Trademark Attorney
Helping businesses add to their net worth
A trademark, in short, is a brand name. A "trademark:" relates to goods, while a "service mark" relates to services; both trademarks and service marks can be any word, name, symbol or device, or any combination used, or intended to be used, in commerce. Even colors, sounds, and scents may qualify for protection! People generally use the term trademark inclusively to refer both to trademarks and service marks, and following the convention, so do I.
Trademarks have three main functions: (1) trademarks differentiate the goods or services of one business from another business; (2) trademarks identify the source of the goods or service, i.e. identify the business itself; and (3) trademarks ensure a brand's consistent level of quality, which is not to be confused with ensuring a particular level quality.
For example, take two large competitors in the beverage industry: pepsi®* and Coca-Cola®*. First, when at a vending machine, the pepsi®* label lets one know the beverage is a pepsi®*, and the same goes for Coca-Cola®*. Second, the Coca-Cola®* label indicates that the beverage comes from The Coca-Cola Company, while the pepsi®* label indicates that the beverage comes from PepsiCo. Third, regardless of whether one buys a Coca-Cola®* or pepsi®* beverage in Los Angeles, CA, or New York, NY, the products will be of a consistent quality: a pepsi®* in New York will have the same flavor as a pepsi®* in Los Angeles, and the same goes for a Coca-Cola®*. However, ensuring a consistent level of quality does not ensure that any product meets a particular level quality. For example, though many people enjoy both pepsi®* and Coca-Cola®* because they each are consistent regarding their respective flavors, that does not necessarily entail that drinking a gallon of both every day is healthy. Thus, again, ensuring a consistent quality of a product is not to be confused with ensuring a particular level of quality.
However, these three main functions are not the same thing as the requirements for registration of a trademark. Even though the source of the goods or services may be unknown, a mark may still be registered. The United States Patent and Trademark Office (the "PTO") requires a mark to be capable of distinguishing an applicant's good or services before the PTO will issue a registration for the mark. Those marks which actually distinguish goods or services are said to be "distinctive." The difference between marks capable of distinguishing goods or services and marks which actually distinguish goods and services is further discussed below.
When determining whether a trademark is distinctive, courts and attorneys classify trademarks into one of five areas on a "distinctiveness spectrum." Beginning with the least distinctive and ending with the most distinctive, a trademark can be categorized as (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. A generic mark is never distinctive and never entitled to registration as a trademark, while suggestive, arbitrary, and fanciful marks are usually entitled to trademark protection because the law deems them to be inherently distinctive. Descriptive marks can sometimes be registered on the Principal Register as a trademark if they have achieved "secondary meaning." The following is a scale to help illustrate the concept:
Generic marks are not distinctive and the PTO will not register generic marks because they simply identify the goods themselves—indicating nothing distinctive—and registration of a generic mark would be tantamount to monopolizing the use of a word. For instance, an apple farmer who sells apples cannot apply to register the mark "apples" for her apples because to do so would deny all the other apple farmers in the United States the ability to use the word "apple" when selling their goods. In contrast, the intrinsic nature of suggestive, arbitrary, and fanciful marks serves to distinguish goods or services automatically. For instance, Apple®* is an example of an arbitrary mark in relationship to computers and computer programs, and Kinko's®* is an example of a fanciful mark in relationship to photographic reproduction services.
This leaves descriptive marks: a descriptive mark immediately conveys knowledge of the ingredients, qualities, or characteristics of the goods or services with which the mark is used. The registration of descriptive marks is more complex because it also requires an explanation of the two sections of the Federal Trademark Register, namely, the Principal Register and the Supplemental Register. Generally speaking, most descriptive marks can be registered on the Supplemental Register, but not all descriptive marks can be registered on the Principal Register. A descriptive mark can only be registered on the Principal Register if it has acquired secondary meaning by consumers—sometime called acquired distinctiveness. Secondary meaning does not come automatically, but is usually acquired after a business has become established and consumers recognize the mark. In other words, regarding distinctiveness, there are two broad categories of descriptive marks: (1) merely descriptive marks which have not acquired secondary meaning, and (2) descriptive marks which have acquired secondary meaning. A well-known example of a descriptive mark which has acquired secondary meaning is Best Buy®*.
Above, a difference was noted between marks capable of distinguishing goods or services and marks which actually distinguish goods and services, and the difference mainly deals with the Principal Register, the Supplemental Register, and descriptive marks. A merely descriptive mark is only capable of distinguishing goods or services, while a descriptive mark which has acquired secondary meaning actually distinguishes goods and services. Inclusion of a trademark on the Principal Register offers much more protection to the owner of a mark than inclusion on the Supplemental Register; however, a mark can only be included in the Principal Register if it actually distinguishes goods and services. Thus, the Supplemental Register is generally reserved for merely descriptive marks. Registration of a merely descriptive mark on the Supplemental Register gives, among other things, the mark time to acquire secondary meaning so that the user of the mark can eventually register the mark on the Principal Register, gaining more Federal Trademark Rights and the protections associated therewith.
A trademark's strength is partially determined by where it falls on the "distinctiveness spectrum" above. Marks that are further right on the spectrum are consider "stronger" than marks further left on the spectrum. Thus, arbitrary and fanciful marks are generally considered "stronger" than suggestive marks, which are generally considered "stronger" than descriptive marks which have acquired secondary meaning. Also, the less the mark relates to the industry or business, the stronger the mark.
Consider the two different "apple" examples above. The first example relates to the apple farming business, while the second example relates to computers and computer programs. This explains two important facets of Federal Trademark law. First, it is an example of how a mark can be strong or weak depending on the industry or business in which the mark is used. "Apple" is a strong mark in relation to computer and computer programs, but a weak mark in relationship to apple farming. Second, it demonstrates how all trademarks must be associated with a particular class of goods or services. Thus, the individual developing a business not only selects the mark, but the class of goods or services to which the mark relates. A mark need not be restricted to one class, but a mark is rarely, if ever, used in association with all classes of goods and services.
*All trademarks are the property of their respective owners and not of the Law Office of Ashkan Najafi, P.A.
The Law Office of Ashkan Najafi, P.A. can help you protect your mark by preparing and filing a federal trademark application. Mr. Najafi takes pride in offering clients the legal insight that comes with experience as you register marks with the United States Patent and Trademark Office:
For general information purposes only, Mr. Najafi has answered some frequently asked questions about trademark use and application below. Please call or contact Mr. Najafi with your specific questions about filing your trademark application and/or enforcing your trademark rights against third-party infringers.
1. Domestic trademarks
The main federal trademark statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996. 15 U.S.C. section 1051, et seq. The United States Patent and Trademark Office (USPTO) grants federal trademark rights. Owning a federal trademark registration on the Principal Register provides several advantages, including:
- Public notice of your claim of ownership of the mark;
- A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
- The ability to bring an action concerning the mark in federal court;
- The use of the U.S. registration as a basis to obtain registration in foreign countries;
- The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
- The right to use the federal registration symbol ®; and
- Listing in the United States Patent and Trademark Office’s online databases.
Trademark attorney Ashkan Najafi obtains trademark registration for his clients. In addition, Mr. Najafi helps trademark owners take steps to avoid trademark litigation, where possible, and bring action against authorized infringers when a violation has clearly occurred. He offers clients a big-picture view of the consequences/benefits of federal trademark registration and branding decisions.
2. International trademarks
In today's global economy, registering a trademark abroad can be worthwhile. The internet puts every brand about one click away from potential misappropriation of your proprietary mark.
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization in Geneva, Switzerland administers the international registration system.
The resulting "international registration" serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark may be protected in their jurisdiction. Neither the Madrid Protocol nor the Madrid Agreement provide for registration of an "internationally effective" trademark.
The Madrid Protocol allows you to register your brand name or treaty in more than 80 countries, but some countries including Canada and Mexico are not members. Trademark attorney Ashkan Najafi can advise you whether national and international trademark protection is appropriate for your true business goals.
3. State trademarks
If a brand is not used in interstate commerce, an inventor or business may only apply for a trademark at the state level. Each state has different statutes regarding registration and enforcement of state trademark rights.
The term "common law" indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark. Common law trademark rights are limited to the geographic area in which the mark is used. Thus, if a coffee blend is sold under the name BLASTER in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company's common law rights to the mark would prevent them from entering the California market.
Since no registration is required in order to establish common law rights to a trademark, it can be difficult to discover whether anyone has trademark rights in a particular mark. This is the legal background for the difficulties and expenses involved in trademark clearance searches. If registration were required for trademark rights, clearance searches would only need to examine trademark registers. Under U.S. law, however, an attempt must be made to discover these common law rights. If you have any questions, we invite you to schedule a free initial consultation with Mr. Najafi.
4. Unfair competition
Some examples of unfair competition include: infringement of trademarks and service marks; dilution of good will in trademarks; use of confusingly similar corporate, business and professional names; use of confusingly similar titles of literary works on other literary property, and on commercial goods; the appropriation of distinctive literary and entertainer characterizations; simulation of container or product configuration and of trade dress and packaging; infringement of the right of publicity; misappropriation of valuable business values; "bait and switch" selling tactics; false representations and false advertising; "palming off" goods by unauthorized substitution of one brand for the brand ordered; theft of trade secrets; filing a groundless lawsuit or administrative challenge as an aggressive competitive weapon; sending cease and desist letters charging patent infringement before a patent has been granted; an unreasonable rejection of goods shipped under contract; [and] physically obstructing entrance to a competitor’s place of business and harassing its customers.
Unfair competition may further include false designations of origin and false descriptions forbidden and misappropriation.
An injured party may bring federal unfair competition claims under section 43(a) of the Lanham Act. Unlike trademark infringement claims under the Lanham Act, unfair competition claims do not require any federally registered marks. As a result, section 43(a) involve all federal trademark infringement claims and extend further to cover other unfair business practices. Section 43(a) claims break down into two categories: likelihood of confusion and false advertising.
A. Likelihood of Confusion
As in federal trademark infringement analysis, a likelihood of confusion exists when there is confusion as to the source, sponsorship, or association between goods or services. The elements to prove a section 43(a) claim based on likelihood of confusion are:
- One uses any word, term, name, symbol, device, or combination,
- in interstate commerce,
- which is likely to cause confusion as to source, sponsorship, or association.
The elements for a section 43(a) claim of likelihood of confusion are comparable to trademark infringement except one does not need a federally registered trademark.
B. False Advertising
A section 43(a) claim of false advertising requires a showing that a party made misrepresentations in the course of business. The elements an alleged injured party must show to sustain a section 43(a) claim based on false advertising are:
- a party uses any word, term, name, symbol, device, or combination,
- in interstate commerce,
- to misrepresent the nature, characteristics, qualities or geographic origin of its or another's goods or services.
Typically, actions that fall under a claim of false advertising are the copying of advertising, misrepresentations in advertising (literal and by omission), and advertised goods differing from delivered goods.
Whether you choose to seek judicial relief may depend on a number of factors: the need, the cost and the possible outcome. It might help you to know that these are the criteria courts use to assess the validity of an "unfair competition" claim:
- The similarity between the conflicting marks
- The type of business your competitor is engaged in
- Geographic scope of your trademark or service mark
- Marketing channels used by you and your competitor
- Degree of care likely to be exercised by purchasers in selecting goods
- Your competitor's intent when selecting their mark
- Evidence of actual consumer confusion
U.S. Trademark Reg. No.: 3,079,767 |
U.S. Trademark Reg. No.: 3,932,574 |
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U.S. Trademark Reg. No.: 3,370,419 |
U.S. Trademark Reg. No.: 3,454,978 |
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U.S. Trademark Reg. No.: 3,400,979 |
U.S. Trademark Reg. No.: 3,571,649 |
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U.S. Trademark Reg. No.: 3,799,204 |
U.S. Trademark Reg. No.: 3,982,251 |
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