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| THE FIRM PROVIDES THE FOLLOWING SERVICES: ♦ NON-IMMIGRANT VISAS - EMPLOYMENT-BASED ♦ IMMIGRANT VISAS OR PERMANENT RESIDENCE (GREEN CARD) EMPLOYMENT/INVESTOR AND FAMILY-BASED ♦ OTHER AREAS: Immigration Appeals, Adjustment of Status Interview, National Interest Waiver, Naturalization & Citizenship, PERM Labor Certification, U Visa, Religious Workers, Political Asylum, and, more. ♦ INTELLECTUAL PROPERTY/PATENT, TRADEMARK, COPYRIGHT, and more. CLICK HERE TO SEE LIST OF SERVICES THE FIRM PROVIDES. |
| To schedule a consultation, call Tel. (281) 340-2027 or (281) 980-1385. |
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TRADEMARKS
Intellectual property is an intangible, it is not something that can grasped in a physical
sense. Trademarks are one category or intellectual property that is probably the most
essential to the everyday business person.
In a typical scenario, a retailer of goods may sell both high end name brands along with
other less expensive brands that are similar in appearance and function. Often, with
electronic commerce an integral part of today’s retailers, the reach is not just local but
international. Many such e-commerce retailers are made aware of trademark laws for the
first time when the trademark protected name brands, resenting the competition posed by
these retailers, send letters threatening lawsuits over alleged trademark infringements.
So, what is a trademark?
A trademark, generally, is a distinctive word, symbol, phrase or feature that a seller of
goods or services will rely upon to distinguish its own goods or services from those of
competitors. Famous trademarks include, Exxon, Xerox, IBM, Nike, Pepsi, and John
Deere.
So what types of words, phrases or symbols qualify as trademarks?
It can not be stated too often in the realm of trademark law that in order for a word,
symbol, or phrase to qualify as a trademark, it must be distinctive. By that it is meant
that the mark (i.e., word, phrase, symbol, or feature) must be capable of identifying the
source of a particular product or service. The more distinctive the trademark, the more
protection against infringement the mark will generally receive.
Specifically, courts have traditionally grouped trademarks into four different categories,
with each category receiving differing degrees of trademark protection. The first category
receives a high degree of trademark protection and relates to marks that are “arbitrary or
fanciful.” Such a mark bears no logical relationship to the underlying product. For
example, the words "Lexus," "Xerox," and "McDonalds" bear no inherent relationship to
the products they identify, namely, automobiles, copiers, and fast food.
The second category is for suggestive marks. These types of marks are not completely
arbitrary in that they do have some relationship to the product bearing the mark. For
example, “Coppertone” would bear some relationship to sun-tan lotion since it would
connect the mind of the consumer to the copper tone of a sun tan.
In contrast to “suggestive marks,” which describe a product only indirectly through the
additional step of the consumer exercising some degree of imagination, a “descriptive
mark” directly describes, rather than suggests, a characteristic or quality of the underlying
product (e.g. its color, odor, function, dimensions, or ingredients). For example, “Holiday
Inn,” “Chinese Restaurant,” and “Automotive Center” describes some aspect of the
underlying product or service. Unlike arbitrary or suggestive marks, descriptive marks are
not inherently distinctive and are protected only if they have acquired "secondary
meaning."
For example, even though originally Holiday Inn might have been considered merely
descriptive, today enough advertising, years of use, and franchise control has been
exercised that the term “Holiday Inn” has become associated with a specific brand of
hotels.
The final category of words, phrases, or symbols is accorded no trademark protection and
applies to “generic marks.” A generic mark is entitled to no protection under trademark
law because giving a single producer control over the use of the generic mark would give
that producer too much of a competitive advantage.
Does a Trademark owner have exclusive rights to the mark?
Having explained what a trademark is, a logical question for the business person is whether
their use of a trademark necessarily means they must cede to the demands of a trademark
holder’s letter. The issues can be very fact specific, but the short answer is that exclusive
use of the trademark by the owner is not necessarily the case. There are fair uses others
can have to the trademark.
In conclusion, the business person seeking to expand their operations (e.g., uniquely
named stores or restaurants) via franchise or otherwise, would be well advised to first
obtain a trademark. Likewise, the retailer selling multiple products would be well advised
to consider the implications of misuse of another’s trademark—particularly if a notice
letter has been issued by the trademark owner.
Intellectual property is an intangible, it is not something that can grasped in a physical
sense. Trademarks are one category or intellectual property that is probably the most
essential to the everyday business person.
In a typical scenario, a retailer of goods may sell both high end name brands along with
other less expensive brands that are similar in appearance and function. Often, with
electronic commerce an integral part of today’s retailers, the reach is not just local but
international. Many such e-commerce retailers are made aware of trademark laws for the
first time when the trademark protected name brands, resenting the competition posed by
these retailers, send letters threatening lawsuits over alleged trademark infringements.
So, what is a trademark?
A trademark, generally, is a distinctive word, symbol, phrase or feature that a seller of
goods or services will rely upon to distinguish its own goods or services from those of
competitors. Famous trademarks include, Exxon, Xerox, IBM, Nike, Pepsi, and John
Deere.
So what types of words, phrases or symbols qualify as trademarks?
It can not be stated too often in the realm of trademark law that in order for a word,
symbol, or phrase to qualify as a trademark, it must be distinctive. By that it is meant
that the mark (i.e., word, phrase, symbol, or feature) must be capable of identifying the
source of a particular product or service. The more distinctive the trademark, the more
protection against infringement the mark will generally receive.
Specifically, courts have traditionally grouped trademarks into four different categories,
with each category receiving differing degrees of trademark protection. The first category
receives a high degree of trademark protection and relates to marks that are “arbitrary or
fanciful.” Such a mark bears no logical relationship to the underlying product. For
example, the words "Lexus," "Xerox," and "McDonalds" bear no inherent relationship to
the products they identify, namely, automobiles, copiers, and fast food.
The second category is for suggestive marks. These types of marks are not completely
arbitrary in that they do have some relationship to the product bearing the mark. For
example, “Coppertone” would bear some relationship to sun-tan lotion since it would
connect the mind of the consumer to the copper tone of a sun tan.
In contrast to “suggestive marks,” which describe a product only indirectly through the
additional step of the consumer exercising some degree of imagination, a “descriptive
mark” directly describes, rather than suggests, a characteristic or quality of the underlying
product (e.g. its color, odor, function, dimensions, or ingredients). For example, “Holiday
Inn,” “Chinese Restaurant,” and “Automotive Center” describes some aspect of the
underlying product or service. Unlike arbitrary or suggestive marks, descriptive marks are
not inherently distinctive and are protected only if they have acquired "secondary
meaning."
For example, even though originally Holiday Inn might have been considered merely
descriptive, today enough advertising, years of use, and franchise control has been
exercised that the term “Holiday Inn” has become associated with a specific brand of
hotels.
The final category of words, phrases, or symbols is accorded no trademark protection and
applies to “generic marks.” A generic mark is entitled to no protection under trademark
law because giving a single producer control over the use of the generic mark would give
that producer too much of a competitive advantage.
Does a Trademark owner have exclusive rights to the mark?
Having explained what a trademark is, a logical question for the business person is whether
their use of a trademark necessarily means they must cede to the demands of a trademark
holder’s letter. The issues can be very fact specific, but the short answer is that exclusive
use of the trademark by the owner is not necessarily the case. There are fair uses others
can have to the trademark.
In conclusion, the business person seeking to expand their operations (e.g., uniquely
named stores or restaurants) via franchise or otherwise, would be well advised to first
obtain a trademark. Likewise, the retailer selling multiple products would be well advised
to consider the implications of misuse of another’s trademark—particularly if a notice
letter has been issued by the trademark owner.
INSIDE THIS ISSUE
| Immigration Law and Intellectual Property |
| A P r o f e s s i o n a l C o r p o r a t i o n |
GERMAN CASTILLO LAW OFFICE, P.C.
| German Castillo Law Office, P.C. 14090 Southwest Freeway, Suite 300, Sugar Land, TX 77478 Tel (281) 340-2027; (281) 980-1385; Toll Free Fax 1 (866) 416-0059; California: Tel (650) 270-5239 INTERNATIONAL OFFICE: PHILIPPINES: 6/F Padilla Building, Emerald Avenue, Ortigas Center, Pasig City, Philippines Tel (63-918) 906-8142 Fax (63-2) 631-1546 |
| All contents copyright © German Castillo Law Office 2005-2007. All rights reserved. This website is designed and managed by Z-Media Publishing and Design E-mail: design@z-mediapd.com |
| German Castillo Law Office, P.C. 14090 Southwest Freeway, Suite 300, Sugar Land, TX 77478 Tel (281) 340-2027; (281) 980-1385; Toll Free Fax 1 (866) 416-0059; California: Tel (650) 270-5239 INTERNATIONAL OFFICE: PHILIPPINES: 6/F Padilla Building, Emerald Avenue, Ortigas Center, Pasig City, Philippines Tel (63-918) 906-8142 Fax (63-2) 631-1546 |
| All contents copyright © German Castillo Law Office 2005-2007. All rights reserved. This website is designed and managed by Z-Media Publishing and Design E-mail: design@z-mediapd.com |
| German Castillo Law Office, P.C. 14090 Southwest Freeway, Suite 300, Sugar Land, TX 77478 Tel (281) 340-2027; (281) 980-1385; Toll Free Fax 1 (866) 416-0059; California: Tel (650) 270-5239 INTERNATIONAL OFFICE: PHILIPPINES: 6/F Padilla Building, Emerald Avenue, Ortigas Center, Pasig City, Philippines Tel (63-918) 906-8142 Fax (63-2) 631-1546 |
| All contents copyright © German Castillo Law Office 2005-2007. All rights reserved. This website is designed and managed by Z-Media Publishing and Design E-mail: design@z-mediapd.com |
| Immigration & Intellectual Property Law Digest is published quarterly by the Law News and Research Group of German Castillo Law Office, P.C. To request a FREE copy, please e-mail LawDigest@gcastillolaw.com or click on here to complete the subscription form. |
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WRITTEN BY ATTY.
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WRITTEN BY ATTY.
CASTILLO