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Trademarks have a long history. At least 3500 years ago potter’s signatures on fired clay pots identified their source and the quality of the craftsmanship. In the middle ages, artisans used their particular marks on armor, cloth, cutlery and pewterware.

The dawn of trademark litigation appears to be a 1584 British case where the plaintiff made a woolen cloth called “kersey” which was used for hose and work clothes. He used the mark “J.G.” with a design of a “tucker’s handle,” possibly a tool of the trade, on the cloth which he sold in England, Wales and beyond the seas. He built a profitable business and an enviable reputation among merchants, who could tell from the “J.G.” trademark, without even inspecting them that the goods were of high quality.

Defendant, aware of plaintiff’s success, began marking his cloth with the same trademark and sold it to the same merchants who were familiar with plaintiff’s goods and his trademark. As a result, buyers of defendant’s cloth found it of poor quality, and thereupon reversed the opinion and esteem which they previously had of plaintiff’s cloth. Because of defendant’s deceit, merchants refused to buy plaintiff’s cloth whereupon he filed suit and claimed to be damaged. Although the court recognized plaintiff’s damage, it held that there was no law against anyone using any mark he wished. There was damnum absque injuria (damage without injury in the legal sense).

For the next 200 years trademark infringement cases fared no better. It wasn’t until 1777 in Cabrier v. Anderson where the plaintiff won £100 against a defendant who had used the plaintiff’s name on five watches he had made. In 1824 in Sykes v. Sykes the court regarded trademark protection as an established principle where the defendant had used the plaintiff’s mark on a variety of inferior shot-belts and powder flasks and sold them as the products of plaintiff.

In 1838 the landmark case of Millington v. Fox was decided by the Lord Chancellor who found that the evidence of plaintiff’s title to his trademark for steel was sufficient and held that the plaintiff undoubtedly had a right to the assistance of a Court of Equity to enforce his title. The court also held that an injunction restraining the defendant’s further unlawful use was appropriate, even though there was no proof the defendant intended to defraud. The Millington case was later cited by the United States Supreme Court for these principles which are still followed today.

The U.S. Congress enacted the first federal trademark statute in 1870 but it was held unconstitutional by the Supreme Court because it was not limited to acts which the Congress had the power to regulate. A replacement act was passed in 1881 followed by the Act of 1905 and a supplemental Act in 1920. In 1946 the Lanham Act was passed which today is the basic federal trademark statute.

The Lanham Act and its protégé have clarified archaic terms with statutory definitions bearing the imprimatur of federal law. For example, the term “trademark” includes any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown. This definition is expansive and includes a vast area of subject matter.

Valid trademarks include, among names and symbols, slogans, phrases, fragrances, colors (pink insulation), sound combinations, packages (Coca-Cola bottle), product shape (LifeSaver candy) and other devices that can serve to identify the source or origin of the goods the trademark represents. “Service marks” are another feature of the Lanham Act. They are similar to trademarks except they serve to identify and distinguish the “services” of one person from the services of others and to indicate the source of the services even if that source is unknown. Although trademarks can take many forms, the provisions of the Lanham also disqualify many types of names, symbols or devices as enforceable or registerable on the Principal Register of the U.S. Trademark Office, including, among other things, marks that are generic or are descriptive of the goods or services that the mark identifies.

Selection of a trademark or service mark is perhaps the most important aspect of branding your business and obtaining legal advice on the potential registerability and potential infringement possibilities of the proposed mark is essential before using the mark.

by Richard W. Hanes, Attorney
Hanes, Hrbacek & Bartels, LLC

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