Trademark Overview:
In the event of unfamiliarity, the following is meant as a
"simple" explanation of trademarks and how they operate.
Principally, trademarks are devices which are used within the marketplace
to identify the maker of a particular product or provider of a particular
service. While achieving this goal, trademarks achieve another
purpose, which is to provide for their owners a competitive advantage.
What does this really mean?
Let's take the shopper who goes to the supermarket to
buy their "favorite" kind of laundry soap.
"Hi-Vibe" is the most popular soap on
the market. While there might be 20 different named soaps lining the
shelf, any shopper recognizes the name "Hi-Vibe" and can
immediately pick out
its logo and knows that it is a product of the Neato Corporation.
These qualities contribute to making "Hi-Vibe" a trademark.
This distinctiveness provides its owner with a clear marketing or competitive advantage.
The
advantage comes in the form of consumer product identification and is
readily apparent every time a shopper is able to find and chose
"Hi-Vibe" instead of one of the competing products.
How is this valuable?
Well, what if one of Neato's poorly performing
competitors was able to replace its soap's name with the
"Hi-Vibe"
name or
something confusingly similar ("Hi-Viber"?) and then reproduce
the "Hi-Vibe" logo on its soap's boxes? This poor
competitor would no longer be poor as its profits would skyrocket based
upon the simple confusion of loyal soap buyers! Even better if the
competitor used inferior and cheaper ingredients and did not have to spend
any money on marketing.
Confused consumers would wrongly buy the
competitor's product instead of Neato Corporation's product. Now,
Neato Corporation would be in a pickle. After spending millions on a
national advertisement campaign for over 20 years of promoting
"Hi-Vibe", their sales would drop off as consumers bought the
competitor's product (now cleverly under priced). Even worse, what
if the competitor's product left consumers' clothing dingy and rancid
smelling? In a short period of time, all of Neato's revenues
and investments would go, well, straight down the drain.
(Couldn't help that one.)
Why doesn't this happen all of the time?
Simple, trademark owners protect their marks through common, state and federal
trademark laws that are specifically intended to prevent this type of "palming
off". Under state and federal laws, trademarks (prospective and
in use) are submitted through a registration process (official
recording with the government). These laws help to establish
the validity of a trademark, provide a basis of proof that the mark was in
use at a certain date and help to provide accidental confusion. They
also provide for the process for recovery in the event of
infringement.
This is the very starting point of where Long &
Chybik can assist potential trademark owners. Long & Chybik can
assist in determining the proper venue (common, state, Federal) for a
trademark. We can then help you in registering the mark.
But what about Neato? Well, thankfully, they had
their trademark registered with the Federal Government years ago - and had
kept its registration up to date. Consequently, given the
competitor's underhandedness, it is most likely that Neato's attorneys are
going to be able deliver a very satisfactory victory wherein the poorly
performing competitor had better have off-shore holdings.
In retrospect, just try to now attach some significance
to the words "Hi-Vibe" without making an association to the
laundry soap and Neato Corporation. It's virtually impossible, isn't it?
(Maybe we should go into marketing afterall.) Bear in mind, that without the
soap and the commercial connection behind it, "Hi-Vibe" is
nothing more than a meaningless (and rather silly sounding) conjunction of
two words. It is that secondary, commercial meaning
underlying the two
words that is the defining essence of trademarks.
Other Types of Marks: Service, Certification,
Collective, House
There are other types of marks besides trademarks. They are
used for different purposes although their applications remain fairly
similar to the overall purpose of trademarks.
Service Marks
A service mark is a word, name, symbol or device or any combination
thereof which is used to identify and distinguish the services of one
person from goods manufactured or sold by others and to indicate the
source of the services, even if the source is unknown.
Essentially, this is the equivalent of a trademark for a service
organization.
Certification Marks
A certification mark is any word, name, symbol, or device, or any
combination used by a person or an entity, other than its owner of the
mark, to certify origin, material, mode of manufacture, quality, accuracy,
region or other characteristics of the goods or services.
Certification marks are also used to show that the work or labor utilized
in the production of the goods or services was performed by members of a
union or other certified organization. An example of a certification
mark would be the mark on Florida citrus fruit notify the consumer that
the orange, grapefruit, etc. was the produce of a Florida grower.
The Florida grower does not own the certification mark, the Florida Citrus
Growers Association owns the mark, or it might even the be State of
Florida that owns the mark. A grower would have to apply for and
receive permission before placing the certification mark on their produce.
Certification marks are unlike other types of marks in that they are not
meant to identify who produced or made the particular goods or services
offered. Rather they are used throughout a group of producers,
manufacturers, or service providers to certify to consumers that the goods
or services in question have attained some important characteristic.
Unlike traditional trademark practice, the owner of the certification mark
is barred from producing the goods or services for which the certification
mark will ultimately be used for. As a result, an owner that has
both a certification mark and a trademark cannot allow the marks to be
identical. To the extent that the certification and trade marks
might be similar, the consumer must still be able to readily differentiate
the two in order to avoid confusion.
Certification marks are subject to all of the requirements of trademark
law including distinctiveness.
Certification marks are not to be confused with
collective marks.
Collective Marks
Collective marks indicate an association with a group. They are
meant to show that the producer of certain goods or services is a member
of a particular group.
Under this mark, there are collective trade/service marks and there are
collective membership marks.
Collective membership marks, unlike trademarks, do not indicate the origin
of the goods or services, instead they simply indicate membership in a
particular group. Conversely, collective trade/service marks
indicate the source of goods or services in that the source of these goods
or services is the member of a particular group.
House Marks
House marks are trademarks owned by a company that are attached to all
goods produced by that company, even though the goods are unrelated.
The house mark is used to denote that the goods all come from the same
"house" or manufacturer.
