What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A trademark can be as wide and varied as a brand name, logo, a shape, letters, numbers, sound, smell, color or any other aspect that renders a unique and distinct image to a product.
“Trademark filing can predict new products,” comments US trademark attorney David Dawsey. Few things are as closely watches as new models from major automotive companies. In a very recent case, Lexus gives us strong reason to believe that they will shortly be bringing out a new “LC F” model, according to a report by Motor Trend magazine. This is not a new phenomenon, in fact, a 2016 study out of Japan suggested that a great deal of information regarding new products can be gleaned from trademark applications. Read The Study Here.
Interested in using competitive intelligence to help your business? Start by listening to this interview.
Trademark Attorney Michael Gallagher notes that Fitbit has sued (Fitbit v. Laguna 2) a reseller of its products, New Jersey-based Laguna 2 for trademark infringement, counterfeiting and dilution that once again raises interesting questions about the role of resellers in the marketplace. The suit claims that Fitbit products, designated to be scrapped or recycled, were subsequently resold by Laguna 2. Fitbit claims that Laguna 2 has “continued to threaten to resell these products with no regard for the harm to Fitbit, its brand, and the consuming public.”
This is not the average counterfeiting case. To start with, Laguna 2 is not the average “counterfeiter,” as we usually think of that term. They are a reseller of a number of brand name products, claiming alliances on their website to such companies as HP, Acer, Samsung and LG. Secondly, the products involved are not what we usually think of as “counterfeits” as they appear to be originally genuine, or at least to have originated with Fitbit.
For its part, Laguna 2 claims that these are genuine Fitbit products, refurbished by a third-party, and sold clearly labeled as such.
So what does, or should, happen to the endless number of returned, defective, or close-out items? How far does the trademark holder’s rights to control the eventual disposition of these products extend? Lately we’ve seen trademark holders try to exert trademark claims to try to achieve subject matter control in the area of sports marketing. Is this an honest attempt at trademark protection, or a try to exert end-to-end control across a product’s life?
Some interesting questions await resolution, not the least of which is “How did Laguna get these products to sell in the first place?” We suspect that, absent an early settlement, this case will turn on some highly fact-specific things, such as how the resold products were obtained and labelled for sale. Was there real danger of confusion to the public? We’ll have to wait and hopefully see.
Can “Space City” be an Owned Trademark?
For an acerbic, and highly humorous, article on the trademark wrangling between the Houston Convention Bureau and “Space City Comic Con” see this article here.
But the dispute masks an interesting point about trademark law. One of the bedrock principles of trademark is that an owner must police its own trademark, and take action against potentially infringing uses. In this case, the convention bureau appears to have let four years pass before taking action against the comic convention? Is that too much time? Has the bureau possible lost some of its trademark rights by delaying? Or are they overreaching anyway, regardless of the amount of time? “Time” and the courts may tell.
View our page for more information on Trademark Search in Houston.
The Patent & Trademark Resource Center (PTRC) at Georgia Tech Library has been a trademark depository library since 1946. Although they cannot do the application for you or give legal advice, they offer a wealth of resources to help you make your search of patent and trademark databases more efficient. They can also help instruct you in the use of the search tools available at the Library for you to conduct your own patent and trademark searches.
They offer online classes and personal instruction, details of which can be found at: http://libguides.gatech.edu/c.php?g=53972&p=348359 On-site consultation and training may be arranged by appointment based on availability. To make an appointment, please email ([email protected]) or call (404-385-7185) first.
Visit this page for more information & Resources on Atlanta Trademarks.
A new action in Texas once again calls into question the breadth of the doctrine of “nominative fair use” in trademark. Boiled to its essentials, it allows a party to use a trademark, without permission, in order to refer to the actual goods of the trademark holder. Here’s part of what the International Trademark Association says about nominative fair use.
It’s an interesting paradox that some poor choices as trademarks can be closely related to excellent marks. Probably the #1 reason we give negative opinions on trademark searches, and the #1 reason for trademark rejections by the trademark office, is that the proposed mark is descriptive.
A descriptive mark, or as the trademark office likes to call them, marks that are “merely” descriptive, are marks that “merely” describe the goods and services. Because they are descriptors of the kind of the goods, they can’t serve as identifiers of the source of the goods. Therefore, they can’t act as trademarks or service marks, because the purpose of marks is to assure the public of the provider of the goods, not the nature of the goods themselves.
And you need to know the difference. Maybe there would be less confusion if instead of using the words “Trade Name,” we called it by a more accurate term: “Business Name.” We see this quite commonly in our trademark practice, and here’s the usual scenario. A new company or entrepreneur registers a “business name” (say “XYZ, Inc.”) with their home state. The state, usually through the Secretary of State’s office, searches the name, and if it doesn’t find any competing names on the state’s business register that are either the same or confusingly similar, will approve and register the business name. The business owner takes the state’s clean result in the search for competing business registrations as assurance that it’s OK to use “XYZ” as a trademark in its branding and advertising. No! Not true! The state only searches for business registrations, not for product names or trademarks. If there is another company, say the “ABC” company, offering a product called “XYZ,” then it’s “ABC” that owns the trademark, and XYZ, Inc. is looking at a trademark infringement lawsuit if they try to use their business name as a trademark.