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Basic Principles of Trademark Protection

A trademark is a word, symbol or picture that a company uses to help consumers identify the company’s products or services and distinguish them from those of other companies.1 Although included in the general category of trademarks,  a word or symbol used to identify services, as opposed to goods, is more specifically called a “service mark.”2 Service marks are afforded the same protection as other types of trademarks.

Trademarks were originally protectable in the United States, and remain protectable, under the common law of each and every State.3 The common law rights inherent in all U.S. state laws protect trademarks, including service marks, actually in use within the United States, whether or not the particular mark has been registered. Trademarks, however, receive additional protections if they are registered pursuant to state or federal statutes. Registration confers important advantages in the trademark litigation context, as discussed below.

Trademark law protects the right of the mark owner to the exclusive use of that mark, thereby protecting the owner’s continued enjoyment of his trade reputation and the goodwill that flows from it, free from interference by others. The keystone of trademark law is avoiding a likelihood of confusion in the mind of the buying public. The scope of protection afforded to a particular mark against infringement is governed by the likelihood of confusion presented by conflicting uses.

Generally, the first to use a mark in a specific geographical area (“the senior user”) has priority rights over a junior, infringing user. However, prior use of a trademark in a foreign country does not entitle its owner to claim exclusive trademark rights in the U.S. as against one who used a similar trademark in the U.S. prior to the entry of the foreign owner into the American market.

Categories of Trademark Protection

There are effectively four categories of trademark protection, each affording its own degree of protection against infringement. The four categories create a spectrum relating to the distinctiveness of the particular mark. The more distinctive the mark, the greater the degree of protection afforded. In descending order of degree of protection afforded, the four categories are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.

Marks which are fanciful and arbitrary (bearing no relationship to the actual product) or suggestive (requiring some imagination to identify the connection suggested by the words of the mark) are regarded as inherently distinctive, and are entitled to trademark protection immediately upon their first use in commerce. Descriptive marks, on the other hand, are not regarded as inherently distinctive. In order for marks which are merely descriptive to gain trademark protection, the mark must first be shown to have obtained a “secondary meaning” in the minds of the buying public, identifying the product or service with a particular source or origin, thereby rendering it sufficiently distinctive. Generic terms refer to the genus of which the particular product or service is a species, and can never be entitled to trademark protection.4

As a practical matter, then, arbitrary or suggestive trademarks are easier to protect than marks which are merely descriptive. As discussed below, WF”s service mark is likely to be deemed to be a suggestive mark.

Advantages of Trademark Registration

As indicated above, registration of a trademark can confer important advantages. In California, for example, special protections granted to state-registered marks include increased penalties for the counterfeiting of trademarks. (California Business and Professional Code section 14340.) State registration, however, provides protection only as to business conducted in that state. Federal registration is almost always preferable, as it affords special protections throughout the entire United States. An applicant seeking federal registration must be engaged in interstate and/or foreign commerce within the United States, rather than only intra-state activities.

Once it becomes incontestable, federal registration is conclusive evidence of the registrant’s exclusive right to use the mark under almost all circumstances. (15 U.S.C. sec. 1115(1)(b); Park and Fly, Inc. v. Dollar Park and Fly, Inc. 469 U.S. 189 (1985).) A federal trademark registration is prima facie evidence of the validity of the registration and of the registrant’s ownership of the mark and exclusive right to use the mark in commerce in connection with the services specified in the certificate. (15 U.S.C. sec. 1057 (b).) Once a trademark is federally registered, the federal courts have jurisdiction to hear any claim for trademark infringement, regardless of the amount in controversy. (15 U.S.C. sec. 1121, 28 U.S.C. sec. 1338.) In federal court, profits, damages and costs are recoverable, and treble damages and attorney’s fees are available. (15 U.S.C. sec. 1117.)

As a practical matter, these procedural and substantive law advantages can save considerable attorney’s fees in the event of trademark infringement litigation. They may also entitle the registered mark owner to obtain immediate provisional relief such as an injunction.

Procedure for Federal Trademark Registration

An applicant for federal trademark registration with the United States Patent and Trademark Office (“the PTO”) must submit three specimens of the mark as used, and a drawing of the mark. The applicant must also show that it is the owner of the mark, that it uses or intends to use the mark in U.S. interstate or foreign commerce, that the mark does not fall into certain unregisterable categories (obscene or deceptive material, the flag of a sovereign nation, etc.) that it does not resemble so closely another mark already registered that its use is likely to cause confusion, and that the mark is not merely descriptive without an acquired secondary meaning. (15 U.S.C. sec. 1052)

A foreign firm with a service mark already registered in its domicile country, such as WF, may file with the PTO a “foreign application” stating its bona fide intention to use the mark in the United States, and may receive immediate U.S. registration. (15 U.S.C. sec 1126(e), Lanham Act sec. 44(e).) Unlike U.S. applicants who file under similar intent-to-use provisions, a foreign applicant need not prove actual use before the U.S. registration actually issues.5 The “constructive use” date of the foreign registrant for purposes of determining priority between it and the user of a similar mark would be the U.S. date of filing, although actual use would still be necessary in order to maintain an infringement action.

A foreign firm with a trademark registration application pending in a foreign country may also file an application with the PTO, but the pending foreign application must first mature into an actual registration there before the corresponding U.S. registration can be granted. Such an application must be filed with the PTO within six months from the date of filing of the application pending in the foreign country. (15 U.S.C. sec. 1126 (d), Lanham Act sec. 44(d).) An application filed under those circumstances affords a basis for receiving a priority filing date in the U.S., corresponding to the filing date of the earlier-filed application in the foreign country. The constructive use date would be the filing date in the foreign nation.

However, anyone may challenge the validity of a U.S. registration by challenging the predicate foreign registration.

The Patent and Trademark Office will assign a trademark Examining Attorney to review the application. The Examining Attorney will deny the application if the mark so resembles either (1) a mark previously federally registered or (2) a mark previously used in the United States, such that confusion is likely. The application is also subject to opposition by someone who believes there may be a conflict, even if the PTO examiner is satisfied that no conflict exists. If the registration is finally issued, then anyone who believes he may be damaged by that registration may file a Petition to Cancel. For these reasons, prospective registrants usually conduct a search to see whether the proposed mark conflicts with any pre-existing rights.

1Trademarks and trade names are distinct. Although protected under unfair competition law, trade names cannot be federally registered. However, if the same word, symbol or picture is used as both a trademark and a trade name, it can be federally registered as a trademark. You may wish to investigate whether your trade name would potentially infringe on others using a similar name.

2The Trademark Law Revision Act of 1988 defines a service mark as:

Any word, name, symbol or device, or any combination thereof –

(1) Used by a person, or

(2) Which a person has a bona fide intention to use in commerce and applies to register on the principle register established by this Act, to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown. . . .

Lanham Act, sec. 45, 15 U.S.C. section 1127.

3“Common law” is comprised of those principles and authorities embodied in the decisions of courts of law in each state of the United States, as opposed to the statutory law created by the enactments of state legislatures.

4The word “apple” is arbitrary or fanciful as applied to personal computers; suggestive as applied to “apple-a-day” vitamin tablets; descriptive as to “Tom Apple” for a combination tomato-apple juice; and generic when applied to apples themselves. (Bristol-Myers Squib Company v. McNeil-P.P.C., Inc. 973 F.2d 1033 (2nd Cir. 1992.)

5A domestic intent-to-use applicant must show actual commercial use of the mark within 12 months of the date of the application; a foreign intent-to-use applicant need not do so. Foreign firms receive this special status by virtue of the Paris Convention, the premier international treaty organization relating to patents and trademarks. Germany and the United States are parties to the Paris Convention.