About Registered Trademarks, Using Piano Finders ® as an Example.
Piano Finders Trademark Certificate of Registration
People ask us questions about our trademark because they either want to know if they can use it on their website and/or they are considering whether they need to register a trademark for their own business. We have been in the piano business since 1982 and have owned and managed the mark Piano Finders since 1984. I have created this section on trademarks in an effort to de-mystify the subject. Since there are many excellent articles and books on the subject written by attorneys, we have not attempted to cover the issues from an attorney's perspective, nor are we giving legal counsel in this article. This section is written in a question and answer format. In our answers, we are attempting to make complex issues simple. If this introduction peaks your interest, I have included links to further reading materials.
What is a trademark and why is it important?
The term "trademark" includes any word, name, symbol or device or any combination thereof.. which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter to identify and distinguish the services of one person from the services of others and to indicate the source of the services.The Lantham Act, Title 15 United States Code, Sections 1051-1127
The United States trademark law acknowledges that there two important needs in commerce. First, customers need to know who they are doing business with. Second, businesses need to have a mark that they can use to identify who they are and to indicate to consumers that products and services using that mark originate from their business.
People generally don't buy things from people they do not trust. People appreciate knowing about a business, what their ethics and standards are and what they can expect. Businesses won't have motivation to invest a lot of money and time into a mark if just anyone can come along and use their name to compete with them or represent them in ways the business doesn't authorize.
In order to solve these problems, trademark law gives a person or entity doing business the opportunity to own the exclusive right to use a name and/or image (called "mark"). And the government publishes all of the registered marks on the internet and in special libraries so that the public can find out who they are buying from. This also makes it possible for anyone who wants to use a particular mark to find out quickly whether that mark is already registered. Publication of a mark in the Principal Register of the Trademark Office is considered notice to the public that the particular names listed there are protected by Trademark law, and thus no longer available for use in commerce except by those who own the mark.
Probably the most important benefit of placing a mark on the Principal Register is that anybody who later initiates use of the same or a confusingly similar mark will be presumed by the courts to be a "willful infringer" and therefore liable for large money damages.…by Attorney Stephen Elias, author of "Patent, Copyright and Trademark"
Because not everyone reads and obeys the law, government gives stiff penalties to those who infringe on a trademark. This gives competitors to registered trademark owners incentive not to use someone else's mark without permission. It also assures mark owners that they can invest in their mark (through advertising and other means) to promote customers' trust and create a justified expectation that a high standard of quality and ethics will come with any product or service bought under that mark.
What can I legally use to identify my services and products without a lot of hassle?
It can be intimidating to even think about all the laws that govern a business. A business just starting out is usually not absolutely sure they want to be in business for themselves and they don't know if their business will be successful. So it is hard for them to invest a lot of time in researching all the laws. They often want to just get out there and do something to try it out.
No trademark shall be refused registration on the principal register unless it .. consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.The Lantham Act, Title 15 United States Code, Section 1125
So, what is the easiest way to identify your products and/or services to the public without a lot of hassle? The answer is simple. Use your own last name. Something that would work would be "John Smith Piano Services". If your legal birth name is "Smith" and all the other words in your mark are generic, then you should be fine. The word "piano" is considered a descriptive name for the product itself, so it is not a conflict to use it when describing pianos. But, if you called your service "Smith Piano Golf Putters", this could come into conflict with a business who has successfully registered the name "Piano" under the category of golf putters. (See Trademark Serial No. 78404835)
It is always wise to check by doing a quick search online to see if there are registered trademarks for people doing business similar to yours. The trademark law is complex and there are instances where you might not be able to use your own last name for marketing particular things. For example, if your last name was "McDonalds", you might find yourself in conflict with a trademark owner if you set up a food chain to sell hamburgers. Take the time to read the rest of this article to get an overview on what the issues are. If you don't want a lot of hassle, it is wise to figure out where the potential problems are and just stay clear of them.
Can I use someone else's trademark on my web site?
Usually it is wise not to use someone else's trademark on your web site without their permission.
There some exceptions to the "Get Permission" rule. No written permission is needed for someone using a mark on their site if they are attaching a link from the words of the mark to the registered owner's web site. For example, if you did a search on a popular search engine, you would probably see many businesses who use Piano Finders or the words "Piano Finder" to refer business directly to our web site. This is not a problem, because it does not create confusion in the consumers mind as to who the name refers to. The web site is using it to direct people to the registered owner as the source of the products and services.
Also, anyone can refer to the registered owner by their mark in a news story or editorial. For example, when Kiplingers Personal Finance Magazine referred to Piano Finders in their article "Call Your Tune" in the April 1, 2000 Issue, this was acceptable use.
When in doubt, get permission from a trademark owner before using their mark.
When am I infringing on someone else's trademark?
This statute authorizes a trademark owner to obtain damages for... unfair competition. Any person who..uses in commerce any word, term, name, symbol, or device or combination thereof, or any false designation of origin, false or misleading description of fact.. which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods and services or commercial activities by another person.. shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.The Lantham Act, Title 15 United States Code, Section 1125
Every trademark owner handles these issues differently. It is up to the trademark owner to search the web and observe the market place for potential infringements on their mark. Although the trademark office will turn down an application for a mark that is confusingly similar to an already registered mark, they do not police the marketplace for infringements. It is the trademark owners responsibility to do that. And when a trademark owner finds something that looks like an infringement, it is their responsibility to ask that person to stop using their mark and to bring the matter to court if just a polite request will not do and government intervention is needed. So, what happens when you use someone else's mark depends upon whether the trademark owner thinks that you are infringing on their mark and whether they even know about it. Today, with the advent of search engines on the internet, if you are getting a lot of traffic to your site because you are using someone else's trademark, then it will eventually come to the attention of the trademark owner.
It is generally accepted that a clear infringement of a trademark would be to refer to yourself or business or activities by using the mark of registered owner without their permission. These would be examples of actions that most trademark owners would consider an infringement:
- The use of domain names that contain a registered mark in its singular or plural form or with other generic words. To name a few, we would consider the following examples to be infringements of our trademark: theofficialPianoFinders.com, NYpianofinder.com, pianofinder.net or pianofinders.tv
- The use of anything similar to a registered mark in the code of your web site. An infringement would be using the mark or anything confusingly similar to it in the meta keyword, author, title, and description tags of a web page. See Meta Tags and Customer Confusion for more information on this subject.
- Naming a document in your web site with anything similar to a registered mark. To name a few, we would consider the following examples to be an infringement or our mark: www.anysitename/pianofinder.htm, www.anysitename/pianofinders.htm, etc.
- The purchase of a domain name that is confusingly similar to a registered trademark for the purpose of depriving the trademark owner of the use of it, to defame the registered owner's reputation or in order to sell it to a trademark owner. This would be considered Cybersquatting and not only comes under US Law, but violates internet use law as well. So, if you discover you are using a domain name that is confusingly similar to a trademark and are notified of it, offer to give the name to the registered trademark owner, don't ask them to buy it from you. They can choose to buy it from you, if they are interested in it. But if they do volunteer to buy it, don't sell it for more than you paid for it. If you tell them or demonstrate to them that you won't stop using it unless they buy it, this would be a show of bad faith.
But what if I think the words in the mark are simply descriptive of what I am doing?
The intent...is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; ..to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce..The Lantham Act, Title 15 United States Code, Section 1127
United States law and International treaties with other countries prohibit you from using anything confusingly similar to a registered trademark for the category of commerce the trademark is registered. The trademark office rejects applications every day for marks that they feel are generic or do not qualify to protected by trademark law. But if a trademark is registered on the principal register, makes it through the rigorous process of opposition and continues to be used in commerce, then a claim that it is generic is very weak. As an example, Piano Finders is registered for International Class 36 and US Class 101 and 102. Trademark law for this category includes the broader commerce of "Insurance; financial affairs; monetary affairs; real estate affairs" and the narrower category of "Piano appraisal services and consultation related thereto, and piano brokerage services". This covers a pretty broad range of activities. But it doesn't cover selling pharmaceuticals, which would be covered under another trademark business category that we haven't registered for and we don't do business in. All of the following services that we have offered to the public since we began using our mark in commerce would be covered under the protection of trademark law. The list includes, brokerage services, selling pianos, buying pianos, free advice, educational articles, consultation, appraisals, piano rebuilding, piano repairs, piano tuning, installing player piano systems, services to music teachers, music lessons, concerts, etc. Our trademark also covers the brokerage services we provide where pianos are not the item being brokered. We continue to broker multiple business related services between small businesses and service providers from many industries.
I'm not charging for my services, so how can I be infringing on someone else's trademark by using it?
There is no reason you can't offer free advice on the web. Most of us do it all the time. But if you are using someone else's trademark to give free advice, you are implying that they have approved of the content of your advice and you may be engaging in unfair competition. You would definitely be coming under the radar for trademark owners and may be liable to damages that you cause their business as a result. "Unfair competition" in US trademark law is something that can carry heavy penalties, if it is proven you are doing it. Just to be safe, don't use other people's trademark names on your web site without their permission.
I only do business in New York, so I can use someone else's registered mark if I put NY in front of it?
A mark is infringed under U.S. trademark law when another person uses a device (a mark) so as to cause confusion as to the source or sponsorship of the goods or services involved. Federally registered marks have a nation-wide geographic scope, and hence are protected throughout the United States... Benefits received through federal registration include... the incontestable status that a mark can achieve after five years of registration, which serves to eliminate most arguments that the registrant does not have the exclusive right to utilize the mark...Attorney Daniel A. Tysver, www.bitlaw.com
There are state trademark registrations that only apply to one state. For example, if someone only registered a mark in California and someone else wanted to use the same mark in New York, that might not be a conflict. But, you cannot use someone else's US registered trademark just because you only do business in one city or state in the US. A United States Trademark covers all geographical areas that are part of the United States for any category of commerce it is registered for. We registered our mark before the internet was popular in 1986. Back then, getting a state registration was an option we had considered. But, we chose instead to register it at the National level, through the US Trademark & Patent Office. Today, I think any business that is on the Internet would probably want to register their trademark at the US Trademark & Patent Office, not only for nationwide protection, but because the US has treaties and conventions with other countries to protect US trademarks here and abroad.
I did a search on domain names and there are several available that are similar to a registered mark. Does that mean I can use them?
The intent...is to protect registered marks used in such commerce from interference by State, or territorial legislation; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.The Lantham Act, Title 15 United States Code, Section 1127
Just because a domain name is available, does not mean that you can use it legally. Domain name registrars (the businesses who sell domain names on the web), are governed by the rules of ICANN which governs all domain names and has the authority to take away the use of a domain name if it is infringing on a trademark. If you read the contract for any registrar selling domain names, you will see that they all include a statement that makes you responsible for the legal consequences of any trademark infringement. When you are registering for a domain name, you are testifying that it does not violate an existing trademark. You may want to check out this article on the Nolo Press web site: How to Obtain a Domain Name that Does Not Infringe on a Trademark
Does a registered trademark owner have to register every variation of their name to be protected?
Trademarks are very different from domain names. If a trademark is published by the Trademark Office in the Principal Registrar then you can't even use variations on that mark. This is different than domain names. You can always buy a variation of a domain name that is similar to another one. But, the registrars don't always make it clear that buying a domain name does not always give you the legal right to use it. They make money off of your registration whether you have to give the domain name up because of trademark infringement or not. Trademark law takes precedence over domain name registration.
I filed for a fictitious name statement, doesn't that mean I can use that name?
US law is a higher authority than state or county law, when it comes to trademarks. You can file a fictitious name registration as well as corporate, LLC or other entity names. But, these agencies don't check to see if the names are confusingly similar to registered US trademarks. So, they don't prevent you from registering a name that might later be denied to you because of a conflict with a registered trademark. The important point here is that you are responsible to find out what the registered trademarks are before you register it with any government authority that is not the US Trademark office. If you don't do that research first, you may find yourself having to give up the name and being assigned penalties by the court for violation of trademark law.I now realize I may have infringed upon a trademark, what should I do?
This statute authorizes a trademark owner to obtain damages for... unfair competition. Any person who..uses in commerce any word, term, name, symbol, or device or combination thereof, or any false designation of origin, false or misleading description of fact.. which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person, or as to the origin, sponsorship or approval of his or her goods and services or commercial activities by another person.. shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such act.The Lantham Act, Title 15 United States Code, Section 1125
A lot of it depends upon the situation. In general, trademark owners are not predatory. They are just interested in protecting the strength of their mark and reputation. The law basically requires that a trademark owner go to court to enforce a trademark violation when the violator is unwilling to comply with the law after being notified of an infringement.
My recommendation is that you quickly respond to any communication from a trademark owner and let them know that you received their communication and are willing to reach a reasonable resolution. Then you might ask if they are open to a discussion of some of your concerns. If you have no special interest in using the owner's mark, it may just be easiest for you to stop using it and let them know you have stopped. It is still important for you to get back to them and let them know you have stopped using their mark and don't intend to use it in the future. This is because you can be liable for fines and damages from what you have done in the past, even if you are not continuing the behavior. If a trademark owner is convinced that you are not going to be a problem in the future, it is likely they will not pursue the court system for legal damages against you for what you did in the past.
If you are a registered mark owner, Trademark attorneys often tell you to send a "Cease and Desist" letter right away when you discover someone is infringing on your mark. This may lead to compliance, but, it can escalate the tension immediately between competitors in a way that may not be necessary. Competitors often need to work towards goals that are in the common good of their industry. So, we recommend that trademark owners treat other people as though they will act in good faith until they prove otherwise. Also we suggest that a trademark owner give a competitor some time to respond and get informed. In our experience, most people infringing on trademarks are doing so out of ignorance, not because they are being predatory. It is easier to work something out with your competitor if you start by attempting to create an environment of trust rather than start out by generating fear. This is what we have decided to do as well, after years of experience trying the other recommended approaches.
Our hope is that by posting this article online, we give people an opportunity to get educated on the matters of trademarks so they can avoid infringement and so that the relationships between competitors can be more often handled in a non-adversarial way, even when there are conflicts of interest.
