Protecting Your Trademark

You may have read the recent news reports discussing the dispute between the Tillamook County Creamery Association (“TCCA”), producer of Tillamook Cheese, and Tillamook Country Smoker, Inc. (“TCS”), producer of beef jerky. Tillamook County Creamery sued Tillamook Country Smoker for trademark infringement arising from TCS’s use of the name Tillamook. The court ruled that both companies could continue to use the name Tillamook, but only because TCCA waited too long to challenge TCS’s use of the name.

This is an intriguing story to most people because we assume that any business from the city of Tillamook, Oregon or the county of Tillamook should be entitled to using the business’s geographic location in its business name. But business people should also pay attention to this story for the lessons that it teaches regarding protecting trademarks.

Before you can worry about protecting a trademark, you need to know what a trademark is. A trademark is a word, combination of words, design, color, symbol or shape that identifies a product or service as originating from a particular source. (When a mark identifies a service it is called a service mark). A trademark may or may not also act as a trade name or business name. If a name merely identifies a business, it is not a trademark. It only becomes a trademark once it is used to identify goods sold by that business or services provided by that business. For instance, Microsoft Corporation is a business name, but once the name Microsoft is used on software or a computer, it becomes a trademark.

People often mistakenly believe that registering an assumed business name with the Secretary of State protects any trademark rights that they may have in that name. The purpose of registration of a business name with the state is primarily to establish a public record of who is operating a business under that specific name. It is true that others may not register the same name with the state, but this is only to keep the businesses within the state distinguishable from one another.

The first step in protecting a trademark is to choose the mark carefully. Trademarks are afforded different levels of legal protection based upon the uniqueness of the mark. There is a recognized hierarchy of types of trademarks:

Fanciful – made up and original mark (e.g. Kodak, Xerox);
Arbitrary – a recognized word but with no relation to the product or service (e.g. Apple Computers, Penguin Books);
Suggestive – a mark that suggests the characteristics about the product or service (e.g. Greyhound Bus);
Descriptive – a mark that describes something about the product or service (e.g. The Weather Channel);
Generic – the commonly used name for the product or service (e.g. Chair, Television)

Words or logos that are generic can never operate as a trademark. Descriptive marks are not afforded legal protection until consumers begin thinking of the product or service offered by a specific business in connection with that business’s trademark. Suggestive, arbitrary and fanciful marks are afforded the most legal protection.

Many business people do not fully appreciate the value that they have in the trademark of their business. Once a word or logo becomes a trademark, it has rights that have value to the owner of the trademark. These trademarks are called “common law” trademarks because registration of the mark has not been obtained. Once a trademark is created, the owner of that mark has the ability to protect its rights in that mark if it can prove that its use is superior to other’s use of that mark or a similar mark. However, common law trademarks are limited in their geographic scope to the specific area where the mark is used. Moreover, the law does not give the owner of a common law trademark the number of remedies for infringement that it gives to an owner of a trademark that is registered with either the state or federal government.

Registration of a trademark with the state provides the owner of the registration the exclusive right to use the registered trademark within the state. The owner also has the ability to bring an action against anyone who uses the same or a confusingly similar mark within the state in such a way as to cause confusion among consumers. This typically means that the goods or services on which the similar mark is being used are similar to the goods or services sold under the registered mark.

State registration is a quick and inexpensive process, but is limited because the protections afforded state registered marks do not extend beyond the borders of the state. In this day of the internet and interstate commerce, state registration may not sufficiently protect the value contained in a trademark. Most trademark owners should register their mark with the U.S. Patent & Trademark Office (“PTO”).

Registration of a trademark with the PTO provides the owner of the registration with nationwide rights in the trademark. This includes the rebuttable presumption of ownership of the mark and the right to use the mark. A federal registration preempts any state registration of the same mark. In addition, the same or a similar mark can not subsequently be registered with the PTO. Federal law provides additional remedies for infringement to owners of a registered trademark that are not available to common law or state registered trademark owners. Federal registration also entitles the owner to use the ® symbol with their mark, putting others on notice that you have a registered mark and the ability to invoke the remedies provided by federal law.

Federal registration is a longer process, taking longer than a year to complete, and it is more costly than state registration. But the rights and protections obtained with federal registration are worth the additional time and cost. When contemplating federal registration, business owners often do not recognize the value that is added to the mark once it is registered with the PTO.

Lastly, whether you have a common law trademark or a trademark that is registered with the state or federal government, you should be protecting your trademark by policing the marketplace. This means watching the market for others who may be using the same or a similar trademark and notifying those people about your trademark rights. In the Tillamook case, this is where TCCA failed. It was not diligently protecting its rights in its trademark by preventing others from using that mark.

Please contact our office if you have any questions about protecting your business’s trademark.