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| MISC ARCHIVES |
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Trademark Advice
Written by David Diamond
*Disclaimer* : The following article is for informational purposes only and should not be used in place of professional legal advice. Anyone interested in trademarks and copyright related issues should consult a lawyer.
(NOTE: The following was written in reply to a post from someone whose
company's name had been challenged by another company for trademark
infringement. It is the opinion of the author who is *not* an attorney,
and should not be considered legal advice.)
First off, I'm not a lawyer. I once wrote a feature story on domain name
issues with regard to legal use of names, etc. I had to interview a slew
of copyright lawyers and experts in the field. Further, my company
(http://www.herocompany.com) develops customer communications materials (user
guides, Web sites, product brochures, white papers, CD-ROMs, etc.) for
business, so I'm exposed to the legal considerations that we need to make
when developing content for clients. I have an opinion about how
trademark law works, and it follows:
 1. Trademark law is based on the likelihood of consumer confusion, not
necessarily technically similar or phonetically similar language. So, for
example, a company selling hamburgers could not call themselves
"MacDonalds." Though it is *technically* not the same word as
"McDonalds," it is similar enough to cause consumer confusion.
2. Part of the determination of the likelihood of consumer confusion is
the type of business. The "McDonalds Tire Company" would probably have no
problems using that name. But the "McDonalds Bakery" might. (Notice I say
words like "probably" and "might." This is because trademark law is
determined by the opinion of a court. It's tough to guess the outcome of
all cases.)
3. Terms that are generic to a given industry will probably not be
granted trademark protection. For example, the word "digital" would be
hard for any one computer-related company to "own" as it is generic and
therefore may be seen by a court to be essential to the description of
other companies in the same field. A food service company would most
certainly not be granted trademark protection for the name "Cooked Food."
Those words are generic in that industry and could therefore be
considered essential to other companies needing to describe themselves.
On the other hand, a video production company calling themselves "Cooked
Food Video Productions" may indeed get trademark protection for the
phrase. In this case, the terms would be considered unique to that field.
Making matters even more confusing, in the United States (and elsewhere),
trademark protection is not, in and of itself, *absolute* protection. The
first business using the name for legitimate commerce actually owns the
name. This is why Microsoft has had to buy off so many smaller companies
along the way that have claimed trademark infringement for products that
Microsoft has similarly named. Even though Microsoft may have gotten a
trademark (or even gone the extra mile to get a registered trademark), if
another company comes along that can prove they were using the term for
legitimate commerce first, a court will uphold that. This is, in part,
why companies are (or should be) so adamant about the proper use of their
trademarks in documentation and advertising. Proper use of the trademark
symbols establishes a public track record.
Equally important, the proper and consistent use of a trademark symbol
tm, (sm), or ® also establishes public "claim" to a mark that helps
prevent it from becoming a industry-generic term. Believe it or not, even
after having a mark for years and having a brand name that is so popular
that people start using the term generically, you can still lose the
protection. One of the ways to protect against this is to use the marks
that describe *your* particular product or company adjectivally. This is
why you will always hear the makers of the following items describe them
as:
Band-Aid ® Brand Bandages
Jell-O ® Brand Pudding
Kleenex ® Brand Facial Tissues
In these examples, the protected words are used as adjectives to describe
a particular product, thereby ensuring that specific notice is given as
to *which* brands of bandages, pudding and facial tissues are mentioned.
Remember, this is all about consumer confusion. "I cut my finger, so I
put on a band aid." "I went through several boxes of Kleenex when I had a
cold." "Can you xerox these for me?" In cases like these, a court could
rule that it was likely that the consumer was not aware of the specific
brand of product that he/she was using, and that these terms had become
generic in those industries. This is why the makers of those products use
their protected marks adjectivally.
I can think of one software product whose name is in danger of become a
generic term for what it does: I say "paint program" and you think...
The very first line of the Photoshop manual reads, "Welcome to the
Photoshop program." They do not say "Welcome to Photoshop," as someday
"Photoshop," due to its overwhelming popularity, might be ruled a generic
term for a computer-based paint program. The phrase "Photoshop program"
establishes exactly what Adobe has received protection for: a software
program. This helps protect their mark. As soon as paragraph two, they
drop the adjective structure.
"I am stuck on Band-Aid brand, 'cuz Band-Aid's stuck on me." This moves
us in to another area important for those who do documentation or
publishing of any kind. Notice in the Band-Aid jingle that the phrase
"Band-Aid brand" is not repeated in the last part of the sentence. Not
only would it have been musically awkward to do so, but it's also legally
unnecessary. Once a proper claim has been made once in a piece--usually
at the beginning--the protected word can be "abused" elsewhere in the
same document. Different companies' legal departments will argue this
point. We had one client whose legal department insisted that their mark
be used as an adjective on a Web site in every case. You can imagine how
awkward this was to read. Other companies (thankfully!) are more
realistic and use the marks, as needed, without going over board the
point of alienating readers.
Trademark law is a very gray area. Even the so-called experts that I
spoke with when doing my feature admitted that no one can guess how
courts will rule in every case.
Here are a few guidelines and resources to consider when choosing a name
for a company or product:
1. Pick a name that is unique in your business field. Better yet, make up
a word of your own. "Java" is not a new word, but it certainly had
nothing to do with technology before Sun adopted it. "Starbucks" is a new
word. Marks like this are easiest to protect, should the need arise.
2. Search public resources to see if anyone has already sought protection
for the same or a similar mark. Two resources that I find useful are:
a. The Network Solutions domain name registry. In this day and age, if a
mark has been protected, it has also probably (but not always) been
registered as an Internet domain name. Domain name registration is *not*
the same thing as trademark protection, but remember, it's who used the
word/term first that will ultimately matter. If someone has registered it
as a domain name, then there is at least some record of them already
using it. (http://www.networksolutions.com/)
b. Search the US Patent and Trademark Office's Web database. Using this
free service, you can easily see if a mark you're seeking has already
been taken. This is not considered a complete search: just because you
don't see a mark listed, doesn't mean that it isn't protected. Read the
site's disclaimers in that regard. But at least if you find the mark
you're seeking already protected for someone else, you need to think of a
new one. (http://www.uspto.gov/tmdb/index.html)
You can also search your city's fictitious business listings to see if
anyone has a company named similarly to the name that you want to use.
And, if you're anywhere near Sunnyvale, California, you can call or visit
the Sunnyvale Center for Innovation, Invention and Ideas. They handle
trademark searches and such for the West Coast of the United States. They
have some official affliction with the US Patent and Trademark office,
but I'm not sure what it is.
For a really great look into the ins and outs of trademark law as it
pertains to running a small business, I recommend the book:
"TRADEMARK: Legal Care for Your Business & Product Name." It's written by
Kate McGrath and Stephen Elias and is published by Nolo Press. I read it
and learned much from it.
And, most importantly, remember that this is all about consumer
confusion. Don't press your luck by choosing something that might be
considered similar to a competitor. If it's challenged, it will require
Big Bucks for you to defend yourself. Be creative in your naming ideas,
do some initial searches to see if any of them are immediate vetoes, and
make sure that things look free and clear before you commit to anything.
That way, should you ever find yourself in court defending your company
or product name, you'll be able to show a paper trail of the efforts that
you went through to secure your name. And hire a trademark attorney that
can take you through all the steps. I am not an attorney. This document
is my opinion and should not be considered legal advice.
ABOUT THE AUTHOR: David Diamond works for The HERO Company, a San
Francisco-based company that develops customer communications materials
for business. (http://www.herocompany.com)
Would you like to add, share, or correct some information? 3D ARK welcomes your contributions. Send mail to: webmaster@3dark.com
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