Shehan Writes for MusicRow

Monday, July 1st, 2019

“Beyond the Basics, Understanding Trademarks” written by partner, Molly Shehan, was featured in the June/July 2019 issue of MusicRow.

Beyond the Basics: Understanding Trademarks

Trademarks play an important role in establishing and protecting brands, whether a company name, band name, event or product.  Most people know what a trademark is and understand the general concept of protecting a brand’s logo or name, however, they may not know what is required to establish ownership in a trademark. This article will explore how ownership in a trademark is established.

Under US law, a trademark is defined as “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.”

What is not included in the definition of a trademark is the requirement for the word, name, symbol, or design to be registered.  Instead, ownership of a trademark is established by use of the mark.

While registration with the United States Patent and Trademark Office (USPTO) or an individual state is not required to establish ownership of a trademark, there are many benefits to registering a trademark.  For example, registering a trademark with the USPTO protects against others registering a trademark that is confusing similar to the original trademark, serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration, grants the trademark owner the right to use the ® symbol, provides the owner the ability to sue in federal court and recover additional damages and attorney fees in trademark cases, and provides a basis for foreign trademark registrations.

To establish ownership of a trademark in the United States and to register with the USPTO, there are two basic requirements:

  1. The trademark must be distinctive; and
  2. The trademark must be used in commerce

A trademark is considered distinctive if it has the ability to identify and distinguish particular goods or services from another producer or seller of similar goods and services.  This means that the trademark cannot be generic or descriptive.  A generic trademark is a word commonly used to identify the goods and services to which the trademark is referring to (ex. trying to trademark “shoes” for a sneaker company) or a brand name that, due to its popularity or significance, has become synonymous with the goods or services (ex. elevator, dumpster, popsicle, and xerox, which were all once trademarked, but now are interchangeable with the goods or services they identify).  A descriptive trademark identifies one or more characteristic, function, feature or quality of the goods or services being trademarked.  An example of a descriptive mark that would be rejected by the USPTO is “Cold & Creamy” for ice cream.  There is an exception to the rule against descriptiveness, if the trademark (through use) develops a source indicating function, meaning that consumers recognize the source of the good, even though the trademark is descriptive.  An example of this would be International Business Machines (IBM) for computers and other business machines.

Additionally, for a trademark to be considered distinctive, a trademark cannot be confusingly similar to another trademark that already exists. A trademark is considered confusingly similar if the public may mistake the proposed mark with an existing trademark.  To determine if a proposed mark is going to be confusingly similar to another trademark, a search is conducted of similar registered and unregistered trademarks.  After conducting the search, the similar trademarks are compared and it must be determined if there is a likelihood of confusion based on the similarity in appearance, sound, and meaning of the trademarks and the relatedness goods and services identified by each mark.  There is no clearly defined rule to determine when two marks are confusingly similar, instead, each mark is analyzed on a case-by-case basis and attorneys (or trademark paralegals) rely on a manual published by the USPTO and case law to determine if two trademarks are confusingly similar.  Examples of trademarks that were found to be confusingly similar include “Oil Zone” and “AutoZone” for oil change services, or “IShine” and “Ice Shine” for floor-finishing preparations.

Secondly, a trademark must be used in commerce. “Use in commerce” refers to products and services being used in the United States in the ordinary course of business.  For example, the trademark being displayed on products or on advertising and marketing materials for the services identified in the application. Practically, the “use in commerce” requirement can create issues if a business or individual develops a trademark name and wants to invest time and money into developing the brand, but cannot protect the trademark until they are actually using it. To resolve this issue, the USPTO offers an “Intent-to-Use” trademark application.  An Intent-to-Use trademark application, provides the opportunity for a trademark application to be filed, processed, and approved (and block the registration of any confusingly similar trademarks).  However, the trademark application is not complete until a statement of use, showing actual use of the trademark in commerce is filed.  A statement of use must be filed within three years of the filing of the Intent-to-Use trademark application.

Hopefully this overview of what is required to establish ownership of a trademark will enhance your understanding, so that next time someone says, “let’s trademark that!” you will know the correct follow-up questions to ask.