This blog is the second in a series of articles Finkel Law Group is publishing to provide our readers with a broad overview of trademark law in the United States. It covers the nature of registrable trademarks under the Lanham Act and explains how to evaluate whether your desired mark is available for registration.
Types of Trademarks
Trademark protection is a legal mechanism designed to safeguard brand names, logos, symbols, slogans, and other distinguishing marks that identify and differentiate goods or services in the marketplace.
Under the Lanham Act, a trademark can include words, names, symbols and devices (or combination) to identify and distinguish goods.
A service mark is functionally the same as a trademark but identifies and distinguishes the source or origin of services instead of goods. In some circumstances trademarks may consist of colors (the orange Veuve Clicquot bottle), sounds (Yahoo! yodel), and scents (PlayDoh).
Trade dress may also be protectable as a trademark. Trade dress is the overall appearance of a good or service, like a product’s packaging or design, a product feature, or combination of product features.
A collective mark is a type of trademark or service mark adopted by a cooperative, association, or other collective group – think charitable organization, labor union, or college fraternity – for use by individual members of the group.
A certification mark is a word, name, symbol, or other device (or combination) used by an individual or entity to certify its goods or services have certain characteristics or meet certain qualifications established by another individual or entity (think free trade coffee).
Requirements for Federal Protection
To be eligible for protection under federal trademark law, a proposed mark must be (1) distinctive, and (2) used in interstate commerce.
Distinctiveness is the ability of the mark to identify a single source of goods or services. It can be either inherent or acquired. A mark is inherently distinctive if it’s immediately capable of identifying a source of origin for a good or service. Inherent distinctiveness is generally analyzed along a spectrum of distinctiveness ranging from generic terms, which are not protectable under any circumstances (think band-aid or Kleenex), to highly distinctive fanciful marks, which have the broadest scope of inherent protection (think Google).
Marks that aren’t inherently distinctive can acquire distinctiveness, and become eligible for trademark protection, through use and promotion over time. Terms that describe a product attribute or characteristic may be protectable if they acquire distinctiveness in the marketplace. Under the Lanham Act, a mark that has been in substantially continuous and exclusive use for five years is entitled to a presumption of acquired distinctiveness. All those marketing dollars finally paid off.
Federal trademark rights arise through use of a protectable mark in interstate commerce in connection with goods or services. For federal trademark purposes, commerce is generally includes interstate commerce or commerce between the U.S. and a foreign country. Under state law, trademark rights arise through use of the mark in commerce within the state.
Searching and Clearing Possible Marks
Before using or seeking to register a trademark, your company should conduct a trademark clearance search to make sure the mark is available for federal registration for the goods or services on which you hope to apply it.
Trademark clearance typically involves conducting one or more trademark searches, typically in the federal database maintained by the U.S. Trademark Office, to determine if your desired mark may be available. The first search is typically a preliminary or “knock-out” search to determine if your proposed mark is already being used in interstate commerce by another company in the same or similar field of use. This search allows you to narrow or prioritize a list of candidate marks by eliminating any marks with obvious conflicts. It also allows you to identify any obvious conflicting marks before investing in a more comprehensive, and expensive, full trademark search.
If you successfully complete a knock-out search, and do not eliminate a candidate mark that you like, you should complete a full U.S. trademark search. These searches are available from several outside search vendors or a law firm with a robust trademark registration practice. Then fully analyze the search results, which will give you a more complete understanding of the availability of the proposed mark for use in the markets where you want to play and whether registration is possible. A full analysis will also give you the best sense of the potential legal risks posed by using your desired mark and provide a basis for defending your good-faith adoption of the mark in the event of a legal challenge.
Finally, once you identify the potential legal risks posed by your mark, you’re in a better position to take additional steps to mitigate the risks posed by potential obstacles disclosed in the searches. You can do this by conducting use investigations of potentially conflicting marks to determine if they’re actually being used. You can seek the consent or co-existence agreements from third parties that own and are actually using potentially conflicting marks. Your attorney can petition the U.S. Trademark Office to cancel marks with conflicting registrations.
For a checklist of information you should collect before your attorney conducts a trademark search and clearance for your desired mark, contact us at info@finkellawgroup.com. So when we publish our next blog on trademark registration you’ll be ready to go.
About Finkel Law Group
Finkel Law Group, with offices in San Francisco and Oakland, has more than 25 years of experience helping our clients navigate registration of their trademarks through the U.S. Trademark Office, licensing those trademarks for commercial gain, and enforcing trademark rights in administrative proceedings before the TTAB and in federal court. When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you in understanding new laws that may affect your company’s intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.