Protection of Descriptive Trademarks Requires Proof of Secondary Meaning or Acquired Distinctiveness

Play Show: Traverse Legal Radio - Brian Hall discusses Trademark Secondary Meaning Matters
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Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

DAMIEN ALLEN:  Good afternoon and welcome to Traverse Legal Radio.  My name is Damien Allen from Studio A today, and we are speaking on the phone with Brian Hall. Brian is an attorney with Traverse Legal, PLC. Brian’s practice focuses on trademark matters, including trademark clearances and registrations, oppositions and cancellation proceedings in front of the TTAB, licensing issue and federal court litigation.  Brian also regularly handles domain dispute resolution, internet law matters and related business representation matters.  Today we are talking about the requirements for a secondary meaning of descriptive trademarks, and I guess the first thing I need to say is Welcome to the show Brian.

Trademarks Designate a Single Source of Goods and Services

In order to have trademark rights, your mark needs to designate your products and services in commerce.  As importantly, your mark needs to be unique within the categories of goods and services you offer.  If more than one company is using the same or similar mark in commerce with regards to the same or similar goods or services, the trademark may be weakened or worse invalid.  It is important to protect the literal word/mark as well as similar uses within your business niche.

Teen Ignores Trademark Infringement Threat Letters From The North Face

Should I ignore a trademark infringement threat letter?

A Missouri teenager has picked up significant publicity after he rebuked North Face’s cease and desist threat letter concerning the North Face mark.  Teenager Jimmy Winkelmann says that his business, The South Butt, does not pose a trademark threat to North Face.  North Face argues that the teen’s use of The South Butt mark is confusingly similar to the use of the North Face mark.  The teen has applied for trademark registration of The South Butt with the US Patent and Trademark Office in International Class 035, namely, for use in association with mail order and online stores that sell clothing.

Ignoring a trademark cease and desist letter is typically not a good strategy.  A cease and desist letter for trademark infringement is something that you need to take seriously, whether you have a registered mark or not.