Protecting your product:
Business owners have four ways to protect their “ideas or creations”: (1) trade secrets, (2) patent, (3) copyright, or (4) trademark. Generally, there is confusion over the correct route for a business owner to take. Trade secrets are in place to protect a company’s valuable proprietary information from the public. Patents are in place to allow inventors the right to exclude others from making using, selling, offering for sale, or importing their invention for a specified term of years. It is most commonly noted that the general public is unclear on the difference between copyright and trademark protection. However, it is important to know the difference between the two because they are distinguishable. First, copyrights are in place to protect the expression of ideas in the form of original works of authorship. In other words, a work must be a fixed tangible object to be eligible for copyright protection. Finally, it is important to note that ideas themselves may not be copyrighted. However, this article will focus on trademark law. Contact an intellectual property or trademark attorney to determine which protection would be best suited for your business.
Purpose of a Trademark:
The purpose of a trademark is to provide protection and assurance to the consumer that the product that he/she has purchased is the authentic creation of the owner. Naturally, a consumer experiences confusion when a business offers a product with a similar symbol, name, or mark as another popular business. Because of this potential for confusion, business owners are urged to protect their product(s) by trademark.
According to the North Carolina General Statutes, a trademark is “any word, name, symbol, device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Trademarks offer protection to (but not limited to) the following: Names, Service Marks, Color(s), and Sound(s). Some well-known examples of trademarks are: the Apple logo, Microsoft, Google, Walmart, and Bank of America. See Forbes “The 10 Most Valuable Trademarks” for more information on these famous trademarks. 
Sample Case Law #1 – Using the same name in the same area is risky:
Windsor Jewelers, Inc. v. Windsor Fine, LLC was a case decided in 2009 between two small jewelry companies using a similar name. Windsor Jewelers, Inc. (“Windsor Jewelers”) was an established jewelry store in Winston-Salem, North Carolina that had been doing business for over 15 years. Windsor Fine, LLC (“Windsor Fine”) was a jewelry company with several stores in Georgia and expanded to Charlotte using the name “Lions Jewelers.” After being in the Charlotte area, the owners of “Lions Jewelers” decided to use the Windsor name as they did in Georgia. Accordingly, Windsor Jewelers sued Windsor Fine for trademark infringement because the use of the Windsor name could result in confusion amongst target fine jewelry consumers. The court reasoned that there are two ways to succeed in a trademark infringement case where the trademark is registered on a state level: (1) the mark must be “protectable” and (2) the use of the similar mark presents a possibility of confusion to the target audience. It is important to note that “protectable” means that the mark is trademarked in the same area and is only “protectable” where it is being utilized. The court evaluated Windsor Jewelers sales data to determine whether the Charlotte market was an area in which its trademark was “protectable.” Thereafter, the court concluded that Windsor Jewelers did not have adequate market saturation to claim that Windsor Fine infringed its trademark. Because of this lack of market saturation, there was no chance that using the “Windsor” name would result in confusion amongst consumers. Therefore, the court held that the filing business did not demonstrate the possibility of confusion, and denied the trademark infringement claim.
When a trademark owner registers her mark federally, she is afforded priority use of the mark, and in turn is provided enhanced protection. There are many other rules and tests that are applied when evaluating use of a similar trade name in the same area. It is important for business owners to contact their trademark attorney with any concerns related to using a similar mark as another business.
Sample Case Law #2 – Were Christian Louboutin’s “red-bottoms” trademarked?
In a world revolving around social media, many are aware of the famous high fashion shoes made by Christian Louboutin. When hearing the name “Christian Louboutin” what is the first thing that comes to your mind? Your answer is most likely the red-soles. Because of their popularity and association with the color red, the fashion house realized the importance of protecting its product by trademark. Accordingly, in 2008, Christian Louboutin legally trademarked his red lacquered sole. Another powerhouse in the fashion industry is Yves Saint Laurent (“YSL”). The YSL fashion house created a line of “Monochronic” shoes in which the outside color of the shoe corresponded with the sole of the shoe. One of the colors within this line of shoes happened to be red. In a well-publicized federal case from 2012 dealing with trademark law, Christian Louboutin sued YSL for violating the Lanham Act after YSL used the signature red color on its “Monochronic” shoe. The Second Circuit reasoned that Christian Louboutin’s trademark was registered as “a lacquered red sole on footwear.” This registration provided Christian Louboutin with limited protection and provided assurance that there would be no confusion in the future. Ultimately, the court opined that YSL was permitted to continue to sell its “Monochronic” shoe because Christian Louboutin’s trademark protection was limited and YSL’s use was not a violation of Christian Louboutin’s protection. Interestingly, the Second Circuit court held that the public had not come to know the shoe by the red soles alone, but by the contrast of the shoe with the red sole.
Conclusion:
The trademark registration process is often lengthy, confusing and intimidating. Trademark law is a heavily-litigated area and most of this litigation arises from claims of confusion caused by the use of a similar mark. New business owners with potential mark(s) that are similar to previously registered mark(s) are urged to have an attorney research whether there is a chance for confusion or possibility of future trademark infringement. Established business owners should also consult with a trademark attorney regarding concerns of possible infringement involving their registered mark(s). Determining whether a trademark infringement exists is a complex task that requires a trained legal professional to evaluate.
Disclaimer: Tran Law Firm makes no representations as to the accuracy, completeness, suitability, or validity of any information in this blog and will not be liable for any errors or omissions in this information nor for the availability of this information. Tran Law Firm will not be liable for any losses, injuries, or damages from the display or use of this information. The information contained on this site is provided for informational purposes only and is not intended as legal advice and should not be treated as such. This site contains links to other web sites. We are not responsible for the privacy practices or the content of such web sites, and we do not endorse such sites. Additionally, this blog may express some opinions which are the opinions of the authors and do not necessarily reflect the views of the Tran Law Firm.