Trademarks

A trademark is a word, phrase, symbol or design—or a combination of these—adopted and used by a manufacturer or merchant to identify its goods and distinguish them from those manufactured or sold by its competitors. The symbol used to identify a trademarked product are the letters TM presented in upper case, superscript—™. In recent years, colors (such as John Deere green), sounds (such as the National Broadcasting Company's use of distinctive chimes), and scents have also been registered as trademarks. Service marks, meanwhile, are identical to trademarks except that they identify and distinguish the source of a service rather than a product. The term "trademark," however, is commonly utilized to refer to both trademarks and service marks.

Whereas exclusive rights to other items of intellectual property such as copyrights and patents eventually expire, trademark rights can last indefinitely, provided the owner of the mark continues to use it to identify its goods or services. The initial term for a federal trademark registration is ten years, but the owner has the option to renew for additional ten-year terms. The Patent and Trademark Office (PTO), however, has stipulated that between the fifth and sixth years of the initial registration term, the registrant must file an affidavit confirming the need to keep the registration alive. If no affidavit is filed, the registration is canceled, and other companies can pursue the mark for their own use if they so desire.

OTHER TYPES OF TRADEMARKS

In addition to trademarks and service marks, there are two other kinds of marks that generally fit under the generic "trademark" umbrella: certification marks and collective marks.

Certification Mark

A certification mark is a mark used in connection with products or services in order to certify the region of origin of those products and services, or to certify some other characteristic of those products and services. Other characteristics may be 1) the origin of the materials used to make a product; 2) the procedures used to assure the quality of the product or service, or 3) the union membership of those involved in the manufacture of a product or service. Examples of certification marks include the UL symbol of Underwriters Laboratories (for quality), "Made in the U.S.A." designations (for place of origin), and the Motion Picture Association of America's movie ratings (for service).

Collective Mark

Collective marks are trademarks or service marks used by members of an association, cooperative, or other group. Organizations as diverse as the National Rifle Association, the Big Ten Athletic Conference, and the Sierra Club all utilize collective marks.

TRADEMARK RIGHTS

Trademark rights to an identifying word, phrase, symbol, design, sound, or color can be secured either by actually using the mark in commerce or by registering the mark with the Trademark Office, a division of the Patent and Trademark Office (PTO). "Federal registration [with the PTO] is not required to establish rights in a mark, nor is it required to begin use of a mark," noted the PTO in its booklet, Basic Facts About Registering a Trademark. "However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide." In addition, owners of federal registration for a trademark often enjoy an advantage if legal disputes over use of a trademark arise.

The "Right to Register"

According to the Patent and Trademark Office, the ultimate right to register a trademark generally belongs to the first party—whether it is a small business or a large corporation—to use a trademark "in commerce" or file a trademark application with the PTO. ("Commerce" in this situation means commerce regulated by the U.S. Congress, i.e., interstate commerce or commerce between America and another nation; use of a trademark in purely local commerce within a state does not qualify as "use in commerce.")

The "Right to Use"

As the PTO itself admitted in its Basic Facts About Registering a Trademark, "the right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement." As indicated above, possession of federal registration can be a valuable weapon if a court fight erupts over use of a disputed trademark.

TRADEMARK SEARCHES

A small business owner who has come up with a trademark that he or she wishes to use may want to conduct a trademark search before going to the trouble and expense of sending an application to the PTO. Infringing on another's marks can often happen unintentionally, without copying the marks outright or even being in direct competition with their owner. All that is necessary is to use the same mark or a similar mark in a way that may cause consumers some confusion as to the source or sponsorship of the goods or services. A trademark search can uncover whether the mark (or a similar one) has already been registered with the PTO.

APPLICATIONS FOR FEDERAL REGISTRATION

There are two primary ways in which a U.S. applicant can apply to register his or her trademark with the PTO, depending on whether or not the mark has already been used in commerce. An applicant who has already begun using the trademark in commerce may file with the PTO based on that use. This is commonly known as a "Use" application. If an applicant has not yet used the trademark in question in commerce, but has an honest intention to do so, he or she may file an "Intent-to-Use" application with the PTO. A third option, which can only be used by applicants from outside the United States, allows the applicant to file in the United States based on an application or registration made in another country.

Applications for federal registration should include the following:

• PTO Form 1478—this application, also known as "Trademark/Service Mark Application, Principal Register, with Declaration," should be carefully completed and fully signed.

• Drawing of the mark—this drawing must be included on a separate piece of paper; the specifications for the drawing—and the paper itself—are quite extensive, so make sure that the drawing adheres to all guidelines. If a separate drawing page is not included, then the application will be returned to the applicant without a filing date.
• Filing fee—For current information on the application filing fee for trademarks, call the Patent and Trademark Office or consult its Web site ("Intent-to-Use" applications are more expensive). If the full amount of the fee is not included in the application, then the application will not be considered. Fees are not refundable, even in instances where trademark ownership applications are turned down.
• Specimens—These are actual samples of how the mark is actually used—or will be used—in commerce. For products, examples of acceptable specimens are tags or labels attached to the goods, to the containers in which those goods are packaged, to displays associated with the goods, or to photographs of the goods showing use of the mark on the goods themselves. For services, examples of acceptable specimens include signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark as it is used either in the rendering or advertising of the services. Each application must include three specimens, but they do not necessarily have to be of three different uses.

PTO Acceptance and Rejection

The federal registration of trademarks is governed by the Trademark Act of 1946 (and amendments thereof), the Trademark Rules, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure. When the PTO receives an application for trademark registration, it checks the application in accordance with the above-mentioned guidelines. First, the Office reviews it to see if it meets the minimum requirements for receiving a filing date. If it meets those requirements, the PTO assigns it a serial number and sends the applicant a notification of receipt. If the minimum requirements are not met, the entire thing (including the filing fee) is returned to the applicant.

Applications that pass this first stage are then reviewed by an examining attorney at the PTO, who determines if there are any reasons why the mark cannot be registered. A mark may be turned down for any of the following reasons:

• The mark too closely resembles a mark already registered in the PTO.
• The mark's capacity for causing confusion among relevant consumers with goods or services associated with other parties.
• The mark includes a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased president of the United States during the life of his wife, except in instances where the widow has given her written consent to such use.
• The mark includes the flag or coat of arms or other insignia of the United States or any of its states or municipalities, or of any foreign nation, or any simulation thereof.
• The mark has immoral, deceptive, or scandalous connotations.
• The mark disparages or falsely suggests a connection with persons (living or dead), institutions, beliefs, or national symbols.
• The mark brings such persons, institutions, beliefs, or national symbols into contempt or disrepute.

Objections raised during this stage of the review are sent along to the applicant. Remedies that might make the mark acceptable are sometimes suggested in these letters as well. The application will be deemed abandoned if the applicant does not respond within six months of the mailing date of that letter. In cases in which the applicant's response does not sway the PTO examiner to give approval for the mark, the applicant can turn to the PTO's Trademark Trial and Appeal Board.

If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. At this point, anyone who believes he or she may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but it is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

If the application is approved and no opposition is filed, applicants may have a little or a lot to do, depending on their situation. For applicants who filed "Use" applications, most of the work is over. The PTO will register the trademark and issue a registration certificate a few months after the date the mark was published in the Gazette. Applicants who filed based on their intent to use the trademark down the line, though, need to attend to several matters to make sure that their rights do not slip away. In situations where it has approved an "Intent-to-Use" application, the PTO issues a Notice of Allowance approximately 12 weeks after the mark was published. After receiving the Notice, the applicant has six months in which to either use the trademark in commerce and submit documentation of that use or request a six-month extension. If the documentation of use—called the Statement of Use—is filed and approved, then the PTO will issue the registration certificate for the trademark.

Even if the PTO grants an applicant a trademark registration, business experts warn that such registration only provides protection to the owner in the United States and its territories. "If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws," warned the PTO in its Basic Facts About Registering a Trademark. "The PTO cannot provide information or advice concerning protection in other countries."

see also Brands and Brand Names; Copyrights; Corporate Logos

BIBLIOGRAPHY

"First Circuit Decision Reminds Trademark Owners of the Importance of Claiming Incontestability for Registered Trademarks." Mondaq Business Briefing. 3 May 2006.

Miller, Arthur R., and Michael H. Davis. Intellectual Property: Patents, Trademarks and Copyright. West/Wadsworth, 2000.

U.S. Patent and Trademark Office. Basic Facts About Registering a Trademark. 1995.

U.S. Small Business Administration. Field, Thomas. Avoiding Patent, Trademark and Copyright Problems. 1992.

The Value of Good Idea: Copyright, Trademarks and Intellectual Property in an Information Economy. Silver Lake Publishing, 2002.

                                      Hillstrom, Northern Lights

                                       updated by Magee, ECDI

TRADEMARKS

Distinctive symbols of authenticity through which the products of particular manufacturers or the salable commodities of particular merchants can be distinguished from those of others.

A trademark is a device, word or combination of words, or symbol that indicates the source or ownership of a product or service. A trademark can be a name, such as Adidas, or a symbol, such as McDonald's golden arches, or it can be a combination of the two, such as when the NIKE name is written with the "swoosh" symbol beneath it. In very limited cases, a shape or even a distinctive color can become a trademark.

People rely on trademarks to make informed decisions about the products they buy. A trademark acts as a guarantee of the quality and origin of a particular good. A competing manufacturer may not use another company's trademark. The owner of a trademark may challenge any use of the mark that infringes upon the owner's rights.

The presence of trademark protection for the name or logo of a company or product is often indicated by the small symbol of an R in a circle placed near the trademark. The R means that the mark is a registered trademark and is a warning that the law prevents unauthorized use of it. A party may indicate that it is claiming rights to a particular mark by displaying a TM rather than an R symbol. Marks bearing the TM symbol are not registered, but the presence of the symbol shows an intent to register.

Origins and Development of Trademark Law

Trademark law in the United States is governed by the Trademark Act of 1946, also known as the lanham act (15 U.S.C.A. § 1051 et seq). The Lanham Act defines trademarks as including words, names, symbols, or combinations thereof that a person uses or intends to use in commerce to distinguish his or her goods from those made or sold by another. Potential trademarks are categorized by the functions they perform. Within trademark law are several specialized terms used to categorize marks that may be subject to protection. The categories are form, mode of use, and, most commonly, strength. The four subcategories of strength are generic, descriptive, suggestive, and arbitrary or fanciful.

A generic name is the common name for a product and will never be considered a trademark. Shoe, ball, hat, and lightbulb are all generic product names. Some marks that do not begin as generic may later become generic if the public adopts the mark as the general name for that product. Examples of marks that were not originally generic but later became so are cellophane and aspirin. Generic marks are not "strong" because they are not distinctive. To give trademark status to the generic or common name of a product would prevent all other manufacturers of the product from identifying it. To prevent that from occurring, granting trademark status to the generic name of a product is prohibited.

In the King's Name

Although Elvis Presley died in 1977, his name and likeness have been trademarked by Elvis Presley Enterprises (EPE). EPE earns millions of dollars each year through a licensing program that grants licensees the right to manufacture and sell Elvis Presley merchandise worldwide. EPE also operates two restaurants and an ice cream parlor at Graceland, the Elvis Presley home in Memphis, Tennessee, which Presley fans consider to be a shrine to the king of rock and roll.

In 1995 EPE filed suit in federal court, alleging that a Houston, Texas, nightclub operating under the name "The Velvet Elvis" infringed on EPE's trademarks (Elvis Presley Enterprises, Inc. v. Capece, 950 F. Supp. 783 [S.D. Texas 1996]). The name of the nightclub comes from a black velvet painting of Presley that hangs in the back lounge of the bar. Newspaper advertisements for the club depicted images and likenesses of Presley and made explicit references to the singer, including "The King Lives," "Viva la Elvis," and "Elvis has notleft the building."

The court ruled that the name "The Velvet Elvis" did not create the likelihood of confusion as to the "Elvis" trademarks held by EPE. The court agreed with the club owner that the bar was meant to parody 1960s popular culture. Replete with lava lamps, beaded curtains, vinyl furniture, and black velvet nude paintings, the bar was a humorous jab at the culture that created the Presley myth. Even if EPE operated its own "Elvis" nightclub, the Houston bar would not create confusion as to the EPE trademarks. The court noted that the typical customers of The Velvet Elvis were young professionals ranging in age from their early twenties to their late thirties. The majority of Presley fans were middle-aged white women.

The court also ruled, however, that the use of Presley's name and likeness in advertisements infringed on the EPE trademarks. The advertisements did not indicate that the nightclub was a parody of 1960s popular culture, and therefore they created the likelihood of confusion as to the sponsorship of the nightclub.

The court ordered the owner of The Velvet Elvis not to display in his advertisements the image of Elvis or make direct references to his identity as a celebrity or to emphasize the word Elvisin the name The Velvet Elvis. Apart from this remedy, the court dismissed all other relief sought by EPE. The nightclub could continue, in the words found on its menu, as "The King of Dive Bars."

A descriptive term tells the consumer something about the product and may only become a trademark after it has acquired secondary meaning. This occurs after a period of time during which the term's association with that product is exclusive. This acquisition of secondary meaning is sufficient to make a mark distinct, meaning that in the eyes of consumers it has come to represent that products bearing the mark come from a particular source. The mark "Brooklyn Dodgers" is an example of a descriptive mark that is exclusively associated with a professional baseball team formerly from New York.

A suggestive term, rather than describing the product, merely makes a subtle suggestion about the type of product and its qualities. It requires consumers to use their imaginations to make the intellectual jump between the suggestion and the actual product. For those reasons, it can be a trademark immediately upon use. Examples of suggestive marks are Orange Crush (orange-flavored soft drink), Playboy (sexually oriented magazine for men), and Ivory (white soap).

When distinguishing between descriptive and generic terms, courts try to determine the viewpoint of the prospective consumer. Courts look for the meaning that the buyer of a product assigns to the contested word. Courts may also look at the term as used by dictionaries, third parties, trademark owners, texts, patents, newspapers, literature, and surveys. Use of a term as a common name indicates that the word may be the generic name of a product.

The strongest marks are arbitrary and fanciful marks, which need not acquire secondary meaning. They are strong because they bear little or no relationship to the products with which they are affiliated, and thus their use is not unfair to others trying to compete in the marketplace with similar products. Arbitrary marks are common words used in an uncommon way and are used in connection with the goods in a way that does not describe the goods or suggest anything about them. Examples include Camels in reference to cigarettes and Dial as the name of a brand of soap. Fanciful words, on the other hand, are invented and (at least at the time they are first applied to the goods) have no dictionary meaning. Examples of fanciful marks are Kodak, Exxon, and Rolex.

These considerations force a producer to select or create a symbol or name for its product that is suitable for trademark protection. A producer labors to create a good name for a product, and a protected trademark prevents competitors from unfairly capitalizing on the reputation of that name. When trying to decide what mark is appropriate, the potential trademark owner should keep in mind a fundamental rule of trademark selection: in most situations, one will not be allowed to use a trademark that another entity already uses. Before an entity incorporates under a certain name, or attempts to sell a service or product bearing a particular name, it should conduct a search or hire an attorney to investigate prior or existing use of the name. Those companies that fail to conduct this kind of a search or blatantly ignore existing use of a trademark are likely to face a lawsuit by any existing owner of the mark. Such a lawsuit may lead to a court order to stop any infringing use and an award of damages to the holder of the mark.

Uniqueness is a major consideration to the potential trademark owner, regardless of whether the mark is descriptive, suggestive, and arbitrary or fanciful. The fewer unique characteristics a mark possesses, the less legal protection it receives. The potential trademark owner must consider whether others need to use a particular mark in conjunction with a product in order to compete. A unique mark that bears little relationship to the product is preferred over a mark that is more generic.

A company has a better chance of procuring protection for a mark when, by using the mark, it is the first to cause consumers to see an association between the mark and the product.

The Lanham Act distinguishes trademarks from trade names and service marks and also addresses certification marks and collective marks. A service mark is used to identify and distinguish the services of one company from another, such as Sears for retail stores, and American Express for credit cards. A trade name or commercial name distinguishes and identifies a business. The same name or portion of a name may also serve as a trademark, trade name, or service mark. An example is the name Ford Motor Company, which is the trade name of a company that builds and sells cars and trucks that bear the trademark "Ford." In short, trademarks apply to products, service marks to services, and trade names to businesses.

Certification marks endorse products and certify approval of their origin, quality, or authenticity. A certification mark is not the property of the maker of the products upon which the mark will be affixed. Examples are the Union Label in garments and various seals of approval. When the provider of goods or services belongs to an association, it often advertises or attaches a collective mark to announce that relationship. The mark is used on products or services not provided by the owner of the mark, typically as a symbol guaranteeing quality and taking advantage of the supposed benefits to the consumer that stem from the product's association with the owner of the mark.

Trademark Registration

Traditionally, trademark rights had depended on prior use, but since 1988 a party with a genuine intent to use a mark may apply for trademark registration. The applicant must intend to use the mark in commerce and must intend to do so in order to sell a product, not merely to reserve rights for future use.

Registration begins with application to the commissioner of patents and trademarks in the patent and trademark office. Registration of a mark means that others will be presumed to know that the mark is owned and protected. By itself, registration is considered evidence that the registrant has ownership and that the registration is valid.

Registration benefits the trademark owner because it suggests that the registrant did everything necessary to protect its mark. While trademark rights actually stem from use, a party may have difficulty convincing a court that it had good reasons to not register a mark for which it now claims a protected right. This is particularly so when a claimed symbol's status as a trademark is uncertain, such as in a dispute over the design of a product as a trademark.

One may apply with either the principal register or supplemental register of the Patent and Trademark Office. The principal register is for arbitrary, fanciful, suggestive, or descriptive marks that have acquired secondary meaning or distinctiveness. The supplemental register is for descriptive terms capable of acquiring secondary meaning. Once a mark establishes secondary meaning, it can be transferred to the principal register.

Registration with the principal register is preferable to supplemental registration for many reasons. Principal registration is proof that the mark is valid, registered, and the intellectual property of the registrant, which has exclusive rights to use the mark in commerce. Further, a registered mark is presumed to have been in continuous use since the application filing date. After five years of continuous use, a registered mark may not be contested. Registration with the principal register means that a potential infringer will be considered to know about the registrant's claim of trademark ownership. The owner of a mark registered with the principal register has the right to bring suit in federal court. Those who counterfeit registered marks face criminal and civil penalties. The owner of a trademark that registers with the principal register and deposits the registration with the U.S. Customs Service can prevent goods bearing infringing marks from being imported.

A mark on the supplemental register may become a trademark, but its status as such has not yet been determined. For this reason, the presumption created by registration with the principal register, that the registrant can be the only valid owner, does not apply to supplemental registration.

The owners of registered trademarks can lose their rights in a number of ways. When a trade or the general public adopts a trademark as the name for a type of goods, the mark is no longer distinctive and the rights to it are lost. The owner of trademark rights must be vigilant to ensure that this does not occur. For instance, the Rollerblade company introduced a new product of roller skates where the wheels are arranged in a single line (offering performance similar to the blade on an ice skate) rather than side by side. Initially Rollerblade was the only company selling this type of skates, and the name Rollerblade became widely known. When competing producers of this new skate emerged on the marketplace, the consuming public often used the word rollerblade to describe the type of skates, no matter what company was making and selling them. Further, the public often called the activity of using such skates, no matter the manufacturer, rollerblading. The Rollerblade company spent millions of dollars in advertising and lawsuits to ensure that the trademark Rollerblade was not used to describe a product whose proper generic name is in-line skates. To protect its rights to the trademark, the Rollerblade company must actively oppose any use by competitors or consumers of the words rollerblade or rollerblading to describe generic in-line skates and the activity of in-line skating.

Registrants forfeit rights to their marks if they use them deceptively, use them in fraudulent trades, or abandon them. Registrants abandon their marks by failing to renew within ten years or by deliberately transferring rights with consent.

Trademark Infringement

Once they have established their trademarks, owners have the duty to guard against infringement

and to be vigilant to preserve and protect their rights. The Lanham Act aids owners in protecting their rights and protects consumers from being tricked or confused by misleading marks.

The six most common causes of action in infringement lawsuits charge that a defendant has infringed on a plaintiff's registered trademark; undermined a plaintiff's unregistered mark in a manner that affects commerce; violated common-law trademark infringement standards and unfair competition principles; violated state deceptive trade practice laws; diluted a plaintiff's trademark; and misappropriated a plaintiff's mark.

Trademark infringement claims generally involve the issues of likelihood of confusion, counterfeit marks, and dilution of marks. Likelihood of confusion occurs in situations where consumers are likely to be confused or misled about marks being used by two parties. To constitute infringement, this confusion must be probable, not merely possible. The complaining party must show that because of the similar marks, many consumers are likely to be confused or misled about the source of the products that bear these marks.

In a likelihood of confusion cause of action, the defendant can defend on the basis that confusion is not likely or that although confusion may be likely, the plaintiff has behaved improperly regarding the mark or the mark is somehow defective.

The Lanham Act defines a counterfeit mark as being "identical with, or substantially indistinguishable from, a registered mark." All counterfeits are infringements. The product or service bearing the counterfeit mark must be of the same type of product or service bearing the protected mark. The defendant must have knowingly produced or trafficked a counterfeit mark.

Dilution is lessening the individuality or impact of a mark. The usefulness of a trademark depends on its recognizability and individuality. In cases of dilution, the challenged mark does not necessarily have to be used on products in direct competition with the products of the complaining party, nor is it necessary that the mark is causing confusion. The complaining party only needs to show that the strength and impact of the registered mark is somehow lessened by the presence of similar marks. A trademark owner uses its mark as a means of recognition and as a symbol representing its goodwill, and when similar marks flood the marketplace, this message is considered to be diluted. The product or service thus becomes psychologically less identifiable and less distinguishable. Trademark law prohibits this dilution and prevents the infringing party from unfairly profiting from an association with an established name.

To establish an infringement cause of action based on dilution, the plaintiff must initially show that its trademark is genuinely unique. Similar to the standard for confusion, dilution because of defendant's conduct must be likely or probable, rather than merely possible.

The defendant in an infringement case can invoke any of several affirmative defenses. An affirmative defense is a response that attacks the plaintiff's legal right to bring an action, as opposed to attacking the truth of the claim. The defendant can argue that the plaintiff abandoned the trademark or that the mark is generic. Defendants may claim that they made "fair use" of the mark, in that their purpose for using the mark did not unfairly compete with the plaintiff. Another affirmative defense is that the plaintiff has "unclean hands" from acting in an unfair or deceptive manner. The defendant can charge that the plaintiff engaged in trademark misuse and used the mark in a manner that went against the public policy that allowed the trademark to be granted in the first place. The defendant may charge the plaintiff with fraudulent use of a trademark. The defendant can argue that the plaintiff violated antitrust laws, which are designed to protect commerce and trade against unlawful restraints, price fixing, and monopolies. Finally, the defendant can offer the affirmative defense of laches, which provides that the party that unreasonably delays in asserting legal rights forfeits them.

Trademark Rights Versus Publicity Rights

Every person enjoys the legal right to control the commercial value of his or her identity (i.e., name, face, likeness, voice), and to prevent others from exploiting that value for profit without permission. The law of torts calls this right the "right of publicity," and defines infringement as any nonconsensual use of a person's identity that is likely to damage its commercial value. Falsity or deception is not an element of a claim for infringement. Rather, to trigger infringement of the right of publicity, the plaintiff's identity must be "identifiable" from the defendant's unauthorized commercial use, whatever form that use might take.

Courts and commentators often compare trademark rights to publicity rights because each set of rights is a form of intellectual property that grants owners the exclusive power to commercially exploit their property. But the right of publicity is only analogous to the law of trademarks and not identical. The key to the right of publicity is the commercial value of a human identity, while the key to the law of trademarks is the use of a word or symbol in such a way that it identifies and distinguishes a commercial source. Thus, while a trademark identifies and distinguishes a commercial source of goods and services, the "persona" protected by right of publicity law identifies a single human being.

Nor should the right of publicity be confused with the right of privacy. Courts recognize that the two rights are clearly separable and rest on quite different legal policies: the right to privacy protects against intrusion upon an individual's private self-esteem and dignity, while the right of publicity protects against commercial injury caused by the nonconsensual commercial appropriation of an individual's personality. Damages for invasion of privacy are usually measured by the mental and physical distress suffered by the plaintiff. On the other hand, damages for infringement of the right to publicity are measured by the loss in business value of the plaintiff's identity. Put simply, publicity rights protect against an injury to the pocketbook, while privacy rights protect against an injury to the psyche.

The right of publicity is not absolute. The use of a name or likeness incidental to the dissemination of a news story in which a person is properly and fairly presented is not actionable as a violation of the right of publicity. However, according to some authorities, the right of publicity can extend to the publication of one's name or picture in nonadvertising portions of a magazine or broadcast.

further readings

Dinwoodie, Graeme B., and Mark D. Janis. 2004. Trademarks and Unfair Competition: Law & Policy. New York: Aspen.

Trademarks A to Z. 2004. Mechanicsburg: Pennsylvania Bar

Institute.

Trademarks Throughout the World. 2003. 4th ed. St. Paul, Minn.: West.

cross-references

Copyright.

TRADEMARK

Distinctive symbols of authenticity through which the products of particular manufacturers or the salable commodities of particular merchants can be distinguished from those of others.

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.

The world of trademark law is complex and often confusing, as courts wrestle with issues of fact and law. Businesses worry about the dilution of their trademarks, while competitors dispute whether a trademark holder can prevent the use of certain words that are common to a field of commerce. The U.S. Supreme Court, in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,, __U.S. __, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004), ventured into this arena to clarify the legal burdens that parties must bear in federal trademark litigation. In its ruling, the Court made clear what an alleged infringer needs to do in asserting the affirmative defense of fair use.

The dispute involved KP Permanent Make-Up ("KP") and Lasting Impression I "Lasting"), two companies that sold permanent makeup. Permanent makeup is a mixture of pigment and liquid that is injected under the skin to disguise injuries and to enhance the user's complexion. The makeup is applied by trained professionals. Both KP and Lasting used the term "micro color" (either as one word or two) in the marketing and advertising of their product lines. KP claimed that it had used the single-word term "microcolor" on its advertising flyers since 1990 or 1991 and on its bottles of product since 1991. In 1992, Lasting applied to the U.S. Patent and Trademark Office (PTO) for registration of the trademark "Micro Colors," in white letters separated by a green bar within a black square. The PTO registered the trademark in 1993, and in 1999 the registration became incontestable. In 1999, KP produced a 10-page advertising brochure that used the term "microcolor" in a large, stylized typeface and used the word "pigment" next to a drawing of a bottle spilling out a liquid. Lasting demanded that KP stop using the term "microcolor," contending that such use infringed on its trademark. KP responded by filing a lawsuit in federal court. In its suit, KP asked the court to issue a declaratory judgment that the language it used did not infringe on the trademark and that Lasting could not claim exclusive use of the terms. Lasting filed a counterclaim, asserting that KP had infringed on its trademark.

KP asked the court to rule in its favor on the infringement counterclaim, asserting the statutory affirmative defense of fair use. The fair use defense is rooted in the fact that most trademarks are adapted from words or symbols that are already common to society instead of being invented by the trademark owner. Courts have recognized that ownership in the trademark cannot necessarily prevent others from using the word or symbol in these other senses, such as if the trademark is a descriptive word or a common symbol such as a strawberry. Therefore, the less distinctive or original the trademark, the less able a trademark owner will be to assert control over the way in which it is used. This exception requires that the mark not be used by the nonowner in a way that would be likely to confuse consumers about the source of their (or the trademark owner's) product. In general, there is a requirement that no more of the trademark is used than is necessary for the legitimate purpose. Lasting admitted that KP had used the term "microcolor" only to describe its products and not as a trademark. Based on this admission, the court ruled that KP had not infringed on Lasting's trademark. However, the court did not address whether KP's use of the term caused confusion.

The U.S. Court of Appeals for the Ninth Circuit reversed the district court , concluding that it should have examined whether there was possible confusion by consumers over the origins of KP's products. The appeals court believed that no use was fair where consumer confusion was probable and that KP had the burden of proving the absence of consumer confusion. KP then appealed to the U.S. Supreme Court.

The high court, in a unanimous decision, reversed the Ninth Circuit's decision. Justice David Souter, writing for the Court, concluded that the trademark statute in question, 15 U.S.C.A. §1115(b)(4), clearly placed the "burden of proving likelihood of confusion (that is, infringement) on the party charging infringement, even when relying on an incontestable registration." Thus, Lasting, rather than KP, had the burden of proof. Justice Souter found no evidence to support Lasting's argument that the statute's phrase "used fairly" incorporated "a likelihood-of-confusion test developed in the common law of unfair competition." Under the statute, the trademark holder had the burden of proving the likelihood of confusion, while the defendant had the burden of establishing fair use. The defendant had "no independent burden to negate the likelihood of any confusion in raising its fair use defense."

TRADEMARKS

Trademarks, or marks, are words, symbols, designs, combinations of letters or numbers, or other devices that identify and distinguish products and services in the marketplace. When trademarks are presented to the public via advertising, marketing, trade shows, or other means, they become one of a company's most valuable assets—potential customers identify a company by its trademark. Because certain trademarks immediately create an image of quality goods and services to potential buyers, they are valuable assets that should be protected.

When trademarks are registered at the state, federal, or international levels, their owners are provided the maximum legal protection for company names and/or company products. Thus, in creating or selecting company names and trademarks, a major concern is to design names and trademarks that may be registered with U.S.

Patent Office. Today, the feasibility of designing names for products and services as well as trademarks for them is not likely because millions of trademarks are already registered.

The creation of trademarks involves the development of symbols or other devices to identify products and services in the marketplace. Guidelines exist for creating trademarks. Individuals who are developing trademarks must avoid generically descriptive and misleading terms as well as foreign translations. As soon as a tentative trademark has been developed, its creators should consult a patent attorney for assistance making it sufficiently distinctive to be registrable.

After the distinctive trademark has been designed, the creators need to ascertain that it is available for use. That is, it should not be currently used by another company. Thus, a trademark search is recommended by a company specializing in trade and service mark law. Once the availability of the proposed trademark has been certified, applications and related artwork are filed with the U.S. Patent Office. On receipt of the application, examiners in the Patent Office conduct a search to validate that the proposed trademark is not confusingly similar to previously registered trademarks and is thus usable. To receive a filing registration date, the owner must provide all of the following: (1) a written application form; (2) a drawing of the mark on a separate piece of paper; (3) the required filing fee; and (4) if the application is filed based on prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark.

If the Patent Office search does not yield any conflicting trademarks and the proposed trademark is deemed registrable, it is published for opposition in the Patent Office's Official Gazette. Anyone who believes that a company may be damaged by the registration of the proposed trademark has an opportunity to challenge its registration. If no objection to the proposed trademark is filed, then the registration is allowed and issued. Thus, the trademark is distinctive and the ® may be used after it. Once the trademark has been issued by the Patent Office, its owners need to watch for inappropriate use of it. In addition, trademark owners need to monitor proposed trademark registrations for similar trademarks.

Trademark maintenance involves periodic filing of documents with the Patent Office to keep the registration active. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is ten years, with ten-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled. A U.S. registration provides protection only in the United States and its territories. The owner of a mark who wishes to protect it in other countries must seek protection in each country separately under the relevant laws. The U.S. Patent Office cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.

bibliography

International Trademark Association website Retrieved January 31, 2006, from http://www.inta.org/.

Randy L. Joyner

TRADEMARK, also trade mark, trademark.
1. A SIGN or NAME that is secured by legal registration or (in some countries) by established use, and serves to distinguish one product from similar brands sold by competitors: for example, the shell logo for Shell, the petroleum company, and the brand name Jacuzzi for one kind of whirlpool bath. Legal injunctions are often sought when companies consider that their sole right to such marks has been infringed; the makers of Coke, Jeep, Jell-O, Kleenex, Scotch Tape, and Xerox have all gone to court in defence of their brand (or proprietary) names. Although companies complain when their trademarks begin to be used as GENERIC terms in the media or elsewhere, their own marketing has often, paradoxically, caused the problem.

There is in practice a vague area between generic terms proper, trademarks that have become somewhat generic, and trademarks that are recognized as such. The situation is complicated by different usages in different countries: for example, Monopoly and Thermos are trademarks in the UK but generics in the US. Product wrappers and business documents often indicate that a trademark is registered by adding TM (for ‘trademark’) or R (for ‘registered’) in a superscript circle after the term, as with English Today™, Sellotape.® The term usually differs from trade name by designating a specific product and not a business, service, or class of goods, articles, or substances: but some trademarks and trade names may happen to be the same. Everyday words of English that were once trademarks (some now universal, some more common in one variety of English than another, some dated, all commonly written without an initial capital) include aspirin, band-aid, cellophane, celluloid, cornflakes, dictaphone, escalator, granola, hoover, kerosene, lanolin, mimeograph, nylon, phonograph, shredded wheat, zipper. Trademarks facing difficulties include Astroturf, Dacron, Formica, Frisbee, Hovercraft, Jacuzzi, Laundromat, Mace, Muzak, Q-Tips, Scotch Tape, Styrofoam, Teflon, Vaseline, Xerox. The inclusion of such names in dictionaries, even when marked ‘trademark’ or ‘properietary term’, indicates that their status has begun to shift. Trademark names used as verbs are a further area of difficulty, both generally and in lexicography. One solution adopted by publishers of dictionaries is to regard the verb forms as generic, with a small initial letter: that is, Xerox (noun), but xerox (verb).

2. A mark or feature characteristic of, or identified with, a person or thing: That slow drawl is his trademark.