Making Your Mark: A Trademark Primer

New Jersey Business, Jun 01, 2006 by Saliba, George N

A trademark is typically a word, phrase or logo (or combination thereof) used by a business to identify and distinguish itself - and its products or services - in the marketplace. While this concept may appear straightforward, trademark law is in fact extraordinarily complex. From deciding upon an appropriate trademark and choosing whether or not to register it with the United States Patent and Trademark Office, to using it properly and Protecting it in an Internet-savvy, global economy, attorneys often play a key role.

When a business is selecting a trademark, attorneys interviewed by New Jersey Business explain, a trademark cannot be generic. For instance, a company can't trademark a jar of pickles as Pickles(R). Also, a business cannot trademark a descriptive term, such as using Sweet Smelling(R) for a sweet-smelling perfume.

In contrast, suggestive trademarks are acceptable, such as Coppertone, which describes a sun care product that, if used, may leave a person with a copper-toned tan. Furthermore, arbitrary marks are acceptable, such as using Apple for a computer brand. Fanciful marks are considered extremely worthy, too. For example, although it is a "fanciful" name, the Kodak brand is globally recognized.

Marc D. Haefner, partner with the law firm Connell Foley (offices in Roseland, Jersey City, New York City and Philadelphia), says, "If you want a strong trademark, you have to say: 'Let me think of something that is fanciful - completely unrelated to what the product is.' Of course, the downside to that is that companies that can do that most effectively are the ones that already have a lot of money. Aventis, for example, might come up with a new drug product and call it some bizarre combination of syllables that doesn't tell you what the drug does. But it has enough money to produce the advertising you see all the time . . . On the other hand, when people have a start-up company, they have an incentive to name a product, say, 'Marc's Sleep Aid', because they want people to immediately see it on the shelf and know what it is."

The problem with such a thought, Haefner says, is that if a company opens a business with a generic name such as West Orange Lawn Care, that business will have "a very hard time [under the law] preventing anyone else from opening a business called Orange Lawn Care or West Orange Care."

He adds, "When you become successful, you would put yourself in a position where other people will take names that are essentially identical and confusing."

That said, businesses should know that to obtain a registered trademark with the United States Patent and Trademark Office (USPTO), the trademark has to be used in interstate commerce (although one can apply to register without having yet used the mark). And no, selling one notepad or a set of blouses across state lines doesn't suffice for interstate commerce, says Lori B. Cohen, counsel, and member of the intellectual property department at Gibbons, Del Deo, Dolan, Griffinger & Vecchione (offices in Newark, Trenton, Manhattan and Philadelphia).

However, this isn't to say a business can't register at the state level or that a valid trademark can't be had via common law rights. In fact, Joseph J. Serritella, who practices intellectual property law as well as the law of defamation and free speech, and is a partner in the litigation department at Pepper Hamilton (the law firm with offices in Princeton and outside New Jersey), explains that there is actually no registration requirement to have a valid trademark. The United States legal system derives from the English system - a common law system in which simply trading under a trademark that is consistently identifying the source of a good or service with a particular word, symbol or surname is sufficient to give rise to enforceable rights.

Nonetheless, attorneys say if a company is national in scope, a federal mark is the way to go, due to the many rights it confers. Legal counsel is advised.

According to Serritella: "A lot of lawyers pretty much have a dead ear to trademark issues, so you are talking about the specialists in the field. The time to get legal help on trademark selection and registration is when you are preparing to invest in promoting the mark. In other words, not after you've invested or when you've cut your first check to an ad agency. But not when financing begins. A lot of businesses think that using the mark to get investors is use of the mark. It is not trademark use, believe it or not. It's just a way to attract investors. You can always change the mark later because presumably they didn't invest because you have a good mark. They invested because you had a good product."

However, Serritella asserts that once a business is ready to choose a mark, existing trademark databases must be searched to see if the mark is already claimed. The only public database is the USPTO data base, which Serritella explains has "many fallibilities" with its search engine. Qualified attorneys, on the other hand, often subscribe to proprietary databases, which have the same USPTO data, in addition to state data. Serritella adds that attorneys are needed to understand the search methodology and interpret search results.