Intellectual Property Lawyers Based in Boston and Serving Clients Worldwide
Trademark law covers the use of devices used by manufacturers and merchants to identify and distinguish their goods from those made or sold by others. The trademark device can be a logo, word, symbol, or phrase, or the shape of a product. While you can obtain common law trademark rights simply by using a trademark, greater rights are available if you register the mark with either the federal government or your state government. Trademarks are infringed when someone else uses the device such that confusion about the source of the goods is created. If you are concerned about protecting your trademark or enforcing your rights through litigation, you should contact the Boston trademark lawyers at Chavous IP Law. We represent clients throughout the country and across the world in trademark, copyright, and patent matters.
Understanding Your Trademark Rights
Trademarks identify and distinguish products. For example, the word “Google” is a trademark. The double arches of a yellow “M” against a red background form a trademark for McDonald’s. An image of an apple with a bite taken out of it is the Apple trademark. Trademark protection has even extended to the unique shape of the Coca Cola bottle in the form of “trade dress.” Trade dress protection is not available for shapes or colors that confer a functional advantage for a product. Marks can also be used to identify services, and they are then called service marks.
Trademarks are protected under federal and state laws. The primary federal statute governing trademarks is the Lanham Act. State common law protection is still available, and it varies from state to state. Under federal law, there are four categories into which a mark may fall: (1) descriptive, (2) generic, (3) suggestive, and (4) arbitrary or fanciful.
Descriptive marks are those that directly describe some aspect of the product. For example, “Holiday Inn” is a descriptive mark. Descriptive marks are not considered inherently distinctive, so the law only protects them to the extent that they have gained a secondary meaning. A secondary meaning is acquired if consumers primarily link the mark to the manufacturer or purveyor rather than the product that is described. This question can be complicated, but a trademark attorney at our Boston firm can examine whether your mark may have acquired a secondary meaning.
Generic marks are marks describing the general category of products to which a particular good belongs. For example, the term “Soda” would be generic if it were used. Generic marks do not get protection. If a term that was not originally generic becomes generic over a period of time, it can lose trademark protection. For example, the company C.A. Swanson & Sons had developed a prepackaged frozen dinner in 1953 and trademarked it as a TV dinner. They stopped using TV Dinner in 1962, and now any frozen meal that can be eaten in front of a screen is known as a TV dinner.
Two categories of marks are protected: suggestive marks and fanciful marks. Suggestive marks are those that suggest some characteristic of the product that they distinguish. Fanciful marks are those that have no relationship to the product that they distinguish. For example, “Google” has no relationship to the products provided by Google. Our Boston trademark attorneys can help you argue that your mark is suggestive or fanciful so that it merits protection.
You can gain the rights to a trademark by being the first to use the mark commercially or by being the first to register the mark with the United States Patent and Trademark Office, which also handles patents. Using the mark usually involves selling a product to the public with the mark attached to it. Registering the mark allows you to use the mark nationwide, even if you are selling in a limited area, except when the mark is already being used by others in a particular geographic area. There are also other benefits to registering a trademark, including the ability to bring an infringement lawsuit in federal court.
If you own a trademark, you have the right to sue others who use the mark later for trademark infringement. You will need to show that there is a likelihood of confusion. Courts evaluate likelihood of confusion by looking at how strong the mark is, how proximate to each other the goods are, how similar the marks are, any evidence of actual confusion, how similar the marketing channels are, how much caution is used by a typical purchaser, and any possible intent to cause confusion.
Trademark owners of famous marks can also bring dilution claims under federal law or common law dilution claims under state law. Dilution claims assert that another party’s use of the mark dilutes its distinctive quality through tarnishment or blurring. In addition, there may be other causes of action under state law, depending on the state.
Seek Representation From a Trademark Lawyer in Boston
Trademark law can be intricate. There are a number of defenses that may be raised against claims of infringement or dilution, and it is important to retain an attorney who can develop a strong strategy to either protect your mark or defend your use of a trademark. If you are looking for a lawyer to handle your trademark, copyright, or patent dispute, Chavous Intellectual Property Law may be able to help you. We represent clients throughout the United States and the world. Call us at 351-207-5972 or complete our online form.
- 1 Free Consultation
- 2 Over 15 years of Experience in Patent Law
- 3 We Serve Clients Throughout the U.S. and the World