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Understanding Trademarks

A trademark is a source identifier: A trademark allows consumers to make judgments about purchases they are considering. For instance, a consumer might expect something different when purchasing a Lexus rather than a Kia, even if the consumer does not actually know who manufactured either.

Anything may be a trademark, a word, phrase, image, sound, and in some cases color. A trademark must be placed on a product or its packaging or on any tag or the like attached to the product. Relative to services, a trademark obviously cannot be attached to a product and must instead be used in advertising and promoting the business.

A trademark is not necessarily a trade name. The fine print of a recent promotional poster read: "© The Coca-Cola Company. ‘Coca-Cola’ is a registered trademark of The Coca-Cola Company." Here, the business name is the full company name and the trademark is only part of the name. The same is probably true of Microsoft Corporation and many other businesses you can think of.

A trademark is not a copyright. Copyright protects original expressions but does not extend to minimal expressions such as names, titles, short phrases, or slogans, the very subject matter of trademarks.

A trademark comes into existence only upon use in business.

A proper trademark will exclude others from using the same or a similar mark if the other’s use will cause consumer confusion. This right is referred to as the owner’s exclusive right to use the mark. To obtain trademark status, the mark ordinarily must have some element of distinctiveness (a mark lacking distinction may nevertheless become associated in the minds of the consuming public as originating from one source and over time acquire trademark status); to create confusion, another’s mark ordinarily must compete in the same or related industry. For instance, Cape Cod Potato Chips probably did not qualify for trademark protection upon its adoption (there is nothing distinctive about the mark); but over time, as the mark was used extensively and became recognized as identifying a single producer, it did qualify for trademark protection. On the other hand, the Nike swoosh is distinctive and immediately qualified for protection once used as a mark.

While marks likely to cause confusion are prohibited, even identical marks do not necessarily result in confusion. For instance, Delta Airlines and Delta Faucets can co-exist because consumers are not likely to be confused.

Federal trademark registration is available for distinctive marks even before the public has come to associate the mark with the product. In this case, the law allows priority to a registered mark (with some limited exceptions) to allow a business to invest in promoting the mark in anticipation that it will eventually serve as a source identifier, rather than risk losing the mark (and the investment) to a later user who finds the mark attractive and with the ability to exploit the mark.

Once a mark is established, owners should adopt regular practices to avoid genericizing * the mark and to detect infringement. A trademark is only as valuable as the owner’s willingness to enforce the mark. If others use the mark and the owner does not take action to enforce the mark, the owner’s exclusive rights in the mark may be lost.

* Genericizing occurs when, for instance, one “Googles” a topic or person or “Xeroxs” a document or uses a Kleenex or Vaseline. In trademark parlance, a Google search is performed and Xerox copy is made and a Kleenex tissue is used and Vaseline petroleum jelly is used. A trademark identifies a good or service and is not itself a good or service.