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Trademarks are Not Do It Yourself

By Philip L. Marcus, Esq.

of Your IP Attorney . com

Recently I gave a seminar on protecting your brand—your business identity—from being stolen.  I said the most important legal tool for this is trademark registration.  Then I made a bit of a mistake, by letting the audience think it is safe to choose a trademark without involving an attorney from the beginning.  It isn’t.

“Why not—it’s my business and I should be able to choose my trade name or logo, right?”  Not exactly—read on.

Actually not.  If anyone could do this then buyers would quickly become hopelessly confused about what goods and services comes from what sources.  The  Trademark Act (Lanham Act) is designed to prevent that by creating a system of registration, a bit like registering who owns what cars.

But unlike cars, trademarks are often bitterly contested by competing would-be owners (registrants).  And these people are assisted by able lawyers who each argue why their client is entitled under the law.  It makes for a pretty subtle set of rules about who gets to own.

It also means that there are rules, much like the rules in sports, that the process of deciding who wins go by. The rules are designed for one thing: to make things move quickly and smoothly, but not so simply a non-professional can keep up. If you are not a trademark pro you can and probably will get balled up in the  subtlety of rules of who wins, and the complexity of the rules the game proceeds by.

Now to the rules of who wins.

An occupied space requiring bright stars.

You can think of a trade name or a logo existing in a space already occupied by other marks.  Imagine a large rectangular canvas with dots, blotches, and swaths, each representing a trademark—words or a logo.  

•    Imagine the vertical dimension represents the  breadth of product offerings under the brand, single products or lines of multiple products. (For instance, Nike’s Swoosh represents not only shoes but also clothing and other products in many colors and materials) 
•    Now imagine the horizontal represents geography—regional, national or even global.  (Nike sells all those products in Oregon but also Oklahoma and probably Okinawa.) 

If your mark is close to others it may be covered--or worse-- cover a mark already there.  The law of trademark is much concerned with this covering or, as it is called, “confusion.” As you can see, breadth of products and of geography are both important determining if the marks might cause confusion. 

The trademark statute, the Lanham Act, also requires a mark to be “distinctive” to be registered. So, to register a new mark it must be distinctive and not cover a spot already on the canvas. A mark that merely describes a product or service or its vendor will not work.

What can provide distinctiveness is a mark that is by itself visible among others—something cool, dynamic, and memorable.  It is fanciful, uncommon, and not merely a description of the business.  “Juicy Hamburgers” is not distinctive, nor is “flavorful”, “mouth-watering” or even “beefy.”  What about “Checker?”  “Stampede?” “Wendy’s?” “Brazier?”  All but “Stampede” are actual brand names of hamburger chains.  (Stampede is a line of truck products like hood protectors and side window deflectors; I just threw it in.)

What makes it a “bright star”?

It would not be easy for a customer to distinguish Brazier from Brassier if both sell burgers.  That is especially true if, as is the case, one is a national brand (part of Dairy Queen).  Someone applying for Brassier will not then likely be allowed registration for fast food.  If on the other hand Brassier was intended to be a trade name for musical band it is not likely to be confused. 

What if we take instead the case of “Giant Food?”  It is a large supermarket chain in the mid-Atlantic but not elsewhere.  If someone wanted to start a supermarket in, say, Oregon under that name then probably it would be OK.  Unless …  Giant Food mid-Atlantic opposed and showed plans to expand to the west coast, with reports from real estate spotters and other officials who had visited or vetted.  Probably a different story.  But a Giant dude ranch in the mid-Atlantic is likely to be registered.

It is not that trademark lawyers know much more than you do, although somewhat more, and they know the ins and outs of the procedures in the TM Office. (And that makes applying for a trademark registration ore an art than a science.)   But in law school lawyers learn how to gather relevant, provable facts, and to marshal the facts for their clients.  This all leads to two strategic lessons to be learned about creating good trademarks:

Lesson 1:  Early in your branding process figure out trademarks you can register.
•    While there is time to make a change without more investment in time and money than you can afford to waste. 
•    Don’t focus on your own aesthetic but on what will stick in your customers’ minds and be positive.  You are not naming your baby—others have a say, especially competitors.
•    Don’t depend on a logo or brand name to describe what you do—your ads and networking must do that. 
•    You, your artist, your branding expert and your trademark lawyer must work in concert to come up with what can be registered, will be good marketing, and later can be used effectively against any other encroaching (infringing) brand.

“Target” and the bull’s-eye logo are great, not because they describe a department store, but because they stick in your mind after a few exposures.  So is the “Oracle” brand for database software.  (It sticks in your mind, while also satisfying the company founder’s narcissism and grandiosity.)

“Juicy” as a brand name for hamburgers probably will not fly; “Bubba” does because it does not describe the burgers but the customers.  Nor will “clean” work for a clothing detergent, while “Tide” does, as did “Duz” for washing dishes (before dishwashers).

Lesson 2: trademarks are not do-it-yourself territory.  (They differ from copyrights, where anyone can write a book or take a photo, and register it.)  The factors that help a court decide whether one TM is infringing another are multiple. 

The 9th Circuit (basically the western states, including Oregon) has identified eight factors the trial courts should use to evaluate the evidence in cases of alleged trademark infringement:
(1) Strength of the mark, fanciful v. descriptive or generic;
(2) Proximity of the goods;
(3) Similarity of the marks;
(4) Evidence of actual confusion if any;
(5) Marketing channels used;
(6) Type of goods and the degree of care likely to be exercised by the purchaser;
(7) Defendant's intent (good or bad) in selecting the mark; and
(8) Likelihood of expansion of the product lines.

AMF Inc. v. Sleekcraft Boats, 599 F. 3d 341 (9th Cir. 1979). 

The 4th Circuit—including Maryland—uses 6 of the 8 factors, but has railed against mechanical application of the factors.  It has focused on the likelihood of confusion even if there has not been actual confusion shown.

But in a 2011 case the 9th Circuit mentioned above said that specifically for purchases of keywords for on line ads--think Google “Adwords”--the factors are narrower: similarity of the marks, the relatedness of the goods or services, and the marketing channels used, even if the defendant intended to divert business by using plaintiff’s registered brand name for its own keywords. 

So don’t try to pick a mark based on what you like and then hire a lawyer to try to ram it through the Trademark Office or defend it in an infringement case. You will almost certainly fail.  Bring in the lawyer at the start of the process and avoid the expense and heartache of abandoning a mark you love but cannot have.

Intellectual Property is the Art of Law [sm]