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It’s a little known fact outside of legal circles that Escalator and Aspirin were once trademarks. But to the guardians of corporate intellectual property, the transformation of those brands into common words keeps people up at night, and keeps letters and lawsuits flying from the desks of corporate lawyers all over the country.
The purpose of a trademark is to make sure that customers can properly identify the source of any given product: a Coke will always be a real Coke (unless it is a blatant counterfeit.) As long as trademark law is in force, some random guy can’t build a go-kart and call it a Cadillac, and no one is allowed to open a burger stand called “McDonald’s.”
Businesses would do well to understand at least the basics of trademark and copyright law, say lawyers Laura Winston and Fizoureh Nur-Vaccaro, partners at the New York and New Jersey firm of Kim Winston LLP. The two lawyers will discuss copyright and trademark procedures for business in a gathering of the Coffee Talk group on Friday, October 3, at 9:30 a.m. at 830 State Road, Princeton. Tickets are $10 for nonmembers of the group and free for Coffee Talk members. For more information, visit www.coffeetalknj.com or E-mail firstname.lastname@example.org.
“If you’re adopting a brand, make sure that you’re not copying someone else’s brand,” Winston says. “At the same time, take appropriate steps to secure your own rights to the brand.”
Winston advises companies to get a lawyer to do a trademark search to make sure their brand does not run afoul of existing trademarks. Even the smallest local business would do well to take this step to avoid legal trouble, because it’s not just large companies that end up in trademark disputes.
For a local business, the search might be limited to a small geographic area, since it makes little difference if a one-location pizza place in Princeton has the same name as one in Arizona. The process gets more complicated as the scale of the business increases, and can become Byzantine in the world of international business, where the trademark laws of multiple countries come into play.
“There is no one, unified way to protect a trademark around the world,” Winston says. “One thing to consider, when dealing in goods and services, is that in some countries, you could get ripped off even if you don’t plan on doing business in those countries. You may want to seek trademark protection to make sure you have the option to stop counterfeiters.”
Some corporations protect their trademarks more zealously than others. Lego Corporation, for example, has been known to send letters to journalists at weekly newspapers who use the word “Legos” rather than the company’s preferred “Lego brand bricks” when referring to Legos.
“They’re afraid that if everybody refers to all kinds of plastic building block as ‘Legos,’ everybody will be able to make legos. It will become a generic term as opposed to a trademark,” Winston explained. “They spend a lot of time and money on it, and they bring lawsuits against people who are selling bricks and referring to them as ‘legos.’ They are monitoring all kinds of publications, and really taking the time to educate the public that Lego is their trademark.”
Copyright is a rapidly evolving and more nebulous legal frontier, Winston says. While cases of trademark infringement can be clear cut, copyright law is complicated by the existence of “fair use” — times when it is appropriate for someone to quote original content produced by others.
One thing to keep in mind is that any creative work is automatically copyrighted by the creator without registering it with any authority. However, the copyright is impossible to enforce unless the copyright is registered with the Library of Congress. “You can’t go after anybody unless you have it registered,” Winston says.
A copyright registration costs $35, whereas it costs $325, plus legal fees, to register a trademark. “Artists and photographers might want to apply for copyright protection,” Winston says.
One odd wrinkle in copyright law is that it doesn’t apply to movie and book titles. However, a series of books or movies, with merchandising tie-ins, becomes a trademarked brand. In other words, publish a “Harry Potter” book at your own risk.
Winston also recommends using the C, TM and R symbols. Despite their graphical ugliness, these symbols let the world know the word is a trademark, rather than a generic name. The r means the trademark is registered and provides additional rights.
Winston grew up in Englewood. Her parents owned a racquetball club in West Orange. “I originally thought I was going to go into family law,” Winston recalls. “I wanted to work in child advocacy or family law, but when I applied to law school, I ended up taking a very different career path than what I originally thought I would do.” Winston earned a bachelor’s at Tufts and a law degree at Rutgers. Her legal career spans 20 years, with clients ranging from startups to Fortune 100 companies. She is a member of the International Trademark Association. Winston lives in Westchester County north of New York.
The underlying principle of all trademark disputes goes back to the original purpose of trademark protections, which is to help the consumer.
“Generally, it’s going to turn on the likelihood of confusion,” Winston says — whether the alleged trademark violator is making a similar product to the complainant. Courts have also recognized that the more famous the brand, the more far-reaching its trademark protection. “If a name is being used for two trademarks that are not particularly well known, and one is for computers and the other is for earrings, that’s not going to be considered a trademark violation,” she says. “But if I were to start selling earrings and calling them ‘Samsung Galaxy Earrings,’ I might be in trouble.”