Trademark And Service Mark Basics And Issues In Internet Law

Updated January 2019

By Ethan Watts

Trademarks and service marks are a type of intellectual property used to distinguish goods (trademarks) or services (service marks). Trademarks and service marks can be phrases, logos, slogans, designs, images, or any combinations of the same. Trademarks and service marks are protected under both Federal and California law. Federal law covering trademarks and service marks is found at 15 USC §§1051 et seq. (the “Lanham Act”), while California law is codified at Business and Professions Code §§14200-14272 (the "Model State Trademark Law").

Even though a business has not registered a trademark or service mark, there may be common law protection for a “trade name.” Academy of Motion Picture Arts & Sciences v. Benson (1940) 15 Cal. 2d 685. However, there are several advantages to registering trademarks and service marks (trademarks and service marks are treated alike under Lanham Act). Among the advantages of federal registration, registered trademarks or service marks: may be accompanied by the “®” symbol; are protected under the Lanham Act for a period of 10 years (subject to renewal); provide evidence that the mark is valid and has been used continuously in commerce since the filing date; allow the registrant to sue for trademark infringement in federal court (and if the lawsuit is successful, the registrant can recover attorney’s fees and treble damages if the infringement was willful); and allows the registrant to seek remedies under cybersquatting laws.

Whether or not a mark can be registered and the degree of protection a trademark or service mark receives depends on the distinctiveness of the mark. The distinctiveness of trademarks and service marks are categorized on the following scale:

• Coined:
  Coined marks are invented and have no inherent relationship to the underlying goods or services (e.g. “Google” used in connection with an internet search engine). Coined trademarks or service marks are inherently distinctive and can be registered without the need to prove “secondary meaning.”
• Arbitrary or fanciful:
  Arbitrary or fanciful marks, while not invented words, do not describe the product or service (e.g. “Oracle” used in connection with database software). Arbitrary or fanciful trademarks or service marks are inherently distinctive and can be registered without the need to prove “secondary meaning.”
• Suggestive:
  Suggestive marks relate to and characterize the good or service in some way, but do not clearly convey the nature of the underlying good or service (e.g. “7-Eleven” used in connection with a convenience store that stays open from 7:00 a.m. to 11:00 p.m.). Suggestive trademarks or service marks are inherently distinctive and can be registered without the need to prove “secondary meaning.”
• Descriptive:
  Descriptive marks actually describe the good or service (e.g. "Honey Roasted Peanuts" used in connection with honey roasted peanuts). Descriptive marks cannot be registered on the principal register until they acquire “secondary meaning.” 15 USC § 1052(f). Examples of descriptive marks that have acquired a secondary meaning: “Raisin Bran” cereal, “Honey Wheat” bread and “Yellow Pages.” Consumer perception surveys may establish distinctiveness.
• Generic:
  Generic trademarks or service marks use common words to describe a product or service (e.g. “Green Apples” used in connection with green apples). Trademarks or service marks can also become generic by becoming the common name used in connection with the product or service (e.g. “Aspirin” or “Zipper”). Generic marks cannot be registered.

Traditional trademark and service mark infringement analysis has been applied by the courts to internet related issues. Courts have applied the “likelihood of confusion” test of the Lanham Act to the use of trademarks as metatags on websites. See Playboy Enters. V Netscape Communications Corp. (9th Cir. 2004) 354 F.3d 1020, 1026. Strong similarities between trademarks or service marks and words used as metatags in a website’s code may also constitute infringement under the Lanham Act. See Seuss Enters., L.P. v Penguin Books USA, Inc. (9th Cir 1997) 109 F. 3d 1394, 1405.

The use of trademarks or service marks in pay per click or other similar services without the right to use the marks may also constitute infringement. See Google Inc. v American Blind & Wallpaper Factory, Inc. (ND Cal, April 18, 2007, No. C03-5340 JF (RS)) 2007 US Dist. Lexis 32450. Courts have also applied trademark infringement analysis to key word / search term density practices on websites. See, e.g., J.K. Harris & Company, LLC. v. Kassel, 62 U.S.P.Q.2d 1926, 2002-2 Trade Cas. (CCH) ¶ 73847, 2002 WL 1303124 (N.D. Cal. 2002), opinion vacated and superseded on reconsideration, 253 F. Supp. 2d 1120, 66 U.S.P.Q.2d 1455 (N.D. Cal. 2003).

Thus, traditional trademark and service mark infringement analysis has been applied to internet related activities, and such analysis must be taken into consideration by businesses with an internet presence.

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The above discussion is intended to be a general commentary on legal issues. Each situation is different and this article is not intended as legal advice. Further, nothing in this article is intended to create an attorney-client relationship.