Recently, the Dallas Court of Appeals weighed in on a difficult intellectual property issue regarding state law claims: where to sue a person or business that is wrongfully using your intangible property (e.g. trade secrets, trademarks, copyrights, and patents). In legal terms, we call this jurisdiction. A court must have jurisdiction over the claim to adjudicate the case. Normally, jurisdiction is provided by federal statue for copyright claims, trademark claims, and certain trade secret claims. However, the federal statutes require the copyright and trademarks at issue to have been federally registered. Often, if a federal claim is not possible, your lawyer may decide to file in state court.
Trademarks can include any word, name, symbol, device, or any combination thereof used to identify and distinguish goods and services used in interstate commerce. Most people know that trademarks consisting of words and/or graphic designs can be registered with the United States Patent and Trademark Office. However, non-traditional trademarks, which may include color, sound, texture, smell, taste, texture, etc., are also eligible for trademark registration under the Lanham Act. Non-traditional trademarks also include trade dress, which we will discuss on the blog next week.
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods or services of one party from those of others. Where a trademark serves as a source identifier services, you may see it referred to as a service mark. For example, MCDONALDS is used as a trademark for both goods and services. The MCDONALDS service mark covers the brick and mortar retail stores and food services that McDonalds offers to the public. Fun fact: McDonalds once sued a dentist for using the term McDental as a service mark for providing dental services.
When you speak with a trademark lawyer, you may hear them refer to the “registrability” of your trademark. This term refers to the fact that not all words, logos, slogans, etc., can be registered as a federal trademark with the United States Patent and Trademark Office.
The strength of a trademark depends on what trademark category the mark falls under. There are five categories of trademarks: generic trademarks, descriptive trademarks, suggestive trademarks, arbitrary trademarks, and fanciful trademarks.