It’s a Trademark Because I Say It’s a Trademark

by Douglas Panzer, Esq.

How do clients – current or prospective – separate messaging about your business’s products or services from those of your competitors?  Every marketing department, company executive, and entrepreneur knows that the answer is branding.  And so, the value of investment in brand marketing is abundantly clear.  But, what if you’re not Coca-Cola® or Nerf®?  What if you’re Lehigh Valley Oats or Penn Machine Parts?

A trademark is any word, name, symbol, or device, or any combination thereof that a business uses to uniquely identify or distinguish its products or services from those of its competitors and to indicate the source of the goods or services.  Federal trademark laws permit the owner of a trademark to stop competitors from labeling or advertising their products in any way that is likely to cause a reasonable consumer to be confused as to the source of those products, as it may lead the consumer to incorrectly associate the products with the rightful trademark owner. But, generally speaking, federal registration of a trademark is not available if the elements of the mark merely describe the goods or services, or their characteristics, including their geographic origin.

Consider the advantage conferred upon a lightbulb business permitted to register the trademark in the word BRIGHT.  As a shopper perused the teeming lightbulb aisle of a big box home improvement warehouse, what if one lightbulb could claim the exclusive right to display that descriptive word – BRIGHT – upon its packaging?  BRIGHT – the word that tells the consumer all she needs to know.  This is the bulb she wants to provide the bright light she seeks.  She knows it is because it says so.  She also knows that none of the other bulbs says it is bright.

The Lanham Act – the United States’ federal trademark law – permits registration of an otherwise descriptive mark if the owner of the mark can prove that it has “acquired distinctiveness.”  The legal history around the Lanham Act also refers to this as “secondary meaning.”  If an applicant for federal trademark registration can offer proof that it has used the trademark for more than five years and that the primary significance of the mark in the minds of the consuming public is not the product but the producer, the US Patent and Trademark Office must permit registration of the mark.

The power of acquired distinctiveness has benefited local companies with names like the fictitious examples above.  Consider Bethlehem Steel and Lehigh Valley Dairy Farms® (a registered trademark of Dean Foods Company).  But, while the rights of distinctiveness accrue over time, they need not accrue by chance.

In addition to permitting registration of trademarks, the Lanham Act affords protection of common law trademarks.  That is trademarks that are not registered but indicate source because the business uses them in a manner that causes them to indicate the source.  The Lanham Act also permits registration of descriptive marks that have not yet acquired secondary meaning on the Supplemental Register of the USPTO.  By leveraging the legal rights afforded under these sections of the law, in combination with legally strategic usage of otherwise descriptive marks, businesses may pave their own way to acquired distinctiveness in as little as five years.  That is, businesses may use their five-year plan to capture broad, valuable identity in trademarks that immediately convey to consumers the quality, characteristics, advantages, and value of their products.  Moreover, a business that is successful in this regard may also preclude competitors from using those terms or terms likely to cause confusion with respect to the source of the products or services.

Organizations working together through: their executives – with strategic planning; their Marcom department – executing brand marketing; and their legal advisers – guiding best practices for forming legal foundations for distinctiveness claims – can potentially grow the company’s ownership of highly advantageous, meaningful terms that become suggestive of the company’s goods and the goodwill they carry.

Douglas Panzer, Esq.
Of Counsel For Intellectual Property

Fitzpatrick Lentz & Bubba

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