I’m working on a business law discussion question and need support to help me study.

Each reply must be 200 words and contain at least 1 reference properly cited in current Bluebook format. All posts must show integration of a biblical worldview.

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Student Reply 1 KAB

Trademark Law

Trademarks are one of four different commercial guarantees that consumers use to distinguish the products and/or services of one merchant from the products and/or services of another merchant in the marketplace. The other ways are via copyrights, patents, and trade secrets. Trademarks are also one of four different varieties of marks. Trademarks, such as CHEERIOS(R) or LEXUS(R), distinguish tangible goods. Service marks, such as OLIVE GARDEN(R) or FEDEX(R) distinguish services. Certification marks, such as the Good Housekeeping and the Underwriters’ Laboratories seals of approval, distinguish certain features of a good or service. Collective marks, such as OMEGA PSI PHI(R) and AMERICAN BAR ASSOCIATION(R), distinguish membership in a specific organization.

The four traditional types of trademarks are words, names, symbols and devices. In addition, the U.S. Supreme Court has ruled that there are also nontraditional types of trademarks:

“Since human beings might use as a “symbol” or “device” almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC’s three chimes), and even a particular scent (of plumeria blossoms on sewing thread).”

Matty tells us that these nontraditional marks are beneficial because they acknowledge the ability of merchants to appeal to all five senses of the consumer in very distinctive ways. Todd adds that any of these traditional and/or nontraditional marks can be combined to produce a total image that is referred to as trade dress.

The United States is unique in the world in trademark law, in that trademarks here are initially governed under the common law by their adoption and usage, not by their registration. So, while registration is not required, per se, for a trademark, it is necessary for merchants to register their trademarks with the United State Patent and Trademark Office (USPTO), if the trademark is used in an interstate capacity, or with the state trademark office, if intrastate, so that the merchant will be able to more easily bring court action against any party that the merchant believes has infringed on their trademark protections. Furthermore, when the merchant has paid a registration fee of $225.00 per mark per class of product or service to the USTPO to obtain an interstate trademark, that merchant will thusly provide national notice and deterrence to all other merchants of his/her trademark through the USPTO database; have international treaty trademark protection and U.S. export protection; and secure the right to use the (R) symbol in conjunction with his/her trademark.

According the the USPTO website, there are five steps that a merchant must follow to secure a trademark: (1) determine if you need to register; (2) prepare everything that is needed to apply; (3) submit the online application; (4) work with the assigned USPTO; receive acceptance or denial; and (5) maintain the trademark as required. Of these steps, the first two are extremely important for new merchants who are starting a business and wish to trademark their logos. These first steps will allow the new merchants to search the USPTO database to make sure that their logo is not too similar to an existing trademarked logo. Another thing that a new merchant may want to consider is the extent of the use of the trademark. Because, if its use is only local or within the boundaries of one state, it is not necessary to register the trademark with the USPTO.

Finally, Isaiah 35:8 (KJV) speaks of fools who are in need of protection upon the highway. This biblical passage, I believe, speaks to the foundation of trademark law, in that trademarks are used to protect the general public from being made into fools by unscrupulous merchants who would pretend that their lackluster products and/or services are someone else’s.

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Discussion Board Forum 1

Trademarks are used in the marketing of a given product and there are a total of four different types. Deborah E. Bouchoux, Intellectual Property: The Law of Trademarks, Copyrights, and Trade Secrets (5th ed. 2018). The first type is trademarks and there are four different kinds that can be used; the first type is words, examples would be REEBOK®, Rainbow®, or Columbia®. Id. The second kind is slogans; an example of this kind of trademark would be American Runs on Dunkin’ ® for Dunkin’ Donuts. Id. Designs is the third kind of trademark; the “Converse All Star” star in the middle of a circle is the design trademark for the Converse shoe company. Id. The fourth and final kind of trademark is sound; a great example would be the lion’s roaring at the beginning of a Metro-Goldwyn-Mayer produced film. Id. Service Mark is a type of mark and they are a word, name, symbol, or device that is used to identify a service. Id. Examples of a service mark is Texas Roadhouse for restaurant services and Microsoft Suites for computer programs. Next type is certification mark, and it is a word, name, symbol, or device that is used by a person within commerce that particular goods and/or services have certain features in regards to quality, accuracy, materials, etc. Id. An example of certification mark would be EPA’s “Energy Star” mark that is on household appliances that are found to meet energy efficient standards. The last type of mark is the collective mark and it is defined as being a mark used/owned by a collective membership organization. Id. Fraternities, sororities, and professional societies are all examples of a collective mark. Id.

Registration is not a requirement for securing protection for a trademark, but there are several advantages that come with registering a trademark. Id. The reason that registration is not required is because within the United States, a trademark is usually protected from the moment it is first publicly used. Id. As mentioned above, there are several advantages to registering a trademark, as well as disadvantages. Id. Some advantages of registering a mark include: allowing the registrant to bring an action in federal court for any infringement of the mark; it is visible intellectual property; notice to the public of owner’s claim to said mark is made; right to obtain registration in foreign countries due to the right found under the Paris Convention; etc. Id. Some disadvantages of registration are: registration is only valid for 10 years; in order for a mark’s registration to be renewed for 10 more years, it must be used in interstate commerce; it is required that the registrants file an affidavit with the USPTO; and the process for registering a mark is an extremely long process, usually 10 to 24 months if not longer. Id. There is a filing fee for registering a mark and it is $225.00 per mark per class of goods and/or services. Id.

There is a process that one must go through in order to register a trademark. First step is getting ready to apply by selecting a trademark and determining the type of protection that will be needed for that mark. Trademark Process, USPTO.gov (March 31, 2021), https://www.uspto.gov/trademarks/basics/trademark-process#step6. The second step is preparing ands submitting a Trademark Electronic Application with the USPTO by going through their online portal. Id. Applicants must pay an application fee which is actually a processing fee; applicants are also responsible for monitoring the status of their application. Id. Next, the USPTO reviews an individual’s applications and issues a letter to the applicant if the examining attorney believes that a mark can not be registered, in which the applicant must reply to said letter in a timely manner. Id. The next step is that the USPTO either approves or denies an individual’s application. Id. If an application is approved, then the USPTO will publish the mark. Id. It is the responsibility of the applicant to continue filing the necessary and specific maintenance documents in order to keep their mark(s) active/”alive”. Id. Last step is that the applicant must renew their mark’s registration once the 10 years is up if they so wish. Id.

I would give a new business enterprise lots of advice concerning trademarks and the process they need to go through. Whenever a new business is looking to trademark their logo, they need to make sure to put in the time to review their mark so that there is no possibility of it being excluded from protection under the Lanham Act. Bouchoux, supra. A business will also need to research to make sure their mark does not require consent from a living person. Id. I would advise a business that is using a foreign term that they need to make sure they translate the word(s) to confirm that there is no deception involved. Id. Another piece of advice I would give to a new business is that it is important for them to triple check (at the very least) that their selected mark is not similar in a confusing way with a mark that is already registered, pending registration, or in use on a basis of common law. Id. Hiring an attorney who specialized in Trademark law is an additional piece of advice that I would give a new business. Id. Lastly, I would advise a new business to take the time to register their trademark because of all the advantages that come along with registration. Id.

No, I do not believe that there is a situation where I would not recommend registering a trademark. Even though it is a long process and the registrant has to eventually renew their mark’s registration, the advantages that come with registering a trademark outweigh those two negatives in my opinion. Also in my opinion, I believe that trademark protection is in agreement with biblical principles that are laid out in the Bible for us. The Bible says, “Give to everyone what you owe them: If you owe taxes, pay taxes; if revenue, then revenue; if respect, then respect; if honor, then honor;” this scripture fits with trademark protection because it tells us to hone, respect, and give revenue to those who are owed it, and by having trademark protection it allows for honor and payment that is owed to be given to said business or organization along with keeping other businesses from using that said trademark to make a profit or receive a credit that is not rightfully theirs. Romans 13:7 (NIV).