Because a large portion of businesses invest their resources into developing a brand name which is readily identified with the type of goods or services a business provides, the law protects that investment as a Trademark or Service Mark. A Trademark is another name for brand name and is used to identify the source of a good. A Service Mark is a name for a brand name used to identify the source of a service. Some common brand names are Coke, H&R Block and Nike. A mark (including trademarks and service marks) can either be a word, phrase, symbol or design used to identify the source of the good or service and distinguish them from the goods or services of others. Trademarks, Copyrights and Patents are three distinct rights, and each provides different types of protection. Trademarks, unlike copyrights and patents, provide protection based on use and can be in perpetuity
As well as identifying the goods and services, a mark serves as a guarantee of quality. If you purchase a pair of shoes from Nike, you know what to expect. Additionally, if you buy a hamburger from McDonald’s, you understand what you will be getting.
While trademarks and service marks are the best known marks, there are others:
- Trademarks are used on products (goods) (Hostess Twinkies, Dell computers).
- Service Marks are used to identify services (BURGER KING restaurant, WALT DISNEY WORLD amusement park).
- Collective Membership Marks identify members of an organization, association or union Farmland (farm coop), IEEE (engineering society).
- Collective Trademark/Service Marks are used to identify the products or services of all of the members of an organization (Better Business Bureau for information services relating to business practices).
- Certification Marks identify marks that are used by a party other than its owner to certify quality, origin, material, or mode of manufacture of goods or services. These marks also show that the products or services are manufactured or provided by members of a union or other organization. (UL rating system, Good Housekeeping seal of approval.)
BENEFITS OF REGISTRATION
Like copyrights, trademarks do not need to be registered to be entitled to protection. However, like copyright protection, trademark registration provides a number of evidentiary and substantive advantages, including evidence of validity, incontestability after five years of use, constructive notice of ownership, the right to bring suit in federal court, additional international and national rights, statutory remedies such as treble damages, attorney’s fees and government assistance and criminal penalties in counterfeit cases. Also, unlike copyrights, trademark protection is dependant on use. Trademarks can be registered at the state level and at the federal level.
Before registering a mark, a professional search is necessary to make sure your mark will not infringe another’s mark locally, nationally or internationally based on your target market
INFRINGEMENT & LITIGATION
Likelihood of confusion is the central focus in a trademark infringement action. Whether it is likely that a consumer of the good or service would be confused between the names and symbols used by the different parties is the primary question. To prove likelihood of confusion, the plaintiff must show that an appreciable number of ordinary, prudent consumers are likely to be confused between the different marks. In addition to the likelihood of confusion test, other grounds for infringement and/or litigation include reverse confusion, counterfeit goods, contributory infringement and dilution.
While there are many factors which should be considered when conducting an infringement analysis, the central focus is from the perspective of the average consumer of the service or good.
When a claim of infringement has been made, the user of a mark may sue for:
- a preliminary or permanent injunction to prevent further harm;
- impounding and destruction of the infringing goods; and/or
- monetary damages.
There are exceptions and defenses against a claim of infringement, including a fair use exception, parody, abandonment, genericness, fraud, antitrust violations, estoppel and laches.
If you believe someone has violated your rights or if someone has challenged your trademark or service mark, you should contact one of our litigation attorney’s at your earliest convenience.