Making Your Mark: A Trademark Primer

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

Another abandonment-type issue is policing your mark. Services exist that will monitor-how competitors are using trademarks.

Jordan A. LaVine, shareholder and head of the trademark and copyright section of the intellectual property practice group at Flaster / Greenberg (offices in Cherry Hill, Egg Harbor Township, Morristown, Trenton, and Vineland, in addition to Philadelphia and Wilmington, Delaware), says, "One of the important things a trademark owner needs to do is make sure that the trademark remains distinct and distinguishes its products and services from those of others. If [he or she] does not properly police his or her trademark rights and prevent their competitors from using a similar mark for similar products and services - then that trademark can lose its distinctiveness and its uniqueness in distinguishing the original trademark owner's products and services. It is important to identify any infringers and address those infringements as early as possible, before those infringers are: No. 1, allowed to build-up any good will in the market; and No. 2, cause any confusion in the marketplace."

LaVine adds that the longer there is marketplace coexistence, the more difficult it becomes to enforce a trademark. He says this is particularly true if there are several companies using arguably similar marks. In this case, the junior-user company (the potential defendant) can argue that consumers have become conditioned to distinguish between many different marks that are otherwise similar.

With the advent of the Internet, LaVine says it has become tougher to protect trademarks, since competitors can establish a Website anywhere in the world and even sell a product, which bears an infringing mark, through that Website. If infringers are located outside the United States, it can be difficult to effectively take action against them, due to jurisdictional laws.

"The flipside of that coin, however, is that the Internet also makes it much easier to find out about companies that may be infringing," LaVine says. "[You] can perform a periodic check of the Internet to see if there any potentially infringing trademarks out there."

Tancs, with Norris, says that one recent Internet trend is purchasing keywords. For example, when a company purchases keywords with a search engine company, it can have its name appear when users type those keywords.

Tancs explains, "The problem is that when someone buys keywords that are actually somebody else's trademarked property, that should be an infringement, but the law doesn't necessarily see it that way. There are cases that have gone both ways over the last several months. So, unfortunately, it's an area that's in a state of flux. It is really difficult on a day-to-day, or even a week-to-week basis, to advise a client as to what the law will provide if somebody is using one of their trademark phrases as a keyword, because the law is constantly shifting and changing, depending on the circuit hearing the case."

Meanwhile, when it comes to international trademark rights, the Madrid Protocol, for example, enables businesses to file trademarks in some 66 participating countries. With the Madrid Protocol, Flaster/ Greenberg's LaVine explains that one can file a single trademark application with the World Intellectual Property organization in Geneva, Switzerland and then "essentially mark off on a checklist each country where it wants its trademark registered."