Intellectual Property Primer – Trademarks

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Jordache LardasheA trademark is used to prevent consumer confusion in the marketplace with respect to who provides certain goods or services.  A trademark can protect symbols, logos, phrases, designs, or marks that identify and distinguish a provider of goods or services.  The more unique a company’s name, the better protection is likely to be given.

Protection Against Consumer Confusion

If you own a trademark, you can stop another entity from using a similar trademark as long as that person is using it in a way that would cause consumer confusion about who is providing the goods or services.  Without confusion, there is no way to prevent another company from using a similar trademark.  The case involving Jordache and Lardashe is one of the most famous examples.  If are old enough to recall, Jordache was (is?) a famous jeans brand.  A couple of enterprising women came up with their own jeans brand, Lardashe.   Jordache’s lawsuit was eventually tossed because Lardashe’s use of the trademark was not likely to cause to cause consumer confusion about who made the jeans.  In fact, it was a parody of Jordache’s jeans.

North Face South ButtProtecting Your Trademark

There is protection on both a State and Federal level.  On the Federal level, registration is required.  Federal protection is for the entire US, while state protection extends to a statewide basis.

To get Federal protection, the following requirements must be met:

  1. the subject matter be eligible for trademark protection;
  2. the trademark has to be distinctive; and
  3. the trademark must not be likely to cause confusion (this is crucial).
If the above requirements are met, Federal protection will be extended for ten years and can be renewed indefinitely.  You will also get the very chic ® symbol.

Domain names

Domains can be problematic.  Merely having a domain name does not give you automatic trademark protection rights.  But if you choose a domain name that would cause confusion, you may be liable for trademark infringement.  Another watchout: if you use a competitor’s trademark in a meta tag, that might be considered infringement.

Are you too successful for you own good?

If a trademark becomes so strongly associated with a generic description, it may lose trademark protection.  Aspirin was a trademark before it became generic (as was Dumpster and Yo-yo.  See here for more).  Google is trying to prevent itself from becoming a generic term for web searching. For more examples of generic trademarks, go ahead and Google it…I mean, search for them using the search engine Google.


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