INTRODUCTION:
Surfboards, fins, wetsuits, t-shirts, swimsuits, sunglasses, sunscreen, bottled water, sandals, umbrellas, towels, volleyballs, coolers… sounds like another summer day at the beach! However, for the savvy entrepreneur, these beach accessories/necessities are the breeding ground for commercial exploitation. Not far behind in this petri dish of sand consumption and capitalism is the need to select a trademark by which the exploited item will be known, for example, HOBIE® surfboards, O’NEILL® wetsuits, sunglasses OAKLEY® sun, BAYWATCH® wristwatches, MIKASA® volleyballs, and COPPERTONE® sunscreen and suntan lotions. This article will highlight some famous trademarks in the sun, sand and surf and will briefly address the legal and business issues regarding the selection, authorization and registration of such trademarks.
TRADEMARKS DEFINED
A trademark (or brand) is defined as any word, symbol, slogan, or device (such as a design), or a combination thereof, used by a manufacturer or merchant to identify its products or services and distinguish them from those manufactured. , sold or repaired by others. COPERTONE® and SPEEDO® are excellent examples of ‘word’ marks. “SO DON’T BURN” is an example of a ‘slogan’ mark. A logo or design such as the famous COPPERTONE girl and dog is an example of a ‘design’ mark. An example of a service mark is ESPN® for “sports programming, reporting, and entertainment services provided via television.” A service mark such as ESPN® can also be exploited and serve as a trademark (ie, for clothing (shirts, hats, sweaters, vests); pre-recorded videotapes; beach bags, beach towels, etc.). In the US, trademark rights are acquired through use (eg, by selling or carrying your product in commerce with the mark attached or on a label). Also, under certain circumstances, the “color” may be a trademark. Examples outside of the surf/beach industry are “pink” for fiberglass insulation and “green” for dry cleaning pads.
SELECTION AND LIQUIDATION
Selecting a brand is the first step a merchant takes in creating an identity for their surfboard, swimwear, etc. Licensing a trademark is the process of determining whether or not the trademark is available and whether or not someone else is using it as a trademark. The importance of this authorization process cannot be overstated. Ignoring this vital step can lead to a multitude of problems and expenses. In brand authorization, a two-step process is suggested. The first step is to conduct an online computer trademark search. This online search is made even clearer by identifying the products you are looking to use or sell, as trademarks are categorized by classification. In the United States, the federal government has adopted the International Classification system. Toys, sporting goods, volleyballs with swim fins, body boards, and surf boards are included in Class No. 28. Bathing suits, clothing, and beachwear are in Class No. #25. Backpacks, beach bags, and gear bags are in Class #18. Posters, magazines, books, trading cards and other printed materials and publications are included in Class #16. Video tapes, audio tapes, video game software (including software downloadable over a global computer network), surf helmets, and skateboards are in Class #9. So, if you plan to sell surfboards, clothing, and gear bags, you’ll want to do an online search for Class #28, 25, and 18. Searching online is often referred to as a “knock-out” search. . This is because searching online is a quick and relatively inexpensive way to determine if the mark is already being used. These online searches are often available from public libraries, commercial search companies, and law firms.
If your trademark appears to be conflict-free after conducting an online search, the next level of search is the full search, which is obtained from commercial search firms such as THOMSON COMPUMARK and CORSEARCH. The full search will search the federal trademark database at the Patent and Trademark Office, state trademark registries, common law sources such as Dun & Bradstreet listings and telephone directories, as well as domain name registrations from Internet. If your brand still appears to be conflict-free after a full search, then you can be fairly confident that you can adopt and start using your brand. WARNING: These searches are not guarantees of the absence of conflicting trademarks, but do allow a merchant to make a more informed decision in the authorization of a trademark.
FEDERAL REGISTRY OF TRADEMARKS
For maximum protection, it is best to register your trademark or service mark. In the US, your greatest rights can be obtained with a federal trademark registration. If you only do business within one state, for example California, it is possible to register your trademark with the California Secretary of State. However, if you intend to do business across state lines or in foreign trade (or if you are already doing business across state lines or in foreign trade), then it is wisest to file an application for federal trademark with the US Patent and Trademark Office located in Alexandria, Virginia.
The application for registration of a trademark must be filed in the name of the owner of the trademark. The applicant must submit: (a) a written request; (b) a drawing of the mark; (c) the required filing fee (which is currently $325 per mark per class). The applicant will also incur attorney fees, usually a flat fee, if an attorney is retained to file the application(s). Trademarks registered with the Federal Government, as indicated above, are categorized through a classification system that corresponds to the type of merchandise that is intended to be registered. For example, MOREY® and MOREY BOOGIE® for body boards, CHURCHHILL® swim fins, and MIKASA® volleyballs are all in Class #28. ESPN® service mark is in Class #41; QUIKSILVER®, HANG TEN® and OCEAN PACIFIC® for apparel are in Class #25; BILLABONG® and BODY GLOVE® wetsuits are also in Class #25; REEF BRAZIL®, NIKE® and ADIDAS® for sandals and footwear are also in Class #25; SPEEDO® and TYR® gear bags and backpacks are in Class #18; SURFER® magazine, VOLLEYBALL® magazine and SURF BUSINESS(TM) are in Class #16 for publications.
After registering the mark in the US, it is important to notify this fact by placing the registered trademark symbol, “®”, next to the mark. Before registration, it is also recommended to use the symbols “TM” (for registered trademarks) and “SM” (for service marks).
The main advantages of a federal registry include:
Nationwide “constructive notice” of registrant’s trademark ownership claim. Basically, this eliminates the good faith defense of an infringer who claims to have had no actual knowledge of the trademark.
The record is also evidence of (a) the validity of the record; (b) the ownership of the mark by the registrant; and (c) the registrant’s exclusive right to use the mark in commerce in connection with the goods or services.
Registration also entitles the registrant to (a) file a lawsuit for trademark infringement in Federal Court; (b) prevent the importation of merchandise bearing an infringing mark; and (c) use the registration as a basis to register the same mark in certain foreign countries.
Trademark registrations are valid for 10 years, subject to certain use and filing requirements, and are renewable every 10 years, also subject to continued use and renewal filing requirements.
REGISTRATION OF FOREIGN TRADEMARKS
If your product is distributed internationally, then you must, in general, register your trademark(s) in each country where you plan to do business or are doing business. It’s so expensive? Yes! On the other hand, the alternative is the possible loss of the ability to sell your product in those countries where a third party has previously filed an application for your trademark(s). Therefore, foreign trademark protection is generally obtained on a country-by-country basis. However, unlike in the US, trademark rights in many foreign countries are obtained through registration rather than use. This further requires the importance of applying for trademarks in foreign countries as soon as possible.
A notable alternative to the typical practice of registering trademarks on a country-by-country basis is the new Community (European) Trademark Application which has been available since January 1, 1996 for filing applications. By obtaining a Community-wide trademark registration, the owner of a trademark registered in the US, for example, can save time and money that would otherwise be spent registering a trademark in each European country separately, and, with luck, you could get maximum protection for your brands in foreign markets. at minimal cost.
CONCLUSION
Whether you are selling products or services, it is very important to know your trademark and/or service mark and its value. In a competitive business environment, the potential for financial loss is tremendous if trademark rights are not acquired, evaluated, protected and maximized. While this article does not purport to cover all the intricacies of trademark law, it has hopefully helped shed some light on this area of the law that is of utmost importance to the business owner.
© Copyright 2008, William E. Maguire. All rights reserved.
