Mystique for Sale

Applications to register a trademark once involved a lot of mystique.

Standard equipment for trademark attorneys used to include an arcane filing system containing multiple flaps (some opened to the side, and others up). Delightfully, those folders are still around, although in a digital world they’re probably getting a lot less use.

The application itself consisted of multiple documents drafted in conformity with very particular rules about margins and line spacing. When a mark included a logo or stylized letters for which protection was sought, special draftsman drew it using black India ink (so the mark would show up sharp when published in the Trademark Gazette). Until five years ago, those draftsmen needed to know the special hatch mark codes that were drawn in black to indicate colors (such as the red cross of the Red Cross). Nowadays when color is claimed as a feature of the mark, the drawing is actually in color.

Applications were accompanied by evidence to show the trademark was really being used — things such as a box for computer games, a cloth label sewn into shirt collars, or a large paper label glued onto crates of oranges. That sort of evidence is still accepted, but now so are photocopies, and for electronically filed applications, JPGs and other digital files are the rule.

With much of the mystique is gone, applying to register a trademark now seems easy as playing an on-line game — a few clicks, and you’re done. The change is positive, bringing uniformity and increased accessibility to the records of the trademark application process, but it also makes trademark applications look too easy — easier than they really are. In the end, a lot of people wind up running into problems they could have avoided, or owning registrations that are vulnerable to challenge and that sometimes protect nothing.

Here are some trademark basics to help avoid those problems — rules that are relevant to picking a trademark whether you decide to register it, or not.

What is a trademark?

Trademarks go back thousands of years, when animals were branded to indicate who owned them, and potters and stonecutters used designs on things they made to indicate themselves. Today trademarks usually take the form of:

• – words (such as “iPod” for a certain product of Apple, Inc.);
• – slogans (such as “We Try Harder” for the car rental service of Avis Budget Group, Inc.);
• – images (such as Planter’s monocled “Mr. Peanut” for peanuts); and
• – sounds (the three musical notes associated with “Na-bis-co!”);

But a trademark can be anything you can sense which is capable of associating a thing with its source, including a 3-dimensional shapes (the hourglass of a classic Coca-Cola bottle), a shade of color (the pink of Owens-Corning spun glass insulation) or even a distinctive scent (embedded, for example, in a brand of yarn). Trademarks use the same primitive and psychological process by which perfume may subliminally entwine emotions and memory, a way to communicate[em] when you smell this, think of me![/em]

Trademarks under USA Federal Law fit into four categories:

• – Trademarks identify a source of “goods” — tangible things, like a pack of pinochle cards, or an automobile, or a box of software, or its downloaded equivalent;
• – Service marks identify a source of “services” — such as the services provided by an accountant, or massage therapist or a website search engine;
• – Certification marks are used with the owner’s permission by someone other than its owner, to certify something — as examples, that the cheese sold under the mark came from Wisconsin, or was made by a union member, or meets a professional standard.
• – Collective marks are used by the members of a group to indicate membership — such as membership in union, or a trade association of Milwaukee Dri Cleaners, or a national baseball league.

A “mark” refers to any of the four types. A “trademark” sometimes refers to trademarks and service marks — probably because the rules for them are mostly the same, and because sometimes the same mark can be both (for example “Apple” as a trademark for Mp3 players, and as a service mark for a music download service).

What do you get when you own a trademark?

Owning a trademark means owning the right to use it on particular goods or services. The goal is partly to help a trademark owner benefit from the good reputation he’s built up without impersonations by other companies. More importantly, trademarks protect the public, which benefits from being able to make purchases based on reputations — good and bad — without confusion about who is selling what.

How far do trademarks reach geographically? The only sure way of getting national coverage in the USA is by registering the mark. Obtaining protection in other countries depends on registering the mark in them, too, a process which has gotten easier in recent years.

None of which stops using a trademark in ways that don’t cause confusion, or otherwise injure it. Anyone can use another’s trademark descriptively — referring for example to Lenovo’s Thinkpad in connection with a review. And anyone can use an identical trademark on their own product if doing so won’t make confusion likely. For example, for years two unrelated companies used FASTGRAPH as a trademark for software for programmers. One used it on software to help program computer games and other things needing speedy graphic functions. The other used it on software to help program mainframes by mathematically analyzing parallel processes. The trademarks looked and sounded the same, but had different meanings (graph = graphics compared with graph = mathematical graphs), different customers (game programmers v. programmers of parallel processing mainframes) and different sales channels. Neither’s use of the mark was so famous — the way, for example, Coca-Cola is famous — that any use might cause confusion, or dilute the power of the other mark.

The result was both uses and registrations of FASTGRAPH were allowed to coexist because coexistence didn’t make confusion likely.

The first steps to picking a trademark

There is a continuum of potential trademarks, from generic (having a close relationship to the product or service it is used on) to abstract (having no relationship at all). In between are many gradations, which can be diagrammed like this:

Abstract –> Suggestive –> Merely descriptive –> Descriptive –> Generic

Parallel to that there is another continuum:

Strong –> Weaker –> Not protectable as a trademark

The closer to generic, the less potential to be a trademark. The more abstract, the greater potential to be a strong trademark. The strongest trademarks are not just abstract, but “coined” — totally made up words that were born to be trademarks. “KODAK,” for example, wasn’t a real word until it occurred to George Eastman in a dream. Because it didn’t mean anything it could in time become strongly and uniquely associated with the famous film company that Eastman founded.

Suggestive marks can also become strong. “ROACH MOTEL” is a classic example. It combines the descriptive word “roach” with “motel” which only suggests a product that traps them.

In comparison, OXYGEN as a mark for a supplier of tanks of oxygen would be generic, and totally impossible to protect.
Ditto for “merely descriptive” phrases. “DOUBLE SPEED,” for example, would be merely descriptive (and not useable as a trademark) in connection with a Blu-Ray DVD player that goes twice the speed of other such players. But DOUBLE SPEED might be useable for use in connection with other products where it’s not merely descriptive — as a brand name for sneakers, for example (where it is somewhat suggestive), or, for that matter, for a brand of steam irons (for which a company actually has registered it).

A word may be considered merely descriptive without identifying all of the purposes, or features of the thing it is used on — it’s enough if it describes one significant function, attribute or property. As examples, the Trademark Office determined that the following trademarks were descriptive, and refused to register them:

– BED & BREAKFAST REGISTRY (for lodging reservations services)
– SCHOLASTIC (for devising, scoring and validating tests for others)
– SCREENWIPE (for premoistened antistatic cloths for cleaning computer screens)
– BREADSPRED (for jellies and jams)
– WARM-EVER (for water heaters)

Note that on the continuum, “descriptive” and “merely descriptive” are different. “Merely descriptive” phrases are never protectable as trademarks, but “descriptive” words can be protectable if, after time and advertising, they eventually become uniquely associated with a single company.

Personal names (both surnames and first names) are considered descriptive — for example, when “DAVE’S LUNCHEONETTE is owned and run by a guy called “Dave.” But FORD was once a guy’s name too, and in time it became uniquely associated with a brand of automobiles. People generally have a right to use their own name of course, but not when doing so would be likely to cause confusion.

Usually the Trademark Office is sharp about figuring out that a trademark is descriptive, but at times they goof up. Someone might be able, for example, to register LAMP as a mark for an open source bundle of website server software, but the registration would vulnerable to challenge by anyone who knew that LAMP is merely descriptive when used as an acronym for [L]inux, [A]pache, [M]ySQL plus one of the “P” the programming languages ([P]hP, [P]erl, or [P]ython).

Once you’ve selected what looks like a potentially strong trademark, you’ll want to make sure it’s not likely to cause confusion with any preexisting marks — registered and not — and the way to do that is to search and evaluate preexisting marks.

Next up…

• – “How to” tips on searching trademarks;
• – What are the pre-requisites for registering a trademark?
• – What should you register: words only, or the word in a stylized script, or a related a logo, or all three?
• – How to use the [tm], [sm] and [r] symbols (and why [c] symbol is an unrelated topic);
• – How trademarks help to protect characters used in games;
• – The advantages of registering a trademark; and
• – What do to post-registration

But what would you like to read about here? Suggestions are welcome!

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Charles B. Kramer, Esq.
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For discussion purposes, not legal advice.
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