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Trademarks: A Mark Is Just a Mark…Or Is It?

Q: What is a trademark?
A: A trademark is a specific type of mark used on goods, or on the container in which goods are sold, to identify and distinguish products from other similar products. Trademarks can be found in the form of words, phrases, logos, movie titles and even character names when used to identify and distinguish, set apart, and, ultimately, sell the specific product.

Q: How does a trademark differ from other marks?
A:
"Mark" is a more general term used to describe trademarks, service marks and trade dress. Service marks are used in connection with services, the most common being McDonald's fast food chain. Trade dress is the unique design or shape of the product used primarily in identification and promotion, such as the distinctive shape of the Absolut® Vodka bottle which became the cornerstone of one of the most successful advertising campaigns of the 20th century.

Q: What are some common examples of trademarks?
A: Examples include Gateway® Computers, Coca-Cola®, Budweiser® beer, Reebok® tennis shoes, Udderly Smooth® Udder Cream, T.G.I. Friday's® restaurants, Victoria's Secret® lingerie, Puffs® tissues, Colgate® toothpaste, Craftsman® tools, Crayola Crayons®.

Q: What is the significance of the symbols, ®, ™ , or SM?
A: Only those trademarks registered with the United States Patent and Trademark Office (PTO) may carry the symbol ® after registration has been granted. If a trademark or service mark is not federally registered, the owner is entitled to use the ™ or SM symbol. After the trademark owner has applied for federal registration, and while waiting for the registration process to be completed, the applicant must continue to use ™ or SM. Only after the federal Certificate of Registration has been issued, placing the trademark on the PTO's Principal Register, may the trademark owner use the ® symbol after the trademark.

Q: Should trademarks be registered with Ohio's Secretary of State or with the United States Patent and Trademark Office?
A:
Trademarks, service marks and trade dress can be registered with the PTO as well as with the Secretary of State in individual states, including Ohio. Federal trademark registration grants the owner the exclusive right to use the trademark nationwide, (except in some cases of a prior user), while at the same time providing the mark's owner the protection of the federal courts in the event of infringement. State registration notifies potential infringers that the trademark is being used statewide.

Q: What, exactly, is trademark infringement?
A: The owner of a federally registered trademark has the exclusive right (noted above) to use the trademark to sell or advertise goods or services. The Lanham Act of 1946 protects owners of federally registered trademarks from infringers who attempt to pass the trademark off as their own to profit from the recognition that the trademark brings with its use.

Q: What is trademark dilution?
A:
Generally, dilution occurs when a famous mark is used by another to identify and distinguish goods or services other than those for which the famous mark is registered. For example, the NBA® is a registered trademark which has come to signify excellence in professional basketball. If an infringer began using the mark to describe a "national beer-guzzlers association," the integrity of the mark would be compromised. The Federal Trademark Dilution Act of 1995 enables owners of famous marks to sue infringers for "injunctive relief," court action ordering the infringer to immediately stop using the mark or face further penalties.

Q: How does trademark dilution differ from trademark infringement?
A: Unlike basic trademark infringement, dilution does not require that the infringer be in competition with the trademark owner, nor does it require that there be a likelihood of confusion, mistake or deception. The mere fact that the famous mark is being used in commerce by another party after the original mark has become famous may be sufficient to prove dilution. If the trademark owner can prove that the infringer acted with "willful intent" to trade on the famous mark, the infringer may be held responsible for "damages" caused by the infringement, as well as any profits that may have been lost, and attorneys' fees.

Q: Are all words, phrases and symbols entitled to trademark registration?
A: No. Distinctive terms may be registered but descriptive terms are generally not afforded the same protection. Words and phrases that are neither distinctive nor distinguishable, and describe instead an entire line of products or services, are generic terms and are not entitled to registration. Common examples of generic terms are "cream", "lotion", "cola", and "fast food."

11/27/2013

Law You Can Use is a consumer legal information column provided by the Ohio State Bar Association. This article was prepared by Rebecca M. Gerson, a Youngstown attorney whose practice focuses on corporate, construction and trademark law.

Articles appearing in this column are intended to provide broad, general information about the law. Before applying this information to a specific legal problem, readers are urged to seek advice from an attorney.

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