|
Trademark FAQs
What is a trademark?
How is the strength of trademark protection determined?
How can trademark protection be granted under state law?
What is the broadest trademark protection available?
How is trademark infringement handled?
What is a trademark?
A trademark is a distinctive phrase, symbol, or other easily recognizable
feature that appears on a product or is conveyed with a service. Trademarks
help consumers to quickly distinguish among similar products and services,
which is considered beneficial because it allows consumers to efficiently
select a particular product that has established a superior reputation.
Unlike patents and copyrights, which are authorized in the U.S. Constitution,
trademarks arose first in state common law and were only later made subject
to federal law through the Lanham Act of 1946. Like all property, the
intellectual property of a trademark gives the owner the right to exclude
others from its use.
Trademark law affects CU inventors and authors if the university commercializes
unpatented and uncopyrightable products or services they develop. For
example, patents can take several years to issue, and application of copyright
to computer software is still an unsettled issue, so trademark protection
might be the only way to prevent others from unauthorized appropriation
of the good reputation established by a particular computer program or a research tool that has name recognition.
Back to top
How is the strength of trademark
protection determined?
Protection is proportional to distinctiveness. Whether a trademark is
a symbol or a phrase, it must be easy to recognize if it is to serve as
a quick discriminator. Depending on the likely ease of recognition, courts
sometimes classify trademarks into three loosely defined categories:
- Distinctive trademarks: Made of a coined word or specially designed
symbol, these trademarks are unique and are afforded the strongest protection
under the law. Examples of distinctive trademarks are "Xerox,"
the silhouette of a buffalo overlaid with the interlocking letters C
and U, and the musical notes G-E-C of the NBC network motto.
- Suggestive trademarks: These trademarks describe a product but also
hint at an origin or characteristic, typically with an unusual twist
or combination of words. Examples in this fuzzy category might be "Ivory
Soap," "Mister Donut," and "Wheat Thins."
- Descriptive trademarks: This category is the least distinctive; "marks"
are composed of common words used in a common way. To receive any protection,
these merely descriptive trademarks must have acquired a secondary meaning,
for example through the public's long association of the phrase with
a particular merchant. "Park & Fly," "Builder's Warehouse,"
and "The Country's Best Yogurt," are examples.
Back to top
How can trademark protection be granted
under state law?
To receive protection under state law and within the regions where a company
does regular business, a merchant need only use a mark consistently and
maintain control of its use. Notification to the public and other merchants
that the symbol or phrase is being used as a trademark may be accomplished
with the superscript symbol ®. The price for a merchant's failure
to maintain control of a mark is that words or phrases that were once
trademarks may fall into the public domain, at which point they are no
longer protected under the law. "Aspirin" is an example of such
a lost trademark.
Back to top
What is the broadest trademark
protection available?
To receive the broadest protection, merchants must apply for federal registration
at the U.S. Patent and Trademark Office (PTO), which publishes new applications
monthly. If no other merchants file objections within five years, the
PTO registers the mark and notifies the applicant. The applicant is then
considered the uncontested owner of the mark throughout the country, and
may begin to notify others of that fact with the ® symbol.
Back to top
How is trademark infringement
handled?
When an allegation of trademark infringement arises, the case will be
tried in federal court if the contested mark is registered, or in state
court if not. In federal court, the registered owner is presumed to have
the uncontested right to exclude others from use of the mark.
In the absence of a federally registered owner, state courts will examine
factors such as how long each merchant has used the contested mark, how
distinctive the mark is, whether the merchants maintained control of their
marks, and whether they do business in overlapping geographical regions.
State courts will particularly focus on public policy interests, and estimate
the likelihood of confusion by the average consumer. For example, although
a law database firm had for many years done business under the name "Lexis,"
an automaker was subsequently permitted to use the name "Lexus."
The court reasoned that, as lawyers, Lexis customers are presumably sophisticated
enough to avoid confusion, and that buyers of a luxury automobile are
unlikely to be surprised when they do not receive a database report.
Back to top
|
Faculty/Staff/Student Investigators
