PUBLISHED FEBRUARY 1999
by Ivan Hoffman, Publishing Attorney —
 Ivan Hoffman Let me, for the sake of this article, limit the discussion to trademark laws. Clearly this trademark overview is designed merely to highlight some of the issues but not be exhaustive of them. The devil is in the details, as they say, and your particular matter may require a more thorough analysis of the problems and expert advice.
Understanding this body of law is important both from the point of view of creating your own rights as well as refraining from infringing on other’s rights. While this may seem self-evident since clearly you do not want to get into litigation with the owner of a trademark, it is also very important since you may have obligations to other parties that relate to your claims to your mark or your use of another person’s mark. If you are either claiming a trademark or contemplating using another’s mark in some fashion, you must be aware of your potential liability to persons with whom you have contracted since in many contracts you will be making representations, warranties, and indemnities about the rights to your work, whether to your book, an article you have written, a Web site you have designed or own, etc., to those other parties. As a result, if you claim a mark that you do not own or you infringe upon another’s trademark, you may find that you are in breach of your contract with these other parties. Therefore, without a careful analysis, you may find yourself in a litigation not only with a trademark owner but with some party with whom you have contracted as well.
What Is a Trademark?
A trademark can be a name, slogan, or design or a combination of those elements that is used to identify the source of goods (or in the case of a service mark, services) and to distinguish that source from any other source providing the same or similar goods and services. For the sake of clarity, I will use only the term “trademark” even though the term “service mark” may otherwise be applicable.
While titles and short phrases may not be copyrightable, they may be protected by trademark if they meet the appropriate qualifications.
The Supreme Court has also decided that, under certain limited circumstances, merely a color can be a trademark. So, for example, a particular use of color plus a unique design, type style, etc., may all be protectable under the general theories of trademark law or, in some instances, the law of unfair competition. In the book publishing business, this is similar to what is known as “trade dress.” It is the look and feel of a book and may be protectable under trademark law if the trade dress has acquired a “secondary meaning” and is not purely functional. “Secondary meaning” means that the mark has become associated in the mind of the public with a particular source and that therefore use by another of the same reference may lead to confusion. As a result, there may be protectable elements under the trademark law if there is some potential confusion as to the source in the mind of the public.
Likelihood of Confusion
The purpose of trademark law is to prevent this confusion in the minds of the consuming public as to the source of the particular goods or services. The owner of a mark has spent money and effort marketing that mark and the goods and services that are identified by the mark. The purpose of all that money and marketing has been to make the mark identifiable with only those goods and services to the exclusion of other goods and services and therefore to make certain that the mark is identified with only that owner’s goods and services. Thus, if the manner in which you may be intending to use someone’s trademark will likely cause that confusion, you may be infringing upon that mark and may be liable as a result.
However, if your use of a name, for example, is not likely to confuse the public as to either the source of the goods or services you are providing or you are not implying any endorsement from the owner of the mark, you may be free to use the name without penalty. And so merely mentioning the name “Coca Cola” in the context of this article is not likely to be a trademark violation for it is explanatory only and no one would believe that I was intending any confusion about the trademark “Coca Cola” or that somehow the company endorsed such use. The courts refer to this kind of permissible use as “nominative” because the use is not likely to cause any confusion as to source.
But as in all areas of the law, not everything is as simple at it first appears. With certain famous marks, such as “Coca Cola,” the owner of the mark may have the right to prevent the mark from being “diluted.” This means that even though no one would be confused by the use of a mark in a way that does not even remotely indicate that its use was intended to imply use by the owner or confusion as to source, the mark may still be protected against such use if such use “dilutes” the value of the mark in other ways. This right is limited to “famous” marks and, in those instances, extends the doctrine of trademark protection that is otherwise restricted to uses that may result in confusion.
The Need for a Notice
When you encounter a descriptive word or phrase, you cannot rely on the absence of any sort of trademark symbol to determine whether or not the mark is being claimed. Someone may be claiming a mark and may be using a mark without affixing any symbol to it. This is the same issue with regard to copyrights since no notice of copyright is required in order to obtain protection. If the mark has been federally registered, it should be accompanied by a ® symbol. But not all marks will have such a symbol. Some, the ones that have not been federally registered, may bear a TM or SM after the name or logo.
However, registering the mark and affixing the required notice, much as registering a copyright, affords the owner some very substantial legal benefits and so registration should be actively pursued and is highly recommended. And one of the key benefits to registering a mark is that it provides for national exclusion from others using the same or similar mark after you in a confusingly similar manner. The owner of an unregistered mark is limited to using that mark only in the geographic area in which the unregistered mark is actually being used. In such an instance, the unregistered mark can be prevented by the registered mark from expanding into other territories.
Unlike rights of patent or copyright which have finite terms of duration, trademarks actually have the potential of growing more valuable as time passes. Marks can, accordingly, last indefinitely.
Enforcement of Rights
Trademarks must be aggressively protected by the owner to keep them from falling into the public domain and the owner losing the protection of the mark. This means that if the owner fails to protect its mark and allows it to be used in unauthorized ways or in ways that may cause it to cease being identified in the mind of the public solely with the goods and services of the owner, the protection may be lost. This is because the trademark is based upon identification of the mark with a particular source and if the owner of the mark shows an indication that it does not care much about protecting that source identification, the mark may lose its value to that owner and the court may strip that owner of the protection the mark originally afforded.
Additionally, a mark may be lost if it becomes “generic.” The classic example of the loss of such a mark and its becoming generic is the word “cellophane.” When it was first coined, it identified a brand of that sort of wrapping paper. But it became so widely used to identify all forms of that wrapping paper that the courts determined that it had become generic for all such forms and ceased to be a valid mark. It was no longer associated in the mind of the public with a particular company making that paper. Another example might be “Xerox.” It is a brand name, a trademark, that is used to identify a particular form of photocopying. To refer to making copies as “xeroxing” runs the risk of making the mark generic and would likely be aggressively protected.
In sum, owners of trademarks are not necessarily “evil” if they rigorously enforce their intellectual property. They must do so if they are to protect their commercial asset. And while, if you are not the owner of such a mark, you may object to what you deem to be “restrictive” policies, keep in mind that you too benefit from the protection afforded by trademark law. If you want a particular brand of a product or service, you want to be assured that what you are buying is what you are getting. If the owner of that mark does not protect the mark, at some point you too may be a victim of the confusion that may result.
When you contemplate using a name, mark or such, you should strongly consider doing a trademark search to determine if it is claimed as a mark by someone else. Unfortunately, since not all marks are registered anywhere, such a search is not conclusive. And a trademark search merely in the United States may simply not turn up any registration for a mark that may be registered in another country.
Conclusion
As in all areas of the law and especially when it comes to the vast complexity that is intellectual property law in general and trademark law in particular, you are best advised to seek out an attorney familiar with these areas before you proceed to either file a claim to a mark, when you contemplate using a mark belonging to another party, or when you otherwise deal in this area of the law.
Ivan Hoffman (photo right) is a publishing, copyright, Internet law, recording, and music attorney as well as a published writer and author. He practices in the Los Angeles area. You may reach him at ivan@ivanhoffman.com or 818/342-1762.
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