Beer battle offers insights into trademark
This week’s story of a likely well-intentioned beer seller learning a hard lesson about the Vandal trademark brought to mind Juliet’s famous quote:
What’s in a name?
Shakespeare’s sweet-smelling rose aside, the wrong business name can pack a big legal and financial punch. Imitation may be the highest form of flattery, but not all thus flattered have been happy about it.
Case in point: Starbucks. A few years ago, a Chinese court sided with the Seattle giant in its dispute against a Shanghai coffee house that essentially appropriated the famous name, translated into Chinese. Coffee fans worldwide know what a draw the Starbucks sign is.
A trademark is a word, symbol, or phrase synonymous with a product or seller and a form of intellectual property, complete with quantifiable rights to ownership and use. The Nike symbol. Taco Bell. And yes, a university logo.
Protecting a trademark is essential to keeping it. Aspirin is a great example. Bayer lost its trademark in 1921 after “aspirin” had become so generic, it became associated with acetylsalicylic acid, rather than Bayer’s brand. Jeans — Levi’s invention named after Genoa, Italy, where the fabric was manufactured — met a similar fate.
Still, even with commercial use, not all words rise to the level of a protected trademark. Trademark law — developed since the 1800s and now centered around The Lanham Act — requires both distinctive design and first use. Even being first isn’t enough; trademark owners may lose their rights by “abandoning” a mark.
Distinctiveness, that is the ability to identify the source, falls into four categories, in order from most to least likely protected:
Arbitrary: The mark/word bears no logical connection to the product, such as Apple computers or Exxon gas, and once upon a time, Jeans. Arbitrary marks are protected.
Suggestive: Gives an idea, but isn’t exact, such as Coppertone sun lotion.
Descriptive: Directly describes a characteristic, but doesn’t give it all away, such as Holiday Inn. Suggestive and descriptive marks may be fully protected or limited.
Generic: A near-exact description, such as “Computer” computers. Generic marks have no protection, because it would confer an effective monopoly on common words.
Trademarks can be protected at varying levels. Sometimes a mark is fully protected for years, then gradually loses some of its rights. For example, descriptive marks can be protected for all company products, or just some, with others less protected because of widespread competition for its use.
They’re always limited by geography; Starbucks couldn’t have won the suit in China if they didn’t sell coffee there. In all trademark cases, courts look at the likelihood of consumer confusion.
A valid trademark also requires proof of first use. Registration with the state and federal trademark offices constitutes a presumption of proof of first use.
While trademark law is largely federal, state law is also applicable (Title 48 of Idaho Code). If a mark expands beyond its origin country’s borders, international laws may also apply. The World Intellectual Property Organization is a good place to start — Wipo.int.
To learn more about registering trademarks, see Uspto.gov (federal) and Bit.ly/2RAnzjc (Idaho).
Today’s weird word: Meticulosity — painstaking in detail.
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Sholeh Patrick is a columnist for the Hagadone News Network with degrees in international studies and law. Contact her at Sholeh@cdapress.com.