In today’s super competitive marketplace, clients sometimes find it difficult to choose a trademark that does not encroach on someone’s established trademark turf. The client usually looks at a new trademark from an ownership viewpoint, choosing a brand that it believes will deliver it to the Promised Land. If there is another who preceded the client and has rights that you (the client’s attorney) believe are superior, the client’s first reaction is typically, “There is a difference between the two and it is enough of a difference.”
This reaction is from the client’s invested viewpoint (both fiscally and emotionally). Marketing campaigns may have been envisioned or even started. Internal discussions, sometimes passionate, may have occurred in deciding whose idea of a particular brand was the best. The client firmly believes there is a way that it can own and use that trademark that it took so much effort to choose.
What must be understood in these situations is that it is not your client, nor you as the client’s attorney, nor even the owner of the preceding trademark that decides how close is too close. This is a conceptual issue which is often difficult to explain (but here goes).
The owner of a trademark does not own that word, phrase or graphical image. What the trademark owner owns are the rights to use that word, phrase or graphical image to promote, market, and sell a particular product or service. The trademark and the particular product or service are conjoined and cannot be separated.
Why is that so?
Some form of trademark use has been in existence since ancient times. Marked pottery in China existed 4,000 to 5,000 years ago, Greek vase makers identified their vases and Roman brick makers identified their bricks. The first known English infringement action, Sandforth’s Case in 1584, alleged that the defendant made similar but “unmerchantable” cloth under the same J.G. mark as the plaintiff. The use of a mark to identify the maker or source of a particular good is about as old as dirt. And so is the association between the goods and the trademark used to sell those goods. The purpose of using an identifier (trademark) is to provide the buyer with an assurance of a product’s particular level of quality, that reason being given as early as in Sandforth’s Case.
What if I’m not first!
In our competitive world, a client is sometimes not the first to use a catchy word or phrase as a brand for a product. It is expected (as supported by case law in the U.S.) that a subsequent user should pick a trademark that is sufficiently different from prior trademarks. There are some who even say there is a duty to do so.
In coming full circle, the question arises, “Who decides what is sufficiently different?” Since the trademark is used to help the buyer choose to buy the product, then it is the buyer who is not to be confused in selecting what to buy. Thus, “It’s all about the buyer!” If the buyer is likely to be confused, then your client should choose another trademark which does not create such a likelihood of confusion. Simple!?
What matters is choosing someone with experience to determine whether a trademark can be used and can be registered. Self-tests are fun, too. Here are two recent cases decided by the Trademark Trial and Appeal Board of the US Trademark Office See how good you are!
NATURE MADE for various foods and beverages, including snack bars containing dried fruits and fruit juice, as compared to the registered mark MADE IN NATURE for dried fruits and vegetables, snack products, and fresh fruit. Confusion?
KING’S RANSOM for “spirits, namely, aged luxury Scotch whisky for private sale only by invitation,” as compared to the identical mark registered for “wines.” Confusion?
The answers: 1 – Yes and 2 – No.