by Matthew J. Faust || 19 June 2020 ||

Trademarks are fun.  No, really!  I know that when most people think of intellectual property lawyers, and trademark lawyers in particular, the last thing they think is “fun.”  Usually, people think of the agents from The Matrix.  But putting these notions aside, the trademarks themselves are fun.  The best part of helping clients obtain their trademarks is the pride they get when they see their logo on an official U.S.P.T.O. registration certificate.  The pride is real and it is intense.  In fact, every small business owner I’ve talked to takes pride in their names and logos and wants their customers to know this.  They put their logos on shirts, cups, pencils, keychains, and anything else they can think of.  So, on top of being fun, trademarks are really important aspects of a business owner’s portfolio.

 

But, no matter how much pride a small business owner has in their trademarks, registering the trademark is commonly the last thing they do when starting up.  Sometimes this leads to decisions that are not so fun—being forced to rebrand, destroying advertising or merchandise, and the sinking feeling of having to start over.  I thought I’d take a few minutes to not only go over what makes trademarks so much fun, but also how to make the final product something you can have pride in.

 

Trademarks are Fun

So, why are trademarks so fun?  One of my favorite trademark cases was written by a well-respected judge in the federal appeals court located in Chicago (that is the Seventh Circuit), in the case of Incredible Techs., Inc. v. Virtual Techs, Inc.  (for those looking for a citation, it is 400 F.3d 1007 (7th Cir. 2005).  This case dealt with a real dispute about virtual golf.  There used to be a popular golfing game, prevalent in bars, arcades, and anywhere else gaming was done, called Golden Tee.  Golden Tee was made by the plaintiff in the case, Incredible Techs.  They discovered that Virtual Techs had copied a lot of the features from Golden Tee in their game, PGA Golf Tour.  They sued, claiming violations of their Copyright and Trade Dress.  The Court of Appeal‘s opinion spent nearly three pages describing the two games, what they looked like, and how they played.  This is what makes trademarks fun!  The appellate judge began his opinion by writing:

As anyone who plays it knows, golf can be a very addicting game. And when real golfers want to tee-it-up, they head for their favorite course, which might be a gem like Brown Deer in Milwaukee, a public course that nevertheless plays host to an annual PGA Tour event every July. What most golfers do not do when they want to play 18 is head for a tavern. Also, most people are quite familiar with Tiger Woods. But who knows Jeff Harlow of Florissant, Missouri? This case is about “golfers” who prefer taverns to fairways and aspire to be more like Harlow than Tiger. Our case concerns video golf.

You see, at the beginning of the case, Incredible Techs sought a Temporary Restraining Order.  These are standard requests in trademark disputes, but what made this hearing extraordinary was the six-day evidentiary hearing the District Court held to consider the Motion.  Most trials do not last that long.  Many lawyers in state courts are thrilled to get 45 minutes at hearing and some federal judges decide motions without a hearing at all!  Six days is a tremendous amount of time to talk about video golf.  But, it’s what happened in those six days that are even more astounding.  The District Judge, in his opinion (284 F. Supp. 2d 1069 (N.D. Ill. 2003), went so far as to describe what evidence was presented:

The evidence presented at the hearing included still photographs and video recordings of in-game images from both the Golden Tee and PGA Tour games, as well as full-size arcade versions of each game furnished to the Court for purposes of comparison. The Court also heard testimony from a number of witnesses, including the creators of both games, and the aforementioned Mr. Kostos, who has earned prize money playing both plaintiff’s and defendant’s games professionally.

That’s right.  During the six-day hearing, the District Judge, of course heard from the lawyers and read everyone’s briefs.  But the judge heard from a professional video golfer.  And, everyone looked at pictures and watched videos about video golf.  And, in what must have been the best part of the hearing, each company brought their game for the judge to “consider” (does that mean play in the courtroom?).  To be sure, there was a lot of money at play here.  And nobody likes to feel like their stuff is being ripped off.  But this was not a typical motion (it would not have been a typical trial) and these opinions were not typical opinions.  These are fun!  But, I’m getting ahead of myself here.  What are trademarks and how can businesses use them?

 

What is a Trademark

Trademarks are protectible under state and federal laws.  On the federal side, the appropriately-named Patent and Trademark Office (or “U.S.P.T.O.”) is responsible for reviewing and issuing (or refusing) trademark registrations.  Trademark protection is designed to stop Unfair Competition.  In fact, on the federal side, this term only means trademark infringement, or someone else using your trademark (or something confusingly similar) to sell their goods.  Many states use the same term to include other unfair business practices, though.  But what is a trademark?  As with anything, there is a legal definition and a regular definition.  According to Congress,

the term “trademark” includes any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,

 

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

 

That’s a lot, but the basics are pretty straightforward.  I like to say that a trademark can be boiled down into  three primary requirements:  (1) something that someone uses or will use (2) in branding their goods or services (3) while selling to consumers in the marketplace.

 

“Something”

The “something” usually includes logos or word-based marks.  Non-traditional trademarks have extra hurdles to meet before registration issued, but it is possible for the “something”  to include colors, scents, or even sounds.  The most important factor is that the trademark applicant show that the “something” is currently in use—without this registration will not be issued.  That being said, a business owner can apply for a trademark before the mark is in use, but the registration certificate will not be issued until after the applicant submits proof that the mark is used.  These are called Intent-to-Use Applications.  By that same logic, once a trademark falls out of use, it will be deemed Abandoned, and can be claimed by someone else.

 

“Branding”

The second part is that the mark must be used to brand goods or services.  In definition listed above, this is the part at the end; “to identify and distinguish her or her goods . . . from those manufactured or sold by others.”  This really comes down to the difference between a brand and a picture.  Someone can draw a cool picture, and that picture will likely be afforded Copryight Protection.  But to obtain Trademark status, the picture must be used to brand goods or services.  This is an important purpose that trademarks have: to let people form a connection between the brands they trust and the quality they expect.

 

“Selling”

The third part is that the mark must be used “in commerce.”  This part of the definition has less to do with the trademark itself and is instead based upon Congress’s ability to “regulate interstate commerce.”  This squares with something called Federalism and runs a bit beyond the scope of this post.  The main point to take away here, however, is the trademark owner must be using the mark to sell or advertise its goods or services to consumers.  Without this, a trademark will not be registered.

 

Trade Dress

There’s one more important form of trademark protection worth discussing—Trade Dress.  Businesses can use trade dress to protect “distinctive” aspects of a product’s  packaging.  In this way, trade dress differs from traditional trademarks because the “something” that is being protected is the packaging or presentation and not the logo itself.  For example, the Coca Cola Company holds a trademark on the word Coke.  It also holds trade dress rights in the distinctive shape of the bottles that Coke is sold in (Reg. No. 1,057,884).  Trade dress should be registered with the U.S.P.T.O. before it is enforced in court.

 

Types of Trademarks

Traditionally, trademarks were marks that were put on goods (like a “maker’s mark”).  Today, our legal system recognizes three other categories of trademarks as well that are all registered by the U.S.P.T.O.:

• • • Service Marks: These are similar to trademarks, but are used to brand services offered by businesses (or individuals).  Our logo (Reg. No. 5,327,977) is an example of a service mark because we legal services instead of selling goods.
    • Collective Marks:  These are a special type of trademark or service mark that indicates membership in a group.  One of the more famous collective marks is the AA Mark (Reg. No. 3,316,227 for the American Automobile Association.  Generally the members are permitted to utilize the collective mark when they join the organization.
    • Certification Marks:  These marks are used to show that the goods or services comply with a set of standards.  The mark is held by a third party who then authorizes the user to display on their advertising.  The Wisconsin Cheese certification mark is one such example (Reg. No. 3,378,315).

 

More Information

There’s a lot more to trademarks than this, that’s part of why they are so interesting.  Keep an eye out for future posts on other important areas of trademark law, such Registration, Infringement and Enforcement, Remedies, and other interesting areas in trademark law.

More Questions?

In future posts we’ll discuss this further. If you have questions beforehand though, please check out the rest of our blog for more information. The content of this blog is provided for informational purposes only, and we are not offering any legal opinions.  If you wish to consult with Sharif | Faust, please contact us to set up a consultation.  This blog does not create an attorney-client relationship with Sharif | Faust. To retain Sharif | Faust, you must sign a written attorney-client agreement. Remember, the results in any case depend upon the specific facts in that case. It is important that you consult with a lawyer you trust. By reading this blog, you agree to our Terms of Use.