Leadership Laboratory
- Leadership Lab: Intellectual Property Series
This series of essays can help the IT manager learn how to identify and protect intellectual property and intangible assets.
Trademark Infringement - The Likelihood of Confusion - Updated October 27th, 2008
Valuation of Intellectual Property Case Study - IPWatchdog.com -
What is Intellectual Property - March 14th, 2007
Creative Commons and Intellectual Property - May 1st, 2007
What Is a Patent? - April 7th, 2007
Copyright - April 7th, 2007
Digital Rights Management - April 7th, 2007
Trademark and Brand - April 7th, 2007
Trade Secrets - April 7th, 2007
The Value of IP - April 7th, 2007
Licensing and Franchising - April 3rd, 2007
10 Steps to Protect IP - March 13th, 2007
Trademark and Brand
April 7th, 2007
By Stephen Northcutt
Why would a computer security manager care about trademarks? Because they come under attack on the Internet all the time! If we had a dollar for every time we found someone with an unauthorized SANS1 logo on their web page (as if they were a partner), we could buy steak for dinner instead of rice and beans.
According the the Patent
Trade Office, "A trademark
is a word, name, symbol or device which
is used in trade with goods to indicate the source of the goods and to
distinguish them from the goods of others. A servicemark is the same as
a trademark except that it identifies and distinguishes the source of a
service rather than a product. The terms "trademark" and "mark" are
commonly used to refer to both trademarks and servicemarks. Trademark
rights may be used to prevent others from using a confusingly
similar mark, but not to prevent others from making the same goods or
from selling the same goods or services under a clearly different mark.
Trademarks which are used in interstate or foreign commerce may be
registered with the Patent and Trademark Office."2
Traditionally, trademarks have been any word or logo which serves to
designate the origin of goods or services. In recent years the law has
come to recognize that many other things can serve to designate the
origin of goods or services, and are ,therefore, capable of operating
as
trademarks. Nowadays, things such as advertising jingles, smells, and
the shape of goods or packaging may constitute trademarks.
The US State Department has one of the best writeups on marks that can be found:
"As
with all intellectual property, trademark and service mark laws are
national in origin. Some countries grant rights to the first person to
use the mark in the course of business, while other countries grant
rights to the first person to obtain a registration in that country. In
"first-to-use" countries, rights may subsist without registering the
mark with the national trademark office. However, registration is still
desirable because it is presumptive evidence of the validity of the
mark and the owner's right to use that mark. It also appears on the
national register of marks providing notice to the world of the owner's
use and claim of ownership. Some countries require that the mark be
used in commerce prior to the issuance of a registration, while other
countries permit registration based on the intent of the applicant to
use the mark in the future. Following the use or registration of a
trademark, the owner must use the mark or it may become subject to
attack by others on the ground that the owner has abandoned it.
At a minimum, most countries require that a mark be distinctive, i.e.,
capable of distinguishing the goods or services of the owner of the
mark from the goods or services of others. To determine whether a mark
meets this test, one must determine the "strength" of the mark.
A mark's strength is usually measured across a spectrum. This spectrum
includes, from weakest to strongest, terms that are generic,
descriptive, suggestive, arbitrary and fanciful. At the weakest end of
the spectrum lie words, symbols or devices that are not capable of
distinguishing goods because they are common terms used to identify the
goods themselves, e.g., book, table, chair. Such terms are called
generic terms and are not protectable as trademarks.
The next category is comprised of descriptive terms. A mark is
descriptive if it describes the intended purpose, function, physical
characteristic, laudatory quality or end use of the product. Examples
of descriptive marks include SAVMOTOR for an engine oil additive
intended to prolong the life of an automobile engine, MICRO for wheel
weights that are very small, and SUPREME for wine allegedly of superior
quality. Because they are not inherently distinctive, a descriptive
term cannot be protectable as a mark until, through extensive sales and
advertising, the term has come to identify the source of the goods
bearing the mark. In the United States, when a descriptive mark
achieves this level of distinctiveness, it is said to have acquired a
"secondary meaning."
In contrast to descriptive marks, suggestive marks do not immediately
describe the goods with which the mark is used, but rather require
thought, imagination or perception to reach a conclusion about the
nature of the goods. Suggestive marks are considered inherently
distinctive and protectable without first acquiring secondary meaning.
Examples of suggestive marks may include HERO for fire extinguishers or
GREYHOUND for bus transportation services.
Arbitrary marks are words, symbols, and devices that are in common use
but, when used on the goods of the trademark owner, neither describe
nor suggest the quality of those goods. Examples of arbitrary marks
include ARROW for liqueurs, APPLE for computers, and CAMEL for
cigarettes. Like suggestive marks, arbitrary marks are inherently
distinctive and secondary meaning need not be proven.
The most distinctive marks are fanciful marks. A fanciful mark is a
"coined" word or symbol invented or selected for the sole purpose of
functioning as a mark. Examples of fanciful marks include EXXON for
gasoline, KODAK for photographic supplies, XEROX for photocopying
equipment, and CLOROX for bleach. Fanciful marks are traditionally
afforded the greatest scope of protection."3
From mark to brand
Walter Landor, one of the greats of the advertising industry, said:
"Simply
put, a brand is a promise. By identifying and authenticating a product
or service it delivers a pledge of satisfaction and quality."4
While this is an often used quote on the Internet, there is a lot
more to the process of having a mark become a brand than identifying
and authenticating a product. For instance, for years the designer of
SANS direct mail brochures was allowed a lot of artistic freedom. The
result was that no two brochures for our major events
looked
alike. Therefore, if you happened to look at a page, there was
no way, without considerable study, to associate the direct mail with
the
brand. Nowadays, the goal is to have a consistent look and feel so that
if you look at any page, you recognize it as SANS; AND if you are
familiar with SANS, you associate it with cutting edge, high content
(drinking from a firehose) and delivery by a world class instructor.
That is the goal of branding.
What is Brand Identity?
What comes to mind when you think of "Porsche" or "Rolex"? Such
brands are desirable, respected and distinctive. While a product or
service may be duplicated, your brand exists only in the minds of
your customers.
From brand to branding
Branding is a discipline, it is very important for organizations to
consistently distinguish themselves. That is why they yell at you if
you create a marketing piece that doesn't use the right fonts and
colors. According to Rob Camper, "Branding is certainly not a logo, or
marketing, or even a positioning statement. It is a foundation stating
who you are, what your association is, what you offer to the world, and
how your audience should (or does) perceive you, and it all centers
around the increasing necessity of mindshare and conceptual ownership.
Without it, organizations will find it more and more difficult to
survive."5,6
Trade dress
Trade dress refers to the manner in which a product, or place of
business, is "dressed up" to go to market.7
"The
trade dress
of a product involves the "total image" and can include the color of
the packaging, the configuration of goods."8
An
example from
the information security world would be a Syngress press book cover;
because they have consistency in design, you can always spot them no
matter what the book title. It will be interesting to see if this holds
up now that they have been purchased. ISC2.org does the same thing with
their web and print media; the distinctive green and orange helps you
spot them and recognize them for what they are. It is wise to establish
and register trade dress.
Summary
If your organization is a market leader, the odds are very high that
your competition and niche players in your market are infringing on
some part of your marks. They may use similar wording to your product's
name, emulate the colors you use in advertising, or put your logo on
their web site as we mentioned at the beginning of this article. But
they are not you! The wise information assurance manager will coach the
intellectual property incident handling team to look out for these
infringements and report them.
2 http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm
3 http://usinfo.state.gov/products/pubs/archive/prosper/prosper7.htm
4 http://www.buildingbrands.com/definitions/02_brand_definition.php
5 http://www.sans.org/annualevent
6 http://www.logolounge.com/articles/default.asp?Archive=True&ArticleID=381
7 http://www.copylaw.com/new_articles/tradedress.html
8 http://www.amerilawyer.com/trademark/tm_tradedress.htm