Trademarks and Service Marks

A “trademark” is a word, design or combination used by an individual or a business to identify its goods or services. In some cases a trademark can also be a sensory mark–a sound, a color or a smell. While marks identifying services rather than goods are technically referred to a “service marks” we will use the term trademarks to include service marks. Trademarks protect names used to identify goods (or services) and their source of origin. The law protects trademarks in part because trademarked items tend to carry with them certain quality assurances – one would expect an automobile carrying the Rolls Royce trademark to be far superior to most other automobiles. You may use any kind of name or symbol as a trademark to identify your product.

A mark is any word, name, symbol, or design that identifies a product or service. A trademark identifies a product (for example, Coca-Cola). A service mark identifies a service (for example, Holiday Inn). A mark may be registered with the United States Patent and Trademark Office (USPTO) if the mark distinguishes a person’s product or service from products or services of competitors. Registration of a mark on the Principal Register of the USPTO entitles a person the exclusive use of the mark. Registration can also be accomplished with a State (usually with the Secretary of State of a particular state). However, State registration does not provide as much protection as Federal registration. Before a mark can be registered, it must be used by the United States Patent and Trademark Office and it must distinguish goods or services from others. The owner of a mark cannot register it with the United States Patent and Trademark Office unless the mark is used in interstate commerce.

Generic terms that merely describe a class of products cannot be registered. For example, the term motor oil or the word airline would not be accepted for registration. Descriptive or geographical terms cannot be registered unless they have acquired a secondary meaning. A mark acquires a secondary meaning when, through long usage, the public identifies the mark with a particular product. For example, Best Western Motels involves a mark which has a secondary meaning.

One can be an owner of a trademark or service mark, whether or not it is registered. This is common law protection. Registration is proof of ownership and makes ownership rights easier to enforce. The basic question in lawsuits over marks is whether or not the general public is likely to be confused as to the origin of the service or product. If the owner of a mark permits widespread use of the mark to describe a general class of products, the exclusive right to the mark may be lost. Two examples are cellophane and aspirin.

Trade dress is the total appearance of a product, including its packaging, label, shape, and size. Trade dress may also include physical structures associated with a particular product or service, such as the “golden arches” of McDonald’s. Trade dress may qualify as a protected trademark or service mark if it is distinctive and identifies the source of a specific product or service.

Copyrights

A copyright offers protection for original works of authorship. Copyright protection affords the author of a copyrighted work with specific rights that the author can give or sell to others or keep for himself. The concept of copyright protection in the United States is set forth in the original U.S. Constitution which allows Congress to pass laws that promote and encourage the process of the useful arts.

The word copyright can be defined as a property right in an original work of authorship (such as a literary, musical, artistic, photographic, or film work) fixed in any tangible medium of expression, giving the holder the exclusive right to reproduce, adapt, distribute, perform, and display the work. Copyright protection may be received regarding a wide range of creative, intellectual, or artistic forms or works. These include poems, plays, and other literary works, movies, choreographic works (dances, ballets, etc.), musical compositions, audio recordings, paintings, drawings, sculptures, photographs, radio and television broadcasts. The creator of the work has a limited monopoly on the work and can, with some exceptions, prohibit others from copying or displaying the work. The United States copyright law is contained in Chapters 1 through 8 and 10 through 12 of Title 17 of the United States Code.

Works published after 1922, but before 1978 are protected for 95 years from the date of publication. If the work was created, but not published, before 1978, the copyright lasts for the life of the author plus 70 years. However, even if the author died over 70 years ago, the copyright in an unpublished work lasts until December 31, 2002. And if such a work is published before December 31, 2002, the copyright will last until December 31, 2047. All works published in the United States before 1923 are in the public domain.

The term public domain refers to creative materials that are not protected by intellectual property laws such as copyright, trademark or patent laws. The public owns these works, not an individual author or artist. Anyone can use a public domain work without obtaining permission, but no one can ever own it. Once a copyright expires, it is in the public domain and no longer has protection. Works created by the federal government are also in the public domain.

A copyright is obtained simply by creating the work. It comes into existence automatically on the date it is created. However, in order to get federal protection of a copyright, the creator of the work has to file two copies of the work with the Copyright Office in Washington, D.C.

Copyright law is designed to create an incentive for creativity by allowing the author to profit from his work. The Act tries to balance this need to protect the author with the public’s need for free and open discussion. A copyright owner has the exclusive right to:

• Reproduce the work;
• Prepare derivative works, such as a script from the original work (e.g., movie script for Book The Rainmaker);
• Distribute copies or recordings of the work; and
• Publicly display the work in the case of paintings, sculptures and photographs.

The Copyright Act contains several exemptions that allow a person or institution to use or copy a copyrighted work without the owner’s permission. Three commonly used exemptions are:

• the fair use doctrine which allows copying for such purposes such as teaching;
• the right of libraries to make limited copies; and
• certain performances and displays for teaching or religious purposes.

The fair use doctrine allows reasonable use of copyrighted works (without requiring the author’s permission) for teaching, research, and news reporting. The Federal Act states: “[T]he fair use of a copyrighted work, including such use by reproduction in copies . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”

There are four important factors that must be looked at when determining whether or not the fair use doctrine applies:

• the purpose of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
• the nature of the copyrighted work;
• the amount of the portion used in relation to the copyrighted work as a whole; and
• the effect of the use on the potential market for or value of the copyrighted work.

If a work is a work made for hire, this means that a person was hired specifically to create the copyrighted work. The employer of the creator of the work can register the copyright and is entitled to protection.

Patents

A patent is a grant of a property right by the Government to an inventor. The United States Constitution gives Congress the right to provide for patent protection in legislation in order to encourage useful inventions. The patent itself provides a detailed description of the invention, and how it is used or how to make it. Thus, if you obtain a patent you cannot keep the matter secret, which is the province of trade secrets laws. A patent enables the owner to exclude others from making, using or selling the invention for the life of the patent. Federal statutes give an inventor the exclusive right to use, sell, and market his invention.

Trade Secrets

A formula, process, or information that is secret, and gives its owner a business advantage may be protected under State laws concerning trade secrets. Trade secrets, basically, are any formula, device, or information that is used in a business, and is of such a nature that it gives the owner an advantage over competitors who do not have the information. Customer lists may be protected unless they can be easily developed from public information. Trade secrets are protected under State law rather than Federal law. This protection may be by virtue of common law or statutory law, such as the Uniform Trade Secrets Act.

When a trade secret is made public, it loses its protection as a trade secret unless it is disclosed in a restrictive manner to persons who know of its confidential nature.

Remedies for Violation of Property Rights

When property is harmed, taken, or destroyed, the most common remedy is an action for monetary damages. The property itself may be recovered if unlawfully taken. Wrongful use of a copyright, trademark, service mark, or patent can result in injunctive action, as well as a suit for damages. If an infringement is intentional, profits resulting from the infringement may also be obtained.

Infringement of a trademark or service mark occurs when a person uses or copies the trademark or service mark of another person without the person’s permission (e.g., putting Nike label on shoes and selling them).

Ambush Marketing is a phrase that describes the actions of companies that seek to associate themselves with a sponsored event such as the Olympic Games or the Super Bowl without paying the requisite fee as official sponsors do. The ambush consists of giving the impression to consumers that the organization/company is actually a sponsor or is somehow affiliated with the event when in fact it is not.[1]

Examples include:

• In the 1996 Atlanta Olympics, sprinter Linford Christie wore contact lenses embossed with the Puma logo at the press conference preceding the 100 meters final, despite Reebok being the official sponsor.
• In the 1996 Atlanta Olympics, Messages On Hold strategically infiltrated a banner within the camera frame as U.S. runner Jon Drummond prepared for the opening leg of 4×100 relay final. The moment was broadcast live across the world.
• In the 1996 Cricket World Cup, Pepsi ran a series of advertisements entitled Nothing Official About It, thus targeting the official sponsor Coca Cola.
• In the 1998 World Cup, Nike sponsored a number of teams competing in the Cup despite Adidas being the official sponsor.
• In the 2000 Sydney Olympics, Qantas Airlines’ slogan The Spirit of Australia sounded strikingly similar to the Games’ slogan Share the Spirit. despite Ansett Air being the official sponsor.
• In the 2003 Cricket World Cup, Indian players threatened to strike over concerns that the anti-ambush marketing rules were too strict. Of particular concern was the length of time before and after the cup that players were not allowed to endorse a rival to one of the official sponsors. Players argued that if they had pre-existing contracts that they would be in breach of them if they were to accept the ICC’s rules.
• In the 2006 FIFA World Cup, fans of the Netherlands were made to remove Bavaria Brewery’s Leeuwenhosen because Budweiser was the official beer sponsor.
• In the 2008 Beijing Olympics; millions of people were tuned into the Opening Ceremonies and saw Li Ning, a former Olympic gymnast for China, light the torch. However, many viewers later learned that Li Ning also owns a shoe company with the same name, Li Ning, a direct rival of Adidas and quite famous in China, but not an official Olympic sponsor.[2]

[1] Sports Law at p. 252 by Adam Epstein, Delmar Leaning (2003)

[2] Id