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Kathy Rheintgen

Kathy’s intellectual property litigation experience includes managing pharmaceutical, as well as mechanical, patent cases in a variety of trademark and copyright infringement matters and trade secret and antitrust matters. She also has experience in writing infringement opinions for patent, trademark and copyright cases.

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In one of our first posts,  we discussed the five categories of trademarks (Generic – Descriptive – Suggestive – Arbitrary – Fanciful) and how a mark becomes more protectable as it moves across the spectrum.  Laudatory trademarks are often included in this list as “descriptive marks,” requiring a showing of secondary meaning to be protectable. However, it has been recognized that many laudatory marks do not actually describe any feature of the product it is used with; rather, they tend to suggest that the product is of high quality or “better” quality than other similar products.

Laudatory terms that may be considered suggestive include, for example, “Select,” “Plus,” “Super,” “Deluxe,” or “Gold Medal.”  These terms are not descriptive, in that they do not provide direct information regarding the product itself.  Rather, these terms are suggestive as they require the consumer to use imagination, thought and perception to connect the mark to the goods. And even then, the connection may be unclear.  Does “Deluxe” imply that the product is bigger, that it works better or is somehow more luxurious?  Perhaps the product includes additional features not present in the competitors’ products?  While the exact meaning is not clear, the mark does connote that the product named “DELUXE” is somehow superior.

However, even if suggestive, laudatory trademarks are rarely found to be protectable without a showing of secondary meaning.  Further, it is often held that, as with descriptive marks, users of suggestive laudatory marks may not be able to monopolize the right to label or name its product in such a way that suggests or implies that it is the finest product on the market. Thus, laudatory terms do not fit neatly into the usual trademark framework, leading to uncertainty regarding the protectability of laudatory marks.

This week we are discussing ways you can use a third party’s mark to identify the third party’s goods or services while advertising your own.  For example, a dental office wants to let potential patients know that it uses a specific brand of dental veneers.  The law allows XYZ Dental to factually state “XYZ Dental specializes in the fitting and application of ABC® brand veneers.”  This type of use is known as nominative fair use and as with comparative advertising and descriptive fair use, there are rules that need to be followed.

To qualify as proper nominative fair use, the use must not create a likelihood of confusion and the use cannot imply sponsorship or endorsement by the trademark owner where none exists.

The courts have set out a three part test to determine if a use is likely to fall within the rubric of nominative fair use.

  1. The trademark owner’s product or service must not be readily identifiable without use of the trademark.  It is recognized that there are times when it is necessary for a company to refer to a third-party product or service by its trademark.  In those circumstances the law does not require individuals or companies to use “absurd turns of phrase” simply to avoid trademark liability.  XYZ Dental does not need to state that it fits and applies the dental veneers identified by the first three letters of the alphabet.  It can simply factually state it fits and applies ABC dental veneers.

Last week we discussed ways that you can use a competitor’s mark in comparative advertising.  This week we are discussing ways you can use a competitor’s mark in a descriptive manner under the doctrine of Descriptive Fair Use.   In this type of use, the mark is not being used as a trademark, which greatly reduces or eliminates the possibility of the use being found to be trademark infringement.

Under the doctrine of Descriptive Fair Use, a party, even a direct competitor, may use another party’s descriptive trademark to describe their own product or services.  Descriptive Fair Use requires:

  1. That the mark being used actually describes a person, place or attribute of goods or services; and
  2. The mark must also be used in the normal course of language.

In addition, the mark must be used in the text portions of an ad and not as a banner or in any other manner that sets it apart from the other words in the sentence or paragraph in which it is used. 

Today we are resuming our Branding 101 series!

As we discussed previously, a trademark audit is an important inventory tool that should be used to be sure that the trademark assets of the company are being properly used and protected. Another important function of a trademark audit is to be sure that you are using only your own trademarks; or, if you are using your competitors’ marks, that such use is correct and proper.

In general, a company should only be using its own trademarks. However, there are some circumstances where it is acceptable to use a third party’s trademark in your advertising. These exceptions are often referred to as “fair use” of the other’s mark. There are several fair use exceptions that will be discussed over the next couple of weeks. Today, we will start with a discussion of the proper way to use a competitor’s trademark in a comparative advertisement.

It is possible to avoid trade mark infringement while using the registered trade mark of another company in a comparative advertisement. However, there are rules and guidelines that have to be followed to avoid liability. In addition, apart from the trademark infringement issues, comparative advertising is prone to being considered misleading or deceptive, unless it is done carefully.

A trademark audit is at its most basic an asset inventory.  But instead of tracking down and counting blood pressure monitors, otoscopes and scalpels you are tracking down words, phrases and pictures (logos) that you are using to promote your business to the public. And instead of checking and noting the condition of these items and culling out those that are beyond repair or use, your trademark auditor will review how the marks are being used to be sure such use is proper and all of these marks have been searched and cleared for use. It may also find that you are using marks that no longer conform to your desired public image or Mission Statement and that such marks need to be retired.

A trademark audit should do more than just look at the marks that the business believes it owns.  A trademark audit should look at all of the company’s materials that are presented to the public and  review them for any words, phrases and pictures (logos) that are used to identify your company’s goods and services. A trademark audit will often identify terms that the auditor views as trademarks that the company may not realize it is using.  You might wonder – how can a company not know it is using a particular trademark?  This could be because marketing designed and distributed a flyer or brochure but did not review the terms being used – possibly due to a short deadline or perhaps they thought it would only be used “once”.  The audit may also identify terms that have been used for a long time that have simply fallen through the cracks.

A trademark is an adjective.  It is not a noun or a verb.  Why?  Because, a trademark’s purpose is to identify the source or origin of a product, NOT to identify the product itself.  You have gone to great lengths to find a mark that is not descriptive of your product, and we have discussed that generic marks can never be a trademark, so you do not now want to use your mark in such a way that you cause to become descriptive or generic.

This tends to be more a problem for the company coming out with a first-of-its-kind product.  Consumers are already unsure what the product is, and without careful marketing that new moving stairway becomes an “escalator” (originally a trademark of Otis Elevator Company); all coin operated laundries become “laundromats” (originally a trademark of Westinghouse); and all rolling toys on a string are now “yo-yos” (although still a trademark in Canada).

Newer situations that almost resulted in a successful brand name becoming the generic term for the product itself include “KLEENEX® brand tissues;” “Band-Aid® brand bandages” and “Rollerblade ® brand in-line skates.”  Yes, you want your brand to be successful; however, not to the point where it becomes synonymous with the product itself.

The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.

It is not necessary or recommended to wait until the mark has been used to file the application.    An application can be filed based on your bone fide intent to use the mark in the future.  The application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. After the application is approved by the Examiner and has been published for opposition, a Notice of Allowance will issue.  The applicant then has 6 months to file either a statement of use, or to request a 6-month extension of time.  A total of 5 extensions of time can be requested – up to a total of 3 years after the date the Notice of Allowance issues. If use has not begun after the expiration of the 5th extension of time, the application will abandon as a matter of law.

The benefit of filing an ITU application is that once use begins and the application is registered the owner can claim a constructive date of first use as of the filing date of the application.  This could add months or years to the start date of your rights. There are some additional costs and filing fees associated with the filing of the use statement and/or extensions of time to file the use statement; however these are offset by the right to claim an earlier starting point for your rights.

After choosing the mark itself, an important part of the registration process is crafting the identification of goods or services.  You want the identification to be both broad and specific.  If the mark will be used as an overall mark for your entire organization, the identification may be straightforward “hospitals and medical services.” If the mark will be used for a specialized service offering, it may be necessary to develop a more specific identification.

Once you have selected a trademark and it has been cleared for use, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO).  There are a few questions that might come to mind when this recommendation is made:

  • Why should I register my trademark?
  • When should I register a trademark?
  • Which of my trademarks should I register?

These questions are addressed below.

Why should I register my trademark?

Trademark rights in the United States are, after all, based on use of the mark in commerce and not on registration.  A registration is not required to use a mark, obtain rights in a mark, or to sue for trademark infringement.  Why then would you spend valuable marketing dollars on obtaining and subsequently maintaining a Federal Trademark Registration?  There are a number of good reasons to proceed with a registration.

First, yes – you can obtain common law trademark rights in a mark simply through use.  However, your common law rights will be limited to the geographic location where you have had actual use. A trademark registration will automatically expand your rights geographically to include the entire United States, except for any areas where there is a prior user on the day the mark is registered.  What does that mean?

Once a proposed mark has been chosen, it is always a good idea to have your trademark attorney conduct a trademark search.  Even you are not aware of any other hospitals or medical centers using the mark that does not mean that there are none.  The search will look for marks that are “confusingly similar” to the mark being searched or are likely to cause confusion in the consuming public.  We will discuss the concept of confusing similarity and likelihood of confusion in the context of trademark infringement in a later post.

During the searching process there will again be a difference between descriptive or suggestive marks and fanciful or arbitrary marks.  The more descriptive the mark the more likely it is already in use in some manner by at least one other company.  Many times a descriptive or highly suggestive word or phrase may be in use by several different entities around the country for the same or similar goods or services.  Each use may be slightly different, thereby allowing each of them to co-exist. In this case each descriptive mark will have at best a narrow scope of protectability, perhaps limited to the exact mark for your exact services.  In some cases, if the mark is being used by several entities, it may be that the mark is also available for your use, but you will not be able to protect that mark from later use by yet another entity. Also, you may be advised that there is risk associated with use of the mark simply due to the number of prior users, any of whom  may choose to object to your new use of the mark.

With suggestive marks, the protection is for the mark, or any confusingly similar marks, but not for the “theme” of the mark. For example, a search for the mark “Service with a Heart” for cardiac care services may find several slightly different versions of this mark in use for similar services – You are the Heart of Our Business; Our Nurses Are All Heart; We Will Handle Your Heart with TLC etc. These marks all use the theme of having the word Heart in the mark; but they are not likely to be found to be confusingly similar to each other, even for the same services.

Selecting a strong trademark is the key to being able to protect the trademark.  As we discussed last week, the first and central step in branding is selecting your facility’s trademarks, which promote a provider’s reputation, helping it stand out among its competition.  When choosing a name for a product or service, the inherent strength of mark should be considered, as this will affect many things going forward from the cost of a search to your ability to stop others from using similar names.

There are five categories of marks, each of which comes with its own level of legal protection. From least to most protected, they are:

  1. GENERIC: Names like “emergency room” or “doctors” – these cannot be trademarked.
  2. DESCRIPTIVE: Descriptive marks immediately provide information about the service or product.  These types of marks can be protected but only if they have acquired distinctiveness through use in commerce. Descriptive marks include laudatory marks (“Best Dental”); geographic marks (“North Shore Hospital”); and surnames (“Williams Orthopedics”).
  3.  SUGGESTIVE: These marks indirectly provide information about the goods and services requiring the consumer to make a mental step or connection to determine what the services are (“Service with a Heart” for a cardiac center; “Papoose” or “Joey” for pediatric services).  Suggestive marks are immediately protectable; however the scope of that protection is not as broad as for arbitrary or fanciful marks.
  4.  ARBITRARY: These marks, like “Apple” or “Amazon,” are real words but there is no connection between the words’ meaning and the services or products it is used for. These marks enjoy broad, strong protection.
  5.  FANCIFUL: These marks are made-up words, like “Xerox,” “Google,” or “Viagra,” created specifically to be used to identify the source or origin of certain goods or services. These are the most strongly protected marks.

Hospitals and other healthcare facilities have traditionally been named with geographic designations or with the name of a famous person or in other ways that would be considered “descriptive.”  These names, after long years of use are quite likely to have acquired “secondary meaning” so they are now protectable trademarks. Many such marks have become quite famous and will enjoy strong trademark protection despite their humble beginnings.  Therefore, the hospital will have the ability to police and control use by competitors of similar names.  However, it is unlikely that the hospital will be able to control all use of the descriptive elements of its name and trademark.