Trademark

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A trademark is a symbol, design, word, or phrase that identifies one business’ goods or services from those of another. A company may come up with a design that is unique, to stand as a symbol of the company, or a product. For example, McDonald’s has a trademark that is recognized worldwide – a giant yellow “M.” Trademarks in the U.S. are registered with the U.S. Patient and Trademark Office, which protects them from being used by others to promote their own agendas. To explore this concept, consider the following trademark definition.

Definition of Trademark

Noun

  1. A distinctive mark or feature that is characteristic of, or identified with, a person, thing, or organization.

Origin

1565-1575       Swordsmith’s mark in the Roman Empire, expanded for use in other trades

What is a Trademark

A trademark is a form of intellectual property, which appears in the form of some recognizable design, phrase, or expression that serves to identify products or services produced by one source, over those produced by another. Trademarks used to identify services, however, are more accurately called “service marks,” though the concept is the same. A trademark may be owned by any person, business, organization, or other legal entity. Trademarks are commonly used on company letterhead, business cards, and forms. They also appear on labels, packaging, and products, in addition to signs and buildings.

United States Patent and Trademark Office

The United States Patent and Trademark Office (“USPTO”) is the federal agency responsible for the granting of patents, and registering of trademarks. In doing this, the agency is fulfilling the government’s responsibilities under Article I, Section 8 of the U.S. Constitution, which states:

“The Congress shall have Power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries …”

The USPTO’s primary functions are to protect intellectual property ownership, and to advise the U.S. President and certain government agencies on intellectual property ownership, protection, and enforcement. This is important because the nation’s success in the area of commerce depends heavily on the inventiveness and resourcefulness of American entrepreneurs and inventors.

Example of Registered Trademark Protection by the U.S. Patent and Trademark Office

Paul and Raymond have started a new business, taking disabled people hiking in the nation’s national parks. They have come up with a unique name for their business – GoTrek – and registered the name as their trademark. The company has been using the GoTrek mark for three years, and is enjoying terrific success.

When a summer camp in another state attempts to use the GoTrek name and a similar logo, Paul and Raymond may file a civil lawsuit for violation of their registered trademark. In this example of trademark protection, it is likely the camp will be ordered to immediately stop using the trademarked name and symbols. In addition, the GoTrek company and its owners may be entitled to a monetary award of damages.

Trademark Symbol

Because trademarks are registered, and only the person or entity who owns the registration is allowed to use the trademark, most companies identify the graphic, phrase, or other mark with what is known as a “trademark symbol.”  Trademark symbols appear in two forms:

  1. Trademark symbol appears as the letters “TM” [ ™ ]in superscript, placed immediately after the mark.
  2. Registered trademark symbol appears as the letter “R” enclosed in a circle [ ® ], also in superscript placed immediately after the mark.

While the ™ symbol may be used by anyone engaging in common law usage of the mark, only the person or entity that owns the trademark, having properly registered it, may use the ® registered trademark symbol.

Trademark symbols may be added to documents, emails, and web pages using an ASCII keyboard code. To do this on a Windows computer, hold down the “Alt” key, and use the number pad to press the numeric code. When the last number is entered, release the Alt key, and the symbol will appear.

  • ™ = Alt+ 0153
  • ® = Alt+ 0174

How to Trademark a Name

The process of registering a trademark is complex, and requires strict adherence to certain timelines. The first step to trademark a name, is to know which registration process is right for the desired result. The U.S. Patent and Trademark office is responsible for registering and tracking patents, trademarks, and copyrights, each of which have a different purpose, process, and timeline.

  • Patent – Gives the owner exclusive rights to produce and market a specific design, invention, or process for a specified period of time.
  • Trademark – Gives the owner exclusive rights to use a specific symbol, word, phrase, or design that distinguishes its goods or services from those provided by another source.
  • Copyright – Protects authors of “original works of authorship,” including literary, musical, dramatic, artistic, and other creative works, by prohibiting the copying, performance, or other use of the works without the author’s consent.

Choosing a Mark

Choosing a mark to register as a trademark is the first step, and may not be as straight forward as it seems. Not every mark can be registered with the U.S. Patent and Trademark office. This is because some marks or designs are not distinctive enough to serve as a legal claim if others attempt to use it. The USPTO recommends considering how difficult a mark will be to protect, should someone attempt to use it. Marks and words that are not registerable include:

  • Marks that could be confused for a famous trademark, or for a trademark that belongs to someone else
  • Marks that could mislead people about the nature of the goods or services it represents
  • Marks that might make goods or services of other indistinguishable from others
  • Generic words, or common names of things, such as “TV,” “car,” “door,” or “best,” “cheap,” or “amazing”
  • Geographical descriptions, such as names of states, or directions (like “north”)
  • Deceptive marks
  • Immoral or scandalous marks, or marks used in a derogatory manner
  • Marks suggesting false connections with other people, institutes, or beliefs

Trademark Application

Trademark applications can be submitted online. There is an application fee, which is used to process the application, and is not refundable, even if the mark cannot be registered. Each trademark application and proposed trademark is examined by a USTPO attorney, and a letter is sent to the applicant as to its status. If additional information is requested, the applicant will have a limited amount of time to provide it. If the information is not forwarded within the time limit, the application will be deemed abandoned. Once the trademark application has been approved, the mark is published in the agency’s “Official Gazette.”

Trademark Search

Before submitting a trademark for registration, it is important to ensure it has not already been registered by someone else. The U.S. Patent and Trademark office makes its database available to everyone who desires to do a trademark search. Properly entering a description of the mark, including the specific design, colors, words, and other symbols is a specialized process. Because trademarks are governed by federal, state, and common law, a thorough search is important, and may require the use of an attorney specializing in intellectual property.

The consequences of using someone else’s registered trademark can be severe, if it’s determined that the user didn’t perform a careful trademark search. Using an attorney to do this may protect the trademark user from having to pay triple the amount lost by the original trademark owner, as well as attorney’s fees.

Anyone can perform a trademark search using TESS (Trademark Electronic Search System), however the USTPO warns that an accurate search can only be performed with the following knowledge:

  1. What information is included in the database
  2. How to construct a complete and comprehensive search
  3. How to interpret the search results

Tips on using TESS can be found on the USTPO website.

Infringement of Trademark Example in the Color Purple

In 2013, a subsidiary of AT&T, Aio Wireless, attempted to put one over on T-Mobile by coloring its brand a shade of magenta that was just too close to T-Mobile’s trademark Plum. Specifically, T-Mobile had trademarked the shade Pantone 676C as its brand symbol, consistently using it since the early 1990s.

In the lawsuit complaint, T-Mobile alleged ATT&T had responded to T-Mobile’s decision to offer phone service without 2-year plans:

“… by setting up a wholly owned subsidiary, AIO, which – out of all of the colors in the universe – chose magenta to begin promoting no-contract wireless communications services in direct competition with T-Mobile.” (emphasis in original)

The court agreed that T-Mobile has consistently used the color as a cornerstone of its marketing strategy and brand identity, and that, should Aio Wireless continue to use a variant of the color, T-Mobile could sustain irreparable harm. The court ordered Aio Wireless to stop using the color associated with the T-Mobile brand.

Example of Trademark Infringement in Louis Vuitton Fried Chicken

The owner of a fried chicken restaurant in Seoul, South Korea, had the clever idea to name his restaurant after the French designer Louis Vuittan – with a twist. The restaurant was actually named “LOUISVUI TON DAK,” which is a play on the designer’s name, and the Korean word for whole chicken, “tondak.” The entrepreneur even used a mock-up of the Vuittan logo, printed on its wrappers and napkins.

In September, 2015, the real Louis Vuitton filed a civil lawsuit in the Korean court, asking that the restaurant be barred from using the designer’s name, and the logo design that was so close to the original. Vuitton argued that using his brand name for the restaurant “damaged the originality and value of the French brand.”

The court agreed, and issued an injunction against the restaurant owner, named Kim, barring him from using the name, or its trademark designs. In addition, the court ordered Kim to pay 500,000 won, the equivalent to about $440 U.S., each day he failed to comply with the order.

Kim then came up with a second imitation of the famous brand, naming the restaurant “chaLOUISVUI TONDAK.” Vuitton took him back to court, asking that Kim be ordered to pay 14.5 million won ($12,500) for the 29 days he used that name. Although Kim argued this new name was different from the previously banned name, the court wasn’t buying it, and ordered Kim to pay up. In this example of trademark infringement on an international level, it is clear that the global legal community is dedicated to protecting intellectual property rights.

Related Legal Terms and Issues

  • Civil Lawsuit – A lawsuit brought about in court when one person claims to have suffered a loss due to the actions of another person.
  • Damages – A monetary award in compensation for a financial loss, loss of or damage to personal or real property, or an injury.
  • Intellectual Property – Anything created by the human intellect, such as artistic and literary works, designs, images, symbols, and names.