Understanding Trademarks with Jeffrey Gitchel

What’s in the protection of a name? This is not nearly as poetic a question as the one Juliet had for her Romeo, but for a business, it can be just as meaningful.

One of the first decisions a company makes is its name or the name of its product. That choice leads to numerous other decisions—packaging design, refinement of product design, development of advertising and hundreds of others. Together, these decisions contribute to the product’s brand, distinguishing and differentiating it from its competition.

When a business launches a recognizable brand, it naturally will want to protect that brand against copycats or look-alikes. Trademark law is a powerful tool to prevent competitors from free-riding off your hard work and investment.

Jeffrey Gitchel, a veteran trademark attorney, explains how trademark law protects businesses.

What is a Trademark?

Mr. Gitchel explained that a trademark can be anything that identifies and distinguishes a product or service—a name, logo, slogan, or jingle, or more infrequently, color or the overall look and feel of the product. Trademarks allow consumers to identify products and provide information to consumers about the quality and characteristics of those products. They represent market positioning and embody brand equity. By serving these different functions, trademarks play an important, sometimes vital, role in purchasing decisions.

Why Trademarks Matter - Trademark Infringement

Ownership of a trademark includes the right to use the trademark, though the primary benefit of trademark ownership is being able to prevent trademark infringement. This happens when a competitor adopts an identifier that is confusingly similar or identical to one already in use. Mr. Gitchel stressed that both aspects—similarity of the trademarks and relatedness of the products—are relevant. For example, Starbucks filed suit to enforce its Frappucino trademark when Coffee Culture Cafe began offering a drink it called a Freddocino (now rebranded as a Freddo). In contrast, Mr. Gitchel noted, companies that are not competitors, like Delta Air Lines and Delta Faucets, may have the same or similar trademarks, while Pepsi and Coke are direct and heated competitors, but their trademarks can coexist peacefully because they are not confusingly similar.

A critical goal of trademark law is to prevent one brand from capitalizing on or harming the reputation of another brand. Thus, the most common remedy for trademark infringement is an injunction requiring the infringing party to cease use of its mark. In rare cases, damages may also be available, but they are not typically the primary focus of a trademark infringement case. Still, the ability to prevent third parties from capitalizing on consumer confusion and siphoning off sales is extremely valuable, says Mr. Gitchel.

Not all Trademarks are Created Equal

The key, Mr. Gitchel said, is that a proposed trademark has to be distinctive. Only distinctive marks are entitled to protection—and the more distinctive the mark, the greater the protection. Amazon is highly distinctive for an online market and has achieved great fame. Amazon’s distinctiveness and strength mean that infringement litigation would be a possibility against even something as seemingly different as a competing market called Nile. In contrast, Amazon would be much less distinctive if used in connection with a gym for women or a travel company specializing in tours of the Amazon River.

The law separates trademarks into five different (and quite useful) categories of distinctiveness: fanciful, arbitrary, suggestive, descriptive, and generic. Fanciful trademarks are coined words, like Rolex, and are also the most distinctive category. Amazon is an example of an arbitrary trademark because it consists of a word that has an established meaning that doesn’t relate to the product. A suggestive trademark, like Netflix, hints at the product or one of its characteristics. These three categories of trademarks are considered distinctive (and therefore protectable) by their very nature. A trademark that describes a product or its characteristics, the way that Sharp communicates that a television has a clear picture, are not inherently distinctive, but can acquire distinctiveness. Once a descriptive trademark acquires distinctiveness, it is entitled to protection. A generic trademark, like “watch” for watches or “TV” for television can never be distinctive or protected, meaning that competitors will always be able to use the term and can never infringe it.

So Trademarks Matter - How Does a Company Get One?

If a company chooses wisely, obtaining rights in a trademark is simple in the U.S., according to Mr. Gitchel. Assuming that the proposed trademark is available, meaning that it doesn’t infringe someone else’s trademark, it becomes protected once use of the trademark begins. That’s right, Mr. Gitchel says, trademark rights are created when the product launches. He cautions, however, that only sale of products bearing the trademark constitutes use for these purposes. Pre-launch advertising, for instance, does not confer rights.

It is also possible to register a trademark, and there are benefits to registration. One of the most significant advantages is that it is possible to apply to register a trademark before product launch, and rights ultimately begin on the filing date of the trademark application. Launch is still important, because although the trademark application can be filed pre-launch, the trademark will not be registered until after use begins.

A trademark registration also nationalizes rights. If a business launches successfully in one region without a registration, a company in a different part of the country could see copy it. Without a trademark registration, rights are limited to where the trademark is used, so the first business may not have rights where the second business is located, and could be blocked from expanding. For example, if a company launches in the New York area without a trademark registration, a visitor from California could return home, start up the same business under the same name, and block the New York company from expanding into California.

Proving ownership of trademark, when rights in that trademark began, and the distinctiveness of the trademark distinctive are also easier with a trademark registration. And the ® symbol may only be used on a registered trademark—the ® cannot be used if the trademark is only applied for, but not yet registered.

How Long Does a Trademark Last?

Unlike a patent or copyright, which have defined lifespans, a trademark can live as long as it is in use. Coca-Cola, for instance, launched in 1886. That trademark retains its potency today and will continue to be enforceable for as long as it is in use.

It is also possible, though not common, to lose trademark rights if the trademark becomes the generic term for the product. Aspirin, yo-yo, zipper, escalator. These words all began their life as trademarks before moving into our lexicon.

Back to the Beginning - What Does this all Mean?

Choosing your company or product name can be critically important. Do it well, and you have staked out a unique position in the market. Do it poorly, and you may have invited infringement allegations and possible name change to your party or competition that can legally leech off of your hard work and investment.

Before choosing a name, research it. An experienced trademark attorney can help, but there is a lot that you can do on your own. Be strategic. If you’re in it for the long haul, the investment in a more distinctive trademark (including any investment in educating the public about your product) can be more than worth it.

As with so much in business, taking a minute to pause and consider your options can clear your path to your success.

This article does not necessarily reflect the opinions of the editors or management of EconoTimes