Marks, Brands and Names

By Tennell Lockett

Brands, logos, trademarks, symbols, service marks, domain names, corporate name, trade names, and tag lines are all part of a group of related concepts that are used by many businesses and individuals.  While these concepts are closely related, each serves different objectives and is treated differently by the law. Many, however, have a tendency to lump these concepts together. This tendency often leads companies and individuals to mistakenly believe that they have protections where they do not.

Trademarksare probably the most well-known and generally understood of these assets. Trademarks are marks, symbols, logos, words, or other identifiers that designate to the public that a product comes from a particular source. Trademarks are governed by federal laws, that are referred to as consumer protection laws because they are specifically designed to alleviate consumer confusion concerning the source of goods or services that are on the market. In other words, trademark law is not directed to your protection as a mark owner, but with your protection as a consumer. Because the law is directed to the protection of consumers, the trademark right does not vest until a mark is used by a owner in commerce, i.e., the owner must make commercial use of its mark. Accordingly, nearly any kind of symbol (e.g., Nike’s Swoosh), word mark (e.g., “Coca-Cola”), or even slogan/tag line (e.g., “You are in good hands with Allstate”) can acquire trademark protection so long as it is used in commerce and is sufficiently distinct to identify to the public that a particular product comes from a particular source. Indeed, even sounds can acquire trademark status, as with MGM’s lion roar and NBC’s three chimes.

The distinction between trademarks and service marks is fairly straightforward; trademarks are directed to products while service marks are directed to services. Brands designate the identity of a particular product or service and are classic examples of trademarks, largely because their purpose is often to convey that a product has a particular quality or status. It is possible, however, to make non-trademark use of a brand name. Brand names can be used in connection with one or more marks to more distinctly brand a product, such as Nike’s popular line of Air Jordan shoes, which used the NIKE brand in connection with the word mark AIR JORDAN; Nike’s Swoosh mark; and the then-Nike-owned Jumpman logo. One common misconception is that corporate names, trade names and domain names automatically have trademark rights. This misconception, in part, is likely attributable to the popular trend of companies using their corporate name to brand products. As in the example above, Nike, Inc. branded its products using its corporate name, NIKE, and has long-ago acquired trademark rights in NIKE. However, the company apparently made substantially less trademark use, if any, of its previous corporate name, Blue Ribbon Sports. Holding companies that have existed for decades can mistakenly believe they have a strong trademark in their corporate name, when in fact they have no trademark rights at all because they have made no trademark use of such name.

Likewise, obtaining a domain name or using it in connection with an Internet Web site does not necessarily give rise to trademark rights in the domain name. In fact, hosting a Web site that displays your products and informational materials may not be enough to obtain trademark rights in the domain name. It is possible, however, to obtain trademark rights in a domain name, as evidenced by Travelocity’s federal registration for its TRAVELOCITY.COM mark. A qualified I.P. attorney should be able to assist you with properly assessing any trademark-related issues that you may have.

 

 

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