When starting up a business or launching a new product, choosing a brand name can be a challenging task. There are many marketing aspects to ponder, but there are also legal considerations in protecting your brand and reducing your chance of receiving a nasty letter from a trademark attorney demanding you cease and desist all use of your brand.
The underlying concept of trademark law is consumer protection. From this starting point the rest of trademark law flows.
There are 4 central points for understanding the basic rules governing trademarks:
1. Trademarks identify the source of goods/services.
Imagine standing in the coffee aisle at the grocery store and seeing a package displaying the Starbucks logo. That trademark assures you that the source of the coffee is Starbucks Coffee Company. If another coffee company uses a similar logo (or name) to Starbucks, it may create confusion as to whether the coffee came from Starbucks, or elsewhere. This is trademark infringement because the use of a similar mark in connection with the same (or related) product has the potential of misidentifying the source of the product.
2. Trademark infringement and confusingly similar marks.
The consumer protection aspect of trademark law is evident in the trademark registration process. The United States Patent and Trademark Office (USPTO) reviews each application for the likelihood of confusion with another registered trademark, which is grounds for rejection of an application. It is also grounds for a claim of trademark infringement.
In deciding if a trademark is confusingly similar with another trademark a number of features are assessed. Not only is the appearance of the trademark important, but equally significant is the meaning, sound, and commercial impression of the trademark.
A trademark with the same meaning of another trademark may be confusingly similar even though there is no similarity in appearance or sound between the two marks. Continuing with the Starbucks example, a trademark of “twin tailed mermaid coffee company”, could be considered confusingly similar with Starbucks’ trademark because its meaning is the same even though there is no similarity in the appearance of the word “Starbucks”.
A trademark may be confusingly similar to another trademark when it sounds the same as another trademark. A recent example is Exit 6 Pub naming one of its beers “Frappicino” which sounds identical to Starbucks Coffee’s “Frappuccino” trademark. Starbucks took issue with this branding tactic and their attorneys sent Exit 6 Pub a firmly worded letter. Exit 6 Pub responded with a clever apology that seems to have put an end to it, which you can read more about here.
Whether Starbucks would have been successful in legal proceedings against Exit 6 Pub is subject to debate. But, this raises another key point about trademarks, that trademarks are only protected in relation to the listed associated goods or services.
3. Trademark protection is limited to list of associated goods/services.
Trademark laws prohibit use of a similar trademark only in relation to the same or related goods. Starbucks’ Frappuccino associated goods are “coffee, tea, cocoa and espresso beverages, and beverages made with a base of coffee, tea, cocoa and/or espresso, ready-to-drink coffee, ice cream, milkshakes and frozen confections”. In Exit 6 Pub’s case, if the beer at issue was a coffee stout, then it may possibly be a “related good”. However, if the beer at issue was purely a stout, then Starbucks would have a greater challenge in defending their position, although its not entirely clear if beer could be a “related good” under a general category of beverages.
4. Trademark priority is determined by first to file and first use the trademark.
When two or more trademark applications are submitted to the USPTO for the same or similar trademarks in association with related goods or services, the earliest filed application will trump all later applications. The only exception to this rule is when an applicant can prove actual use of the trademark that pre-dates the filing date. This exception exists because using a trademark creates “common law” rights that are limited to protection within the geographic location of trademark use.
A key benefit of federally registering a trademark is the legal presumption of ownership of the trademark and the exclusive right to use the mark nationwide in connection with the listed goods or services. For this reason, trademark registration is critical when doing business through the Internet or on a multi-state basis.
Another benefit of registration is a presumption that your trademark is not confusing with another registered trademark. A recent dispute illustrates this point, where Nautica took an aggressive position against Bellingham, WA based Nautigirl Brand LLC’s use of their registered trademark on the basis of confusion in the marketplace.
Without registration, Nautigirl would have trouble asserting a defense against Nautica. The USPTO approval of Nautigirl’s trademark suggests that the USPTO considered it to be distinct enough from Nautica’s trademark to be registered. While only time will tell the final result of this dispute, the lynchpin of Nautigirl’s defense is the registration of their trademark.
While this article only touches the tip of the trademark iceberg, the examples above give a good overview of the importance of protecting your business brands. When it comes to fighting a trademark infringement claim the legal costs can quickly escalate into the tens of thousands of dollars. However, many trademark attorneys offer flat fee trademark registration legal services, with legal fees typically coming in well under $2,000 for a basic application without any issues. In an arena where the large company wins not on merit but on deep pockets this is where an ounce of prevention can save a pound of cure.
For more information on trademark registration procedures visit the USPTO website.
Dawn Deans is a business attorney in Bellingham, WA. She advises small business owners on all legal matters affecting their businesses from start up to winding down. More information about her and her law firm can be found online.
Disclaimer: The above information is general in nature and is not to be taken as legal advice for your particular matter. Please seek professional advice if you are contemplating using or registering a trademark.