TRADEMARKS & TRADE DRESS

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  • If you have a catchy business name or logo, chances are that you have a trademark or servicemark that you should consider applying to register with the United States Patent & Trademark Office ("PTO").

  • A trademark (on goods) or a service mark (for services) indicates to your customers that products or services are from you, that they are original, and that they are of a particular quality.

  • Examples:

"JUST DO IT" ®
CINGULAR®
McDonalds® golden arches
XEROX®
DKNY®
OYSTER PERPETUAL®
LUCKY MONKEY RECORDS®
ROLEX®
LEVIS®
CABO®
MULTI-CART®

  • Why do I need a federal trademark?
 

a. Because it gives you the right to prevent others from using a similar name or logo on similar goods or services and from palming off of your reputation;

b. Because the scope of your protection is nationwide;

c. Because it can enhance your chances of collecting attorney fees from infringers;

d. Because it can help the U.S. Customs Service identify and stop or seize imports bearing counterfeit marks;

e. Because it can lower your burden of proof in infringement proceedings to show use in a particular geography;

f. Because name recognition can be a tremendously valuable business asset (do you enjoy Starbucks®?).

  • "TRADE DRESS": is the overall look and appearance of a product. For example, the fluted shape of a Coca-Cola® bottle, the pink color of the "__________" packages of sugar in most restaurants, or the theme of a Taco Cabana® restaurant can be protectable trade dress.

  • Litigation: If two parties are using a similar name or logo in business, there may be an infringement issue. The primary issue in infringement litigation is whether there is a "likelihood of confusion" among prospective consumers. Factors considered by courts typically include: (1) similarity of the marks; (2) similarity of goods and services; (3) strength of the trademark; (4) type of consumers and the degree of care used by consumers; (5) similarity of advertising mediums; (6) intent; (7) any proof of customers being actually confused.

  • In trademark litigation, Plaintiffs typically seek to stop use of the trademark, stop imports bearing the trademarks, or they seek monetary damages for lost sales, profits, or attorney fees.

  • It is important to protect your existing trademark rights so they do not become "generic." A trademark should not be used as a verb and competitors and licensees should be periodically reminded of this fact. Once upon a time, "Aspirin" and "Escalator" were trademarks instead of common words. For example, you might want to grab a "Kleenex®" tissue rather than a Kleenex. Trademark owners should avoid use of their trademarks as a noun or a verb and should discourage misuse by the public. For example, you may want to encourage consumers to get "Xerox® photocopies" rather than to "go Xerox the documents."

  • Infringement Opinions: Trademark infringement is something that any growing business should consider both from a defensive and offensive standpoint. Trademarks are not only important in terms of guarding business assets, but also should be given due consideration in the process of adopting product names, business names, and introducing new products. Cain & LaCroix, P.C. can help you pick a business or product name least likely to infringe the rights of others, and can also render legal opinions regarding the likelihood that existing uses of a particular name are likely to be accused of infringement. Because trademark rights can be nationwide in scope, you should consult with an attorney specializing in patents and trademarks before applying logos to products, letterhead and signs. Prevention is key and the cost of a legal opinion pales in comparison to the potential costs of advertising/product recall or defending a trademark infringement lawsuit.

  • Infringement Watch: Cain & LaCroix, P.C. can help you to police your trademarks with advance warnings for potentially infringing activities. We have flexible programs available for periodic market scans to identify such activity and help you stop it before it gets out of control.

  • International Trademarks: Cain & LaCroix, P.C. can assist your business to obtain worldwide protection for your intellectual property rights. Most international protection is accomplished country by country. There is some strategy in choosing those countries in which protection is sought. Cain & LaCroix, P.C. will work to orchestrate efforts with associate law firms throughout the world who specialize in obtaining such rights.