March 25, 2014 By: Jon Cohen, Attorney at Law
Consider the following hypothetical situation: daughters and sons inherit a business from parents that has always been operated using the trademark “Elegance Interior Designers.” It is based in and operates in Cincinnati, Ohio, where it has been in business for twenty years. The parents adopted and began using the trademark at the outset, and the mark has been in continuous use since then.
The parents did not register the trademark with the Ohio Secretary of State or with the United States Patent and Trademark Office.
Shortly after assuming ownership of the successful business, the children learn of a recently started competitor operating as “Elegance Interiors.” This competitor operates both in Cincinnati and Columbus, Ohio. The competitor registered its trademark with the Ohio Secretary of State immediately upon its adoption and use of “Elegance Interiors.”
The owners of “Elegance Interior Designers” want “Elegance Interiors” to cease its use of the confusingly similar trademark. Assume the owners of “Elegance Interior Designers” have filed suit in the Cincinnati Court of Common Pleas to halt the putatively infringing use of “Elegance Interiors.” At the threshold, there are two problems: is the “Elegance Interior Designers” mark protectable under the common law, and what limitations exist on its owners’ right to preclude the use of “Elegance Interiors”?
1. Degree of Protection Afforded a Descriptive Trademark Under the Common Law
“Elegance Interior Designers” is a mark the court would likely deem “merely descriptive” of the goods and services it describes. That is because it is a composite of “Elegance” and “Interior Designers.” The word “Elegance” describes a characteristic or a quality of the goods and services (hence it’s merely descriptive), and the words “Interior Designers” are generic (generic words are not protectable as trademarks). Had its owners attempted to register it with the Ohio Secretary of State, it would most likely not be registrable under the applicable law in Ohio, absent proof of “secondary meaning.”
“Secondary meaning” is a trademark law concept that refers to the distinctiveness a trademark has acquired in the minds of consumers. That is, it is proof that the mark is understood by the public to refer to the goods and/or services provided specifically by the mark’s owner and no one else.
Under the common law (the decisional law of the courts, as distinct from laws set forth in statutes), the concept of “secondary meaning” is relevant to a determination of whether a descriptive mark can be protected in a legal proceeding. “Secondary meaning” must be found before there can be a determination a putatively infringing second mark causes the critical “likelihood of confusion” regarding the source of the goods and/or services being identified by the first mark (see, e.g., The Cincinnatus Association v. The Cincinnatus Party, 441 N.E.2d 575, 35 Ohio App.2d 65 (Ohio App. 1 Dist. 1981), concerning geographically descriptive marks).
It is useful to refer to the information on the Ohio Secretary of State’s website regarding how one might establish “secondary meaning” when attempting to register a mark, as a court would be likely to give weight to the same considerations described on the site. Two examples of evidence supporting “secondary meaning” are professionally conducted consumer surveys (which can be expensive) and the length of time the mark has been used in commerce such that consumers of the goods or services the mark identifies would associate the mark with only its owner and not the owner’s competitors. A caveat, however: advertising and growth, by themselves, do not establish “secondary meaning.” Mr. Gasket Co. v. Travis, 299 N.E.2d 906, 915; 35 Ohio App.2d 65 (Ohio App. 8 Dist. 1973).
In Ohio, another avenue of legal redress for the holder of an unregistered, descriptive trademark against a putative infringer is the Ohio Deceptive Trade Practices Act, O.R.C. § 4165.01. The Mr. Gasket was a case for injunctive relief under § 4165.03 involving a claim of confusingly similar trade dress (product packaging), and the court considered whether the requisite “likelihood of confusion” had been shown in the context of a claim under § 4165.02(A)(2). That subsection states:
“(A) A person engages in a deceptive trade practice when, in the course of the person’s business, vocation, or occupation, the person does any of the following:
* * *
(2) Causes likelihood of confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods or services; . . .”
The appellate court noted the “likelihood of confusion” turns upon a showing of “secondary meaning” (stating “[t]here can be no confusion of source without secondary meaning”). It found the evidence put forward by plaintiff insufficient to establish “secondary meaning” of the trade dress at issue in the case (colors denoting automotive gasket types and part numbers shown in catalogs). The appellate court rejected the trial court’s award of attorneys’ fees under 4165.03(B), holding it was premature to award fees until a proper showing of “secondary meaning” had been made. The appellate court remanded to the trial court for further proceedings to determine whether “secondary meaning” could be established.
If the owners of the “Elegance Interior Decorators” trademark could show “secondary meaning” and a “likelihood of confusion,” they might be able to prevail in a civil case for an injunction against use of the “Elegance Interiors” trademark. If they could show that the latter mark was adopted as a willful effort to deceive the consuming public into confusing the sources of the goods and services, they could get an award of attorneys’ fees under § 4165.03. Although § 4165.01 et seq. offer an additional avenue for protecting an unregistered mark, a strategic approach to trademark adoption would involve a registrable trademark selected at the outset. Thus, the trademark owner would have the benefits provided by registration in addition to common law protection a court might be willing to provide.
2. Enforcing Rights In a Senior Unregistered Trademark Against a Junior Registered Trademark
May the owners of a trademark that was never registered prevail in efforts to halt the use of a junior mark that has been registered? Yes, under Ohio Revised Code section 1329.67(A), provided the date the unregistered mark was first used in commerce is before the first use date of the registered one. O.R.C. § 1329.67(A) states:
“Sections 1329.54 to 1329.67 of the Revised Code do not adversely affect the rights or the enforcement of rights in trademarks or service marks acquired in good faith at common law prior to any of the following times:
(A) Prior to another person’s registration in this state of a trademark or service mark, with the registrant having a subsequent first use date; . . .”
Assuming that the owners of “Elegance Interior Decorators” could establish the “secondary meaning” and “likelihood of confusion” discussed above, the fact of the registration of the putatively infringing mark “Elegance Interiors” would not preclude a legal remedy (or at least an equitable one by way of injuction).
The “Take-Away”
Ultimately, registration is the best route for the owners of a trademark or service mark. If the mark is sufficiently distinctive; i.e., it is within the category of “fanciful” marks like “Kodak” (a word that has no meaning aside from the camera products it represented) or it is an “arbitrary” mark like “Saturn” for cars (a word whose normal meaning bears no relation to the good or services it is meant to identify), it would be registrable. Indeed, some “suggestive” marks would be registrable if they are not “merely descriptive” of a characteristic or quality of the goods or services. As noted, “merely descriptive” marks can be qualified for registration upon a showing of “secondary meaning.”
In the best of all possible circumstances, a company owner about to launch operations would consider the strength of a trademark before adopting and using it in commerce. The best route would be to select a trademark that is fanciful or arbitrary (as described above), and to register it with both the Ohio Secretary of State and the United States Patent and Trademark Office. Registration affords benefits that the common law does not (such as evidence of adoption and use, and enhanced damages in case of willful infringement), Such benefits aside, it also acts as a sounding board to the trademark owner regarding the strength of the mark. For example, if registration is sought at the same time as adoption and first use in commerce, a trademark owner could switch to a stronger mark if registration of the initially submitted mark is denied.
