Navigating Your Trademark Rights
What Do Trademarks Protect?
First, to have trademark rights, you must have a protectable trademark (or “mark”, for short). The Lanham Act governs federal trademark protection in the United States. It provides that trademarks protect “any word, name, symbol or device or combination thereof used by a person, or the person has a bona fide intention to use in commerce.” There is also common-law trademark protection, which doesn’t require registration. However, common-law protection is more limited in scope. Learn more about common-law trademark protection here and here.
Subject matter
The content of protectable marks will vary, but it usually includes one (or a combination) of the following:
- Words
- Symbols
- Logos
- Design / Packaging
- Shapes
- Sounds
- Scent
- Colors
Use in commerce
Trademarks function to identify the source of particular goods or services, so your mark must be used (or intended to be used) in commerce to be protectable. This requires use in interstate commerce. For goods, use requires sending the goods across state lines with the trademark displayed on the goods or its packaging. For services, this requires offering a service in another state, or rendering service which impacts interstate commerce. You can read more about the federal trademark process here.
The Lanham Act defines trademark use for goods and services as following:
Goods: a mark is used in commerce when placed on the goods, or their containers, displays, tags or labels, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce.
Services: a mark is used in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.
Distinctiveness
Trademarks must also be sufficiently distinct in order to be protectable. This ensures that you cannot protect generic terms. There are four categories of distinctiveness:
- Arbitrary / Fanciful
- Suggestive
- Descriptive
- Generic
Arbitrary or fanciful marks are inherently distinctive. These marks bear no relationship to the underlying goods or services, and thus are presumably protectable. Suggestive marks are also inherently distinctive. These marks suggest, rather than describe, some particular characteristic of the underlying goods or services. These terms require the consumer to exercise their imagination to understand the underlying goods or services. Suggestive marks are presumably protectable.
Descriptive marks are not inherently distinctive, and thus require secondary meaning to be protectable. These marks identify a characteristic or quality of the goods or services – they directly describe something about the goods or services in which they are being used. Lastly, generic marks are never protectable. These marks connote the basic nature of the underlying goods or services.
For example, you could not trademark the word “Water” for your company that sells bottled water, this would be generic. Nor could you trademark the phrase “Computer Store” for your shop that sells computers.
The easiest way to ensure your trademark is sufficiently distinct is to come up with a new word all together. Some examples are “Exxon” or “Kodak,” which are considered arbitrary or fanciful. However, you do not need to invent a new word in order to trademark it. But the closer the relation between your desired trademark and what you are selling, the less likely you will be able to protect it.
What Is Trademark Infringement?
There are various claims that you can bring (or that can be brought against you) for trademark infringement.
Likelihood of Confusion
Likelihood of confusion is the most common trademark infringement claim. This occurs if someone uses a mark that is similar to another mark, which is likely to confuse the buying public.
There are a few factors that are considered in determining whether the public will be confused by the potentially infringing mark. These factors include the similarity of the marks, the strength of the marks, and the similarity between the goods and services related to the marks. The strength of the mark refers to where it falls on the aforementioned descriptiveness spectrum. For example, an arbitrary or fanciful mark is more likely to be protected, while a descriptive mark is less likely. A court will weigh all of these factors, however some are more important than others. For instance, the similarity of the marks will often be the determining factor.
Dilution
Dilution is another way to infringe a trademark. This occurs when the use of a similar mark either “blurs” the distinction between the two, or “tarnishes” the reputation of the similar mark.
This infringement claim requires that the mark being infringed is a “famous mark.” The mark must be famous to the general public, not just to a niche group. An example of a famous mark that could be diluted is “Louis Vuitton.”
False Advertising
False advertising occurs when someone, likely a competitor, makes a material false statement in a commercial advertisement about your company, and the statement deceives the audience, and your company has been injured as a result of the false statement. This is a less common cause of action, as it involves a competitor making false claims about your business through advertising.
What are My Rights if Someone Infringes My Trademark?
If someone is infringing your trademark, the foremost goal is to get them to stop. There are a few ways you can accomplish this. A common first step is to send a cease and desist letter. This can help to avoid costly and time-consuming litigation, and is often an effective way to end the infringer’s conduct. A cease and desist letter essentially informs the infringer of their infringing conduct, and demands that they comply and stop their infringing conduct. It is possible that the infringer does not know that what they are doing is illegal. An attorney can draft the cease and desist letter, which may cause the infringer to take the demanded action more seriously.
The next step after a cease and desist is pursuing formal litigation, if the accused infringement does not stop. This involves filing a complaint and initiating the lawsuit. This can be a more lengthy and costly option, but it is essential to protect your trademark from ongoing infringement, which can hurt your business in the long run.
Under the Lanham Act, federal courts can issue injunctions to stop infringing or diluting conduct. Injunctive relief is the most important remedy in infringement and dilution cases. This is because monetary relief (in the form of damages) is often inadequate to prevent resulting harm to the mark owner's brand from continued use by an infringer.
Federal trademark protection is the strongest way to protect your trademark, as common-law protection has certain limitations. For example, common-law trademarks are geographically limited in scope of protection, and are generally protectible only in state, not federal, courts.
An Attorney Can Help You Navigate Trademark Rights
Whether you have a registered trademark and want to pursue infringement action, or are deciding whether or not to file for trademark protection, the BCR Firm would be happy to help and discuss your options.
Please do not hesitate to reach out here.
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