1 What is a Trademark?

A trademark is any name, symbol, figure, letter, word, or mark that is adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. Chemical Engineering Journal states that “trademark rights protect brands - that is, the reputation that a company has developed for its product in association with a trademark or service mark” (2008). Trademarks allow for owners of companies to have all of the rights for their specific brand of goods and services. A trademark is protected legally and is enforced by the courts.

2 What does a Trademark look like?

Trademarks come in all shapes and sizes. They can be simply one word, a few words, a picture or symbol, a series of numbers, or anything that is uniquely created. According to the WIPO, there are also two categories of trademarks. "Collective marks are owned by an association whose members use them to indicate products with a certain level of quality and who agree to adhere to specific requirements set by the association” (WIPO, n.d.). The WIPO also explains that a second category of trademarks includes certification marks. “Some examples of recognized certification marks are the internationally accepted “ISO 9000” quality standards and Ecolabels for products with reduced environmental impact” (WIPO, n.d.).

3 How do you register a Trademark?

According to the United States Patent and Trademark Office (USPTO), there are several initial steps one should follow prior to the actual application process (USPTO, 2013). The first step is to decide if trademark protection is necessary. Secondly, the decision of hiring an attorney should be made. The main purpose of an attorney is for legal guidance to avoid any “pitfalls” during the process or further down the road (USPTO, 2013). The next step is deciding on a trademark format and the goods and/or services the trademark will provide representation for. There are three types of marks to choose from; standard character, design, or sound. The last initial step is searching the Trademark Electronic Search System (TESS) to find any possible conflicts that may present themselves from confusion with other registered trademarks (USPTO, 2013). Although this is a recommended database, outside researches should be performed for extra precaution (Lang, 2013). Finally, the applicant must fill out an application through the Electronic Trademark Application System, or complete the application manually and mail it in. Once the application has been submitted, it will undergo reviews. If there are any problems within the application, a letter will be sent to the applicant which will need to be responded to within a certain time frame. After all of these steps are completed and the application has been accepted, the trademark will be legally registered. Although the process is over, the owner is still responsible for monitoring and enforcing their rights (USPTO, 2013).

4 Trademark History and Law

Trademarks date back to the ancient times. Many people and traders distinguished the products they sold from others by using a mark on their products. During the middle ages, “Use of symbols and signifiers spread to include new and creative uses. Bells carried trademark symbols etched into the metal; watermarks were used on documents and publications; symbols were woven into fabrics and textiles; even bread and other baked goods were imprinted with distinctive markings or stamps, pressed into the loaf as it rose to indicate its true origin and quality” (Sarah, 2012).

“It was only in the 19th century that people began to think of marks, which had become distinctive of a trader’s goods, and so attracted valuable goodwill, as a type of property. In the middle of that century, the right to take action in the courts against infringement of a trade mark came about”. (History of Trademarks, n.d.). In 1870, the government added trademark protection to their laws. Although, these laws were not all encompassing and the government later addressed problems such as the counterfeiting of trademarks. Trademarks are covered under both federal and state laws. When state laws don’t address an issue with trademarks, federal laws take over. “Trademarks used in interstate commerce are protected under the Trademark Act of 1946, also known as the Lanham Act. The benefit of federal registration of a mark is that the registration constitutes evidence of both the validity and ownership of the mark, as well as the right to use the mark in commerce. Registration also gives the owner the right to prevent the importation of counterfeit goods and the right to bring an action to prevent the use of counterfeit marks. In addition, a registered mark becomes incontestable after five years of continuous post-registration use” (Catholic University of America - Office of General Counsel, n.d.).

5 Advantages of Trademarks

Trademarks do not have to be registered to be enforced, but registration is highly recommended. Registration with the USPTO provides nationwide protection as long as the trademarked name, logo, or phrase is used continually. A big advantage of IP Trademarking registration is that it could deter people from using your trademark as their brand name or on a similar product without your permission (Intellectual Property Office, 2011). It also gives you the ability to go to federal court and challenge the use of your trademark by someone else that was not given your permission to use it. After you register a trademark you have the freedom to sell it, franchise it or grant other people a license that allows them to use it (Intellectual Property Office, 2011).

6 Disadvantages of Trademarks

Although a trademark has its advantages, there are also disadvantages associated with it. Because a trademark only protects the logo, name, or symbol, “it does not prevent others from making or selling the [same] product under a different mark” (SoMn SourceLink, n.d.). Trademarks can also “become generic due to over-saturation of its use” (Call, Hadley, n.d.). As an example, Aspirin was once trademarked by Bayer. Over time, people referred to Aspirin as any painkiller and today Aspirin has lost its value as an identifier of the good.

In today’s business world, “a business’s most valuable asset is its trademark,” and it is imperative for companies to protect their trademarks in order to protect their reputation (Swyers, 2012). Registering a trademark enhances the owner’s rights, but registration is not full protection. According to the USPTO, it is up to the owner of the trademark to enforce his/her trademark rights after registration, “because the USPTO does not police the use of marks” (USPTO, 2013). The owner has to be very vigilant in ensuring brand protection. In addition, if the owner finds that someone infringed on his/her trademark rights, it is owner’s responsibility to take legal action. Registration with the USPTO is also limited within the United States. If seeking protection outside of the country, additional registrations are required (USPTO, 2013).

7 Trademark Infringement

A trademark infringement claim can be made when certain criteria are met under both federal and state law. A plaintiff must first show that something that has been trademarked has been utilized in a way that is similar to that of the trademarked version. This could encompass the look as well as the underlying meaning of the original version. The plaintiff must also show that the similar version has caused confusion to the consumer public. The “likelihood of confusion is the central focus of any trademark infringement claim” (Cornell University Law School, 2013). The Latham Act prevents trademark infringement; however, it does not incorporate generalizations.

Trademark infringement cases may include products, services, and logos.

Trademark infringement is not only prevalent with products, logos, or services. It has also been evident within the realm of fan fiction. Just recently E.L. James, the author of the Fifty Shades of Grey trilogy, filed a trademark suit against a UK housewife for using trademarked images from her books during “adult themed” parties (Romano, 2012). In the past, writers of fan fiction were able to post their writings on websites dedicated to fan fiction without fear of being sued because they were not making money off of their fiction. In most cases writers of fan fiction would give credit to the original source. In the case of E.L. James, the author’s main concern is that her trademarked images from her novels are being utilized without permission in order to make a profit. She is not focusing on fan fiction writers. Her attorney has clarified her stance by stating that, “We have only written to people who are trying to profit by trading off Fifty Shades of Grey without endorsement or authority, such as selling T-shirts, mugs, cards, sex parties, that kind of thing.” (Romano, 2012).

8 Trade Secrets

A trade secrets is “something (such as a formula) which has economic value to a business because it is not generally known or easily discoverable by observation and for which efforts have been made to maintain secrecy” (Merriam-Webster Online, n.d.). A trade secret can be anything from a recipe, to a customer list, to a plan on how to run a business. Some examples of high profile trade secrets include the Coca-Cola Recipe and the KFC Original Chicken Recipe. These companies have kept their recipes top secret, with only a handful of employees knowing what those recipes are, in order to ensure that competitors don’t use the recipe to produce the exact same or a similar product.

To protect a company against the theft of trade secrets, the Uniform Trade Secrets Act was introduced and most states have adopted a portion or a version of this act. It was introduced in 1975 and amended in 1985. It protects the company from theft of trade secrets. “Remedies for infringement of a trade secret include damages, profits, reasonable royalties, and an injunction” (Quinn, n.d.)

The best ways for businesses to maintain their secrecy are to make employees and contractors sign confidentiality agreements upon employment and to make sure the contracts doesn’t run out once the employee or contractor is no longer employed by that company. Another way to make sure the company doesn’t lose its trade secrets is simply by not sharing the most vital information with too many people. However, it is completely legal for other people to figure out a company’s trade secrets by reverse engineering. There are no laws that prevent someone from running lab tests or disassembling a company’s product to reverse engineer the contents of the product. (Cornell University Law School, 2013). The advantages and disadvantages of protecting information through trademarks or trade secrets should be weighed heavily when a new product or idea is developed.

9 Summary

Trademarks, although they vary in nature, are all used to identify a particular manufacturer as the source of a particular product or service and to distinguish it from other, similar products or services. It is relatively easy to register for a trademark for a logo, product, or service. Trademarks are also used to ensure that the rights of the trademarks’ owner to use their trademark exclusively are preserved. It is highly recommended that businesses trademark their goods or services because the ability to pursue legal action against trademark infringement, someone using your trademark without your permission, is a clear advantage of the legal ownership of a trademark. However, the disadvantages of a trademark include not preventing others from making and selling the same product or service under a different name or trademark and that oversaturation of the trademarks’ use can render the qualities that distinguish it from a similar product or service obsolete. To compensate for these disadvantages, some businesses engage in the use of trade secrets in order to ensure that the business tactics they use or the specific way they manufacture their product, such as the products’ recipe, remains strictly confidential.

10 References