The United States trademark laws, when combined with our federal copyright as well as state and federal unfair competition and similar laws, create a body of protection for intellectual property owners. Whether you are such an owner, want to become such an owner or wish to use another party's creative property, you must be familiar with such laws in order to both market your properties and avoid infringing upon the rights of others.
Let me, for the sake of this article, limit the discussion to trademark laws since I have already written extensively about copyright laws. Clearly this trademark overview is designed merely to highlight some of the issues but not be exhaustive of them. The devil is in the details, as they say, and your particular matter may require a more thorough analysis of the problems and expert advice.
Understanding this body of law is important both from the point of view of creating your own rights as well as refraining from infringing on other's rights. While this may seem self-evident since clearly you do not want to get into litigation with the owner of a trademark, it is also very important since you may have obligations to other parties that relate to your claims to your mark or your use of another person's mark. If you are either claiming a trademark or contemplating using another's mark in some fashion, you must be aware of your potential liability to persons with whom you have contracted since in many contracts you will be making representations, warranties and indemnities about the rights to your work, whether to your book, an article you have written, a web site you have designed or own, etc. to those other parties. As a result, if you claim a mark that you do not own or you infringe upon another's trademark, you may find that you are in breach of your contract with these other parties. Therefore, without a careful analysis, you may be find yourself in a litigation not only with a trademark owner but with some party with whom you have contracted as well.
A trademark can be a name, slogan or design or a combination of those elements that is used to identify the source of goods (or in the case of a service mark, services) and to distinguish that source from any other source providing the same or similar goods and services. For the sake of clarity, I will use only the term "trademark" even though the term service mark may otherwise be applicable.
While titles and short phrases may not be copyrightable, they may be protected by trademark if they meet the appropriate qualifications. (Read "The Protection of Book Titles".)
The Supreme Court has also decided that, under certain limited circumstances, merely a color can be a trademark. So, for example, a particular use of color plus a unique design, type style, etc. may all be protectable under the general theories of trademark law or in some instances, the law of unfair competition. In the book publishing business, this is similar to what is known as "trade dress." It is the look and feel of a book and may be protectable under trademark law if the trade dress has acquired a "secondary meaning" and is not purely functional. "Secondary meaning" means that the mark has become associated in the mind of the public with a particular source and that therefore use by another of the same reference may lead to confusion. As a result, there may be protectable elements under the trademark law if there is some potential confusion as to source in the mind of the public.
However, if your use of a name, for example, is not likely to confuse the public as to either the source of the goods or services you are providing or you are not implying any endorsement from the owner of the mark, you may be free to use the name without penalty. And so merely mentioning the name "Coca Cola" in the context of this article is not likely to be a trademark violation for it is explanatory only and no one would believe that I was intending any confusion about the trademark "Coca Cola" or that somehow the company endorsed such use. The courts refer to this kind of permissible use as "nominative" because the use is not likely to cause any confusion as to source.
But as in all areas of the law, not everything is as simple at it first appears. With certain famous marks, such as "Coca Cola," the owner of the mark may have the right to prevent the mark from being "diluted." This means that even though no one would be confused by the use of a mark in a way that does not even remotely indicate that its use was intended to imply use by the owner or confusion as to source, the mark may still be protected against such use if such use "dilutes" the value of the mark in other ways. This right is limited to "famous" marks and in those instances, extends the doctrine of trademark protection that is otherwise restricted to uses that may result in confusion.
However, registering the mark and affixing the required notice, much as registering a copyright, affords the owner some very substantial legal benefits and so registration should be actively pursued and is highly recommended. And one of the key benefits to registering a mark is that it provides for national exclusion from others using the same or similar mark after you in a confusingly similar manner. The owner of an unregistered mark is limited to using that mark only in the geographic area in which the unregistered mark is actually being used. In such an instance, the unregistered mark can be prevented by the registered mark from expanding into other territories.
Unlike rights of patent or copyright which have finite terms of duration, trademarks actually have the potential of growing more valuable as time passes. Marks can, accordingly, last indefinitely.
Additionally, a mark may be lost if it becomes "generic." The classic example of the loss of such a mark and its becoming generic is the word "cellophane." When it was first coined, it identified a brand of that sort of wrapping paper. But it became so widely used to identify all forms of that wrapping paper that the courts determined that it had become generic for all such forms and ceased to be a valid mark. It was no longer associated in the mind of the public with a particular company making that paper. Another example might be "Xerox." It is a brand name, a trademark, that is used to identify a particular form of photocopying. To refer to making copies as "xeroxing" runs the risk of making the mark generic and would likely be aggressively protected.
In sum, owners of trademarks are not necessarily "evil" if they rigorously enforce their intellectual property. They must do so if they are to protect their commercial asset. And while, if you are not the owner of such a mark may object to what you deem to be "restrictive" policies, keep in mind that you too benefit from the protection afforded by trademark law. If you want a particular brand of a product or service, you want to be assured that what you are buying is what you are getting. If the owner of that mark does not protect the mark, at some point you too may be a victim of the confusion that may result.
When you contemplate using a name, mark or such, you should strongly consider doing a trademark search to determine if it is claimed as a mark by someone else. Unfortunately, since not all marks are registered anywhere, such a search is not conclusive. And a trademark search merely in the United States may simply not turn up any registration for the mark may be registered in another country.
Copyright © 1996, 1998 Ivan Hoffman. All Rights Reserved.
This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship and is not a solicitation.
No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.