continuation: Trademarks

Courts have rationalized that merely descriptive marks are useful for describing goods and services and should not be the exclusive terms of one producer unless that producer can demonstrate secondary meaning (i.e., that the consuming public has come to primarily associates that mark with a particular producer, rather than the underlying type of product.) For example, even though originally Holiday Inn might have been considered merely descriptive, today enough advertising, years of use, and franchise control has been
exercised that the term “Holiday Inn” has become associated with a specific brand of hotels.

The final category of words, phrases, or symbols is accorded no trademark protection and applies to “generic marks.” A generic mark is entitled to no protection
under trademark law because giving a single producer control over the use of the generic mark would give that producer too much of a competitive advantage. For example, a manufacturer of jewelry would be unable to obtain a trademark on the mere term “Jewelry.” A restaurant would be unable to obtain a trademark on “Restaurant.” In short a generic mark is generic with respect to the goods or services it describes and as such worthy of no trademark protection.

Why should anyone be concerned with a potential trademark if it is not registered? Registration of a trademark (and the subsequent use of an ® symbol to give actual notice of the registration) is only one way of acquiring and rotecting trademark rights. Actual use of a mark by itself can be sufficient to establish trademark rights. When contemplating use of a mark as a product identifier, the actual use of the mark by others must be researched. Although federal trademark law is generally controlled by the Lanham Act, state laws also allow for state registration and protections.

In conclusion, the business person seeking to expand their operations (e.g., uniquely named stores or restaurants) via franchise or otherwise, would be well advised to first obtain a trademark. Likewise, the retailer selling multiple products would be well advised to consider the implications of misuse of another’s trademark. Space limitations necessitate future articles to cover additional trademark issues. But, suffice it to say that trademark laws do provide for certain fair uses of a trademark, and when facing threatened litigation, those fair uses should be discussed with competent counsel.

- Atty. German Castillo is experienced attorney practicing Immigration Law and Intellectual Property. He is a registered Patent Attorney before the U.S. Patent and Trademark Office. He can be reached at tel. (281) 340-2027 or via e-mail at german@gcastillolaw.com.

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