WHEREFORE THOU ART #53
ESSENTIALS PART II

Last month we took another look at copyright basics-this month we're going after the essentials of trademark law. People tend to get these two very different concepts confused; I've heard national news anchors mangle them-talking about things like "copyrighting a name" or "trademarking a concept"--- neither of which is a legal possibility.

Copyright law protects original works of creative expression-songs, paintings, poems, etc. Trademark law, on the other hand, protects commercial names and other designations of commercial source, things that represent a company, a maker of a good or a provider of a service. Trademarks can be words (like "Acme Explosive Company"), phrases ("Where's The Beef?"), symbols (golden arches), even colors (pink insulation). Nike, for example, owns federal trademark registrations for the name Nike, for the phrase "Just Do It," for the "swoosh" symbol that appears on all Nike goods, and even for the word "swoosh."

Technically, "trademarks" apply to providers of goods, and "servicemarks" to providers of services. Most people, including myself, use trademarks as the general global term.

Trademark law exists for two main purposes-first, so the business world can run smoothly, so that there is a mechanism by which businesses can maintain their identities and disputes about them can be resolved. The second purpose is grounded in notions of consumer protection-so that when you buy a recording that's labeled as being by, say, Julia Gottlieb and The Blue Ribbon Boys (who I strongly recommend), you know that's what you're gonna get.

Trademark rights arise at common law simply by use. If I start a lemonade stand at the end of my driveway, and put up a big sign next to my stand that says "Paul's Lemonade", I could stop anybody else on my road from selling lemonade at the end of their driveway using the same name. It wouldn't be particularly neighborly, but I could do it. My rights to use "Paul's Lemonade" to sell lemonade on my road arise from my first use of the name. And my common law rights to "Paul's Lemonade" last for as long as I keep selling that lemonade! Forever, even, if I could tap into the miracle of eternal life and didn't get tired of standing around at the end of my driveway!

But my common law rights extend only to my road, and maybe, a couple of roads around my house and only to lemonade and maybe other related things a lemonade seller would logically sell, like ice water and cookies. Common law trademark rights are geographically limited to the area where business has been done, and limited to the goods or services provided, and any logical extensions of both.

The basic measure of a trademark's protection is whether a competing mark causes a "likelihood of confusion" as to the source of the good or service in the mind of a typical consumer. If there is such a "likelihood of confusion", the competing mark is infringing. If this concept sounds squishy to you, well, you're right. It's squishy. Really squishy. That's why God made trademark lawyers.

These days, with the internet and other types of media, most businesses are not so local, and the geographic boundaries of a particular business venture are not so readily defined. One can get significantly increased protections for a trademark by registering the mark with various states' departments of state, or with the federal Patent and Trademark Office ("PTO").

State registrations are quick, cheap (usually around $50), last for ten years, and generally protect your mark within the boundaries of your state. If your business is primarily local, it's a bargain. You'll get an ironclad public record of your trademark, and registration typically opens up the possibility of enhanced damages and other remedies if your mark is infringed. The registration process is fairly simple, and you shouldn't need a lawyer to get a state trademark.

If, however, your business isn't so geographically limited and if you expect your business to grow, you might consider shooting for a federal mark with the PTO. Federal registrations, by contrast, can take time to get (figure about a year), are relatively expensive (the filing fee varies, but is generally around $300), and can get complicated. I met some non-lawyers who have successfully secured federal trademarks themselves; I've met many more frustrated non-lawyers who've hired me to get their marks because they just wasted a year and a pile of money trying unsuccessfully to get a federal registration.

Keep in mind that the state and the federal registrations will be granted only if you can show that you are in fact using the mark. And keep in mind that your registration will not trump someone else's pre-existing common law rights. Say my lemonade business really takes off, and I go get a federal registration for "Paul's Lemonade." Then I find an old guy in Arizona who's been selling lemonade under the name "Paul's Lemonade" at the end of his driveway since 1967. His rights trump mine, at least at the end of his driveway.

Both state and federal trademark registrations last for ten years, and can be re-upped perpetually as long as the mark continues to be used.

The PTO is fairly restrictive on what marks it grants. Books have been written on this topic, but in general, the more distinctive or fanciful a mark is, the more likely registration will be granted, and the greater protection it will receive. Geographic names in a mark often will be rejected for registration until such a time as the applicant can show not only first use of the mark, but also that the mark has been used in a way to gain a demonstratable level of notoriety in the public's eye.

A relatively non-distinctive name will get narrow protection for a small universe of goods and services. Our friends The Blue Ribbon Boys probably wouldn't be able to stop somebody from selling Blue Ribbon Flour, and neither of them could stop a third company from selling Blue Ribbon Motor Oil. There's just not going to be a likelihood of confusion that the three products (music, flour, and oil) come from three different places. A very distinctive name will get broad protection. This is why pharmaceutical companies tend to use completely fanciful made-up words for marks for its new products-they know there won't be a prior user of, say Viagra, because it's a made-up name, and the protection for the name will likely transcend all types of goods and services, because the impact of the mark is so strong. In other words, if I were to change by mark from Paul's Lemonade to Viagra Lemonade, I'd probably sell more lemonade but would probably wind up on the wrong side of a lawsuit. The Viagra mark is just too strong.

All of these considerations can result in some wacky situations, like when I had to convince the Mexican baking corporation Grupo Bimbo that my client, the New York fashion company House of Bimbo, wouldn't start making edible clothing, such that there would be no likelihood of confusion if our respective client's using the Bimbo mark.

I could go on! But I'm out of room. See you next month.

© 2007 Paul C. Rapp
This article originally appeared in The Artful Mind, and is intended to provide the reader with an awareness of copyright law and not legal advice.