Trademark protections give their owners the right of exclusive use to the trademark, but only when used “as a trademark”.  If the use of the mark is for any purpose not a “trademark use”, that use does not fall within the exclusive rights of the trademark owner.

The Good and The Ugly – Trademark Use Examples

Some examples illustrate the point:

1. A magazine story features a photograph of a woman wearing a tee-shirt with picture of a Marvel Comics character.  The story is about the woman and her battle with a difficult disease, having nothing to do with the Marvel trademark.  The trademark is clearly incidental to the photo and to the story.

2. A cash-for-gold jewelry dealer in Toronto (featured in a New Yorker profile this past week) promotes his business through television commercials featuring the character “Cashman” dressed in a red cape and pair of blue tights and dollar signs on his chest.  “Cashman” bursts out of telephone booths to frighten desperate Torontonians into parting with their family heirlooms.  The owner of the Superman trademarks felt compelled to ask – nicely at first, not so nicely in the subsequent lawsuit – that “Cashman” stop trading on the Superman goodwill.

Nominative or Fair Use of Trademarks

What I referred to above as “not a trademark use” is also sometimes called “nominative” use, and sometimes “fair use”. 

One commentator cites “nominative” trademark use in a fictional work to describe or identify products or services, including “shopping for books at Walmart”, “playing a Playstation game”, and “wearing Oakley sunglasses.” As I previously wrote,

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.

There, I was specifically commenting on a court decision involving Toyota and a broker of Lexus cars, where the broker-defendant had (without Toyota’s permission, obviously) used Toyota’s name in its website domains to promote its business.  In that case, 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.

No Endorsement or Sponsorship – Express or Implied – by Trademark Owner

Critical, also, to a claim that a use of a trademark is “not a trademark use” is lack of a statement – implied or express – of endorsement by the trademark owner.  This goes back to the most common ground for a claim of trademark infringement, namely likelihood of confusion as to the source of the goods or services being promoted.  The ultimate value of trademark is the association of a logo, brand, product or service with a particular individual or company owner.  The absence of that association in a third party’s use of a trademark – “Oh Lord, won’t you buy me … a Mercedes Benz / My friends all drive Porsches, I must make amends” – (see Joplin, Janis) undercuts an infringement case while supporting a “nominative” use argument.

The court’s opinion denying the preliminary injunction can be viewed here.  The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction.  (To be clear, inability to show “likely to succeed” does not mean “likely not to succeed”.  It is simply that the courts require a high threshold for a process involving a shortcut to a judgment where the plaintiff would be spared from actually arguing its full case before getting any remedy.)  According to the ruling, the Pennsylvania operation it remained an undecided issue of fact whether the Pennsylvania operation had made continued and exclusive use of the name “Field of Screams” in the Maryland market since before the Maryland operation was started in 2002.

This point was of course significant for a trademark case seeking an injunction, even a preliminary one, since the Pennsylvania claim of trademark exclusivity would be subject to challenge by a party claiming prior use.

As some additional background, it should be noted that neither litigant owns any federally registered trademark.  The Pennsylvania plaintiff is therefore claiming rights of trademark for an unregistered trademark under federal and state common law.  Many of the arguments of trademark validity by a plaintiff seeking trademark enforcement – in particular, brand distinctiveness – would generally be unnecessary, where the federal Lanham Act gives registered trademark owners a presumption of validity which a defendant challenger must overcome.

The ruling also raised doubts about the ability of the Pennsylvania operation to prove its national recognition, explaining that intermittent appearances on national media and in industry media were not enough to prove the potential for confusion among consumers. Additionally, the ruling expressed doubts regarding the ability of the Maryland “Field of Screams” to impact the business of the Pennsylvania “Field of Screams,” because there was evidence indicating that very few of the customers of the Pennsylvania operation came from the Maryland operation’s market.

On the other hand, the court denied the Maryland house’s motion to dismiss the case, and in doing so rejecting at least two basic trademark arguments by the Maryland defendants.  The first involved intent: although Maryland’s “Field of Screams” may not have intended to mislead anyone in using the same name as Pennsylvania’s haunted mansion, the Maryland proprietors could still be guilty of infringement. The court also rejected an argument that the difference in quality between the two operations undercut the plaintiff’s a trademark claim.

Finally, the court noted that the distinctiveness of the name “Field of Screams” and its associations, while perhaps subject to permitted use by the Maryland operation due to prior use, may still be strong enough to be recognized in the operation’s home market of Pennsylvania.

Kate Tummarello is a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly.  Follow Kate on Twitter @ktummarello.  Andrew Mirsky of Mirsky & Company contributed to this post.

Apple, Inc. challenged the registration, filing an opposition to Sector Lab’s registration with the U.S. Patent and Trademark Office.  Apple claimed (among other things) that Sector Labs’ “video pod” “is extremely similar to Apple’s [“iPod” trademarks]”, “consists in part of a significant portion of [iPod] and the entirety of POD, which consumers use as an abbreviation to identify and refer to Apple’s iPod mark and products”, and that Video Pod “covers a device that is or will be used to transmit video for entertainment and other purposes” – much like Apple’s iPod.

Apple’s legal position is that Sector Labs registration would cause source confusion, namely a likelihood of confusion among consumers as to the source of the two companies’ products, and trademark dilution.  Or in other words, “video pod” would dilute the value of Apple’s iPod franchise by reducing the exclusive association in the marketplace of “pod” with Apple and its ubiquitous iPod.

Briefs have been filed and amended and re-filed in the case (Apple’s final rebuttal brief was filed just this past week).  The case is pending decision at the appeals level of the trademark opposition process, at the Trademark Trial and Appeal Board.  Case status and documents can be found here.

The plain English version of events may be only slightly more compelling than the legal arguments, but they come down to this: Apple argues that use, by anybody other than Apple, of the word “pod” in an electronic, hand-held communications or entertainment device cannot be anything but a barely opaque attempt to profit on the goodwill of the iPod brand.  Sector Labs argues that “pod” is a common word, so that whether or not there is a marketplace association with the iPod brand, Apple has no right to corner the market on a common word.  Apple’s counters that “cornering the market” is not accurate, since its interest in this particular use is due only with the particular field and market in which it is used – namely, electronics and entertainment devices.

At that point, the arguments dig down further, into issues such as:

1. Is “pod” a generic or common term?  Or is it instead uniquely associated with Apple?  Questions involved here include whether even if – as Apple claims – “iPod” became established as “famous” in the trademark sense, has subsequent use of the word “pod” in the marketplace come to mean something beyond Apple’s use?  A commonly cited example of this is use of the “Kleenex” (see this discussion) brand for tissue paper, and the risk for trademark owners of a distinctive trademark becoming generic.

2. A further complication here for Apple is its reliance on its earlier trademark registration for “iPod”, rather than “pod” without the “i”.  Apple did obtain trademark registration for “pod”, but only in September 2010 after commencement of Sector Labs’ registration and, more importantly, based on a “first use” date later than Sector Labs’ claimed use.  Thus, Apple could not rely on its “pod” registration to challenge “video pod”.

Even if “pod” may have once been a common term, has Apple’s use of the term established such a branding presence in the marketplace such as to, in effect, change the status of the term from commonplace to distinctive?

As an alternative argument to its source confusion and dilution claims, Apple argued that “video pod” is descriptive – meaning, it is the only way to describe a particular thing, and therefore no one person can own rights to the term.  Logically, then … wouldn’t that mean that “pod”, too, is descriptive?  To be clear, Apple did not argue that “pod” – without “video” – is descriptive.  Still, this is a tricky argument for Apple, because it does come close to conceding Sector Labs’ main point, that “pod” is not uniquely associated in the marketplace with Apple but is instead common or generic.  And that would create grounds for challenging the validity of Apple’s “pod” registration.

Of course, this also creates risks for Sector Labs, for the same reason.  Sector Labs would not want a legal conclusion that “pod” is generic to carry over to “video pod”.

3. As noted above, Apple might argue that its interest in blocking Sector Labs’ trademark registration is due to its perceived threat in the electronics marketplace only, and not beyond.  To this point, Wired last year reported Facebook’s challenge to “Teachbook”, making similar arguments to those made by Apple against Sector Labs.

Facebook also sought to preempt the same kind of criticism for overreaching as Apple has faced.  Wired quoted a Facebook spokesman:

We have no complaint against Kelly Blue Book or Green Apple Books or others.  However, there is already a well-known online network of people with ‘book’ in the brand name.  Of course the Teachbook folks are free to create an online network for teachers or whomever, and we wish them well in that endeavor.  What they are not free to do is trade on our name or dilute our brand while doing so.

Gone are the days of bashing your boss in the breakroom. Now, colleagues gather online to anonymously air their grievances.  A group of disgruntled Demand Media, Inc. employees did just that with their website DemandStudiosSucks.com.  Then Demand Media struck back.

Late last month, attorneys for Demand Media, a content production company whose properties include eHow, LIVESTRONG.com, Cracked.com, typeF.com, Trails.com and GolfLink, sent a letter to DemandStudiosSucks.com asking it to remove content that had been copyrighted by Demand Media.

The media company accused the people behind this censorious website of creating and maintaining “a forum in which users can, and do, post and misuse Demand Media’s trademark, copyrighted material, including confidential and proprietary copy editing tests.”  The letter also referenced “an internal presentation regarding the company’s business plans”, published without permission on DemandStudiosSucks.com.

Immediately, of course, the letter was posted on DemandStudiosSucks.com.

The next day, a user named “Partick O’Doare,” who has posted the majority of the content on the site, published an open letter addressing the claims made by Demand Media’s attorneys.  Although the website removed the content addressed in the letter, O’Doare explained that the site’s creators had not acknowledged any infringement in removing the content.

Instead, those behind the website claimed that their use of the Demand Media content fell under fair use guidelines, specifically protections for commentary and criticism.  “Let’s be honest,” the open letter says, “if ever there was a case of unequivocal fair use, this would be it.”  A statement which should raise flags to anyone who previously felt similarly.

Fair use is a defense to a claim of copyright infringement, but not other claims.  A fair use argument cannot simply succeed on its merits where other legal rights are violated.  Context matters.  So, for example, as seen in some Facebook “suck site” cases, fair use will not protect against a claim of defamation.  Employees who publish company trade secrets and other proprietary information cannot rely on fair use to defend against claims of violations of corporate and employment law.

O’Daire’s letter proudly boasts that the voices behind DemandStudiosSucks.com were fully prepared to defend themselves, citing the fair use cases Lenz v. Universal Music Corp. and Online Policy Group v. Diebold, Inc.

WTForever21.com, a parody site published by Rachel Kane, had prominently disclaimed any affiliation or endorsement by Forever 21.  And as indicated, Kane’s purpose was (some would claim clearly) parody.   Kane was the proud recipient of a cease and desist letter from Forever 21 on April 22 (a copy of which can be found here), which alleged trademark and copyright infringement, unfair competition and trademark dilution.

Without testing the merits of her legal position and, according to several initial reports, not willing to expend the resources to do so, Kane announced that she would pull down her site by June 10th.  Kane then reversed course, and issued a statement last month stating “If the company continues to makes threats that have no basis in law, my attorneys are prepared to vigorously defend me and seek all available legal redress against Forever 21.”  The site is currently live.

Forever 21’s letter to Kane stated that the name “WTForever21” “refers to an abbreviation for colloquial expression that the general public may find offensive.”  That evidently would be the “WTF” appendage.

Forever 21’s copyright claim relates to Kane’s use on her blog of copyrighted images from Forever 21’s site.  The company’s trademark claims – claiming both infringement and dilution – seem to have anticipated the plausibility of a trademark fair use defense (for parody) succeeding against a claim of infringement, which may not succeed against a claim of dilution.

In trademark land, “dilution” refers to the tarnishing or diminution of an established trademark regardless of whether the defendant’s use of the trademark constituted actual infringement.  To illustrate the point, Paul Supnik cites the classic Kodak case from 1898, which established the dilution doctrine.   (Eastman Photographic Materials Co. v. Kodak Cycle Co., 15 Rep. Pat. Cas. 105 (1898)).   In that case, the film manufacturer Eastman Kodak successfully challenged a bicycle manufacturer’s use of the name “KODAK”, even where (as Supnik notes) “No significant segment of the consuming public was likely to think that bicycles were made by, endorsed or sponsored by a film manufacturer.”  Nonetheless, Eastman Kodak successfully argued that the very use of the trademark – in this case a distinctive and established brand intimately associated with the Eastman Kodak company – served to dilute the distinctiveness and thus the value of the trademark, even where used in a noncompetitive market.

As Supnik explains:

Justification for the dilution doctrine is that somehow the public benefits from protection against diluting the distinctiveness of a famous mark and that it simply is not right to reduce the importance or value of a very valuable mark for the free ride of the newcomer, even if the public is not confused.

A parody fair use defense would (if successful) undercut a trademark infringement argument, the argument being that a use that is clearly parody would not cause a “likelihood of confusion” among the consumers as to the source of the trademark.  (See here for a good discussion of this point.)

But trademark dilution is a different story.

Baila Celedonia cites a 1994 case involving a competitor’s parody use of John Deere’s famous deer silhouette logo, where the competitor’s commercial was “animated and hopped around the television screen, pursued by [the competitor’s] lawn tractor and a barking dog.”  Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994)

The defendant’s use of Deere’s logo was clearly parody, preventing Deere from demonstrating any “likelihood of confusion” in the marketplace.  Deere lost its infringement claim, but won a dilution claim.  As Celedonia notes, even if intentionally parody and even if not technically “infringing”, a trademark use may constitute dilution.  Quoting from the court’s discussion of parody in the context of dilution:

Whether the use of the mark is to identify a competing product in an informative comparative ad, to make a comment, or to spoof the mark to enliven the advertisement for a noncompeting or a competing product, the scope of protection under a dilution statute must take into account the degree to which the mark is altered and the nature of the alteration.  Not every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noncompeting products. But some alterations have the potential to so lessen the selling power of a distinctive mark that they are appropriately proscribed by a dilution statute. Dilution of this sort is more likely to be found when the alterations are made by a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.  (emphasis added)

WTForever21.com is clearly not “a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.”  It is (at worst) a true parody site.  In the Deere case, the parody use by a direct competitor undercut the fair use defense.

Privacy issues become pressing later when the app goes public for end users, although the biggest privacy problems tend to arise when app publishers get tripped up by commitments made in their own end user license agreements (EULAs) or privacy policies, more so than from any violations of privacy laws.  More on privacy and the app/API problems in a separate blog post.

Immediate issues are copyright and trademark, both governed by federal laws, but also governed by API terms of use and similar application development agreements with hosting platforms.  Apple’s software developer kits (SDK) for the iPad and iPhone encompass similar purposes as part of broader packages of developer protocols for use of those APIs.

Copyright and trademark rules are sometimes obvious, but the platforms universally require covenants from developers that they actually own the intellectual property rights to their software.  But they also create contract commitments that can override traditional copyright and trademark rules such as fair use.

Copyright

First, copyright.  A good example is use of the Flickr API, where at least one developer has argued that fair use allows him to freely republish thumbnails of user photos from Flickr.  He may have a valid fair use argument because of cases such as Kelly v. Arriba Soft Corporation from 2003 and the more recent cases of Perfect 10 v. Google and Perfect 10 v. Amazon.com, but he is still breaching his contract commitment to Flickr (under Flickr’s API Terms of Use) which prohibits such use.

Copyright also is at stake when a developer uses previously copyrighted material from third parties in his app.  Neither Apple’s SDK nor most API Terms of Use make any distinction for fair use, instead simply requiring ownership of rights whether by actual ownership or by valid license.  When using video, music or other software in an app, fair use arguments are tricky because the platform itself likely will honor validly-submitted takedown demands for copyright infringement under the Digital Millennium Copyright Act (DMCA).  Fair use can be a valid defense to a claim of copyright infringement, but a practical problem is that the platform may give a presumption of validity to the copyright owner pending resolution of the dispute – and remove the app.

One more copyright comment: Even novel execution may not buffer against a valid copyright claim.  An example is an app based on a PC or desktop or console version of an existing game or application.  Development for the new API may very well involve extensive coder innovation, where the code is substantially dissimilar to the original.  Nonetheless, the original is copyrighted, and the new version may very well be deemed a “derivative work”, protected by the copyright law’s grant of exclusivity to the owner, and therefore infringing.

Trademark

Next, trademark.  First, the obvious: trademark law gives certain exclusivity of use prior registered trademarks, and app development cannot infringe a prior registered trademark.

And even if not infringing copyright, use of the same or a similar name to an existing registered trademark (the standard under 15 USC 1114(1)(a) is “likelihood of confusion”, see a good discussion on what this means here) can infringe that trademark.  So even if an app is dissimilar from another app, deceptive names – closely resembling the trademarked name of another app – can trigger trademark problems.

The more interesting problem is understanding when trademark is actually infringed.  Trademark is in some ways synonymous with brand-building, and infringement is based on confusion as to the owner: If an application is deceptively misleading as to its source or origin, it can infringe a trademark even if the app is branded under a different name than the trademark.

This restricts distribution of an app that is, in everything but name, the same as another app.  But an app may infringe and not be the same but merely suggestive.  How so?  Look and feel, layout, color scheme, suggestively similar text, fonts, and on and on.

As with copyright, most API Terms of Use (and Apple’s SDK) typically require representations of trademark non-infringement.  They also restrict use of the platform’s trademarks, say, for example using the “Skype” name in your app.  And again similar to copyright, fair use rights under trademark law – which typically permit use of a trademark for “nominative” purposes, meaning simply to identify the trademark without implying any endorsement – may be trumped by contract terms of the API.

So, for example, Skype’s API Terms of Use limit references to “Skype, Skype API and Skype Software” to:

“works with Skype Software” or “works with Skype”

“uses Skype Software” or “uses Skype”

“for Skype Software” or “for Skype”

The point is avoiding the perception of endorsement by the platform, and Skype makes this explicit, requiring prominent display of this additional statement: “This product uses the Skype API but is not endorsed, certified or otherwise approved in any way by Skype.”

This is not meant to be a true “primer” on intellectual property protection.  Instead, we’re going to look at the very practical threshold problems entrepreneurs and small businesses face when developing and pursuing new ideas for businesses.

Our questions: What is the major practical problem with patents from the perspective of someone with an idea?  What can copyrights really do for someone?  For example the software developer: What does it mean to copyright software and what kind of protection does it get you (and not get you)?  We discuss major limitations against “descriptive” trademarks.  We discuss trade secrets and how trade secrets are distinct from patent or copyright.  What about Non-disclosure Agreements (NDAs) or Confidentiality Agreements?  Is it necessary to have all interested parties sign an NDA before reviewing a business plan or even taking a meeting?  What benefits?

Please click play below to hear the podcast.

In today’s podcast, we cover trademark cases from both U.S. and European Union courts involving major search engines such as Google and Yahoo.  In particular, we look at whether and how search engines can be held responsible for trademark infringement when advertisers buy search result advertisements using the trademarked names of their competitors.

My guest is Howard Hogan, a partner in Gibson, Dunn, & Crutcher’s Washington, DC office.  Howard’s practice focuses on intellectual property litigation and counseling, including trademark, copyright, patent, false advertising, licensing, media and entertainment, and trade secret matters.

The trademark issue arises because in many countries, including the US, the search engines allow companies to advertise next to search results using their competitors’ trademarks.  We have seen a major shift in the last year.  Before 2010, it was clear that at least in France and Germany, it was not appropriate for search engines to sell marks, and Google’s policy reflected that.  In the US, there was a divide between the district courts of the Second Circuit and the rest of the country as to whether buying and selling trademarks for search engine advertising constituted a “use in commerce,” but there was very little law on whether that use was likely to cause confusion.

Now, in Europe, the law seems to have shifted against holding search engines liable, but leaving open the potential for trademark holders to go after the advertisers.  In the U.S. the “use in commerce” question has been resolved decisively against the search engines, and the debate has shifted to the “likelihood of confusion” question.  On one hand, we are starting to see more decisions finding that their sale of the marks are not confusing (Rosetta Stone, Boston Duck Tours, College Network) at the same time as other courts are finding that the use of marks by an advertiser are likely to cause confusion (Storus, Skydive Arizona).

Please press play on the audio player to hear the podcast.

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.

Here are 3 situations where a logo may have no particular immediate value to the company, and therefore no particular trademark value:

(1) There is nothing unique about the design or logo. Technically, a “stylized” trademark includes anything beyond just the name itself. But a rendering of the name in italics or a particular color or in a common geographic box – or any of these things without more – would not typically be the subject of trademark because there’s nothing unique about the design.

A case in point: The maker of Georgi vodka began distributing an orange-flavored vodka in 1996, marketing the vodka using a “large elliptical ‘O’ appearing below the ‘Georgi’ logo”. Bacardi later came out with its own orange-flavored rum, also using the large elliptical ‘O’ in its marketing and product branding. In the ensuing litigation, the court noted that “Common basic shapes or letters are, as a matter of law, not inherently distinctive. However, stylized shapes or letters may qualify, provided the design is not commonplace but rather unique or unusual in the relevant market.” Star Indus. Inc. v. Bacardi & Co., LTD., 412 F.3d 373 (2d Circuit, 2005).

(2) Even if the design or logo is threshold-level unique, there may be no particular association in the marketplace of the design with the trademark owner. A simpler way to think about this is to ask whether the trademark owner would expect that its market would come to associate the particular logo or design with the trademark owner. A case in point: A services firm like a law firm or accounting or consulting firm, where the name itself – rather than the design or logo – is the “brand”.

The question is, what is the value that the trademark owner seeks to protect? Is it the name of the company? Is it a particular logo or design associated with that name? How will the business be marketed, and how will the market come to associate the name with the company – via the name itself or via the logo, or both?

(3) Unless the logo or design incorporates the name within the design (commonly referred to as a “design plus words mark”), a stylized trademark registration will not obtain protection for the name itself. And even to the extent that a stylized mark registration incorporates the name and does protect the name, the strength and value of that protection may be limited.

Among registered trademarks for “Coca-Cola”, the iconic script logo has long held registration status. Nonetheless, the Coca-Cola Company also has trademark registrations (numerous ones, in fact) for the name “Coca-Cola” without the design. Arguably, the stylized logo registration grants adequate protection for the name itself, but not necessarily. Technically, trademark rights in the name itself are tied only to the design. To the extent the name is used separate from the design, protection is either more limited. Of course, at that point, the illustrative value of a “famous” trademark like “Coca-Cola” is limited, because the name itself has acquired marketplace recognition well beyond the logo and, in any event, the company separately registered the character mark years ago.

Two further points about this:

(1) As Brian Hall has written, where an existing prior trademark registration might preclude a trademark owner’s ability to obtain character mark registration (based on “likelihood of confusion”), “the additional design feature of the mark will not only make the mark distinctive but distinguishable from the existing filing and/or registration so as to entitle you to a trademark registration with the USPTO.” So, it’s possible to use the availability of a stylized filing to get a mark where you couldn’t otherwise get one.

(2) As another commentator, JSonnabend, has noted,  “if the stylization is modest, registration of the stylized word mark (so to speak) still gives a great degree of protection for the brand name”. The point is, as with all things trademark, the more distinctive and distinguishable the trademark – whether a character alone or a stylized design – the greater the strength (and value) of the trademark. So, as noted above, a particularly unique logo can qualify for trademark registration even where the design includes a word that is otherwise registered by a previous owner. But, the price of obtaining that kind of registration is that the protection for trademark really won’t extent to where the name is used separate from the design. On the other hand, where the stylized trademark meets the distinctiveness threshold but is not overly distinctive, registration of a logo that includes the word mark can provide decent protection for the word mark alone.

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.  Apple can’t shut down my local courier service (Apple Courier), or the Big Apple Circus.  But it can – and did – get into an ugly, decades-long spiff with Apple Records over who could and could not use the trademark “APPLE” in connection with the music business, most recently involving Apple Computer’s foray into iTunes.

But I digress.  Ownership of the word “FACE” soon will belong to Facebook nonetheless.  Gizmodo downplays the hysteria – urging “don’t panic” – by noting that “it isn’t particularly unusual for a company to hold trademarks on common words like this.  Hell, Apple has “Chicago” trademarked – when talking about computer fonts.”

The real point is an association of the common term (like “FACE”) with the common source of the product or service, which is the essence of trademark protection.  It took Facebook 5+ years to convince the PTO to allow the registration.  There were a number of reasons for that, including an original application filed by another party that was ultimately acquired by Facebook, and some convoluted procedural history on the application.  Facebook would also have to have overcome an initial reluctance about granting trademark protection to a term that – otherwise – is generic, descriptive or common.

Noone would argue that “FACE” is not a common term.  What Facebook would have argued is that by sustained national and then global usage over a period of years, the term had acquired a “secondary meaning” in the eyes of consumers.  Perhaps not so when it came to tennis racquets or the music industry or construction equipment, but certainly when it came to social media networks.

The next question is whether competitor products – Apple again comes to mind with its recent video chat application “Facetime” – would fall within the Facebook litigation crosshairs.  The narrow question would depend on whether Facetime infringed upon “providing online chat rooms and electronic bulletin boards for transmission of messages among computer users”. My quick guess is probably not, if only because to the extent “Facetime” becomes solely associated with iPhones and an Apple product, there’s little real market confusion as to the source of the product or service.