CHOOSING A TRADEMARK
One of the most common encounters that trademark lawyers experience is when clients have an idea for a name that they want to “trademark” – only to have the client provide a proposed mark that is merely descriptive of the goods or services that the client wants to identify with the trademark.
While people like to choose descriptive marks in order to help consumers identify immediately their products and services (i.e., they somewhat describe the nature of the goods or services), these clients soon learn that the descriptive nature of such trademarks actually make them inherently poor trademarks because, absent a showing of acquired distinctiveness, a trademark owner cannot prevent others from using descriptive terms to describe such goods/services. When deciding on a trademark, it is important to keep in mind that the stronger the mark is, the greater scope of protection it will receive.
THE TRADEMARK STRENGTH SPECTRUM
A trademark’s strength is classified along a spectrum of increasing inherent distinctiveness. From strongest to weakest, marks are classified as arbitrary or fanciful, suggestive, descriptive, and generic.
Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark – words that have no known meaning in the language (e.g., XEROX, KODAK, ZANTAC). Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; RAZOR for floor cleaning machines).
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services (e.g., CRAZY GOOD for toaster pastries, REAL MASH for processed potatoes, CHOW for cooking magazine). In contrast, a descriptive mark is one which describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services (e.g., BRAIN GAMES for books and magazines containing games, FORMALDEHYDE-FREE for building insulation, VEGAS.COM for a website providing tourism information about Las Vegas).
The fine line between suggestive and descriptiveness is an important one because while suggestive marks can be registered by the U.S. Patent and Trademark Office (“PTO”) on the Principal Register, descriptive marks are refused registration on the Principal Register unless the applicant can show that the otherwise descriptive mark has acquired distinctiveness among the consuming public as a unique source identifier for applicant’s specific goods or services.
The rationale for the PTO’s unwillingness to refuse registration of descriptive marks is that trademark law does not want allow a mark owner to inhibit competition in the sale of goods and services by claiming an exclusive right to use a particular descriptive term in connection with such goods and services. By allowing a mark owner to claim exclusivity to a particular term, absent a showing that the term has come to be recognized by the public as identifying exclusively the mark owner, would allow such mark owner to deprive other competitors of the freedom to use such terms to advertise and describe their own goods and services.
Finally, generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services (BASKET for baskets, CLOTHING for clothing). These terms can never be claimed as trademarks regardless of how much evidence a mark owner can show regarding acquired distinctiveness.
So when deciding on a word, phrase, or slogan you wish to claim as a trademark in connection with your goods and services, it is important to keep in mind where the proposed mark falls along the spectrum of distinctiveness in order to assess the inherent strength of the mark against third party infringers. As much as you may want to use a mark that helps immediately identify the nature of your goods and services, you may ultimately be doing a disservice to your business’s ability to claim exclusive rights to use such mark in connection with your goods and services. While choosing an arbitrary and fanciful mark may require more of a marketing effort in order to have consumers associate the mark with your specific products and services, such mark will be afforded a broader scope of protection against third party infringers who market similar goods/services using a mark which is identical or confusingly similar to your arbitrary and fanciful mark.
WHAT CONSTITUTES “FAIR USE” OF COPYRIGHTED MATERIAL?
There has been a lot of discussion recently about a Las Vegas company named Righthaven, LLC. The company has been filing numerous copyright infringement lawsuits against websites and bloggers based on the excerpting of all or part of copyrighted news articles which originally were published in the Las Vegas Review Journal – and always without any kind of notice to the website regarding the infringing content. The lawsuits have brought the forefront the issues of copyright infringement and what constitutes “fair use” of copyrighted material.
Many people who post content online may feel that they can lawfully post all or part of an article originally published in a newspaper so long as appropriate credit to the original source is given (as well as possibly a link back to where the article appeared on the Las Vegas Review Journal’s website). Such thinking confuses plagiarism with copyright infringement. While giving proper credit to the original source may absolve a third party of claims of plagiarism, such actions may constitute copyright infringement.
These same people may also be under the impression that their posting of such content (with proper credit and link back) constitutes a so-called “fair use” of such content. While copyright law does protect certain uses of a copyrighted work as “fair use” – for example, when a work is reproduced for purposes of criticism, comment, news reporting, teaching, scholarship, and research – whether a particular use constitutes “fair use” actually involves an analysis of several factors used by courts.
The parameters outlining what constitutes fair use come directly from the Copyright Act itself (17 U.S.C. §107):
T]he fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include —
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
One factor often overlooked by many website operators is the commercial nature of their websites. Think your website is non-commercial – well, if you have pay-per-click ads being displayed on your website and you are generating some revenue from the website, then your website is more commercial than you think.
So what is a website to do in order to avoid committing copyright infringement if you want to mention a particular newspaper article on your website (or if you are a third party that wishes to post a newspaper article in a forum on a website). While different newspapers may have different policies about how much of their article can be used, the Vice President and General Counsel for the company which owns the Las Vegas Review Journal has provided some guidance for third parties regarding how to properly cite Las Vegas Review Journal articles – and the advice would certainly be applicable to any newspaper articles. Mr. Hinueber is informing interested parties that the appropriate procedure for using stories published in the Las Vegas Review Journal is to post the headline of the story and then the first paragraph with a link to the original story.
Accordingly, if you wish to quote from a Las Vegas Review Journal story on your website – and you do not otherwise obtain a non-exclusive license from the Las Vegas Review Journal to post all or part of the story on your website – then you should post only the headline, the first paragraph of the story, and a link to the Las Vegas Review Journal’s website where the original story can be found. The following example illustrates what is acceptable to the Las Vegas Review Journal:
$145 MILLION BUDGET SHORTFALL: Union proposes pay cut for all employees in Clark County School District
By JAMES HAUG LAS VEGAS REVIEW-JOURNAL
A 1.5 percent pay cut by all 38,500 employees in the Clark County School District would prevent layoffs and resolve the budget crisis for the 2010-11 school year, according to a proposal from the union representing school principals and administrators.
The rest of the article can be viewed by clicking here.
An alternative approach would be to only excerpt a small portion of the article – do not copy and paste the entire article, but instead quote just the part that is most relevant to the point you are trying to make on your own website. The less you quote, the more likely such use will be considered fair use.
Finally, copyright law only protects a newspaper’s unique expression of newsworthy events (i.e., the particular way that one of its employed writers describes a news event) – a newspaper cannot claim exclusive copyright rights over news events themselves. As such, any person is always free to review a story from a newspaper article and then, in his or her own words, describe or recount the factual details of the news story that the person learned from the newspaper article. So long as there is not a substantial copying of the precise, unique copyrighted written text that the newspaper used to describe the news event, then the newspaper will have a much more difficult time making out a case of copyright infringement.