Trademark

A trademark is a word, phrase, symbol or other indicator that identifies the source or sponsorship of goods or services. If an individual, business, or other organization uses a trademark to sell or promote its goods or services, then it can gain the right to exclude others from using the trademark in connection with similar goods or services. Owners of famous trademarks, like "Windows," "McDonald's," or "Google," may also stop others from using them in connection with even dissimilar goods or services. Trademark law is a branch of intellectual property law that is governed by both federal and state laws. By far the most important trademark law is the federal Lanham Act; because state laws generally follow the Lanham Act, this guide focuses on it exclusively.

A basic understanding of trademark law is important to your online activities for two reasons. First, as a provider of goods or services (e.g., online publishing, educating the public, newsreporting), you may want to use trademarks to identify your work to the consuming public. In that case, you'll want to understand how to protect your legal rights, so that others do not unfairly take advantage of your reputation and the positive association you've built up between your trademark(s) and your work. Second, you should understand how you can properly make use of someone else’s trademark for purposes of news reporting, commentary, and criticism. This overview page and the more detailed sections that follow will help you to understand both of these important aspects of trademark law.

Common examples of trademarks include "Yahoo!" in its characteristic red font, YouTube's slogan "Broadcast Yourself," and the venerable "New York Times."

Yahoo Logo YouTube Logo New York Times Logo

Many trademarks use a stylized font or logo, but a trademark can be as simple as plain text, such as "iPod," or a domain name, such as "hotels.com," so long as the trademark owner uses it to identify its products or services. Trademarks are not limited to traditional marks like text, images, or symbols, but can be anything that acts as a source-identifier for goods or services. Examples of such non-traditional trademarks are the color brown for a shipping company (a trademark of UPS), the sound of chimes for a television channel (a trademark of NBC), and the scent of plumeria for yarn. For more information about what can constitute a trademark, see the section on What Trademark Covers.

Not all trademarks receive the same degree of protection. They differ in strength according to their distinctiveness. Generally, the more unique or distinctive the mark is, the greater protection it receives. On a spectrum of decreasing distinctiveness, marks are classified as: (1) fanciful, (2) arbitrary, (3) suggestive, or (4) descriptive. 

Fanciful marks (made-up words like "Kodak"), arbitrary marks (existing words used in a way unrelated to their common meaning, like "Apple" for computers), and suggestive marks (those that hint at a quality or aspect of the product or service, like "Coppertone") are considered inherently distinctive. 

Descriptive marks, or marks that describe the product or service directly such as "The Container Store," are not inherently distinctive and require the showing of "secondary meaning" in order to be entitled to trademark protection. Secondary meaning is acquired when consumers associate a descriptive mark with a particular source. Marks that contain a person's name, such as "Dell Computers," or describe a geographic location, such as "Kentucky Fried Chicken," are also considered descriptive marks.

Lastly, a generic word can never receive trademark protection. A generic word is the common name for the product or service to which it attaches -- for example, calling an email service provider "email" would be a generic mark. For more information on the range of protectability of trademarks, see the section on Naming Your Business: Choosing a Name Capable of Trademark Protection.

There are two ways to acquire rights or "ownership" in a trademark. The first is by simply using the trademark in commerce in connection with your goods or services. Trademark rights acquired through use in commerce (so-called "common law" rights) are limited to the geographical area in which the trademark has been used or is reasonably expected to be used. This limitation does not typically arise when a trademark is used online because of its wide accessibility.

The second way to acquire rights in a trademark is through federal trademark registration. There are several benefits to federally registering your trademark. Perhaps most importantly, it puts others on constructive notice that you are using and claiming rights in the mark. This notice not only discourages others from using your mark, but also creates certain presumptions in your favor in the event of a lawsuit to enforce your trademark rights. Registration is fairly expensive, however, so you will want to consider whether the benefits of registration justify the expense. View our Trademark Ownership page for more information about obtaining trademark rights, registering a trademark, or protecting your rights once established. In addition, our section on Trademark Law and Naming Your Business provides specific information on choosing a name for your website, blog, or organization. 

The primary goal of trademark law is to protect consumers from confusion about the source or sponsorship of goods and services. It does this by allowing a trademark owner to prevent others from using confusingly similar marks to attract customers. In other words, the law aims at helping consumers accurately identify the products and services that they want to buy and protects them from deceptive market practices. To illustrate, imagine a consumer - Sally. If Sally buys a new computer that is labeled with the distinctive Dell logo, she can be fairly sure that the computer was made by Dell, Inc. and nobody else. She can rely on Dell's reputation without worrying whether the computer was actually made by Dell or some knockoff, lower-quality company. Trademark law prohibits this kind of confusing commercial activity, and allows Dell to sue companies who engage in it for trademark infringement. In recent years, Congress has expanded the scope of trademark law to encompass harms other than consumer confusion, including dilution and cybersquatting, that we discuss below.

Federal trademark law protects against three distinct unlawful activities:

  • Trademark Infringement: Trademark infringement happens when you use a trademark owner's trademark or a similar mark in a way that is likely to confuse the public about the source or sponsor of your products or services. This is the most common type of trademark claim, and it effectuates trademark's primary purpose of avoiding consumer confusion. See What Trademark Covers for details.

  • Trademark Dilution: Trademark dilution happens when you use a famous trademark in a way that is likely to weaken its capacity to identify the famous trademark owner's goods or services or to tarnish the reputation of the mark. The trademark owner need not show that you created consumer confusion, and dilution may occur even if your goods or services are completely different from the trademark owner's. Because of dilution law, it's probably not a good idea to call a blog "Kodak News" or "McDonald's Blog," unless it is actually about Kodak or McDonald's (in which case you should read Using the Trademarks of Others carefully). For details on trademark dilution, see What Trademark Covers.

  • Cybersquatting: Cybersquatting occurs when you register, use, or sell a domain name with a bad faith intent to profit from someone else's trademark. Congress passed the Anticybersquatting Consumer Protection Act in 1999 to stop speculators from buying up multiple domain names and selling them at exorbitant prices to the legitimate owners of the associated trademarks. Certain uses of another's trademark in a domain name may still be protected from liability for cybersquatting. For details, see the Cybersquatting section.

Although trademark law provides trademark owners with a powerful tool for protecting the integrity of their trademarks, the law does not permit them to silence legitimate reporting, commentary, criticism, and artistic expression. As one court put it: "Trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view." L.L. Bean, Inc. v. Drake Publishers, Inc.,811 F.2d 26, 29 (1st Cir. 1987). Because of the important role that trademarks play in our cultural vocabulary, "much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark." The New Kids on the Block v. News America Publ'g, 971 F.2d 302, 306 (9th Cir. 1992).

The good news for media creators is that the courts have careved out protections for the public's right to use the trademarks of others in criticism, commentary, news reporting and other forms of noncommercial expression. This point is of special importance not only to journalistic sites, but also to gripe sites that focus criticism on particular companies and often use the companies' trademarks in their domain names. However, while the law is solicitous of your rights of free expression, the legal doctrines in this area are complicated, and so it may be difficult to understand just how the law protects your use of a trademark in a particular act of reporting, commentary, criticism, and the like. If you want to make use of another's trademark in the course of these kinds of activities, you should consult the section on Using the Trademarks of Others.

Finally, if you host user-generated content, such as user comments, you'll want to consider whether trademark law will hold you responsible for materials posted on your website or blog by your users. Unfortunately, the protection provided by the "safe harbors" of the Digital Millennium Copyright Act and Section 230 of the Communications Decency Act generally do not protect you from trademark claims. For details, see Trademark: User-Generated Content.

This guide is not a full treatment of trademark law, but it does provide what we hope is a good understanding of how to deal with the legal issues surrounding trademarks. In the sections that follow, we lay out further specifics about the principles described above.

 

Last updated on October 18th, 2010

   
 
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