Trademarks (for products) and service marks (for services) are source symbols. Consumers often do not care about the identity of the source of products and services they desire, only to recognize by some symbol that the products and services they will buy in the future have the same quality as those they have liked in the past. Trademarks arose from common law, unlike patents and copyrights which have a constitutional basis.1 Now, trademarks are regulated by statute under the Lanham Act (also known as the Trademark Act of 1946).2 This paper will discuss what trademarks are, why they are important, how to register them, the advantages of registration, how to protect trademarks, unfair competition, and deceptive trade practices. In addition, we will provide guidelines as to proper usage of a trademark (which is actually a form of protecting the trademark). What a Trademark Is A trademark is a distinguishing aspect of a product. It is most often a name, but it can also be:
On the other hand, the following are not trademarks:
Statutes provide that any trademark may not be refused registration unless it consists of:
History of Symbols Trademarks are not a recent phenomenon. In the Middle Ages, vendors used "hallmarks" to identify their goods and services to the consuming public.6 Even then, merchants realized that people tend to identify with trademarks and to purchase those same goods over and over. Trademark common law developed to protect those marks that had obtained a secondary meaning, and to prevent the likelihood of confusion that would develop among consumers if the trademarks were not protected. Also at that time, the Courts of England would award damages for infringement. However, trademark protection was valid only where a provider of goods or services was located; it was not global. The Lanham Act (The Trademark Act) The primary purpose of the Lanham Act was to remove the need for a trademark owner to continually prove secondary meaning. A trademark has developed secondary meaning when it is continuously and exclusively used, and consumers have come to associate that specific trademark with a certain product.7 Once a trademark is registered, prima facie secondary meaning exists. Registration is advantageous because if affords remedies for trademark infringement, such as injunction or money damages. Plus, one avoids the time and expense of proving validity or secondary meaning over and over. Principal Register. Trademarks are afforded more protection when they are registered. An owner of a trademark may register that trademark on a Principal Register, if he has either a trademark used in commerce, or a bona fide intention to use a trademark in commerce. To so register, he need simply fill out an application, submit drawings of the trademark, and pay a fee.8 Registered trademarks are issued certificates of registration, which serve as prima facie evidence of the validity of the trademark.9 Trademark owners also use ®, or "Reg. U.S. Pat. & Tm. Off." to put the world on notice of the trademark. Each trademark is valid for a period of ten (10) years. The exception to this rule is that the commissioner shall cancel the trademark if the owner fails to submit an affidavit that the mark is used in commerce six (6) years after the trademark is issued.10 A trademark owner may renew his trademark for a period of ten (10) years upon application and payment of an additional fee during the window of six (6) months before the expiration of the certificate of registration until three (3) months after the expiration.11 All trademarks are published in the Official Gazette of the Patent and Trademark Office.12 Supplemental Register. The Supplemental Register affords registration to those trademarks not otherwise registerable on the Principal Register. Most often, registration on the Principal Register was denied because the mark lacked distinctiveness, but met the other requirements. The Supplemental Register began in 1910 in a treaty signed in Buenos Aires. Originally, the Supplemental Register was set up to allow registration of marks that had already been registered in a foreign country. Now, that limitation no longer exists. To be registerable on the Supplemental Register, a mark must be capable of distinguishing the applicant's goods and services, and may consist of:
Trademarks registered on the Supplemental Register are also entitled to use the ® symbol. Concurrent Uses Concurrent Use registration allows more than one user to register the same mark, as when very different items are at issue, and there is no likelihood of confusion.14 If both users were using the trademark at the time the earliest application for registration was filed, and if the commissioner determines that no confusion, mistake or deception is likely from the continued use by more than one person, then concurrent registrations may be issued to such persons.15 Incontestability If the holder of a registered trademark has used that trademark continuously for five (5) consecutive years, prior to the date of its registration, and the trademark is still in use in commerce, the right of the owner to use that mark is incontestable.16 Obligations of Trademark Owner A trademark owner has a duty to protect the public. The owner must diligently pursue infringes, or else there is no reason to have a trademark. When infringes are found, notice letters should be sent to the infringing party and litigation should be considered. In addition, trademark owners must use their trademarks, or all rights to the trademark disappear. Not only can one register a trademark through the Patent and Trademark Office; one can also register trademarks in the various states. In Texas, to register a trademark, the trademark must actually be used. Texas considers marks to be used when they are placed on goods, their containers, related displays, or tags or labels attached to goods, and the goods are sold, displayed, or distributed in Texas.17 To register, a trademark owner must file an application giving the name, describing the goods, and providing other information as required by statute. At that time, the trademark owner must also submit samples of the trademark as used, and remit a filing fee.18 Texas also divides trademarks into various classes, which must be indicated on the application form. For example, some of those classifications are:
There are 34 classes in all. The classes are not defined anywhere in the statutes, and it is up to the applicant to indicate the appropriate class. A registrant can renew a trademark for ten (10) more years by filing the appropriate form and paying a fee within six (6) months before the expiration of the trademark registration.20 If a trademark registered in Texas is infringed within the State of Texas, the owner may have relief such as an injunction against an infringer, damages, or destruction of infringing goods.21 The underlying purposes of the Texas DTPA are to "protect consumers against false, misleading, and deceptive business practices, unconscionable actions, and breaches of warranty and to provide efficient and economical procedures to secure such protection."22 The DTPA contains a "laundry list" of prohibited activities, among them:
An aggrieved consumer may obtain the amount of actual damages found at trial, plus two times the part of the actual damages which does not exceed $1,000. In addition, if the court finds that a defendant knowingly committed his acts, the consumer may receive up to three times the amount of actual damages above $1,000. The court may also issue appropriate injunctive or other relief it deems proper.24 Trade dress has been defined as "words, names, symbols, and devices, alone or in association with other matter, including but not limited to graphic and pictorial indicia, style, and placement of script, color, and the totality of individual components of a label, point of sale display or even the interior of a building which conveys, or is susceptible of conveying, a unitaey, source generated, commercial impression."25 To prevail in an action for trade dress infringement, an owner must prove that (1) his trade dress is inherently distinctive or has required secondary meaning; (2) the trade dress is non-ftinctional; and (3) there is likelihood of confusion.26 Most infringement actions are brought under the likely confusion criterion. Courts will consider the strength of the trade dress, the nature and quality of the goods, the intent of infringer, and the sophistication of likely customers when deciding actions involving trade dress infringement. One of the more difficult aspects in this area is determining whether a feature is functional or not. A court has defined a functional feature as "one which is shared by different brands that is costly not to have."27 If a feature is essential, then it is functional; however, if the feature is arbitrary, likely it is a non-functional feature. The statutes pertaining to unfair competition are known as the Federal Trade Commission Act.28 The Act prohibits false advertisements that will affect commerce of food, drugs, devices, or cosmetics.29 An exception applies to publishers, broadcasters and other disseminators of advertising, who will not be liable for false advertising unless they refuse to reveal the party responsible for the advertisement to the FTC.30 "False advertisement" is defined as "an advertisement, other than labelling, which is misleading in a material respect."31 The penalties for violation of the Act include injunctions and fines.32 Many trademarks are lost through improper usage. It is very important to remember that trademarks are adjectives that describe the generic product and do not become substitute nouns for the actual product. For example, "thermos", "cellophane" and escalator all used to be trademarks and have now become known as actual terms for the device they once described. Examples of trademarks which have been confused by the general public are:
As one of Xerox's own ads states, "Not even Xerox can Xerox." What they can do is make copies on a Xerox copier. Proper usage does not begin with the public; it begins behind closed doors with the entity using the trademark. Even informal interoffice memos should make proper use of a trademark. For example, trademarks could be in quotations, capitalized, in different color ink, or in a different type font. Advertising should follow these same guidelines as well. Furthermore, it is the duty of a trademark holder to educate the public about the trademark. The Xerox example above illustrates that point quite well. By treating a trademark like a valuable asset that it is, a trademark owner can insure that the trademark remains his alone.
|