewed?
A: Trademarks are renewable. The trademark is issued for a period of 10 years. During the first 10-year period, between the fifth and sixth years, the trademark owner must prove continued use or lose the mark. If continued use of the trademark is proven, the mark becomes virtually incontestable. The trademark is renewable for an unlimited number of 10-year periods.
Q: What is the process for getting a trademark issued?
A: To have a trademark issued, a proper application must be filed. The Patent and Trademark Office will complete its work. Assuming that the office agrees that the applicant is entitled to the trademark, the application is published for the opposition. Anyone feeling threatened by the applied-for mark can oppose the applicant getting a registration for the trademark. If the applicant has no opposition or wins the opposition, the applicant will get a registered trademark.
A person may mark the service or goods with a TM whenever use of a particular mark is considered therefor. However, one may not use the smaller capital R with a tangential circle therearound, unless the trademark registration is actually in hand. Thus, the marking system for a trademark under trademark law is somewhat different from patent law in that one can use the TM without actually having a trademark application on file. Patent pending is only usable when a patent application is actually on file.
Q: What types of marks are there?
A: The preferred types of marks are coined, arbitrary or distinctive. A coined mark is a mark completely conjured up from a collection of letters. The mark is then promoted sufficiently with advertising to provide both a distinctiveness and protection for the product. TUPPERWARE is one such mark. An arbitrary mark is just a common word not clearly applicable to certain goods that is made to apply to the mark. A suggestive mark is one that indicates the particular goods without describing the goods. For example, PLAYBOY Magazine is a suggestive mark — in more ways than one.
A descriptive mark can acquire distinctiveness in application as a trademark only through secondary meaning. There is a supplemental registration procedure in the Patent and Trademark Office which permits one to put the mark on a supplemental register. If the mark is continuously used for five years, one may then transfer it to the principal register if desired.
Q: Is there such a thing as a generic mark?
A: No. Generic marks are not allowed. A surname may be used as a trademark only if it acquires secondary meaning. A descriptive mark fails to serve as a trademark, if it does not advise the public that the product comes from a single source and it infringes on free use of speech.
Acquired distinctiveness or secondary meaning can overcome these problems. Trademark infringement considers likelihood for confusion, deception or mistake as to the source, when the mark is applied to goods in commerce. The likelihood of confusion depends or the similarity of the marks, the appearance, the sound, the connotation and the impression. Other factors include similarity of goods and services, similarity of trade channels, condition of the sale, strength of the mark, number and nature of similar marks and similar goods, and consumer surveys.
Q: Is it possible to infringe upon an unregistered mark?
A: An unregistered mark may be infringed provided that the one who asserts rights in the trademark can prove that the use of the mark merits federal protection and that the likelihood of confusion can be established. However, it is much easier to enforce rights with a registered mark.
Q: Does state law or federal law affect trademarks?
A: In Illinois, the state trademark statute is Illinois Compiled Statutes Chapter 765, Section 1035/1 ( 765 ILCS 1035/1 et seq.) and following. On January 1, 1998, Illinois made effective her version of the "Model State Trademark Bill." Adoption of this model statute brings the Illinois State Act more in line with the federal act.
Illinois State Trademarks are administered by the Illinois Secretary of State. Federal Trademarks are administered by the Patent and Trademark Office as a unit of the Department of Commerce.
Take Action To Get Trademark Protection
Our firm can help you file the trademark application.
Call our experienced intellectual property attorney at the Law Office of Mathew R. P. Perrone, Jr., if you seek trademark protection. Or, if you prefer, complete the online form.
Free 20-Minute, In-Office Consultation ∙ Evening/Weekend Hours by Appointment