By Attorney Lloyd J. Jassin
This checklist provides an overview of what to consider when selecting
a trademark or choosing a name for your business. It should be read in
conjunction with its companion article, Trademark Basics,
which can found at copylaw.com. Beware! Selecting a valid trademark is
as much an art as a science. When in doubt, seek the advice of a professional.
Points to consider when selecting a trademark:
||To be protectible a trademark must be distinctive.
||The key to trademark infringement is the existence of likelihood
of confusion caused by using a similar mark.
|| Courts look at the following factors to determine likelihood
||strength of the trademark being infringed
|| similarity of the two marks
|| if no direct competition exists, likelihood prior owner will
expand into second user's market
|| quality of second user's product (i.e., like-quality products
are more likely to cause confusion)
||degree of care likely to be used by purchasers
||intent of the second user
||When selecting a trademark, do a preliminary search using
industry directories to knock- out potential conflicts.
||After you have narrowed your list of possible trademark candidates,
order a full search from a reputable trademark search firm. If the report
reveals similar marks used in connection with similar goods or services,
you cannot use the proposed trademark, unless you obtain permission.
||Unlike one-shot titles, series titles, whether a series of
books, tv programs, software, or a regularly published magazine or other
periodical, is eligible for trademark protection.
||Protectible titles in one media will be protected in different
media if there is likelihood of confusion.
||A "famous" trademark can be infringed by a use that
tarnishes or blurs its commercial magnetism. No likelihood of confusion
is required in these instances.
|| Proper usage of a trademark is very important to trademark
owners. Always use trademarks as adjectives, not verbs or nouns. Remember.
Trademarks are brands, not things.
|| Characters, especially well-known illustrated characters,
can function as valid trademarks, even after copyright protection expires.
||The total image of a product, including the dust jacket of
books and covers of magazines, are protected against confusing similarity
under trademark law.
NOTICE: This article represents
copyrighted material and may only be reproduced in whole for personal or
classroom use. It may not be edited, altered, or otherwise modified, except
with the express permission of the author. This article discusses general
legal issues of interest and is not designed to give any specific legal
advice pertaining to any specific circumstances. It is important that professional
legal advice be obtained before acting upon any of the information contained
in this article.
LLOYD J. JASSIN is a New York-based publishing and entertainment
attorney in private practice. He is co-author of the bestselling Copyright
Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors
and Publishers (John Wiley & Sons, Inc.), available at bookstores
or at www.copylaw.com. Mr. Jassin has written extensively on negotiating
contracts in the publishing and entertainment industries, and lectures frequently
on contract and copyright issues affecting creators. He is counsel to the
Publishers Marketing Association and Vice Chair of the Small Press Center.
He may reached at Jassin@copylaw.com or at (212) 354-4442. His offices are
located at 1560 Broadway, Suite 400, New York, NY 10036.