What (and Who) Do Trademarks Protect?

Understanding how trademarks work is often confusing.  The primary issue in trademark law is the “likelihood of consumer confusion”.  This means that a trademark protects consumers from becoming confused about who is selling them stuff.

Put another way, you are granted a trademark, but the law is designed to protect your customers and potential customers so that they do not believe they are receiving your stuff when a competitor marks his stuff to look like your stuff.

Actual confusion occurs when your customer calls your competitor (or vice versa).

For example, the two bags above look very similar and can cause a consumer to be confused as to whether or not the authentic Louis Vitton bag on the left with the counterfeit bag on the right.

To determine if there is confusion you should always considers the trademark (the words, logo, design or other elements) and what is being sold.  There are 49 separate classes of good that cover all goods and services internationally. Unless a mark is very famous, most consumers will not be confused by the same mark being sold for very different goods.  So, “Stuff” could be a brand for “computer services” and “Stuff” could also be a brand for “pillow making equipment”, without any likelihood of confusion.

There are four classes of trademarks: Fanciful, Arbitrary, Descriptive and Generic.  Generic terms, such as paper for paper goods, can never be trademarked.  Descriptive terms can be trademarked, but it is difficult.  Like Mr. Clean for cleaning products.

Arbitrary marks are very protectable, like “Apple” for selling computers, because there is no connection with the word and the product.

Fanciful marks have the greatest protection.  They are basically made up words like Pentium, Xerox, Polaroid.

 

To protect your mark, you, not the government, must police your mark.  That is why you hear and read stories about companies, such as Disney, Rolls Royce, Cadillac and others sending cease and desist letters to individuals or other companies that use the marks without permission.  This use can cause confusion and could potentially lead to the mark becoming generic and no protectable.  This has happened to some famous marks, like aspirin, so you need to be diligent in protecting your mark once you receive a registration from the trademark office.

How Can I Help?

If you need help to file a trademark or protect your brand from infringement, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

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