Magazine article Editor & Publisher

ABCs [Of.Sup.TM] And(c)

Magazine article Editor & Publisher

ABCs [Of.Sup.TM] And(c)

Article excerpt

Mizer is an associate with the intellectual property group at Benesch, Friedlander, Coplan & Aronoff, based in Ohio.

How trademarks and copyrights protect intellectual property in theory and practice, and cautions on collaborative creation, licensing

One of the most fundamental presumptions in the United States is the basic rule of competition, which holds that anyone can copy a product, service, idea or concept, and bring it to market. Factors such as price, quality, supply and customer service allow consumers in a free market to choose between competing products and ideas.

But exceptions have been carved out to benefit consumers and producers -- the producers seeking protection for their product, idea, or concept. The U.S. Constitution recognizes the need for a period of exclusivity for certain innovative or creative works as an incentive for spending the time, effort and money to create and bring them to market. Federal and state governments have enacted regulations designed to protect such works -- while at the same time allowing fair competition. These include trademark and copyright protection.

A trademark is a word, phrase, symbol, design, or combination of them, that identifies the source of goods or services and distinguishes it from other sources. It is not required that buyers know the source of the products, as long as they recognize that a particular trademark indicates a common source. A trademark must be distinctive, or recognizable to function as a source identifier.

Marks are classified as arbitrary or fanciful, suggestive, descriptive and generic. Arbitrary or fanciful marks bear no relationship to the associated goods and therefore are inherently distinctive and can be trademarks. Suggestive marks hint at some quality of the goods, but not so much that no imagination or thought is needed to determine the nature of the goods. Suggestive marks are also inherently distinctive and can be registered.

A descriptive mark identifies a characteristic, quality, or purpose of a product that is not inherently distinctive and cannot be registered unless it can be shown that consumers associate the goods with a single source. The association, or secondary meaning, can be proven by showing that consumers associate the goods with the source, or showing exclusive and continuous use of the mark in commerce for five years. A generic term is a common group or class name to which a particular product belongs, such as beer or automobile. A generic term can never function as a trademark. However, a term which is generic for one product can be arbitrary when linked to another. A term that is not initially generic may become so if consumers come to believe that it is the generic name for a type of product, such as aspirin or escalator.

The law protects trademarks based on bona fide use to identify products. It's not necessary to register a mark to establish rights to it or to begin using it. But the benefits of registration with the U.S. Patent and Trademark Office include: evidence of the mark's validity, exclusive rights and ownership, and federal court as a venue for remedies.

Applications for federal registration must be based on the actual use of, or legitimate intent to use, the mark in commerce. Applicants must show they have applied the mark to products sold or transported in interstate commerce. The standard for commercial use is liberal, but does not include token shipments made to win registration.

Trademarks also may be registered in every state, but while state registrations are easier and cheaper, they provide fewer advantages.

Trademarks and service marks can be identified with a TM or SM designations indicating a claim of rights, usually before a federal registration is issued. The statutory (r) indicates a mark is federally registered and constitutes notice of registration. It may not be used unless and until the mark is registered. …

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