Rose By Any Other Name…Trademark Protection Under Current Law

December 2003
The Licensing Book

According to William Shakespeare, "A rose by any other name would smell as sweet…" but would it sell as well?  Doubtful, in today's brand-equity driven market place.  Licensors and Licensees unanimously recognize the importance of the goodwill surrounding recognizable words, logos, entertainment and sports properties, as well as the myriad other recognizable icons that dominate retail merchandising.  Baby strollers, apparel and toys bear the brands of popular automobiles.  Home furnishings, wallpaper and bedding are sold under the logos of fashion designers.  Seemingly everything is or has been linked to entertainment properties, sport stars or other celebrities, either through branding or promotion.

In order to understand the legal foundation for much of this activity, one must grasp the basics of trademark law.

What is a Trademark?

A "Trademark" can be a word, symbol, logo, design, slogan or a combination of these that provides an indication of the source of a product, or an association with other products sold under the same mark.  A mark that indicates the source of or linkage between services is known as a "Service Mark."  A corporate identification is commonly referenced as a "Trade Name". 

Trademarks, service marks and trade names are all protectable in the United States under both state and federal laws.  Unlike the patent and copyrights laws, which are entirely federal by virtue of the Constitution of the United States, trademark law has arisen under the court-developed "common law" and derives its origins from precedents set in the British courts of prior centuries.

In both British and American jurisprudence, patent rights and copyrights are essentially protections of the property of the holder.  In contrast, trademarks are grounded in protection of the consumers of goods and services.  More specifically, courts (and later legislatures) recognized a need to give consumers some assurance that when they purchase products or services under a mark and are pleased with the quality that is delivered, they can expect that additional purchases under the same mark should result in delivery of equivalent quality.  While trademark litigation usually occurs between a trademark owner and one accused of "infringing" the owner's rights, the determination is based upon the anticipation of "confusion" among the purchasing public.  That is, the decision is rendered through evaluation of the impact on consumers of  branded goods and services. 

Trademark Clearance Process

Before one adopts a new trademark or service mark for use in connection with its products or services, it is essential to "clear" the mark so that use does not result in conflicts with third parties.  Many business people recognize this fact, but are uncertain regarding the clearance process.  Many believe that a search of a mark on the website of the United States Patent and Trademark Office should be sufficient to determine whether the desired use can be undertaken.  Unfortunately, it's not as simple as that.

In the United States, a mark that is actually used in commerce and does not conflict with superior rights of a third party, is owned by the user even if it is never registered. On the other hand, a mark which is applied for registration but never used in commerce is not the valid property of the applicant and should not become registered.  Further, a registered mark that ceases to be used can become "abandoned" can be cancelled by an appropriate process.  As a result, searching the Patent and Trademark Office website is not determinative either of the availability or the unavailability of the mark for use.

A meaningful trademark search involves the review of federal registrations, state registrations and actual or "common law" uses in commerce.  Professional trademark search firms maintain huge databases that record not only registrations but also uses of marks in commerce.  Sources for this information include trade and consumer publications, retail reviews and other research that determines which entities are using which marks, whether or not they are applied for or become registered.  The first step in minimizing the risk that use of a desired mark will result in adverse claims, therefore, is to have one's mark made subject to a comprehensive search.

Scope of Search

In addition to concern that one's mark not be identical to the mark of a prior user, it is also necessary to assure that similar predecessor marks will not be problematic.  Recalling that trademark law is based upon the protection of consumers, it becomes apparent that predecessor marks can be a problem if they are sufficiently similar to the desired mark that consumer confusion might result from contemporaneous use of both in the market place. 

As an example, if one were interested in using the word "Xtreme" as a mark for skateboards, one likely would have to defer to a prior user of the word "Extreme" for skateboards, notwithstanding the difference in spelling.  Superficial differences between marks for the same product will not suffice to protect the second user against claims by the first user.  (There are many other considerations that must be taken into account in real-world situations, but for this article we will focus principally on differences between the desired and the predecessor marks themselves.)

Then how is one to know when different is different enough?

Distinctiveness

A primary element in this inquiry is the level of "distinctiveness" of a mark.  Distinctiveness is the term used to describe the capacity of a mark to facilitate the identification by potential purchasers of a product or service from a desired source.  That is, does the mark enable the potential purchaser to distinguish one's product or service from that of a competitor?  The more "distinctive" a mark, the broader the scope of protection it will be afforded. 

Prior case law has categorized the levels of distinctiveness of marks and potential marks as follows:

Levels of Protection

"Fanciful", "arbitrary" and "suggestive" marks have descending levels of protectability against simulation, but all are in fact protectable. After the mark "Kodak" had been broadly used and advertised for many years for photography products and services, an off-brand bicycle manufacturer attempted to use the same mark for its products.  Of course, bicycles have nothing to do with photography, but nevertheless the Court found that there was a strong likelihood of confusion created by the second-comer's use of the Kodak mark which resulted from its completely arbitrary content and strongly distinctive nature. 

In contrast, without additional cogent factors, a suggestive mark like "Apple" would not likely be successfully asserted by the computer manufacturer against a bicycle marketer using the same mark.  In essence, it is less likely that consumers would associate an "Apple" branded bicycle with the goodwill of the computer manufacturer.  (Of course, these examples are highly simplified, and many other factors come into to play in making an infringement or clearance determination.)

By contrast, a proposed mark that is determined to be merely descriptive is not subject to protection on the theory that the user should not be permitted to withdraw entirely descriptive terms from the general public usage.  Nevertheless, if such a term is consistently and broadly used as a designation for a product by a particular user, then to the extent that it acquires public recognition in connection with that product, it will have achieved what is legally termed "secondary meaning".  This phenomenon can transform a term from unprotectable to a protectable mark.  As always, the inquiry is focused upon potential consumer confusion.  Once a descriptive term has become well known in the public mind and associated with a particular product, it will have acquired the potential to create confusion if used for the same product by another.

Generic Terms …

 … are never protectable for products or services that are generically described by those terms.  For example, the word "automobile" can never be subject to ownership as a trademark for automobiles as long as the word continues to have its current meaning in the language.  The flip side of this consideration is that words that originate as distinctive trademarks can be lost to their owners if they become interchangeable in the language with the products they describe.  For example, the word "aspirin" was originally a trademark owned by the Bayer Company.  "Cellophane" was originally a trademark of Dupont, and "escalator" was a mark of the Otis Company.  Each of these, however, became so broadly interchangeable in common usage with the products to which they pertain that they lost all distinctiveness and became generic.  How this happened, and how the owners of trademarks must take precautions against such occurrences, will be the subject of future articles in this series.

Other Considerations

A determination of a mark's distinctiveness is only the first of a number of considerations in determining whether that mark or a similar mark can be used without a likelihood of creating adverse claims.  Others include the similarity of the products or product categories to which the predecessor mark and desired mark are to be applied, the channels of trade in which the products will be distributed, the age and sophistication of the potential purchasers of the products, the trade dress of the respective users (e.g. the "look" of the respective packaging) and a number of other factors.

Conclusion

One can see that clearing a trademark for potential use is more complex than perusing the website of the United States Patent and Trademark Office.  Broader and deeper research is required before committing substantial expenditures against a proposed mark, and the application of a variety of considerations is necessary in order to reach a reliable conclusion.

While The Bard might not have objected to calling his favorite flower by another name, he would doubtless have objected to advertisements for another theater under the name by which his own was known throughout Elizabethan England…"the Rose".

Practices

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