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Legally speaking with Bob Mionske – Protecting your brand

By Bob Mionske

Dear Bob,
I build frames as a side business/hobby. I have a small logo that Iput on the frames that identifies my business and name. I noticed a ratherlarge frame manufacturer is now using an almost-identical logo onone of its new models. What does the law say about this?
B.B.,
New JerseyDear B.B.,
Trademarks such as the one you place on your frames have been in existencesince people began to trade goods. The merchant class began “marking” theirwares as a way to advertise their goods, establish manufacturing originationand guarantee quality. Of course, rival producers and unscrupulous competitorsquickly realized that copying the mark would help them sell their wares.These mark imitators were perhaps the first trademark infringers. That,of course, creates a problem because as consumers we look to these marksto indicate the quality of products such as computers, automobiles, food,clothing and, yes, even bicycles.These days, we look to Intellectual Property (IP) law to determine ownershipand use of trademarks. IP law is a general term for all statutes, governmentalegulations and court decisions that together determine intellectual lawproperty rights. The main categories of intellectual law are trade secretlaw, copyright law, trademark law and patent law. It seems everyone knowsa bit about patents and perhaps this explains the common misuse of theword “patent” to describe intellectual property rights that are actuallytrademark, copyright, trade secret, trade dress or some other area of IP.While I cannot answer your question directly, I can offer an overviewof some of the basic considerations to keep in mind. If you feel your IPlaw rights are being violated you should contact an attorney who specializesin IP law in general and trademark law in particular.Your facts involve a “mark” that you place on your product, so we needto look to the trademark side of IP law. Trademark law protects the distinctivenames, designs, slogans, symbols, logos, colors, etc., used by businessesto promote and sell their goods or services in the market place. Generallyspeaking, trademark law is encompassed in federal law under the LanhamAct. Additionally, most states offer trademark protection.First lets see if your mark is one that can be protected. Youdidn’t describe the nature and quality of your trademark. This isvery important and the final determination may rest upon this information.Not all trademarks are protected under trademark law. The more inherentlydistinctive your mark, the more likely you can rely on legal protectionto stop others from using the same or similar mark on their products.Examples of inherently distinctive marks include unique logos or symbolssuch the eye symbol used by CBS or the Bear on a can of Hamm’s beer.Alternately, descriptive terms and Generic marks usually cannot be protected.Descriptive terms are words that describe the product or service such as“Clean Windows: for a window cleaning business or “Spicy Salsa” for a jarof salsa. Generic marks are marks that are the equivalent of common wordsassociated with or used to describe the product itself. An examples ofa generic marks would be a window scraper called “The Scraper.” You canuse the name, but cannot stop others from using the name as well, in otherwords, you have no intellectual property rights to the name Scraper.Sometimes a mark becomes so associated with the product or service thatthe mark losses its protection. Examples of companies being too successfulinclude Aspirin, Kleenex, and Escalator. These were all originally distinctivemarks that lost their trademark protection by becoming generic.The next step is determining if you own the mark you are using. A trademarksearch can be used to discover potential conflicts between parties whoare using or intending to use a particular mark. There are professionalagencies that specialize in conducting such trademark searches. Typically,they will check with both the federal and state registers for identicalor similar marks. If you want to do this yourself, you can conducta search at any Patent Depository and Trademark library in the U.S..Often owners of a mark will put a “™” next to their mark to put everyoneon notice that they are claiming ownership of the mark. This is notlegally required and using the mark itself is what matters. Othermark owners will put a “®” next to their mark to indicate ownership. The “®”should only be used if the mark has first been registered with the U.S.Patent and Trademark office (PTO).The U.S. Patent and Trademark Office (PTO) is the administrative bodythat determines ownership in contested cases. Typically, the firstto use the mark in commerce owns the rights to the mark. However,it is also possible to register a trademark with the PTO by filing an intent-to-use (ITU) trademark registration and this filing date will be considered “firstuse” in many cases. Keep in mind that it is possible to lose theright of exclusive use of a mark by abandonment. Failing to protest theunauthorized use of a mark by others can fall under the abandonment rubric.The remedy for infringement of trademark, whether registered with thePTO or not, depends on many factors. The court will look to whether consumerswill actually be confused by the dual use of the marks, where geographicallythe respective marks are being used and whether the marks are being usedon competing goods. A party bringing an infringement case to the PTO mustshow that the improper use caused a loss in the market or that the competitorgained economically from the improper use.
Good luck!
Bob


Now read the fine print:


Bob Mionske is a former competitive cyclist who represented the U.S. at the 1988 Olympic games (where he finished fourth in the road race), the 1992 Olympics, as well as winning the 1990 national championship road race.

After retiring from racing in 1993, he coached the Saturn Professional Cycling team for one year before heading off to law school. Mionske’s practice is now split between personal-injury work, representing professional athletes as an agent and other legal issues facing endurance athletes (traffic violations, contract, criminal charges, intellectual property, etc).

If you have a cycling-related legal question, please send it to info@bicyclelaw.com. Bob will answer as many of these questions privately as he can. He will also select a few questions each week to answer in this column. General bicycle-accident advice can be found at www.bicyclelaw.com.

Important notice:
The information provided in the “Legally speaking” column is not legal advice. The information provided on this public web site is provided solely for the general interest of the visitors to this web site. The information contained in the column applies to general principles of American jurisprudence and may not reflect current legal developments or statutory changes in the various jurisdictions and therefore should not be relied upon or interpreted as legal advice. Understand that reading the information contained in this column does not mean you have established an attorney-client relationship with attorney Bob Mionske. Readers of this column should not act upon any information contained in the web site without first seeking the advice of legal counsel.