Protecting Your Company's Trademark.

• Author: Spendlove, Gretta C.
• Position: Brief Article

Jordache Enterprises Inc. v Hogg Wyld Ltd. was a colorful lawsuit. The owner of the trademark for Jordache blue jeans brought a trademark infringement suit against a company making blue jeans for larger women. The jeans had a smiling pig and the word "Lardashe" on the seat of the pants.

The court held that the Jordache trademark was not infringed upon by the "Lardashe" mark. The standard for infringement is whether there is a "likelihood of confusion" between the two marks. The court decided that Lardasche intended to parody Jordache jeans, but that the parody was not intended to, nor did it, confuse the public as to the quality of Jordache's product. The court commented, "This case ... reminds us that 'you can't make a silk purse out of a sow's ear.'"

How valuable is the McDonald's golden arches symbol, the name "Big Mac," and the Nike checkmark? Company names, brand names, logos, and slogans all can be trademarked and extremely valuable company assets. Here are a few pointers on protecting your company trademarks:

Identify names, logos and slogans that should be protected. Brand names (Campbell's soup, Billabong) are the most obvious trademarks. But the universe of trademarks is much broader than that, and includes company names (H&R Block), logos (the Democratic donkey), and slogans ("Be all that you can be.").

When choosing a new name, pick one that's easy to trademark and protect. Fanciful, or "made-up" names like Coca-Cola, Nike, Kodak, and Xerox, are easier to get trademarks on and protect than are names that merely describe what you do (Pet Shop or Mother Care Obstetrics), or names using common, descriptive words (Aspen Hospital or Lighthouse Insurance).

If trademarks are used across state lines, conduct a federal trademark filing. The greatest protection for trademarks comes with a federal filing. They are expensive (a minimum of $325 per mark for filing fees, not to mention any fees for searches or preparation) and they take a long time (approximately one year from application to approval). But they are essential if the trademark is valuable and you are expanding across state lines. If doing business abroad, you may also need foreign filings.

Even without filing, you have a common-law trademark in the area in which the mark is actually used. By...