Chapter 28 - § 28.5 • TRADEMARK LAW
| Jurisdiction | Colorado |
A fourth body of intellectual property law that often affects the construction industry is trademark law. In contrast to patent law, which provides a finite monopoly on specifically defined inventions; or trade secret law, which protects and preserves information learned through confidential relationships; or copyright law, which rewards those who create original expression, trademark law concerns itself with ensuring that consumers are not misled or confused. The touchstone of trademark law is whether the use of words, terms, names, symbols, or other devices is likely to cause confusion, to cause mistake, or to deceive consumers.34
There are two primary facets to trademark law: the first requires truth in advertising and seeks to ensure that commercial advertising and promotions do not mislead consumers or misrepresent the nature, characteristics, qualities, or geographic origin of goods or services.35 The Colorado Consumer Protection Act36 similarly prohibits a wide variety of similar false or misleading trade practices. The second facet of trademark law seeks to prevent confusion as to the affiliation, connection, or association of one person or company with another or as to the origin, sponsorship, or approval of one person's or company's goods or services with another.37 Each is specifically addressed below.
§ 28.5.1-Truth in Advertising
Historically, state and federal trademark and unfair competition laws have been motivated to prevent forms of consumer fraud. "[U]nfair competition - of which trade mark infringement is but a part . . . - is, broadly speaking, grounded on the right of both dealer and purchasing public to be protected from frauds of which both are victims."38 In the construction industry, fraud can take many forms, from deceiving consumers about the square footage or quality of their new single-family home, to "plan stamping" the architectural plans or construction documents taken from another and claiming them as one's own. The use of false or misleading descriptions of fact, and the use of clever innuendo alike, can be actionable under the federal Trademark Act of 1946 (the Lanham Act),39 and under the Colorado Consumer Protection Act.40
A survey of the construction industry cases relying upon this section of the Trademark Act would require several volumes and is probably unnecessary to convey the relatively simple essence of the law's requirement: Representations of fact in promoting and advertising goods and services or describing one's own or another's commercial activities must be truthful.41
Of recent interest to the construction industry is the practice of "greenwashing," or exaggerating or misrepresenting the environmental benefits associated with a product or project. With rising consumer demand for environmentally friendly and high-efficiency products, greenwashing has become an increasingly common tactic by which builders and product manufacturers market themselves and set themselves apart from competitors. A common form of greenwashing is overstating or misrepresenting the LEED-certification credentials of a product or building.42 This form of greenwashing includes a manufacturer's making a claim that a particular product can earn a certain number of LEED points or a developer's advertising an unfinished project as "LEED-certified" when only completed projects receive that designation. In fact, LEED is both a federally registered service mark, for educational services in the field of environmental design, and a federally registered certification mark only to be used by persons authorized by the U.S. Green Building Council to certify that a commercial, institutional, or residential building, neighborhood, or development has met certain design, construction, operations, and maintenance standards adopted by the U.S. Green Building Council. Uncertified uses of LEED can be infringing.
The Federal Trade Commission has taken note of greenwashing generally, issuing regulations addressing the practice. Commonly known as the "Green Guides,"43 these regulations require those making environmental claims to have a reasonable basis for substantiating their claims, which "will often require[] competent and reliable scientific evidence."44 While there is no specific private right of action by which a private litigant may enforce these regulations against a greenwashing company, the Green Guides nonetheless provide a basis by which a private litigant might use the Colorado Consumer Protection Act or the U.S. Trademark Act (the Lanham Act) to bring a claim of deceptive advertising.
§ 28.5.2-Avoiding Consumer Confusion - Searching and Clearing
A second and equally significant aspect of the trademark laws is to protect consumers from confusion as to the affiliation, connection, or association of one person or company with another or as to the origin, sponsorship, or approval of one person's or company's goods or services with another's.45 Those offering goods or services of any kind, including those in the construction business, from designers, architects, and contractors to vendors of materials and equipment, should recognize that they may own or acquire trademark rights in the words or logos they use to identify themselves and their goods or services.
Trademark rights arise from using a word, phrase, logo, slogan, or other source indicator in the course of offering or selling goods or services. No registration with the state or U.S. Patent and Trademark Office is required in order to own and enforce trademark rights and prevent others from later adopting confusingly similar marks.
When a new product or service is going to be offered under a new trademark, the proposed mark should be searched to ensure no earlier use has been made of the proposed mark or a confusingly similar mark. Because trademark rights arise from use, and not registration, a search of the state or federal trademark registries alone is generally insufficient to assess the availability of a mark. Commonly, comprehensive trademark searches of these registries as well as trade...
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