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Developing brand names with trademarks

03/16/07
Ian M. Berkowitz

Editor’s Note: This is part one of a three-part series.

    The world is full of good-s, prod ucts and services that a-re con stantly being marketed to us in many types of ways. The goal of a business person who ha-s some thing to sell is to make the name of your product or service a xed to your customer’s brain and on their mind 24 hours a day, seven days a week.

    Close your eyes and thi-nk cof fee. Do you think of Starbucks or Dunkin Donuts? Now think hamburgers. Do you think- of Mc Donalds, Burger King or Wendy’s? What about computers?

    Do you think of IBM,Hewlett Packard,Compaq, or Dell? The examples used are names- of com panies that are registere-d trade marks but they also all hav-e prod ucts or services that are equally well known and protected.

    FederaLlaw is the primary law of the land for trademarks- and l ing your mark with the U.S. Patent andTrademark O ce is the route to go if you want the maximum protection.

    The federal statute for this body of law is the TheLanham Act that is Title 15, Chapter 22 of the United Stated Code. -Speci cally, this Act prohibits a number of activities, including trademark infringement, trademark dilution and false advertising.

    Named for Representative Fritz G.Lanham of Texas, the Act was passed on July 5th 1946 and signed into law by President HarryTru - man taking e ect one year from its enactment, July 5th, 1947. Trademarks, Servicemarks and Tradenames are primarily used by businesses to develop a brand name so that the public will in turn identify their speci -c prod uct, service or company in a more favorable way over any ot-her com petitor.

    By de nition, a tradema-rk is as sociated with a speci c product, a service mark with a speci c service and a trade name with a company name.

    The critical issue to be aware of when attempting to register your mark is whether or not the mark you are looking to protect is likely to cause confusion, mistake, or deceive the public into thinking you are something or someone that has already been established for a same or similar purpose. Knowing whether or not your mark is or is not eligible for registration is the next issue. Trademarks, Servicemarks and Tradenames can be many types of things.

    They can be suggestive -or evoc ative words such as Slim-Fast and Travelocity. They can be arbitrary made-up words such as Xerox, Kleenex and Google.

    They can also be words that are surprising or unexpected in the context of their use such as Lexus, the car company, or ebay, the online auctioneer. Finally marks could be speci c logos -or sym bols such as the Nike swoosh, the Playboy bunny or the CocaCola bottle.

    As a rule of thumb, marks that describe a speci c identi er of a product, marks based upo-n a spe ci c location or marks based on a speci c name, are not eligible for trademark protection.

    H owever, if the business can demonstrate public awareness of the mark through advertising, product sales or other means, then it is arguable that the business has developed a “secondary meaning” and may be eligible for protection. There are many famous examples of this which include: Ben- & Jer ry’s, Ralph Lauren,Trump,Elvis, Mutual of Omaha, New York Stock Exchange, “Live Strong” ( Lance Armstrong), and “We do chicken right” (KF).

    Developing the mark is only the beginning of the process. In the next issue, I will address the speci cs on registration and what other issues you must be aware of when proceeding with trademarks.

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Ian M. Berkowitz is a former attorne-y/advi sor with the United States Small Business Administration in Washington D.C. During his tenure with the Federal Government -he speci cally worked in the areas of disaster relief for homeowners and businesses and government contracting. He is currently a practicin- g busi ness and real estate attorney in Boca Raton. In addition to his law degree, Ian also holds a Masters Degree in Government from The John Hopkins University.