1972, May, Pg. 11. Trademark Advice for Colorado Lawyers.

• Author: by W. David Pantle

1 Colo.Law. 11

Colorado Lawyer

1972.

1972, May, Pg. 11.

Trademark Advice for Colorado Lawyers

11Vol. 1, No. 7, Pg. 11Trademark Advice for Colorado Lawyersby W. David PantleW. David Pan tie, Denver, is a partner in the firm of Dawson, Nagel, Sherman & Howard.Attorneys in general practice are called upon from time to time to consider trademark matters. Most businesses use some design, slogan or other device in an attempt to establish a distinctive identity in the minds of the public. Names for new products are created. Old marks, which are antiquated in appearance, are discarded in favor of new marks with a modern flair. Existing businesses, with their marks and goodwill, are bought and sold. Franchises may be purchased or sold, typically including a license to use trademarks of the franchisor. A "cease and desist" letter claiming infringement of the mark of another may be received, or your client may indignantly complain that another has copied his mark.

The purpose of this article is to give suggestions for answering some of the common trademark questions which you may receive from your business clients. Common questions include:---Are we free to use the trademark?

---Should we register the trademark?

---Can we stop "them" from using our mark?

This article will not attempt generally, to survey the law of trademarks, nor will it discuss in detail the mechanics of preparing an application for registration once a decision to register has been made.Basic RulesYou should be familiar with the following rules and suggestions when you approach your client's inquiry:

(1) The right to use a trademark in this country is gained by being the first to adopt and actually to use the mark.

(2) There is presently no provision in this country for advance reservation of a trademark---the mark must actually be used as a mark before any rights are acquired.

(3) The rights gained by adoption and use of a trademark are given by common law and not by statute.

(4) Registration of trademarks is authorized by state and federal statutes, and registration primarily gives procedural protection and not substantive rights.

(5) Registration in Colorado is on printed forms, and is very simple and inexpensive but is of little value.

(6) Federal registration, which may be very valuable, appears to be simple but in some instances may require a considerable amount of time and expense.

(7) A service mark is used in connection 12with services rendered, such as by a restaurant or a real estate broker; a trademark is used on goods made or sold. Service marks are a variety of trademarks and are eligible for federal or Colorado registration, although many states do not yet authorize service mark registration.

Right to Use TrademarkProbably your client has already begun using the mark, perhaps on his letterhead or in advertisements, when he first consults you. The inquiry may be precipitated by his concern that someone else is using the mark, or that the mark is so good that others are likely to copy it. First, you must see the mark and see examples of how it has been used. Is the mark actually being used as a mark on the goods or in connection with the services? Is the mark merely generic---the common name of the goods or services themselves---such as "School of Dancing," so that no exclusive rights can be acquired in it? Is the mark so trite or widely used, such as "Best" or "Western," as to be entitled to only limited protection? Is the mark descriptive of some aspect of the goods or services, such as "Savmotor" for an oil additive? Is it geographic, such as "Manitou Springs" or "Indian Territory?" In such cases the mark must become distinctive; it must become generally associated by the public with these specific goods or services ("secondary meaning") before others may be excluded.

Once you have scrutinized the mark itself and its use by your client, you need to ascertain whether use of your client's mark has already been preempted by another's earlier adoption of the same or of a confusingly similar mark for the same or similar goods or services. Your client is one source of information; he may know of others using the same or a similar mark. You can obtain some idea of possible prior use in Colorado by telephoning the Colorado Secretary of State (892-2355) to ascertain whether you could obtain Colorado registration. It is highly desirable to investigate use throughout the United States by obtaining a trademark search by a professional trademark service, which will review all federal registrations and pending applications in the United States Patent Office and provide you with copies of marks deemed by the service to be similar to yours. Such services advertise in the American Bar Association Journal, in telephone directories, etc. Searches can be ordered by telephone and the results be received by air mail within two days. The cost is roughly $25 to $40 per search. If the mark consists of both words and a design, at least two searches will be needed. The search may be expanded at additional cost to consider all state registrations, and also common law sources, such as trade directories, but usually that is not...