Bo's bLAWg: Trademark Basics

 

MJ Bogatin (“Bo”) of Bogatin, Corman & Gold, is an Arts and Entertainment Attorney in San Francisco.  He is also Co-President of California Lawyers for the Arts.  www.calawyersforthearts.org  Bo is available to answer some of your questions surrounding the business of Art Licensing. - THANKS BO! 

 

'I saw that you need to decide on your trademark application whether you are selling goods (a product) or services. I'm hoping to sell goods but then I saw that if you plan on selling on your website that's considered services?? Can I choose both goods & services? Thank you! Kathy'

The short answer to this question is that trademarks can apply to goods and services, in which case you want to look to register your trademark in both classes – which you can do at the same time, but which requires additional application fees.

What this question also invites is an opportunity for me to address the fundamentals of trademark law. Like copyright, trademarks are a matter of Federal law – the Lanham Act, 15 USC Chapter 22, https://www.law.cornell.edu/uscode/text/15/chapter-22.  However, this Act applies only to goods and services in interstate commerce.  Goods and services that are made available ‘locally’ in intrastate commerce, would not necessarily qualify for Federal Registration, but would be eligible for State Registration.  Most states provide for registration of such marks through their respective Secretary of State Office.

In my prior bLAWgs I have focused upon Copyright issues.  There is a keen distinction between Copyrights and Trademarks that is a “natural” aspect of the intellectual property interests of their owners and creators.  First, let’s distinguish between them by definition.

Remember, a Copyright is the original expression of an idea by way of writing, composition or recording.  A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others, while a service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods.  The popular term these days for such commercial identification is “branding.” The word “trademark” is often used to refer to both trademarks and service marks. 

Copyright law allows for multiple Authors to claim an IP right in a substantially similar original expression of an idea. Hence, there are legitimate claims of right to very similar illustrations, photographs and paintings.  Any and all of such Authors can claim ownership of their own original expression as long as they have not copied from the other.  An example:  Every tourist who takes a photograph of the Golden Gate Bridge at the same moment of dusk from the same pinnacle at Lands End can have their own copyright claim in that unique photograph, and all the exclusive rights that attach to their photograph.  However, it is not an infringement of their Copyright for another photographer to publish and exploit a nearly identical photograph!

On the other hand, because trademarks are for the purpose of identification of the source of specific goods and services, it is important that the owner of a given trademark have the exclusive right of use to that mark as against any and all others who might like to use the same or a similar mark in the same class of goods or services.  The purpose of this exclusive interest is to insure the public consumers that they are purchasing the brand they are intending to purchase, not a ‘pretender.’ You may not have realized it, but underlying the purpose of trademark law is consumer protection! 

The Trademark Office has identified 34 classes of different goods and 11 of services from which the prospective Trademark registration applicant must select the most appropriate for their product or service.  Hence, it is possible that there are similar Trademarks in other classes, but obviously not related to one another, and will neither compete with one another or lead to public confusion.  Hence you could have both Apple Computers and Apple Records operating at the same time without a problem.  However, once Apple Computers got into the music business (with iTunes etc), litigation commenced.

Unlike Copyright, where ownership in a similar representation (of an object) can be claimed again and again, the maxim for Trademark is, “First in time is first in right.”  The first person (or company) to use a given word or logo as their trademark has a “senior” user right (superior right of use) against any latecomer (“junior” user) who might want to use the same or a confusingly similar mark.  The basic legal test for Trademark infringement is whether or not use of a given mark may cause public confusion as to the source of such goods or service.  There need not be actual public confusion for a mark to be refused registration.  It is enough that a junior mark may confuse the public as to the source of the seller’s good or services.

Must all marks be registered? No, but Federal registration has several advantages, including a notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.

If you claim rights to use an unregistered mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending.

The Trademark Office fees for an online registration range from $225 to $325 per mark per class.  The Lanham Act allows for registration of a mark the applicant has an Intent To Use (“ITU”) to reserve rights in the mark pending manufacture and distribution.  (15 U.S.C. § 1051b) 

So, Kathy, if you intend to use the same Trademark for both goods and services, be sure to first do a thorough search of marks being used in the classes of each.  One senior rights-holder with  the same or a confusingly similar mark in one class or the other will likely spoil your plan to use the same mark for both.

Disclaimer: The information contained in this website is not intended as legal advice or a solicitation of business. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information contained herein. Also, be aware that the law may vary from state. Therefore, this website cannot replace the advice of an experienced attorney. Receipt of this information does not create an attorney-client relationship. MJ Bogatin, Bogatin, Corman & Gold, www.bcgattorneys.com

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