What's in a name? Sometimes, a great deal of value.
Apple Computers? Nike shoes?
Many of our clients approach the firm to assist them create legal entities to carry out what are often well-considered business plans. Those plans often involve the use of a particular name or logo to describe the business and its products or services.
However, despite taking pains to develop those names or logos, sometimes our clients have not given sufficient thought to investigating whether the use of the proposed name or logo violates the rights of others, and if not, how to properly protect the name or logo.
That's where we at the Chapar Firm can help.
A trademark is a name, phrase, symbol or design or a combination of these elements that is used to identify and/or distinguish the goods of a company. A servicemark is used to identify and/or distinguish the services of a company or individual.
The purpose of having a trademark or servicemark is to prevent any confusion to consumers as to the source of the goods or services. Registering a mark at the federal level provides important legal protection for your "brand" by preventing others from using your mark to sell the same or similar products or services. Federal trademarks are protectable nationwide and for related goods and services. One a federal trademark application is filed, it is searchable through the United States Patent and Trademark Office ("USPTO"), allowing others who may be considering the same name for their similar goods or services to have notice that the name is being used by another.
Not all names are trademarkable. The more descriptive the mark is to the product or service, the less likely it is to be granted exclusive trademark rights. The more "fanciful" or "arbitrary" the mark, the more likely it will be protectable. The more "suggestive" or "descriptive" the mark, the less protectable it is.
Fanciful marks are generally "coined" terms that have no meaning before their use as a trademark. Fanciful marks are afforded the greatest amount of trademark protection. "Starbucks" and Kodak" are examples of fanciful marks.
An arbitrary mark is one that uses a common word having no relationship to the product or service; therefore, they are generally easy to trademark. An example of a arbitrary mark is "Target" or "Apple."
A suggestive mark is one which alludes to some quality or characteristic of the product or service and requires the consumer to use their imagination to determine the exact nature of the mark.
Lastly, a mark that is descriptive is one in which the consumer can identify the product or service provide simply by reading the mark. Descriptive marks are not initally entitled to registration because descriptive marks also describe the products or services of competitors. Descriptive marks may be trademarkable if the owner can show that consumers identify the descriptive term only with that owner. That is usually difficult and expensive to attempt and often the owner is unable to prevent others from using the mark.
Please note that registering a mark does not prevent everyone from using the same mark. Trade names and marks are not registered "generally." Rather, they are registered in particular classes of goods and services. Thus, the registration of "Apple" in computing does not bar an apple grower from using the word "apple" in connection with the sale of fruit.
However, if a mark is famous, in some circumstances it can be protected even in classes in which it was not registrated A famous mark is one that is so famous that it is reasonable to believe that there would be consumer confusion if the mark were used by another, even for unrelated goods and services. A good example of a famous mark is "Coca-Cola."
One registraton of a mark is approved by the USPTO, the owner must aggressively protect the mark to keep it from falling into the public domain. If the owner of a makr allows the mark to be used in unauthorized ways or in ways that cause the consumer to cease identifying the source of the specific goods or services, the protection of the mark may be lost. Further, rights may be lost if the mark becomes generic. For example, the word "cellophane" was originally a protected trademark used to identify the "Cellophane" brand of plastic wrap. The word became so widely used to describe that type of wrap, regardless of the source, that it lost its protection.
Arbitrary marks are common words that are used in such a way that their normal meaning has no relationship to the goods or services to which they are applied.
Trademark law should be an early consideration in any business that markets to the public. An early investment may prevent you from being forced by a prior registrant to give up a name that you have spent a lot of time and money branding. It also can ensure that you have the highest level of protection against those who may infringe upon your name or mark.
Call us with any questions.