Trademark Rights and Understanding Intellectual Property

Descriptive Words as Trademarks

To protect your Intellectual Property rights in a trademark, you should try to avoid the use of descriptive words in the trademark. A word which merely describes a product or service is often too weak to function as a trademark.

A merely descriptive trademark, such as Cycle Cooler for motorcycle oil coolers, may have instant sales appeal since it immediately conveys the desirability of a product. However, such descriptive words are not, at least initially, protectable as trademarks, since competitors may need to use those words to describe their product. You will have little chance to build up Intellectual Property rights in a business name or slogan containing descriptive words.

It is possible for what is initially a descriptive word to become protectable later as a trademark IF it develops what is termed secondary meaning. In other words, if a descriptive word is used exclusively as a trademark for a number of years, it may come to have a meaning in addition to the primary meaning, which is descriptive of the product. In that case, you will be able to build up Intellectual Property rights in the trademark.

It will be difficult to establish Intellectual Property rights in surnames and geographic words for the same reason: there is a reluctance to allow any one person to claim exclusive rights in a surname which is also the name of other persons, or in a geographic name for a locale in which others offer competing goods or services. It is possible for a surname to become a trademark if, after years of promotion and use, it acquires a secondary meaning. Such surnames as Scott (for paper products) and Johnson (for wax products) have been found to have secondary meaning. Those companies now have solid Intellectual Property rights in those names.

It is possible for Intellectual Property rights to develop in a geographic word if the locale it identifies is not known for the goods or services for which the mark is used, and use of the word is not likely to deceive the public as to the geographic origin of the goods or services. Thus, while Nantucket has been found to be a valid trademark for shirts manufactured elsewhere, Maid in Paris, for a perfume not produced in Paris, was found to be deceptive, since Paris is known for perfume and persons viewing the mark might believe the perfume actually came from Paris.

Generic Words

It is even harder to develop Intellectual Property rights in generic words, words that are so inherently descriptive of a product or service as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service, such as cologne, lawn mower, grocery store and golf ball.

Generic words can not be appropriated by a single party as trademarks, since the public perceives and uses such words as common nouns/terms. As a result, competitors should be free to name their products with the same generic words and they will not infringe on another’s Intellectual Property rights if they do so.

You can lose your Intellectual Property rights in a once-protectible trademark if your product name becomes used by the public as the common or generic product name, for example escalator, aspirin, kleenex, cellophane, thermos and yo-yo. As soon as trademarks are found to be generic product names, they become available for use by everyone, virtually eliminating your Intellectual Property rights in the trademark. This loss of rights usually results from the commercial success of the trademark, along with the trademark owner not controlling the use of its Intellectual Property.

Intellectual Property Involving Pharmaceuticals

Competition is heavy in the Pharmaceutical arena, with billions of dollars at stake. Pharmaceutical companies fight for a higher share of the market through marketing campaigns, competition for employees, regulatory struggles, and research and development (R&D) programs, to name a few battlegrounds.

In the latter, the R&D field, pharmaceutical companies are racing to be the first to develop solid Intellectual Property rights in the next best application of breakthrough technology. They hope to patent their discovery without involving any other Pharmaceutical companies’ previous breakthroughs. This can be tricky, especially when there are only a handful of experts in the world applying their expertise to solving a particular problem. Also,the breakthroughs take many years to develop, and even a small improvement can mean a huge payoff.

These experts may work for universities, national laboratories, their own small companies, or one or more of the large Pharmaceutical companies, or maybe all of the above, at different stages of their careers.

Many times one expert’s work builds on another’s. This often causes Intellectual Property rights disputes, with very fuzzy lines defining where one party’s Intellectual Property rights start and another’s end. This dilemma is partially caused by mixed funding of R&D, since Intellectual Property rights in the resulting technology usually follow the money that supported the R&D.

High-powered law firms representing Pharmaceutical companies in Intellectual Property disputes are looking for better ways to solve disputes over who owns the Intellectual Property in new technological breakthroughs. Resorting to litigation takes too long in such a dynamic market, and parties run the risk of too much disclosure of their competitive edge in the process.

Billions of dollars can go down the drain while the parties laboriously prepare and wait for trial. All for the chance to plead their case before a Judge who may not know much about Intellectual Property rights or technology development. It can be very difficult to prepare a sophisticated technical and legal case for a jury.

Intellectual Property counsel are now turning to Arbitration of their clients’ disputes before Arbitrators pre-qualified to hear Intellectual Property cases, preferably also with a background in pharmaceuticals, or at least familiarity with technology development. Arbitration can be crafted to specifically meet the needs of the parties and will always save time and money.

Infringement of Intellectual Property

Someone infringes on your Intellectual Property when they trade off the value you have built in a name, invention, artistic work, or other original creation of yours. In the case of a trademark, someone infringes when they use your name to attract customers who confuse the infringer with you.

Someone can infringe on your Trademark when they use a slogan similar to yours, or use your logo, or duplicate the color scheme and design of your business materials. The latter is called “trade dress”.

Trademark infringement typically involves intentionally confusing the public as to the source of offered goods or services. However, even innocent users of your trademark can be stopped from further infringement, particularly if you have a federal Trademark Registration. The Internet is where the most rampant trademark infringement is taking place through infringing domain names.

Someone infringes on your Copyright when they copy your original work of authorship, which includes artwork, photographs, design materials (inlcuding websites), text, software, music and many other original works. It is not deemed infringement if the use is what is called a “fair use”, generally not for commercial benefit, such as for educational purposes.

When there is a dispute over Copyright infringement, it often comes down to being able to prove that the infringing party had access to the work and copied a significant portion of original material created by someone else.

Patent infringement occurs when someone markets something using a patented idea. In this case, even if the infringer did not copy the patented work, the patent holder is entitled to protection. A patent protects the underlying idea, whereas Copyright protects only a particular expression of an idea.

The patent holder exchanges public disclosure of a specific idea or invention in exchange for getting a monopoly on any manifestation of that idea for 20 years. Therefore, even an innocent user can be guilty of infringement if the user was not the first to disclose the idea.

Do an IP Audit – Protect Your Intellectural Property

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Well, that’s a lot to think about and it’s all in the field of Intellectual Property, traditionally covering Patents, Copyrights and Trademarks. That field also covers licensing and many issues pertaining to doing business via the Internet. Read more »

Do You Need an Intellectual Property Consultant?

You need an Intellectual Property consultant whenever you are thinking about entering the marketplace with a new idea.

If you’re starting a new business, you need to consider whether the name you want to use is already being used. You also need to think aboutif an associated domain name is available and if the name is protectible as a trademark. Read more »

Intellectual Property Basics – Selecting a Trademark

To protect the Intellectual Property rights you will build up in your business name, there are a few general rules of thumb to keep in mind when choosing the name. The name or trademark should be short and distinctive, generally three syllables or less. The new trademark should be easy to spell, pronounce and remember. Read more »