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The objective of trademark law is to help consumers identify the sources of goods and services. In a trademark infringement case, it is best to have evidence of actual consumer confusion, meaning consumers think they are dealing with Company A, when they are really dealing with Company B. That said, you do not need evidence of actual consumer confusion. The standard is "likelihood of confusion." The similarity of the marks is likely to confuse customers about the source of the goods or services. Washington courts use an eight-factor test articulated by the Ninth Circuit to evaluate the likelihood of confusion:
What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. What is a service mark? A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks. What is the purpose of trademark law? The purpose of trademark law is to prevent confusion among consumers about the source of products and to permit trademark owners to show ownership of their products and control their product’s reputation. What is trade dress? Trade dress is a type of trademark used by a person to identify his product, to distinguish his product from those manufactured or sold by others, and to indicate the source of his product. The term “trade dress” refers to the total image of a product, product packaging, product label, product design, or a combination of these things. It includes non-functional features such as size, shape, color or color combinations, texture, graphics, or particular sales techniques. What is a patent? A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. What is a copyright? A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. For more information, contact the U.S. Copyright Office (a division of the Library of Congress). What is a certification mark? A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others. What is a collective membership mark? A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members. What is a collective mark? A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services. Must I register my trademark? No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits. Where can I register my trademark? Registration of a trademark provides the registered user with exclusive use of that trademark and protects against infringements upon the user’s rights. A trademark may be registered with:
What are the benefits of federal trademark registration? Owning a federal trademark registration on the Principal Register provides several advantages, including:
What about the use of "TM" or "SM" or the ® symbols? If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending. Source: USPTO Contact Mark D. Walters We should take a moment to acknowledge a raging dispute between the trademark attorneys and the marketing and search engine community.
The trademark attorneys and the marketing and search engine optimizing communities are at odds. Trademark attorneys encourage businesses to adopt unique, arbitrary and fanciful word marks whereas the marketing and search engine optimizing professionals often encourage businesses to adopt descriptive business names and matching descriptive website URLs to maximize search engine optimization. This is one approach and it’s hard to argue with maximizing search engine results, however, adopting a descriptive company name and URL undermines the business goal of developing a strong and highly valuable trademark because descriptive and generic phrases cannot be registered as trademarks on the Federal Register, and this is where all the best and most valuable trademarks are registered. For example, if a business owner intends to provide high quality landscaping services, it cannot register the words HIGH QUALITY LANDSCAPING as a trademark on the Principal Register. The law of trademarks is grounded in fair competition and permits all landscapers to use this phrase to describe their landscaping services; the policy is that no single company should be permitted to exclusively own and use the HIGH QUALITY LANDSCAPING. The best word trademarks and service marks are arbitrary and fanciful. A fanciful mark is a made up, or coined term, that had no meaning before its use as a trademark. For example, when you seen the terms, COCA-COLA and EXXON, only two companies comes to mind. These are both very strong trademarks and fanciful marks are afforded a greater scope of protection. Similarly, when you see the letters UPS, only one company comes to mind. This is a very strong service mark. An arbitrary mark is an existing word that has come to indentify the company or product. For instance, the words MUSTANG and JAGUAR have become trademarks for certain automobiles. Here are more examples of arbitrary and fanciful marks. Examples of Fanciful Marks (coined terms that had no meaning before trademark use) VERIZON (cell phone) POLAROID (cameras) PEMCO (insurance) OREO (cookies) LEXIS/NEXIS (legal research tool) KODAK (camera) XEROX (copies) EXXON (gasoline) HARPO (for Oprah Winfrey’s company) Examples of Arbitrary Marks (existing words that have come to identify the company) AMAZON (online retailer) YAHOO! (search engine) BING (search engine) GOOGLE (search engine) SUN (computers) CANNON (copiers) DOMINO’S (pizza) DOMINO (sugar) APPLE (computers) NICKELODEON (cable television network) COMET (kitchen cleaner) SHELL (gasoline) The goal is to come up an arbitrary or fanciful marks for your company, products and services. Doing so will add the greatest value to your company, and this will offer your business a broader scope of trademark protection. While you can enforce a valid common law trademark, an easy step to better protect your trademarks in Washington state, is to register your ownership of the mark with the Washington Secretary of State. Most people will need some, limited, legal help to make sure they are correctly completing the form, but this is a low cost step that will give you some protection from trademark infringement.
On advantage to a registered mark owner is that the Washington State Trademark Statute allows the owner of a registered trademark to possibly recover reasonable attorneys fees and costs if the court finds that the infringer acted in bad faith. Thus, registration with the Washington Secretary of State can give a trademark owner powerful negotiating leverage. A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term "trademark" is often used to refer to both trademarks and service marks. Trademark law protects consumers from confusion as to the source of goods and services.
A common law trademark is a trademark that is used in commerce without registration at the state or federal level. State or federal registration is not required to establish rights in a trademark. Common law trademark rights arise, or vest, from actual use of a trademark, and may allow the common law trademark owner the ability to successfully challenge a registration application and the ability to pursue a trademark infringement lawsuit against the user of a trademark by a second comer that is likely to cause consumer confusion as to the source of the goods or services provided by the common law trademark owner. Contact Mark D. Walters A question that frequently comes up is "what is the difference between a trademark, patent and copyright? This post provides a quick understanding of the basics for trademarks, patents and copyright. Trademark - A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. The term "trademark" is often used to refer to both trademarks and service marks. Trademark law protects consumers from confusion as to the source of goods and services. Patent - A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. Patent law protects inventors. Copyright - A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. Copyright law protects authors. The United States Patent and Trademark Office has created a video that also explains the differences between trademarks, patents and copyright. Contact Mark D. Walters |