Protecting the Name
A great invention deserves a great name. When the time comes to market your game-changer, you can be sure of two marketing realities: copiers will race to build similar products, and purchasers will reward the product they remember. These two truths lie behind the adoption of the trademark iPhone® to identify Apple Inc.’s unique combination of music player and smart telephone and to distinguish it from other, similar products that now are marketed by Palm, RIM and other competitors. Because consumers know to ask for an iPhone® device by name, iPhone symbolizes and sustains the considerable goodwill that attaches to this category-creating product. The inner electronics of the device have changed repeatedly since it was first introduced, but consumers still associate today’s product with the original and its goodwill because of the consistent use of this trademark.
Trademarks (and their siblings, “service marks”) are a valuable form of intellectual property. In the United States, trademark rights begin to accrue from the moment the name or mark is used in commerce on the goods or in connection with the offering of the services the mark identifies. The “common law” right so created is the exclusive use of the mark to identify the identified goods or services within the geographic territory in which the goods or services are sold or offered. The trademark owner may obtain the assistance of the courts to enforce this right and to claim monetary damages from an infringer.
If the owner takes the next step and registers his trademark with the U.S. Patent and Trademark Office (USPTO), then several additional rights are his: he may sue in federal court; all persons are presumed to have actual notice of his trademark, so that all subsequent adopters of an infringing mark, no matter what the geographic market, do so at their peril; he can avail himself of international treaties to extend the protection of his registration to other countries; he is presumed to be the lawful owner of his mark in the U.S.; his application and registration can easily be discovered through a simple computer search of the records of the USPTO (and thus avoided by others); and, after five years of continuous use of the mark, his rights become “incontestable” with respect to most grounds for challenge.
The exclusivity awarded a trademark extends not just to the exact mark and the exact goods identified by it. A trademark owner may exclude others from adopting any mark that, when actually used or applied to be registered, is so similar to the first mark as to likely cause mistake, confusion, or error with respect to the origin, sponsorship, or quality of the goods or services identified by the mark. Thus, protection extends to variations in sound, spelling, and meaning of the mark and also to variations in the design, function or purpose of the product so identified, as long as the total impact is to create a likelihood of confusion between the products.
This exclusivity runs both ways. Before a company adopts a new trademark, it should retain the services of a trademark lawyer to engage and interpret a full search of existing “common law” trademarks, pending trademark registration applications, and trademarks registered with the USPTO and state authorities. In this way, the company can be relatively certain that the chosen name for its new product will not inadvertently prove to be a legal killer. The trademark attorney who performs this clearance task will then be ideally positioned to assist the company in registering its new mark with the USPTO and foreign countries as appropriate.
In return for these protections, the law asks only that the mark be distinctive, i.e., that it be capable of identifying only the owner’s product and distinguishing it from those of others. A mark must not be “merely descriptive” or generic. A merely descriptive mark is one that primarily communicates a function, quality, or purpose of the product supposedly identified, such as a “smart phone” or a “personal genome analysis.” Although a merely descriptive term may, over time, acquire distinctiveness through relentless marketing, a “generic” term never can become distinctive, since it is just the standard term used by the public to identify all products of that type. Thus, entrepreneurs should resist the temptation to adopt a product name that describes or names the product. The temptation is understandable; the greater the novelty of a breakthrough product, the greater the temptation will be to give it a name that informs the public just what it is the product does. Although there are times when this approach is useful or even necessary, in most cases it will mean the adoption of a name that has no protectable trademark rights.
