Patent It Yourself - PDF Archive

ChaPter 1 | INTRODUCTION to PATENTS and Other INTELLECTUAL PROPERTY | 19
trade or company name, while Ivory is a trademark, that is,
a brand name for Procter & Gamble’s white soap. However,
the media often refer to trademarks as trade names. Also,
many companies such as Ford, use the same words as a
trade name and a trademark, so the difference sometimes
becomes academic.
Trademarks, such as Ivory, enjoy offensive rights under
both federal and state trademark laws. The trade name
Procter & Gamble, however, enjoys offensive rights primarily
under state law (corporation registrations, fictitious name
registrations, and unfair competition law). However, a federal
law can also be used to slap down a trade-name infringement
as a “false designation of origin” (17 USC 1125).
2. Monopoly Rights of a Trademark Owner
Briefly, the owner of a trademark may or may not be entitled
to legal offensive rights depending on how distinctive (or
strong) the law considers the trademark. Trademarks that
are arbitrary (Elephant floppy disks), fanciful (Double
Rainbow ice cream), or coined terms (Kodak) are considered
strong, and thus entitled to a relatively broad scope of
offensive rights. On the other hand, marks that describe
some function or characteristic of the product (such as
“RapidCompute computers” or “RelieveIt” for an analgesic)
are considered weaker and won’t enjoy as broad a scope of
offensive rights. Although the above differences may seem
somewhat arbitrary, they really aren’t. The courts give fanciful,
coined, or other arbitrary marks a stronger and broader
monopoly than descriptive marks because descriptive marks
come close to words in common usage and the law protects
everyone’s right to use these. Also, the owner of a “famous”
mark can prevent anyone from diluting the mark—that
is, blurring or tarnishing its distinctiveness—even if the
diluting mark is not used on similar goods or services.
In addition to the strong/weak mark dichotomy, trademark
owners may be denied offensive rights if the
trademark becomes commonly used to describe an entire
class of products, that is, it becomes “generic.” For example,
“aspirin,” once a trademark that enjoyed strong offensive
rights, became a generic word (no offensive rights) for any
type of over-the-counter painkiller using a certain chemical.
Why? Because its owner used it improperly as a noun (such as
“Buy Aspirin”) rather than as a proper adjective (such as “Buy
Aspirin (brand) analgesic”), and the public therefore came to
view it as synonymous with the product it described.
3. Relationship of Trademark Law to Patent Law
As indicated above, trademarks are very useful in
conjunction with inventions, whether patentable or not.
A clever trademark can be used with an invention to
provide it with a unique aspect in the market place so that
purchasers will tend to buy the trademarked product over
a generic one. For example, consider the Crock Pot slow
cooker, Ivory soap, and the Hula Hoop exercise device.
These trademarks helped make all of these products
successful and market leaders even though they were not
granted any basic patent. In short, a trademark provides
brand-name recognition to the product and a patent
provides a tool to enforce a monopoly on its utilitarian
function. Since trademark rights can be kept forever (as long
as the trademark continues to be used), a trademark can
be a powerful means of effectively extending a monopoly
initially created by a patent.
4. Overview of How Offensive Rights
to Trademarks Are Acquired
Here’s a list of steps you should take if you come up with
a trademark and you want to acquire offensive rights to it
and use it properly. Because this is a patent book, I haven’t
covered this topic in detail.
a. Preserve Your Mark as a Trade
Secret Until You Use It
As I explain in Subsection d, below, you must take certain
actions before you can acquire offensive rights in a mark.
This means that during the developmental stage you must
treat your trademark as a trade secret so that others won’t
adopt your proposed mark and use it first. (See Section Q,
below, for an overview of acquiring offensive rights to trade
secrets.)
b. Make Sure the Mark Isn’t Generic or Descriptive
Ask yourself if the mark is generic or descriptive. A generic
mark is a word or other symbol that the public already uses
to designate the goods or service on which you want to use
the mark. Thus you can’t acquire offensive rights on “The
Pill” for a birth-control pill, since it’s already a generic term.
A descriptive mark is similar to a generic mark in that it
describes the goods, but hasn’t yet gotten into widespread
public use. For instance, if you came up with a new electric
fork, you cannot acquire offensive rights in the mark
Electric Fork, since it merely describes the product.
c. Make Sure Your Mark Isn’t Already in Use
It’s essential to select a mark that is not in use by someone
else. The goodwill you develop around the mark may go
up in smoke in the event of a trademark infringement