In this video, you will get answers to these questions:
- Can you register a trademark when there is already a service mark on it?
- Do you want to register a trademark with the US patent trademark office?
- Does it pose a problem if there is already a service mark?
- What is a trademark?
- What is a service mark?
- What is trademark infringement?
- What is trademark delusion?
Video Transcript
Can you register a trademark when there is already a service mark on it? That’s the question I’m answering today. I’m Aaron Hall, an attorney representing business owners in Minneapolis, Minnesota. Let’s imagine that you want to register a trademark with the US Patent and Trademark Office that will give you a federal registered trademark, but there’s already a service mark out there. Does that pose a problem? And if so, what do you do about that? That’s the challenge we’re tackling today.
All right, so what is a trademark? Let’s start there. A trademark is a name, a term, a logo, a mark, whatever it is, that is being used in association with selling goods or services. Now, so for example, think about the Nike shoe. Nike, when you hear Nike, you think of the shoe company. When you see the swoosh, which is the Nike logo, you think the Nike shoe company. You probably don’t think, “Oh, is that lightning on the shoe? Is that a wave?” No. You see the image and you go, “Oh, that logo represents a company called Nike. They sell shoes.” Same with the word Nike. So those are examples of trademarks, the swoosh and the word Nike, because they show an association between the goods and the source of those goods, the company Nike.
But I also said the source of services. So Nike primarily sells goods, that’s products, shoes, but you can also do a trademark for services, and technically that’s called a service mark. So a trademark is for goods and products. A service mark is for services. Services like a law firm, a laundromat, a painter, a mechanic, a realtor. All these things are examples of services.
So imagine that you want to register a trademark, but somebody is already using it for a service. The question comes down to two issues: Trademark infringement and trademark dilution. Let’s talk about trademark infringement first. Is the term that, the mark that you’re going to use, confusingly similar to what the service company is already using and in the industry they are in?
So let’s take a simple example here. Let’s say it’s a real estate company and they’re called Whitewater Real Estate, and you want to have a clothing company called Whitewater Clothing. Well, those are significantly different. I don’t think, in my mind, if you were to ask me, I don’t think if I heard “Whitewater” as it relates to real estate, that I’d be like, “Oh, that sounds like whitewater clothing. They’re probably the same company.” So that’s the trademark infringement question. Are they confusingly similar? Would a member of the public, a reasonable person, think that they’re somehow similar enough and from the same company?
The second issue is trademark dilution, and it’s a very similar analysis, but the question is, “Are they confusingly similar enough that although they might not be as confused as the same company or the same source, would they be confused as somehow related?” For example, let’s say I wanted to create a company called Mercedes Computer Company. Well, Mercedes Car Company I don’t think sells computers, so you might think, “Hey, it’s different enough. It’s a whole different industry. It’s not confusingly similar.” You might say that. However, because Mercedes is a very unique term and a term that is so well known throughout the United States, Mercedes at least would have a claim for trademark dilution, basically saying, “Look, even though nobody thinks your little computer company is related to us, a premium car company, you’re ruining the word Mercedes, or you’re diluting it. You’re devaluing that term, and so we’re suing you for trademark dilution.” And Mercedes could sue the Mercedes Computer Company and claim that Mercedes, as it relates to computers, is diluting the Mercedes Car Company brand and they must immediately stop, or the computer company must stop using that. So the analysis is very similar. “Is it confusingly similar?” But we have to ask two questions. First, if it’s not so similar the public thinks it’s the same company, is it so similar that it’s somehow diluting or harming the reputation, and the brand and the intellectual property rights of a company that has a registered trademark or has trademark rights?
So back to the question. Can you use a mark for your trademark if somebody is already using it for a service or they have a service mark? Yes, you can, as long as it’s not confusingly similar and it’s not harming their brand, they don’t have some big brand that would be harmed by that. No, you can’t, if it is confusingly similar. Now you might say, “How do I know if it’s confusingly similar?” And admittedly, all the experts will agree there’s ambiguity in the law, and that’s the nature of this area of law. There is no perfect way to have a bright line answer and go, “Oh yeah, that’s confusingly similar,” or, “That’s not,” in these shades of gray.
So who decides, you might be wondering? The finder of fact. In other words, if there’s a lawsuit between Mercedes Car Company and Mercedes Computer Company and it goes before a judge, the judge decides. The judge would be sitting as the finder of fact. The judge would decide, “Is this confusingly similar?” Now, if there’s a jury, then the jury is the finder of fact. The jury would decide, “Are the two marks confusingly similar?”
That’s a pretty high level. If you’re interested in more information, you can see the link in the description below to my website at aaronhall.com. If you’d like more educational videos like this, you can subscribe to this channel, and please see the disclaimer below. I highlight these issues as general education, not as a substitute for getting legal advice, so it is important to talk to an attorney in your jurisdiction if you have actual legal issues that you’re dealing with. Thanks for joining me here today. I’m Aaron Hall. I look forward to seeing you on the next video.
In this video, you will get answers to these questions:
- Should you get a trademark for your logo, business name, brand name, or program name?
- How does trademarking work?
- What’s the difference between federal and state trademark?
- What is the cost associated with a trademark?
- Can I get a trademark for products AND services?
This post is part of a series of posts entitled A Legal Guide to the Internet.
A trademark or service mark is a word, name, symbol, or device used to identify goods or services and distinguish them from others. Trademarks and service marks indicate the source of origin and quality of the goods or services.
The selection of a trademark may be very important in terms of the trademark owner‘s ability to obtain federal registration and prevent others from using the mark. For those businesses intending to offer goods or services over the Internet, the selection of a trademark should be done in connection with registering the domain name.
Typically, a lawyer is consulted regarding whether federal registration of the mark is likely in view of the inherent qualities of the mark (i.e., whether it is generic, descriptive, suggestive, or arbitrary) and based upon the use of similar or identical marks by others. A quick WHOIS search at NSI’s website at http://www.networksolutions.com/whois will identify whether the domain name has already been registered.
Although federal registration of a mark is not necessary to use the mark, registration does provide substantial procedural advantages if the trademark owner should ever be faced with the task of stopping a potential infringer. Furthermore, a federal trademark registration for a mark identical to a domain name may have tremendous value when involved in a domain name dispute under either the ACPA or the UDRP.
Once a trademark has been federally registered, it should be identified either with the word “registered” or with the symbol ®. An unregistered trademark may be identified with the letters ™ placed in close association with the word or symbol that is the trademark.
A domain name in and of itself is not necessarily a trademark, although many domain names attain trademark status because they are used to identify the source of particular goods or services.
Similarly, registration of a domain name alone does not create priority for later trademark rights in a domain name, even if the domain name was registered before the trademark’s registration. Brookfield Communications. v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).
In Brookfield, the court held that priority would be based upon the time when a party announced their website in a public and widespread manner or otherwise attempted to create an association in the minds of consumers between the domain name and its owner. In so holding, the Brookfield court clarified that ownership of an intent-to-use website, without further action, does not give rise to trademark rights. Proposed marks used only as a domain name must be registered for the proper services. The Patent and Trademark Office (PTO) has published a position paper on registering domain names, setting forth its current policy on this issue. That paper is available here.
Video Transcript
If you’re like most business owners, you’re wondering, “Should I get a trademark for my logo, for my business name, or for my brands or program names? How does trademarking work? What’s the difference between federal and state trademark? What is the cost associated with trademark? Can I get a trademark for products and services, or just one or the other?” I’m Aaron Hall. I’ll address these questions today.
What is a trademark? A trademark is a mark, it could be a symbol, it could be a word, that is associated with the source of goods or services. So I have addressed that final question already. A trademark can relate to services, in which case it’s often called a service mark, or it can relate to goods or products, in which case it’s called a trademark. And trademark is generally used for services as well.
Now, how do you get a trademark? There are three ways. Common law trademark is when you use your mark in commerce in a county. So maybe that’s Hennepin County, Minnesota, Anoka County, Sherburne County, Washington County, Ramsey County. Wherever you actually have sales or significant advertising, you have established common law trademark rights. But what if you want a larger area? Well, under federal law, which preempts state law, you can get a federal trademark registration. That gives you protection nationwide, not just in the county where you’ve operated. You have one third option, and that is a state trademark registration. Now, my advice is don’t waste your time with this. Federal trademark law trumps state trademark law, so you’re essentially wasting money if you do a state trademark registration. You really want to look at either your common law rights, which you acquire simply by using the mark in commerce, or do a federal trademark registration application.
Okay, so what can you protect? You can protect a standard set of characters in a word. Let’s say that is Apple Computer. You could protect that. You could protect the font and color of that. That’s called a design mark. We talked about standard character mark. That’s just the letters. A design mark is letters with a font or color associated with them, and then you could have something that is just entirely a design, so there aren’t any letters associated with it. That might be the apple for Apple Computer or the swoosh for Nike. You can do all of those, and the strongest of them is going to be the standard character mark, because it doesn’t matter what color it’s used in or what font it’s used in. You can’t use those words.
Now, how different does something need to be in order to be infringing versus not infringing? Let me give you an example. We have Apple Computer. Well, what if we had Apple Technology? Is that too similar? Here’s the question: Is it confusingly similar? Would a jury, so just average United States citizens, believe that the two names are somehow related or may be confusingly associated? And the reason I say related is because there’s another legal doctrine, that’s similar to trademark infringement, and it’s called trademark dilution. For simple terms though, all we have to worry about here is would the public be confused? Would they say, “Oh, it’s confusingly similar. Maybe they’re related”?
Now, if you have Macintosh Onions, someone might think that’s related to Macintosh Apples, but they’re probably not going to think it’s related to Macintosh Computer. In other words, you can see it matters what industry is it in, and when you’re looking at how similar is it to a company, how big is that company? For example, Mercedes is so big that if you start using the word Mercedes on any product, you’re probably going to have a problem, but if you pick some random little product that nobody has really ever heard of, you could use that word associated with fruit, or maybe a… You know, let’s say that’s on a sporting goods, you might be able to use it on some computer technology, because they’re so different. So is it confusingly similar, or is it very different? And you might think, “Oh, how do you decide this legal definition?” It’s given to a jury or a finder of fact. What that means is it’s typically average people saying, “Do I find that similar or not?”
So, how long does it take to get a federal trademark registration? Typically about a year. There’s this whole process the federal government goes through after your application has been submitted. The process includes publishing it, giving a chance for people to dispute it, and then finally, approving it. Now, if there’s a dispute or if the trademark office says, “No, we’re not going to allow this,” then what’s called an office action is created. The federal trademark office says, “We’re initiating an office action. You can either respond to this to our satisfaction, and work out whatever the issue is, or your application will be denied.” And there’s no problem. You can let the application be denied. You just don’t get the protection you would have otherwise gotten. It’s like letting your application… Or it’s as if you had never filed the application.
So it takes about a year. How much does it cost? Typically, there is a filing fee of a few hundred dollars, and attorney’s fees, you’re typically looking at about $1,000 for the trademark application process. If you do a trademark search and opinion letter, you’re probably looking at additional $1,000. It’s not always necessary. If you are trying to protect the mark in multiple industries, or classes they’re called, international classes, there’s going to be extra fees associated with that, extra filing fees and extra attorney’s fees. If you’re doing multiple marks at the same time, like maybe you have the word Nike in standard characters and then you have the word Nike in stylized mark, so it’s colors and fonts, and then you have the swoosh. There, you’re talking about three registration applications. So typically, you’re going to pay a filing… or a fee on the first one, and probably get a bulk discount on the second and third.
What if you’re doing a common law trademark? There is no registration required. You get that trademark right as soon as you start using your mark in commerce. Now, of course that’s not as strong of a protection. There are significant additional benefits by doing a federal trademark registration, but at least you can see this is kind of how it works. So, as a business owner, you’re wondering, “Should I do a federal trademark registration or should I just rely on the common law trademark rights?” I think it really depends on first, what is the brand value you’re trying to build, and then second, geographically, do you plan to expand in the future? And then I think third, how valuable is that intellectual property? If it’s a multimillion dollar business, it’s a no-brainer. Spend the money, get a trademark. If it’s a lawn mowing business and you’re making $500 per summer, don’t spend the money on it. So you see the idea there.
Now, are there things that you can’t trademark? Absolutely. You can’t trademark generic words, because essentially what you’re doing is you’re getting a monopoly on that word, and nobody else can use that word associated with the same class of goods or services. You can’t have the word, for example, Cheap Plumber. You can’t be the Cheap Plumber, because then no other plumber can say, “I’m a cheap plumber,” because you’d say, “Uh-uh (negative), trademark infringement. I own Cheap Plumber.” That’s why a generic word or descriptive word is not typically protectable.
However, you might say, “Well what about Edina Realty?” That’s a real estate company located in Edina, Minnesota. That’s descriptive, Edina Realty. Well, there’s an exception in the law for if you’ve been using a descriptive mark, in this case it’s a geographically descriptive mark, Edina Realty, Edina, Minnesota, and a realty company there. If you’ve been using that for an extended period of time, and you can demonstrate to the US Patent and Trademark Office, that people associate that word with you, not generally, with others in the area, like other realty companies or real estate companies in Edina, then you’re entitled to getting trademark protection. There’s a process that you need to go through to demonstrate that you’ve been doing this for years, and people generally think of you when the word Edina Realty, for example, is mentioned.
Here’s one other problem that comes up. I had a client one time who created a comic book hero, and the name that was used was like something man. Now, I’m not going to say what it is, because it’s a client, but we’ll call it Raccoon Man, okay? Just I’m making that up. Well, a company that had raccoons as its branding mascot in the detergent, and soap, and cleaning space said that this Raccoon Man comic book hero was infringing on their mark.
Ridiculous, but I looked it up and I found that this company continually challenges it, and I told my client, “We are highly likely to win this, because that is a whole different industry, but it’s going to take some attorney time to write up a legal response, and put together our arguments, and provide some case law to support our arguments, and then the US Patent and Trademark Office will make a decision on that. If they don’t rule in our favor, we’ll have to do another appeal. That’s going to be more expensive. I’m happy to do that,” and you know what, this author who is creating comic books, he said, “It’s not worth it. I’ll change the name.”
So you will find many times there are what I would call frivolous disputes over a trademark registration application, and you then as a business owner have to decide, “Am I going to fight it or am I going to drop it?” And this comes up with surprising regularity. I’d say about one of the every 20 applications that I file, I’ll see what I think is a pretty frivolous issue, and then we have to decide are we going to dispute it, and go through that office action process with the US Patent and Trademark Office?
So there you have it. These are some common questions that I get around trademark from the perspective of a business owner, what do you need to know to decide whether a trademark is right for you. Obviously, this is education material. This is not a replacement for meeting with an attorney, but it at least gives you a framework to better understand the issues at play, to help spot questions and topics to discuss with your attorney. I’m Aaron Hall. I’m a business attorney in Minneapolis, Minnesota.