Do you believe in your brand enough to protect it?
Author: Chelsea Kickingstallion, 3L Florida A&M University College of Law
So you started a business, now what?
Transforming passions, hobbies, talents, or economic ventures into a brand or business can be exciting while also intimidating for most. Protecting your brand’s rights is very important and advised to handle right at the beginning. In the world of intellectual property, trademarks are provided to safeguard your words, phrases, symbols, logos or combinations of these used in association with your goods or services. A trademark will prohibit others from using your brand identifiers, thus keeping consumers from confusing your brand with those of a competitor.
So again, why should you trademark? You should get trademarks for your brand because a trademark identifies the source of your goods and/or services, provides legal protection for your brand, and provides security from counterfeit and fraud. Most successful brands have several, if not hundreds of federal trademarks. Fun fact, Nike has the slogan “Just do it” , the Nike Swoosh and the Word ‘Nike’ trademarked, along with 250 other marks! Yep, you read that right. Registering your mark is not required, however, a federal trademark gives you broader rights and protection nationwide. You may register a trademark under a state, but this will only provide protection in that specific state. Federal trademarks are superior to state trademarks and can stop a state trademark owner from using the mark.
Below are some other major brands that have confronted trademark infringements to protect and enforce their brand's rights.
SPOTIFY V. POTIFY
A recent 2022 decision from the Trademark Trial and Appeal Board ("TTAB") ruled for Spotify in a dilution claim against Potify. Spotify is a Swedish-owned music streaming company, and Potify is an app that will allow consumers to purchase marijuana-based products from dispensaries. To prevail on a dilution claim, Spotify was required to show that (1) it owns a famous mark that is distinctive; (2) [Potify] is using a mark in commerce that allegedly dilutes [Spotify] famous mark; (3) [Potify] use of its mark began after [Spotify] became famous; and (4) [Potify] use of its mark is likely to cause dilution by blurring or tarnishment. N.Y. Yankees P'ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1502 (TTAB 2015) (quoting Coach Servs., 101 USPQ2d at 1723-24). The TTAB found that Spotify is a famous mark, and dilution is likely to occur by Potify's use. Additionally, TTAB found Spotify and Potify to be "strikingly similar" in appearance, sound, connotation, and commercial impression, as well as Spotify, being a highly recognized mark to the public. Thus, creating the public to associate both brands together.
This case provides us with a real-life example where although your brand may be unique or only used in your market, it will not prevent another similar famous brand in another market from enforcing their trademark protection against you. Hence, it is essential to do your due diligence as the brand owner and seek assistance from a trademark attorney to ensure you are not infringing on another registered mark. On the flip side, taking the preliminary steps to protecting your brand will allow you to enforce your registered mark protection from other similar or fraudulent brands.
ROLEX V. BECKERTIME
Another example is the case with Rolex against BeckerTime for advertising, promoting, and selling watches and watch parts that were not authorized or sponsored by Rolex. BeckerTime was offering products that were not genuine Rolex products. The Trademark infringement issue arose when BeckerTime modified watches by adding "aftermarket bezels" and "aftermarket bands or straps" and holding itself out as a "Certified Pre-Owned Watch Dealer" and "Rolex Certified Master Watchmaker." Rolex argues that these misrepresentations cause a likelihood of confusion in the marketplace insinuating that Rolex is affiliated with BeckerTime. A likelihood of confusion between two marks at the USPTO is determined by a review of the relevant factors under the du Pont test. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Not all the du Pont Factors will be considered relevant, and likelihood of confusion cases are reviewed on a case-by-case. Two key considerations in any likelihood of confusion analysis are (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). On January 31, 2022, the court officially ordered BeckerTime to cease selling any watches which infringe on Rolex's trademarks. The case is still pending.
Ready to Trademark?
A mark can be filed either by already using the mark in commerce or having an intent to use it. Before filing, consider conducting a preliminary web search, such as, checking websites and social media handles that may have your name or using a mark very similar to yours. Although you still may be granted the federal trademark, this step will provide an analysis on how strong your mark is or if you should prepare for a possible “likelihood or confusion” or other office action from the trademark examiner. Not only is this step important when preparing to file, but if you are using your mark in commerce, the more presence your mark has the better the outcome for registering the mark. For example, having a domain, social media handle, google profile, flyers, business cards, or any proof of use, may be submitted as specimen in your application. This will allow the examiner to further conclude that you are using the mark as you described in the application. Another important preparation tip is to know the type of mark and the strength the mark holds. Stronger marks are normally creative or unique, and can be described as either fanciful, arbitrary, or suggestive. Fanciful marks are newly invented words like “Starbucks” or “Rolex”. Arbitrary marks are words that have no association with the goods or services like “Apple”. Suggestive marks include words that suggest the quality of the goods or services. Words that are merely descriptive and generic may be considered weak for a trademark.
Having a trademark is an important business asset and a step towards building generational wealth. If you love your brand and are planning on growing and maintaining your business, investing in a trademark will avoid a possible costly rebrand in the future.
Have any questions on your particular brand? Schedule a consultation today to get started!
