Today, many businesses, large and small, seek to have their product and/or service associated with a particular symbol or mark. Some of the more famous trademarks and servicemarks include the McDonald’s arches and the Microsoft logo.Under the old common law, a business that over an extended period of time continuously utilized and displayed to the public a particular mark gained the exclusive property right to own and use that mark as it saw fit. Today, however, a business not only must over an extended period of time continuously and exclusively utilize a mark, but should also register it with the U.S. Patent & Trademark Office to protect that property right against infringement. An infringement may occur when a competitive business utilizes a mark that is the same, or similar to, a pre-existing mark, which causes confusion to the consuming public.
For a small fee and an application to the U.S. Patent & Trademark Office in Washington D.C., the applicant gains the exclusive right to market its product and/or service by associating it with a mark, symbol or logo. As part of the process, the applicant must submit the symbol, mark or logo to the U.S. Patent & Trademark Office for approval. The symbol and/or mark submitted must adhere to the strict requirements of the Patent and Trademark Office regarding color, size and overall appearance. An experienced graphic designer should be able to fulfill the requirements, and provide the applicant with an acceptable sample of the servicemark or trademark. The purpose of registering a trademark or servicemark is to distinguish one’s product or service from competitors, and to encourage consumers to associate a particular product or service with a particular mark, logo or symbol.
Not All Symbols Can Be Registered
However, not all symbols, logos and marks can be registered. Generic words in names such as “Terrific Value Shopping” or “Super Hamburgers” will not be registered by the U.S. Patent and Trademark Office. In fact, words themselves are rarely protectable unless they are so unique to a particular product that, over time, the consuming public now clearly identifies the words with the product, such as Coke and Band-Aids. Likewise, colors are also not protectable in and of themselves, and may not be registered as a symbol, mark or logo. However, while generic names and colors standing alone may not be registered, they may be registered as part of a unique symbol, mark or logo. For example, the yellow M, as displayed by McDonald’s, is a unique aspect of the logo that symbolizes McDonald’s trademark “yellow arches”.
If a business does not register a servicemark or trademark and a competitor has been using a similar mark, logo or symbol before the applicant’s use, then that competitor will have the exclusive right to use that particular mark, especially if the competitor ultimately registers its mark with the Patent and Trademark Office. If a business registers its trademark or servicemark first and finds that another business is using a similar or identical mark that may cause confusion in the consumer market, the business might have a basis to claim that there has been an infringement upon its mark, logo or symbol. Use of a substantially similar mark, logo or symbol may not, in of itself, constitute an infringement, if it is not likely to cause confusion to the consuming public, such as if the products or services in question are substantially different; or are primarily located in different geographical market places; or if neither mark has been used by both businesses in commerce for a period of time long enough for one business to assert a claim, over a claim by the competing business.
If a business can prove that it has a protectable mark, logo or symbol, which has been used in commerce, and that a competitor is utilizing a similar mark, logo or symbol which will cause confusion to the consuming public, then that business may have grounds to file a lawsuit for the competitor’s infringement. The injured party may seek various forms of relief, such as an injunction preventing use of the mark and/or damages. To prevent such litigation, or at the very least bolster one’s position if a lawsuit becomes necessary, it is important to register a trademark or servicemark even if your business has been utilizing that mark or symbol for an exclusive, continuous and extensive period of time.
James M. Maggio, Jr. , is a Partner at WJ&L, LLP, who practices in the Transactional Business and Corporate areas.
George Christopoulos, is an Associate at WJ&L, LLP who practices in the Real Estate, Transactional, and Litigation areas.