Recent Trends and Tips

The most recent and notable developments in copyright law have focused on the impact of peer-to-peer (P2P), file-sharing software on the rights of copyright owners. Most people are familiar with the lawsuit brought by a number of record companies against the creators of Napster, the P2P service utilized by many Internet users to trade and download copyrighted material such as music in the form of MP3 files. This law is still developing, and it may significantly impact music, entertainment, and other businesses.

The most important steps for a copyright owner to take in protecting copyrighted material are obtaining a copyright registration and providing copyright notice. Taking these steps will deter infringers and protect one's financial investment in the copyrighted works.

A trademark is a word, phrase, symbol, device, or other designation that is used to identify a manufacturer or sponsor of goods, and to distinguish such goods from those manufactured or sold by others. Within certain limits, trademarks can consist of almost any type of distinctive matter including a word or phrase, personal name, symbol or logo, design, slogan, product shape, color, or a combination of these. In the pharmaceutical industry, trademarks commonly consist of a company name, logo, and drug names, and in certain limited circumstances may include colors, flavors, and shapes of products or packaging. Trademarks serve primarily as source identifiers, informing others that the trademarked product comes from a certain source, and enabling the trademark owner to build goodwill via its products and services. Trademarks also serve to denote a standard of quality, and to protect the public from confusion. Trademarks often represent a substantial advertising investment and can be among a company's most valuable assets.

Governing Law and Distinctiveness

Trademark protection in the US is based on a dual system of federal and state laws. The basic federal trademark statute is the Lanham Act.⁸ At the state level, both the common law of unfair competition and a network of state statutes apply. These federal and state trademark laws overlap to a great extent. Trademark registration is possible on both the state and federal levels, with federal registration providing broader protection.⁹

Only trademarks that are distinctive are eligible for protection. Distinctiveness means the ability to identify the product or service of a particular manufacturer, i.e., the ability to serve as a source identifier. Trademark distinctiveness exists in varying degrees. The scale of a trademark's distinctiveness, from most to least distinctive, is described in terms of marks that are: (1) fanciful — made-up words (e.g., Kodak, Google), (2) arbitrary — marks that are common words used in unexpected ways (e.g., Apple for computers, Amazon for online book sales), (3) suggestive — marks that require some imagination to link the mark to the goods (e.g., Coppertone, Roach Motel), (4) descriptive — marks that describe the goods and convey an immediate idea of the product's characteristics (e.g., Japan Telecom [a telecommunications business that caters to the Japanese community], Tires Plus), and (5) generic — words that refer to a class of objects (e.g., aspirin, shredded wheat). In general, fanciful, arbitrary, and suggestive marks receive automatic protection because of their inherent distinctiveness. Descriptive terms are protected only upon proof of distinctiveness acquired in commerce, commonly referred to as "secondary meaning."¹⁰ Generic terms are not entitled to protection because they do not distinguish the source of the goods and because fairness requires that such terms be available to competitors.¹¹

Establishing Trademark Rights

Selection of a new trademark is the most critical step in establishing trademark rights. Once a potential trademark is selected, a trademark search or other investigation should be undertaken to determine if the mark is identical or confusingly similar to a previously registered mark, a mark subject to a pending application, and, to the extent possible, unregistered and foreign marks.

Actual use of a trademark alone establishes trademark rights under common law.¹² Registration is not necessary. Registration, however, provides additional substantive rights and presumptions, including constructive notice to others of one's use of the mark, and presumptions of ownership and validity of the trademark.¹³