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Legal VIEW

Trademark Protects Product's Identity

June 25, 1987|JEFFREY S. KLEIN

Why is it that whenever I visit a Taco Bell and order a Coke, the person behind the counter responds, "Is Pepsi OK?"

Now, don't tell me it's because the company that owns Taco Bell makes Pepsi-Cola. That's true, but it's not the real reason.

There is a legal reason.

It's for the same reason that the Xerox Corp. has spent thousands of dollars advertising that "Xerox" does not mean "photocopy," and that the manufacturer of Frisbee disks has its lawyers warn newspapers whenever they refer to Frisbees generically, as if any old flying saucer disk was a Frisbee.

Trademark law.

A trademark is a word, graphic design (called a logo) or symbol used to represent a particular product. You see them all the time. You know they are trademarks, because they are usually followed by a little circle with the letter R in it.

The worst possible nightmare for a trademark lawyer is to have a trademark become generic. That means the mark has become too successful. Everyone associates it with the product, and the product description is now superfluous.

Aspirin, cellophane, shredded wheat and trampoline were all at one time trademarks, but they became generic.

And then anybody can use them, not just the trademark owner.

Trademarks are protected by both federal and state law. The federal statute, the Lanham Act, was meant to protect against "palming off" and to prevent consumer confusion about the source. If you buy a shirt with a little polo horse and rider above the heart, you know it comes from Ralph Lauren. If you find that logo somewhere else, say on a necktie or even a water pistol, the consumer reasonably expects it comes from the Lauren organization. If it doesn't, that manufacturer is probably violating trademark law.

Trademark owners must protect their marks, or they could lose them. That's why the Coca-Cola company doesn't want restaurants selling some other cola and calling it Coke on the menu, and why companies often use a product description after their name, such as Kodak film or Scott tissue.

A service mark provides the same protection for services as a trademark does for products.

If you are starting a business and want to create a trademark to protect your new product, you'll need an experienced trademark lawyer. It's a specialized area of law, and you don't want to make a mistake.

If you pick a descriptive name, it is more difficult to obtain trademark protection. Say you name your new gardening tool Weedreaper, which describes what it does. You'll have to show that the mark has a "secondary meaning"--that when consumers see that name, they associate it with your company--in order to benefit from the trademark laws.

Surprisingly, you cannot simply go and register your proposed new trademark. You must place the mark in interstate commerce, that is, sell the product with the mark across state lines, before you can register it.

So if you're planning a new product with a dramatic name or logo, keep quiet. Only tell the people you trust about your dynamite idea, or you may find someone else using it first. And you won't have any recourse under federal trademark law, though you may have other remedies, such as fraud or unfair competition, depending upon state law and the circumstances under which you disclosed the information.

Trademark registration does not ensure that no one else can use the same or a similar mark, but it does provide a legal presumption that you are the rightful owner of the mark.

Attorney Jeffrey S. Klein, a member of The Times' corporate legal staff, cannot answer mail personally but will respond in this column to questions of general interest about the law. Do not telephone. Write to Legal View, You section, The Times, Times Mirror Square, Los Angeles 90053.

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