Month: April 2006

The test for trademark infringement is whether the defendant’s use of the trademark is likely to cause an appreicable number of consumers to be confused about the source of the goods and/or services, thinking that they come from, are affiliated with, or endorsed or sponsored by the plaintif.  There are basically 12 factors to this test that must be balanced – I’m not going into those here.

In determining the likelihood of confusion, the court will NOT assume that consumers would have the opportunity to make sid-by-side comparson of the marks

One of the biggest factors is that element of being confused as even the product being endorsed or sponsored by the plaintiff…

Ownership of a trademark is automatic as soon as the mark is first used in trade (or in the case of marks that are not inherently distinctive, as soon as the mark gains enough “secondary meaning” to act as an indicator of source for the owner). No registration is necessary to acquire ownership rights, but if you DO register the mark, you receive the following benefits.

First, a presumption of mark ownership and validity.

Second, after 5 years of continous use, preculsion of certain challenges or defenses to the mark.  (Saving a lot of time and money in litigation if necessary – and giving you a bigger club to use in settlement/forced licensing negotiations…)

Third, presumptive rights relative to a larger geographic area than might be possible without the registration. (Note: the Web has diluted this advantage a bit…).

Fourth, a right to assistance from U.S. Customs in preventing infringing goods from entering the country.

I posted this this morning in response to a question on a Higher Education Communications Professionals Listserv….  I thought it would be helpful here…

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Trademark is about marketing – it’s about protecting the brand equity and good-will and investment in an “indicator of source” in a particular market. The goal is to protect consumers from confusion as to the source of the product or service.

To make a long story short – it’s a subjective question.  A “merely descriptive” statement like “educating tomorrow’s leaders” CAN eventually become an indicator of source if you can prove the slogan is actually associated with your institution in the marketplace. We call this establishing “secondary meaning.”  Accordingly, “Explore. Experience. Excel” is more “arbitrary” when connected to an institution, and easy to qualify as a trademark right from the start.

Higher Education is about differentiating your product.  In some ways, it’s harder than most consumer-goods branding because, in many cases, higher education is a seen as a commodity – like bread or beer, and the only way to truly distinguish your school from others is by:

1.  Actually having a different product (programming). That’s hard due to the nature of accreditation, and the culture of higher education itself.
2. Communicating the few actual differences you DO have effectively.
3. Becoming memorable based on those distinctions.

Obviously, there are whole books written on the subject of TM, going into all the fine distinctions between different situations. I’m not going to cover all of that in this, or any other, email.

The important thing is to come up with something that’s truly original, register it (you can file an “intent to use” registration before the slogan shows up in the market), and then USE it.