Brandt D. Madsen 2013-07-17 00:07:36
You’ve Developed The Next Greatest Thing – Now What To Name It Brandt D. Madsen is an associate intellectual property attorney in the law firm Schmeiser, Olsen & Watts LLP and is based in the firm’s Mesa, Arizona office. He represents clients in intellectual property litigation and in all stages of patent and trademark prosecution. He focuses his practice in the areas of the mechanical-related arts. Brandt earned a J.D. from the Franklin Pierce Law Center (now The New Hampshire School of Law) with concentrations in intellectual property law (cumlaude) and a B.S. in mechanical engineering from Brigham Young University. For questions or for more information please email AZ@IPLawUSA.com, or call (480) 655-0073. After considerable time and effort, not to mention the expense, you or your client has developed a new product, product line, or established a new service. It is your pride and joy. You believe that with just the right name, the product/service (hereinafter “product”) will take off and establish itself in the market. The right name can last forever. Even after all these years, I still remember the Chia Pet® from my youth. You know, the pet that grew plants out of its back! I remember it, in part, because it had a catchy name, a catchy song, and it seemingly grew plants out of nothing to create a furry plant pet. Needless to say, I was hooked, and, to this day, I can still sing their jingle–Ch-ch-ch-chia! All of us remember the name of a particular product or service we favored at one time or another. The name of a product is important. Like the Chia Pet®, the right name can distinguish your product from those of your closest competitors. It can set your product apart in the minds of the consuming public and provide a competitive advantage. However, if not chosen wisely, the name of a product can bring future misery. A name given to a particular product becomes a trademark through its use in association with the product and may thereafter be governed under federal trademark laws. These laws provide guidance for trademark selection, use, and registration, as well as for protection and enforcement. Federal trademark law supersedes state law and therefore protecting a name on the state level or obtaining a name clearance for incorporation will not assure that the name can be used if there is a confusingly similar federal trademark registration. Trademark law discourages the use of names that are descriptive of the product, and in many cases refuses to extend protection to descriptive names. For example, trademark law would likely not extend protection of the name “apple” in association with an apple orchard or apple distributor, because “apple” is descriptive of the type of business or the actual product sold, on the other hand, when used in association with electronic devices, it is not at all descriptive, which is why Apple Inc. has been allowed to establish significant rights in its “apple” name. Indeed, the strongest marks are typically arbitrary marks (existing words associated with an arbitrary product, such as Apple on electronics or Coach on handbags) or fanciful marks (coined names, such as Kleenex or Xerox). Another consideration in selecting a name is to avoid the use of already famous trademarks. Usually, there is no trademark infringement between two identical trademarks if the products being sold under these identical marks are completely different from one another. Consider for example, no trademark infringement exists between Delta® Airlines and Delta® Faucets, because airplanes and faucets are completely different products. However, in the case of famous trademarks, “antidilution” provisions of the trademark law attempt to protect famous marks from “dilution” through use on noncompeting or unrelated products. For example, selecting “Mercedes” or “Exxon” for the name of the new product would not be prudent. Once a name is selected, it is wise to first conduct a trademark search before the name is adopted and used. A trademark search helps to determine whether the selected name is available for proprietary use and registration. If not properly selected, names may potentially conflict with established trademarks and may result in disputes between trademark owners. In fact, trademark infringement claims can ultimately prevent trademark owners from further use of their name, can force owners to rebrand their product, and might result in several hundred thousand dollars in damages and court costs. Many search options are available, including conducting a general Internet search using the more prominent search engines, such as Google, Yahoo, or Bing, conducting a more focused search of the database of federally registered trademarks maintained by the U.S. Patent and Trademark Office (hereinafter “USPTO”), or searching similar trademark databases maintained at the state level. These searches may provide a glimpse into whether the proposed name is currently being used by other entities within the relevant industry, or any other industry for that matter. However, because of the potential risks and pitfalls of branding a new product using another owner’s existing trademark, hiring a trademark search firm to conduct a comprehensive search to clear the proposed trademark for use is highly recommended. Without clearing the trademark, future problems with the trademark may arise. And these problems may not arise for years down the road – years after considerable cost and effort has been expended in establishing the trademark within the industry. A complexity contributing to the difficulty in clearing a trademark for use is the fact that many industries exist in a global market. As a result, there may be potentially conflicting trademarks arising out of any country around the world. Furthermore, due to the U.S. doctrine of equivalents, whether these potentially conflicting trademarks are written and displayed in one foreign language or another, it is essentially the same as being written in English. Specifically, under the doctrine of equivalents a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar. See, e.g.; In re American Safety Razor Co., 2 USPQ2d 1459 (TTAB 1987) (BUENOS DIAS for soap held likely to be confused with GOOD MORNING and design for latherless shaving cream); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983) (EL SOL for clothing and footwear held likely to be confused with SUN and design for footwear). Once the name is cleared for use, it is recommended to file a federal trademark application at the USPTO to register the name and establish nationwide rights in the mark. The registration process takes about a year, but the name receives the priority date of the day the application was filed. After the filing date, no entity that selects and commences use of the name you have selected can gain priority over you. Schmeiser, Olsen & Watts LLP provides free initial consultations to discuss the issues that confront a business owner in the selection of a product name and thereafter provides services to clear, register, and enforce the name selected.
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