The More Whimsy, the Better the Trademark

ast issue's column introduced the subject of protecting software by strategic use of trademarks. This week, we look more closely at the strategy of using trademarks in software and acquiring rights in those marks.

Anything that is not dictated by function and is capable of identifying and distinguishing the trademark owner's software from other products in the marketplace can be a trademark. A trademark must serve the function of identifying the source or origin of the product, rather than identifying or describing the nature of the product. Recently, trademark registrations have been granted on the use of particular colors with certain types of goods and on a particular scent used with yarn.

In addition, there are now provisions for "sound marks," that is, advertising jingles. In the context of software, the arbitrary and non-functional aspects of screen layouts, icons, and the like all can be trademarks.

However, the strength and breadth of exclusive rights in a trademark is a direct function of the distinctiveness of the mark; meaning, the strength and breadth of a mark depends on how closely the mark is associated with the source of the product, as opposed to the nature of the product itself. There is a tendency to select utilitarian marks or to select trademarks that describe the product, its quality, or its function to convey to the consumer information about the attributes of the product. However, the more descriptive or utilitarian a mark, the less protectable it is. The marketplace is likely to be cluttered with closely similar marks, which dilute the recognition value of the mark, and it is extremely difficult to prevent subsequent unauthorized use of similar marks.

Non-functional designs and logos, coined words with no meaning, and arbitrary words with dictionary meanings that are unrelated to the product are the strongest trademarks. Because such a mark is unrelated to and thus cannot describe (or perform any functional aspect of) the product, the mark can only serve as an identification of source - as a trademark. Therefore, the best practice is to design arbitrary or fanciful aspects into the software screens - flying toasters come to mind - that will serve solely as a trademark, and no other function.

In the United States, rights in a trademark can be acquired in two ways. Historically, trademark rights have been obtained by simply beginning actual use of the mark with goods or services in commercial transactions. "Use" of a trademark requires physical association of the mark on, or in connection with, the product and an actual commercial transaction. Where a product is involved, use of the mark solely in advertising or product brochures is not sufficient. Where services are involved, however, use in advertising alone is sufficient. This is not an issue when the mark is incorporated into the software screens.

Under the present laws, trademark rights can also be obtained by filing an application for trademark registration based on a bona fide intention to use the mark in commerce. "Intent to Use" applications for registering a mark have been permitted since late 1989.

To obtain a registration, however, actual use of the mark must commence within a predetermined period (six months, extendible to one year upon request, and up to 24 months for good cause) of a "Notice of Allowance" from the U.S. Patent and Trademark Office indicating that, subject to a proper showing of the use in commerce, the mark is entitled to registration. When granted, the intent to use application will establish constructive use of the mark dating back to the filing date of the application.

Generally, the first to use a given mark in connection with particular goods in a given geographical area obtains the rights to the mark for use with those goods in that area. Registering the mark prevents someone in a geographical area where the mark is not currently being used from subsequently obtaining rights in the mark. In that way, registration can effectively expand the geographic scope of the rights. And, when an application for trademark registration is granted, it is as if use of the mark on a nationwide basis began on the date of the application.

Laws in other countries vary significantly from the United States. For example, some countries require registration, and in some cases, various other formalities, as a prerequisite to any exclusive right in the trademark. In fact, a few countries require that a mark be registered with the government before it is used in that country.

Michael A. Lechter is a member of the law firm Meyer, Hendricks, Victor, Osborn &amp Maledon in Phoenix, Ariz. He has specialized in intellectual property law for more than 20 years, and recently published The Intellectual Property Handbook through TechPress Inc. He can be reached at malechte@mhvom.attmail.com