What are the differences between “special form” (stylized, design, logo) trademarks and “standard character” (word) trademarks?

The 2 basic trademark types are these: (1) “special form” trademarks and (2) “standard character” trademarks. A “special form” trademark that consists of stylized words, letters, numbers and/or a design element such as a logo. A “standard character” trademark consists only of words, letters, or numbers, with no stylization, color or design element.

The issue comes up this way: A company or an individual wants to trademark a brand or company name. So far so good. The first question is does this individual or company have a particular design or logo for its name? If not, then the only type of trademark registration available is a “character” or word mark. If a design or logo is in the mix, then the question is whether or not that design or logo has any value to the company. Obviously examples are the Nike “swoosh” and the Coca-Cola script logo. These are good examples of designs or logos that – separate from the names of the companies themselves – have distinct trademark value for their owners. Continue reading

(Thank you to Thomas Yarnell for contributing to this post.)

It’s one thing for Facebook to claim that a website called “Teachbook” infringes upon the “Facebook” trademark. That seems reasonable. But what about when the social network seeks to trademark both the words “FACE” and “BOOK”?

Last week, Facebook took a big step toward securing the first half of its name, as the company received a Notice of Allowance from the US Patent and Trademark Office for the word “FACE”.  Unless something extraordinary happens between now and the pending issuance, soon Facebook will own a registered United States trademark to the word “FACE”.

To be clear, Facebook’s exclusivity is limited to its defined field, namely:

telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.

So, on the one hand, exclusivity is narrow.  And this is important, because while Apple Computers owns trademarks for “Apple”, those are limited to computer and electronic products.   Continue reading

Trademark registration generally trumps an unregistered (i.e. common law) use of the same trademark, so says @cyclaw in speaking about trademark registration in Canada.

I had tweeted this #trademark question:

What happens if you apply for – and get – US federal trademark registration, but later find that someone else has been using the same trademark since before you filed?  Or for that matter, does it even matter whether you discovered this other use prior to your filing for registration.

Thank you to @cyclaw for that quick reply.  In the US, though, the answer is slightly different: it matters only whether you can demonstrate your use prior to the date of first use by the other party.  So while US federal registration generally trumps common law use, first-in-time unregistered users do retain certain – albeit limited – rights which survive and trump another party’s later registration. Continue reading

A little-appreciated requirement for trademark owners is a duty to monitor and police their trademarks.  This duty applies to owners of unregistered trademarks as much as federal registered marks, since registration is not necessary to claim many trademark rights.

What types of activities must be monitored and policed?  Infringement and dilution.  Or in other words, any third party uses of the same trademark or confusingly similar versions that might cause confusion in the marketplace about the source of the goods or services represented by the trademark.

Trademark Duty to Monitor and Police

2 basic reasons to monitor and police: First, the government won’t do it for you.  The Trademark Office is actually quite explicit about stating this, see here.  Second and more to the point, unchallenged third party uses of a trademark could legally – and actually – weaken the strength of the trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark. Continue reading

(Thanks to Neal Seth of Baker Hostetler and Michael Steger of Law Offices of Michael Steger for input on this question.)

“Can I register a trademark for my brand?”  That’s typically the first question asked of a trademark lawyer.  The second question – not always asked – might be “Why would I want to?”  Or rather, is it really advisable?

There is little downside to filing a trademark registration, unless you consider cost and time of little worth.  That aside, there may be little or no business benefit from doing so.

Take for example, a professional services business using the names of the partners, say a law firm or accounting firm.  That’s not to say that Richard Sears and Alvah Roebuck had no value in their names and wouldn’t have benefited from trademark protection, but only later when “Sears Roebuck” long-survived and became distinct from the original proprietors.  Until then, there was nothing to stop Ralph Sears and Bob Roebuck from partnering in accounting under the same name, and trademark protection for the mail-order business wouldn’t have stopped the CPAs from doing so.

A trademark may have little value to the business.  A retail business operating in one or few local locations only has nothing to gain from trademark protection, since out-of-town challengers to its name pose no threat to its business.

Similarly, generic or descriptive company names cannot even be registered under trademark in the first place, or at best only under the trademark office’s supplemental register (rather than the Principal Register), with its very limited protection.  An example might be “New York Trucking Company”.  (For a nice comparison of the Supplemental and Principal Registers, see here.

Another example is a case where you might be able to register the mark, but you have no real intent or interest in enforcing.  As Neal Seth pointed out, “You don’t need to register if you are not going to enforce it.  In other words, you might not care if somebody else uses the mark.”  It begs the question of what value you would get in the registration – and why spend the time and money to register – if you’re not going to enforce.

Yes, possibly the most important lawsuit since the sad case of the hamburger joint sued by the Washington white shoe law firm, playing now at a theater on Connecticut Avenue.

Well, maybe the most important lawsuit in trademark’s hoary world.

“Field of Screams” – Maryland version – is the annual Halloween fundraiser put on by the Olney (Md.) Boys and Girls Community Sports Association.  “Field of Screams” – Pennsylvania version – aka Field of Screams LLC, filed suit for trademark infringement in Maryland federal court, claiming exclusive trademark rights to the name, if not in the entire United States at least in the mid-Atlantic region.  Our intrepid blogger recently came upon the seminal legal development while perusing the Metro section in the Washington Post.  Legal filings in the case can be found through the Federal court system’s PACER service, here.

Pennsylvania’s trademark claim rests on its pre-dating the Maryland spookfest, and claims of consumer confusion as to source – the “likelihood of confusion” test for trademark infringement.  Indeed, Pennsylvania horror proprietor Jim Schopf told the Post of numerous instances of tickets purchased through his operation’s website by Halloween revelers thinking they had locked in dates at the Maryland “Field”. Continue reading

[Thomas Yarnell contributed to research and drafting on this post.]

Google’s popular and dominant advertising service, AdWords, allows companies to place auction-style bids on search keywords.  If a company bids the highest amount on a keyword, that company’s ad comes up first when someone searches the keyword.  The company then pays Google on a pay-per-click basis.  In many countries, including the United States, Google lets companies advertise next to search results from use of their competitors’ trademarks.

Let’s say you want to buy a Louis Vuitton bag.  You know it’s expensive, so you might not want to buy it directly from the company’s website.  Instead, you might search “Louis Vuitton bags” on Google and assess other options.  As you can see in a search of “Louis Vuitton bags”, you may find some “Sponsored links” to the right of your search.  Sponsored links such as the “Louis V. Bags Handbags” come from the AdWords service. Continue reading

An automobile brokerage operating online under the web domains “buy-a-lexus.com” and “buyorleaselexus.com” got sued by Toyota Motor Sales for trademark infringement, first losing in trial court on a trademark “fair use” argument, then winning on appeal.  The case opinion can be found here.

The domain name question in trademark is whether and how one can use established trademarks in domain names, in other words using the “LEXUS” trademark in your website URL when the use is anything but incidental but rather intentionally drawing on the value of the valuable brand.

Toyota, owner of the Lexus car brand, had sued to stop the auto brokerage from using the “LEXUS” trademark in the brokerage’s websites listed under “buy-a-lexus.com” and “buyorleaselexus.com”.  The brokerage defended its actions by arguing that the use of “LEXUS” was permitted (that is, non-infringing) as a fair use of the trademark.  Or as Judge Alex Kozinski explained in his appeals court opinion, the trademark was used to “refer to the trademarked good itself”.

This is the “nominative fair use” doctrine of trademark law.  In (hopefully) plain English, the defendant makes no argument to counter a trademark owner’s typical claims of trademark infringement such as likelihood of confusion or dilution of trademark and so forth.  Instead, the use of the trademark is permitted as a fair use since the use simply (and only) identifies the trademark.  Toyota did not dispute the legality of the brokerage’s business nor its authority to broker and sell Lexus vehicles.  The Lexus auto brokerage could therefore successfully argue that use of the “Lexus” was necessary to identify the product being sold.

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Sherlock Holmes is still under copyright, even though his author Sir Arthur Conan Doyle died almost 80 years ago.  Actually, some of Conan Doyle’s stories are or appear to be under copyright protection in the United States (not in the UK and not elsewhere), by virtue of an oddity in US copyright laws.  Ordinarily, US copyright protection for works published prior to no later than 1930 (the year of Conan Doyle’s death would have expired well before today).

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Oneok, a natural gas distributor based in Oklahoma, sued Twitter last week for trademark infringement.  Then dropped the case one day later.

Oneok claimed that an unidentified third party had operated an account under Oneok’s name and logo (both registered trademarks, evidently) and, more particularly, issued tweets which “had the appearance of being official statements” of the company.  And therefore, gave the impression that these were authorized statements made by authorized users of Oneok’s trademarks.  See Oneok’s complaint here.

The last part would have been particularly critical to Oneok’s claims of infringement because it would have argued against a defense of parody or commentary or other protected “fair use” of the trademarks.

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