Intellectual Property: Trademarks

I took a poll on my Instagram requesting that people choose which area of intellectual property (“IP”) they would be most interested in reading about in my next blog post. Before I get into the Instagram poll results and discussion of the chosen area of intellectual property, it is important to first understand what intellectual property is.

Generally, and broadly speaking, intellectual property is an area of law that protects intangible assets that are the product of someone’s intellectual creation. IP is widely regarded as the creations such as inventions, literary and artistic works, designs, and symbols, names, images used in commerce. The areas of IP are wide but for my blog post I wanted to focus on the three major categories: copyright, patents and trademarks.

I will illustrate IP by way of a few simple examples. Your favourite hit song on the radio; that is likely protected by intellectual property, specifically copyright. Your favourite book; copyright again. Your favourite sculpture, (one of my favourite sculptures for example is the beautiful naked man and woman in Emancipation Park in New Kingston) copyright again. The genius invention of the female bra; was once a patent. Generally, patents are granted to the inventor of innovative technology and are granted for subject matter ranging from software to biotechnology to drugs to mechanical inventions to processes

You will notice that all these things share the commonality of a spark of the mind, some degree of imagination, genius, or laborious thought. Trademarks are a bit of an anomaly from this definition of IP as trademarks have largely nothing to do with any of these things. Trademarks have very little to do with actual creativity and more to do with identifying and distinguishing between brands so that consumers will not get confused or deceived in some manner. Trademarks are also about protecting the reputation and goodwill established by the owner of the mark. This brings me to the surprising results of my Instagram poll. The response of the poll was a resounding interest in trademarks!

I expected that people would be more interested in copyright as perhaps the purest form of IP in that copyright emphasizes at least a minimal amount of creativity and is concerned with the protection of these creative intellectual creations. You will notice that copyright covers many of the popular forms of creative pursuits which I guess is why I was half expecting copyright to be the victor in the poll battle. However, this was not the case, trademark arose the victor!

So, here are some basic things to know about trademarks.

What are trademarks?

As I mentioned a bit previously, very generally speaking, trademarks are concerned with the right to adopt and use a symbol to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons. Trademark issues generally arise in the competitive marketplace. Trademark is perhaps King in the United States, some writers equating brands as having almost religious significance[1] There are so many brands in the US, brands that have developed international recognition. Coca-Cola, Apple, Disney, Nike, Adidas, all of which are governed by trademark law.

In the US, trademarks rights are a both common law and statutory. A person who owns a mark and sells goods or property under this mark, to the exclusion of use by all other persons, has been long recognized by the common law. It is regarded as a property right for the violation of which damages may be recovered in an action at law. For those who may not know common law generally refers to law made over time by the judiciary, ie, judge made law.  Put in another way it is the body of law made from judicial decisions of courts. When the judiciary makes law, it creates precedents that then become binding and legally enforceable. The common law was named this way because it was “common” to all the king’s courts across England. The British Empire later spread the English legal system to its colonies, many of which retain the common law system today. These “common law systems” are legal systems that give great weight to judicial precedent, and to the style of reasoning inherited from the English legal system. The United States and Jamaica are two countries that have inherited elements or variants of the common law system from England.

When I say the trademarks are a common law right then I am saying that, in the US, “this exclusive right was not created by the act of Congress and does not now depend upon it for its enforcement”. Trademark registration (covered in statute) is an important part of trademark law, but trademark rights may exist without registration. Statutes are created by Parliament or Congress. (As a little aside: both the Judiciary and the Legislative are two of the three separate branches of government: Judiciary, Legislative and Executive.)

The trademark statute in the US is called the Lanham Act, codified into the US Code.

In Jamaica, trademark registration is very important. An application to register a Trademark must be filed at the Trade Marks, Designs and Geographical Indications Directorate of the Jamaica Intellectual Property Office (“JIPO”). Jamaica focuses primarily on statute and not common law when it comes to trademark rights. Trademark rights derive from registration of the mark following the statutory requirements.

The final thing I will say about trademark law in the US is its interesting categorization of the types of marks. An important factor in trademark law is the idea of distinctiveness, ie, a trademark may be eligible for registration, if it performs the essential trademark function, (like identifying the source of the product) and has distinctive character.

The U.S. case Abercrombie and Fitch v Hunting World created different classes with varying degrees of trademark protection, referred to as the spectrum of distinctiveness. I do not usually cite Wikipedia but most of these definitions I got from Wikipedia and they are decent.

The spectrum goes as follows:

1. Generic: A generic term is a common name for the products or services in connection with which it is used, Wikipedia provides the example of “salt” when used in connection with sodium chloride. Generic terms may generally be used by anyone—including other manufacturers—to refer to a product. Generic marks have no distinctive character and can never be afforded legal protection.  There are also marks that were once registered trademarks but have been genericized and have lost their legal status due to becoming generic terms, for example Aspirin (in the US) or Escalator. Both the terms Aspirin and Escalator were once registered trademarks however have become generic.  In everyday common usage, people may refer to escalators as moving stairs despite who may have actually manufactured the moving stairs.  

• Descriptiveness:  Descriptive is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. Merely descriptive does not function as a mark, however descriptive marks can be protected if they have a secondary meaning. Secondary meaning is acquired distinctiveness which is evaluated by how strongly people associate the mark with a specific brand name in the marketplace. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Such a mark is very unlikely to be granted registration, as the phrase merely describes an attribute of the product (the attributes of ice cream is to be cold and creamy).

• Suggestive; suggestive marks tend to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. For example, “Mustang” creates a suggestion of speed and tries to convey a meaning like speed however it may take some time for the consumer to make the connection.

• Arbitrary; an arbitrary trademark is usually a common word which is used in a meaningless context. Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration and the scope of protection is broad. Perhaps the most popular or well-known arbitrary trademark is the trademark “APPLE” for computers.

• Fanciful; A fanciful trademark is on the face of it registrable and comprises an entirely invented or “fanciful” sign. For example, “KODAK” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Other examples of invented words are GOOGLE for online services, ROLEX for watches, and XEROX for copiers. A fanciful mark is a coined term and is therefore inherently distinctive, making it the mark the most guaranteed to be approved for trademark registration. It also enjoys the widest scope of protection.

There is much more that can be said about trademarks! I will end it here for now with a little conclusion of what was said:

• Trademarks, unlike copyrights and patents, are not concerned with creativity. The general focus is on using symbols, words images, colours etc, to identify the manufacturer of a good. Who is behind the product? Who is the source of this product?
• TM protection exists to protect consumers from confusion with other products in the marketplace. It also protects the reputation and goodwill developed by the owner of the mark from infringing third party users.
• In the U.S, TM rights are both common law and statutory. You therefore have unregistered ‘common law’ trademarks and registered trademarks. Having a registered trademark confers many advantages to the mark owner.
• The types of marks in the US are generic, descriptive, suggestive, arbitrary and fanciful. Generic terms have no protection under the law, whereas fanciful terms are on the face of it registrable and give the widest scope of protection. If you are creating a brand then, it may be best to create an entirely new word for your goods or services OR go the arbitrary route and use a dictionary word in such a way that is entirely unrelated to the dictionary meaning of that word. What about, for example, HIBISCUS for piano services? That is my stab at a arbitrary mark lol.

I hope this post was not too long and boring, I hope someone out there gleaned at least one thing useful and informative from this post. What are your thoughts on trademarks, what are some of your favourite brands? What is your favourite trademark in the entire world? Follow me on social media to participate in my next poll as to what we will discuss next! 

Thank you for reading!

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[1] “You can break 6 of the 10 commandments in America, but please, Thou Shalt not Violate the Brand.” — David Brooks, No Sex Magazines Please, We’re Wal- Mart Shoppers, N.Y. TIMES, May 11, 2003, at WK 14. Mart Shoppers, N.Y. TIMES, May 11, 2003, at WK 14.