Choosing a trademark may be more difficult than you think. You might be focusing on the catchiness of the name, but there are legal considerations that should be considered as well, such as the possibility of infringing some other trademark.
People often think that if they aren’t aware of anyone else using the same trademark, it’s okay. They may rely on a quick search of the US Patent and Trademark Office database for the exact mark.
One problem with relying on a search like this is that a mark is protected by trademark law whether or not it is registered. In addition, a trademark doesn’t have to be identical to another mark in order to be found infringing.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and the channels of sale.
“Dilution” is another potential claim you should know about before you choose your trademark. Dilution is when a famous mark’s distinctiveness is “blurred” by association with a similar mark or when a famous mark’s reputation is tarnished by association with a similar mark. Dilution claims do not require proof of likely confusion.
Even if you already know the mark you’re considering is very similar to someone else’s, you might think it’s okay because you’re using it in a humorous way. Unfortunately, this is not always true, as shown by a recent case decided by the US Supreme Court.
VIP Products LLC makes and sells a squeaky dog toy designed to look like a bottle of Jack Daniel’s whiskey, except that the toy says “Bad Spaniels” rather than “Jack Daniel’s,” “The Old No. 2 On Your Tennessee Carpet” rather than “Old No. 7 Brand Tennessee Sour Mash Whiskey,” and “43% poo by vol.” rather than “40% alc. by vol.”
Jack Daniel’s Properties, Inc., unamused, demanded that VIP stop selling the toy. Instead, VIP filed a lawsuit, seeking a declaratory judgment that these toys don’t infringe Jack Daniel’s rights.
VIP argued that to prove trademark infringement, Jack Daniel’s had to show that either VIP’s use of Jack Daniel’s trademarks had “no artistic relevance to the underlying work” or that its use “explicitly misleads as to the source or the content of the work.” This is known as the “Rogers test.”
It also claimed that because its toy was a parody of the famous Jack Daniel’s bottle, it did not dilute Jack Daniel’s trademarks.
Last week, the US Supreme Court unanimously ruled against VIP on both of its arguments, though it returned the case to the lower court to determine whether VIP’s toy infringes or dilutes Jack Daniel’s marks.
First, the Supreme Court held that the Rogers test does not apply when an alleged infringer uses the mark as a designation of source for its own goods. In other words, the test for infringement remains whether consumers are likely to be confused. This is because the purpose of trademark law is to protect consumers from being confused about the source of goods and services.
With respect to the trademark dilution claim, the Supreme Court held that this “parody” is actually a commercial use of Jack Daniel’s marks because VIP is using the marks as a designation of source for its own product, the Bad Spaniels toy.
In fact, the applicable statute makes clear that the parody exception applies only when the mark is used “other than as a designation of source for the person’s own goods or services.”
To help avoid problems like this when you choose a trademark for your product or service, obtain the opinion of an experienced trademark lawyer before concluding that you can rely on a parody defense.
Further, anyone choosing a new trademark should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your trademarks.
Photo by Jonathan Ybema on Unsplash
