Today, trademark law is a consumer protection law. A trademark is registered to a person or company that uses the mark to identify its products so that consumers associate the mark with assurances that the quality, whether good or bad, is what is expected from that product. The first user of a mark is the one who owns the rights so long as they continue to use it in commerce. Under the current law, the Lanham Trademark Act, a first user who has registered its mark can enforce their rights in the mark in federal court and obtain sanctions against the second comer ranging from injunctive relief to the infringer’s profits. If the infringement is found to be willful, or conducted with knowledge of the earlier mark, the first comer may be awarded its legal costs and treble damages.
Adopting a Mark
A House Mark offers immense advantages if it is based on a trademark that has a long history, such as a mark based on the retailer’s existing store name. Trademark protection grows in strength over time through use of the trademark on a service or product. The longer one uses the trademark, the stronger it gets. Eventually, a trademark can become “famous” and the owner can keep others from using the mark even on unrelated products. (This is why one cannot use Xerox® or Coca-Cola® as a brand name for automobile tires.)
Thus, the best House Mark is one which is already a strong trademark or service mark, and if a company is fortunate to have such a mark available, it is solid gold. An example of this is the Vicks mark, which is famous based on Vicks Vaporub®, and is now being extended for use on vaporizers, thermometers, tissues and other cold-related products. If a retailer does not have a strong- and long-used store name, then it should look for a trademark that is a “coined” or an invented word. For example, a retailer with the House Mark “Quality Drugs” (a weak mark until it has been used for years) might concoct a new mark such as Quadru, which has no meaning. If invented terms are not to the retailer’s liking, adopting a House Mark that is suggestive of the products of which it will be used is the next best approach. For example, a retailer could use the Quality Health mark for dietary supplement products, citing a suggested benefit of the products. The worst type of mark to adopt, especially as a House Mark, is a descriptive mark. If a store used the House Mark “Quality Drugs Products,” the mark merely describes the products. Such marks are not enforceable without huge amounts of evidence that consumers only associate the House Mark with the products.
Trade Dress
Trade dress describes the packaging of products. A retailer who closely adopts the trade dress of a name brand product can be liable for infringement. Thus, it is best if retailers adopt a trade dress from the colors and designs already used in their stores, or designs that do not resemble or call to mind those of brand names. A retailer who packages a line of vitamins in bottles that resemble a well known brand is asking to be sued for trademark infringement and unfair competition.
Adopting a House Mark has some pitfalls, and should not be undertaken without the advice and opinion of an experienced trademark counsel. Trademark attorneys can review comprehensive trademark searches of existing marks and products, and advise retailers on potential liabilities. They can also counsel retailers on how to protect their own House Mark from infringers, and guide them through developing their House Mark into a household name.
Charles H. Knull, Esq., is trademark counsel to and Sarah B. Kickham, Esq., is a trademark associate with Ullman, Shapiro and Ullman (www.usulaw.com), a New York-based law firm that specializes in legal issues in the dietary supplement and natural products industry.