It’s time for Ritter Spencer’s first annual holiday trademark round up. During the holidays, you will see several commercials and other advertisement for holiday specific products. Many of the brands behind these advertisements protect their goods and services through federal trademark registration. Even the studios behind some of the famous and classic Christmas movies that you watch have trademarked the goods and services related to their movies and characters. By owning a trademark, trademark owners can exclude others from using a confusingly similar name that may lead to consumer confusion.
The legal and marketing departments behind the Velcro® trademark are attempting to avoid genericide of the mark through consumer education and brand awareness. This week, Velcro Companies released a catchy tune lauding the company’s trademarked brand name and urging consumers to only use VELCRO to refer to actual Velcro products.
Continuing with our blog series covering federal trademarks, today we will be discussing trade dress. Trade dress is commonly defined as the total image or overall appearance of a product. Protectable trade dress may include design features such as color or color combinations, graphics, size, shape, and texture, among others. It is the combination of the unique design features which constitute trade dress and make it a protectable trademark.
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.