The Artful Jurist

An Artful Jurist reader has asked a good question, and I thought I’d share my response. Following up on the prior post, titled “The Common TM,” the reader wants to know if a phrase can be trademarked even if that same phrase has been commercially used previously as a non-trademarked phrase.

Trademark law doesn’t require that something be a first-time-ever-conceived-of wording or logo. It’s highly possible that Coca-Cola wasn’t the first business entity in the history of the world that ever utilized the phrase “It’s the real thing” in reference to a product or service. However, at some point, Coca-Cola’s ad campaign caused the phrase to acquire a secondary meaning in the public’s mind that made that specific combination of words a recognizable trademark of Coca-Cola, and it remains so today.

The key to understanding trademarks is that they’re supposed to prevent confusion. If two competitors were allowed to use the same mark in the market, the public would have no way of differentiating them, and that could result in people purchasing something other than what they thought they were buying. This is what trademark law is designed to avoid.

If, however, two people are using the same mark to market non-competing products?or if their respective markets are two separate, limited geographic regions where there would be virtually no chance that their selling areas would overlap?then the chance of public confusion is lessened, and use of the same mark might be legally permissible. A trademark on the national register of the Patent and Trademark Office protects its use nationwide. Otherwise, the trademark’s protection extends only throughout its market. Also, trademarks can expire over time through non-use. If a business ceases to use a mark, then eventually someone else might be able to pick it up.

Also important is to keep in mind that, even if a phrase or logo isn’t designated as a trademark, there are still unfair competition laws that are also designed to prevent confusion in the market. If there’s a reasonable likelihood that the public will mistake one person’s use of an image or phrase with a pre-existing image or phrase used by a competitor, then that, too, could be the catalyst for a lawsuit under state laws.

As with all legal issues, if you’re unsure about your situation, consult a lawyer.