At The Beach: An Introduction to Trademark Selection and Licensing
INTRODUCTION:
Boogie boards, 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 off 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® sunglasses, BAYWATCH® wristwatches, MIKASA® volleyballs, and COPPERTONE® sunscreen and tanning 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, licensing, and registration of such trademarks.
DEFINED TRADEMARKS
A trademark (or trademark) 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 made by the manufacturer or trader. , sold or repaired by others. COPPERTONE® and SPEEDO® are excellent examples of ‘word’ marks. “SO DON’T BURN” is an example of a ‘tagline’ brand. 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 “entertainment, news, and sports programming services delivered via television.” A service mark such as ESPN® may also be exploited and serve as a trademark (ie, for apparel (shirts, hats, sweaters, vests); prerecorded videotapes; beach bags, beach towels, etc.). In the US, trademark rights are acquired through use (eg, by selling or transporting your product in commerce with the mark attached or on a label). Also, under certain circumstances, “color” may be a trademark. Examples outside of the surf/beach industry are the color “pink” for fiberglass insulation and “green” for dry cleaning pads.
SELECTION AND LIQUIDATION
Selecting a brand is the first step a retailer takes to create an identity for their surfboard, swimsuit, etc. Trademark licensing is the process of determining whether or not the trademark is available and is not being used as a trademark by someone else. The importance of this authorization process cannot be overstated. Ignoring this vital step can lead to a multitude of problems and expenses. In licensing a trademark, a two-step process is suggested. The first step is to perform a computer trademark search online. This online search is further clarified by identifying the products one is seeking 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 surfboards are included in Class No. 28. Bathing suits and clothing and beachwear are in Class #25. Backpacks, beach bags, and gear bags are in Class #18. Posters, magazines, books, stickers and other printed materials and publications are included in Class #16. Videotapes, audiotapes, video game software (including software downloadable over a global computer network), surfing helmets, and skateboards are in Class #9. So if you plan to sell surfboards, apparel, and gear bags, you’ll want to do an online search for Class #28, 25, and 18. The online search 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 trademark is already in use. These online searches are often available at public libraries, commercial search companies, and law firms.
If your trademark appears to be free of conflicts 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 comprehensive search will search the federal trademark database at the Patent and Trademark Office, state trademark registries, common law sources such as telephone directories and Dun & Bradstreet listings, as well as domain name registries from Internet. If your trademark still appears conflict-free after a thorough search, then you can be pretty sure that you can adopt and start using your trademark. WARNING: These searches are not guarantees of the absence of conflicting trademarks, but allow a merchant to make a more informed decision in licensing a trademark.
FEDERAL TRADEMARK REGISTRY
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, say California, you may be able to register your trademark with the California Secretary of State. However, if you intend to do business across state lines or in foreign commerce (or if you are already doing business across state lines or in foreign commerce), then it is prudent 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 (currently $325 per brand per class). The applicant will also incur attorneys’ 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 by a classification system that corresponds to the type of merchandise to be registered. For example, MOREY® and MOREY BOOGIE® for body boards, CHURCHHILL® swim fins, and MIKASA® volleyballs are all in Class #28. The 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® backpacks and gear bags 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 advisable to use the symbols “TM” (for trademarks) and “SM” (for service marks).
The main advantages of a federal registration include:
“Constructive notice” at the national level of the claim of ownership of the trademark by the registrant. Essentially, 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 exclusive right of the registrant to use the mark in commerce in connection with the goods or services.
Registration also entitles the registrant to (a) file a claim for trademark infringement in Federal Court; (b) prevent the importation of goods bearing an infringing mark; and (c) use the registration as a basis for registering 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.
FOREIGN TRADEMARK REGISTRATION
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 mark(s). Therefore, foreign trademark protection is generally obtained on a country-by-country basis. Unlike the US, however, 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. By obtaining a Community-wide trademark registration, the owner of a US registered trademark, for example, can save time and money that would otherwise be spent registering a trademark in each separate European country and, Hopefully, you could get maximum protection for your trademarks 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 economic loss is tremendous if trademark rights are not acquired, evaluated, protected, and maximized. While this article does not claim to cover all the intricacies of trademark law, hopefully it has helped shed some light on this area of the law that is of the utmost importance to the business owner.
© Copyright 2008, William E. Maguire. All rights reserved.