June 18, 2010

Regarding Trademarks that are primarily geographically descriptive.

Marks that are “primarily geographically descriptive” are marks that consist primarily of a generally known geographic place or location. These marks are considered to be descriptive and are not immediately eligible for trademark protection absent acquired distinctiveness through continuous and exclusive use of the mark in commerce. Marks that are primarily geographically descriptive, like other trademarks should be free for all to use in a descriptive sense.

Mark that are primarily geographically descriptive may be eligible for trademark protection and trademark registration upon acquiring distinctiveness. This is the same rule of law that applies to any other descriptive trademarks. In other word, in the perception of the relevant consuming public, the mark which was once primarily geographically descriptive, has now become identified with the source of the product or service.

A different rule of law applies to trademark that are geographically deceptive. A mark is geographically deceptive if 1) the primary significance of the mark is a known geographic place or location 2) the goods or services do not originate in the geographic place in the mark 3) purchasers are likely to make the goods-place association, that is, purchasers are likely to make the assumption that the goods originate in the geographic plane or location, and 4) the misrepresentation regarding the geographic location is likely to be material in purchaser’s purchasing decisions. Marks that are geographically deceptive may not be eligible for trademark protection, and trademark registration, even with a showing of acquired distinctiveness.

May 27, 2010

What is a descriptive trademark? If my trademark is descriptive, can I obtain a Federal Trademark Registration to protect it?

A trademark is considered to be descriptive if it describes the product or service, or if it describes a characteristic, purpose, function, quality or use of the product or service. Under trademark law, a mark that is “merely descriptive” is not immediately eligible for trademark registration on the principal trademark register. (A mark that is merely descriptive may be eligible for registration on the Supplemental Trademark Register.) This law is logical, as marks that are merely descriptive are needed by competitors in the marketplace to describe their products or services, and the law frowns on taking terms out of commerce that competitors need to compete effectively. In a determination of whether a mark is merely descriptive, one or more words cannot be taken out of context. Instead, the entire mark, as a whole must be evaluated for descriptiveness.

A mark that is merely descriptive of the product or service may become eligible for trademark registration if it acquires distinctiveness. Acquired distinctiveness (so-called secondary meaning) is developed through use of a trademark over time in conjunction with the product or service. As such, the public now perceives the mark as identifying the product or service from a particular source and no longer as descriptive of the product or service. The United States Patent and Trademark Office considers continuous use for five years of a descriptive mark in commerce in conjunction with a product or service as prima facie evidence of acquired distinctiveness.

May 27, 2010

Someone else has registered a domain name that I believe infringes on my trademark rights? What can I do?

If you have trademark rights in a mark, whether or not your trademark is registered, you have the right to file a complaint with the National Arbitration Forum. This is a complaint pursuant to the Uniform Name Dispute Resolution Policy (a UDRP complaint.) There are formal requirements for the UDRP complaint that must be followed to the letter. The complaint is decided by one arbitrator or a panel of three arbitrators. The complaint must set forth the trademark or service mark upon which the complaint is based. Furthermore, the complaint must set forth the grounds on which the complaint is made. In particular, the complaint must describe the manner in which the allegedly infringing domain name is identical or confusingly similar to the trademark in which you have rights, why the Respondent should be considered as having no rights or legitimate interest in the domain name, and why the domain name should be considered as having been registered in bad faith.

May 25, 2010

How can one lose rights to a trademark?

One can lose rights to a trademark if a mark that was once distinctive becomes the common generic name for a product or service. This may occur when a trademark owner does not properly police the use of his or her mark. In one example, the word “escalator” was once a trademark for a brand of moving stairs, but because of improper policing of the mark it has become generic. The name of a product or service should always be capitalized. It should always be used in conjunction with the common generic name of the goods or service as in “Ford motor car” or “XYZ brand of toilet tissue”. Never use a trademark as a verb; it is improper to “Xerox a document” – instead, one photocopies a document using a Xerox brand copy machine.

May 25, 2010

Distinctiveness of Marks

Under trademark law, a mark must be distinctive (i.e. capable of distinguishing the product or service from others.) Thus, trademarks are classified according to their level of distinctiveness and are afforded protection according to their classification.

Arbitrary or fanciful marks. The most distinctive marks are those which are arbitrary or fanciful. Arbitrary marks are those which have no relation to the goods (e.g. Apple for computers) and fanciful marks are coined or invented names (e.g. Kodak film). As long as they are not confusingly similar to other marks, arbitrary or fanciful marks are afforded the highest level of protection.
Generic marks. On the opposite end of the spectrum of distinctiveness lie generic marks – the common name for the product or service. Generic marks are incapable of protection under trademark law because others need to use the common name to compete effective. Thus, one cannot claim trademark rights in the word ‘desk’ to identify the supplier of a desk.
Descriptive marks. Between arbitrary/fanciful marks on one end of the distinctiveness spectrum and generic marks on the other end lie descriptive marks. These are marks which describe an attribute, function or use, characteristic, purpose or quality of the goods or services. Descriptive marks are only eligible for trademark protection if they acquire secondary meaning (consumer recognition of the term as a trademark.)