Intellectual Properties

By Bill Conwell, K2PO

16th Floor, Willamette Center, 121 SW Salmon St, Portland, OR 97204

Trademarks

Given the choice, which would you buy: a Rockwell Collins transceiver, or a similarly equipped, similarly priced unit by Acme Manufacturing Industries? How about a choice between a Bird wattmeter or a comparably priced unit by Amalgamated Trading Co?

Other factors being equal, your decisions would likely be influenced heavily by the brand names of the products. This is not an irrational response. Certain characteristics, such as quality, performance and reliability, are often associated with particular product brand names. As such, brand names, or "trademarks," provide useful information to consumers making purchasing decisions.

Because of their importance in purchasing decisions, a trademark can be a company's most valuable asset. Consider the case of Tektronix, the test equipment manufacturer. If all of Tektronix's manufacturing facilities burned down tomorrow, it could doubtless borrow money from a bank to rebuild based solely on the consumer goodwill associated with its name. If, on the other hand, Tektronix were ordered to cease use of the mark "Tektronix," the company would be cast among all the other no-name manufacturers in the competitive test equipment market and might not ever recover.

For the merely curious consumer, this month's column will answer some of the frequently asked questions about trademarks. For the garage shop entrepreneur, it will point out some of the common pitfalls and misconceptions.

Choosing A Trademark

A trademark can be any word, name, symbol or feature used by a company to identify its products and distinguish them from the products of others. Corporate names, such as Tektronix and Larsen, are often used as trademarks. Conventional words (Argonaut, Grandmaster), made-up words (Kulrod) and alphanumeric combinations (QST, FT101, TH6DXX) are also often used. Some companies have adopted different types of trademarks, such as the three-tone NBC chime and the well-known Chevron stripes. All of these devices serve to identify the origin of the products or services with which they are used.

For new businesses selecting trademarks, a common mistake is to base the selection on the trademark's appeal alone, without regard to potential conflicts with other marks. One of the corallaries of Murphy's Law is that if you think a particular word would be a good mark for a product, someone else has probably beat you to it. The costs of changing marks after a product has been introduced can be high, both in terms of money and opportunity cost. Changing names in midstream can sometimes be fatai to start-up companies in rapidly developing markets.

Another common mistake is in confusing the registration of a corporate name by the state government with the aquisi-tion of trademark rights. Merely because the state accepts a registration of a company name does not mean that the company can use that name on its products. For example, here in Oregon, there is not presently a company registered under the name Yaseu, so it would be a simple matter for me to incorporate a business under this name. However, Yaseu Musen Corp would likely take a dim view of me marketing amateur radio equipment under that name and would very likely seek to stop such activity.

In choosing trademarks, then, the first rule is to avoid all marks already used by others for the same goods. This alone, however, is not enough. Also to be avoided are non-identical marks that might be confused with the trademarks of other companies used on the same or similar goods or services. For example, some years ago a company decided to sell electronic control panels under the mark Tek Associates. Tektronix understandably was concerned about customer confusion and succeeded in preventing registration of the phrase Tek Associates as a trademark at the US Patent and Trademark Office.

Sometimes the owner of a trademark loses its bid to prevent others from using arguably similar marks. Several years ago, Fisher Radio Corp tried to prevent Bird Electronics Corp from registering an illustration of a flying bird as a trademark for use on wattmeters. Fisher was using a logo of a flying bird carrying a musical note in its beak as a trademark on its hifi equipment, and was concerned that Bird's use of a bird illustration on its electrical equipment might cause customer confusion. The Patent and Trademark Office decided that customer confusion would be unlikely and allowed Bird to register its trademark over Fisher's protests.

Sometimes, a mark can be adopted for a product even if the identical mark is already in use by someone else, provided the products offered by the two companies are sufficiently different. For example, Quick Service Textiles, Inc of Chicago, II adopted and federally registered the mark "QST" for use on textile fabrics in 1971 without objection from the ARRL. Similarly, the use of "TR7" by Drake on transceivers and "TR7" by British Leyland on sports cars is sufficiently different as to avoid the likelihood of customer confusion.

Choosing a mark that does not conflict with existing marks requires considerable research. Most companies hire trademark attorneys to research potential marks and steer them clear of trouble. The trademark attorney usually checks the marks by commissioning a search of one of several private trademark libraries. Such libraries typically include trademarks registered by the Patent and Trademark Office, trademarks registered by each of the states, selected Yellow Pages telephone listings nationwide, large collections of industry, trade and advertising indexes, and proprietary trademark databases. The trademark attorney then evaluates the search results for possible conflicts. Although this search procedure is not infallible, it provides a good basis on which to make a trademark selection.

Registration

Rights in a trademark begin immediately with proper use. Registration with the state or federal government is not required. There are, however, several advantages to such registration.

Registration at the state level is quickly accomplished by filing the necessary documents with state authorities. Once registered, the mark will show up in trademark data bases and can discourage others from choosing a similar mark. In some states, a state registration can enable the registrant to collect attorneys' fees and enhanced damages from infringers.

Several further benefits are provided by registering a mark at the federal level. A federal registration serves to notify everyone, nationwide, of the registrant's claim to ownership in the mark. It also gives the registrant extensive remedies against infringers which can, in some cases, include the destruction of infringing goods and the recovery of the infringers profits and the registrant's losses. These monetary awards can be tripled in some instances.

Obtaining a federal registration can be somewhat complex. Since the grant of a federal registration is akin to a limited monopoly on the use of a word in connection with certain products, the Patent and Trademark Office has a number of strict requirements. One such requirement is that the mark not be descriptive of the product generally. For example, several years ago Kellogg's sought to register "Raisin Bran" for its bran cereal with raisins. The Patent and Trademark Office refused, not wanting to remove these common words in their common usage from the language and dedicate them to Kellogg's exclusive trademark use.

Applications for federal registration can be rejected on a number of other grounds. Some of these include: likelihood of confusion with an existing mark, the mark being deceptive, the mark being the name of a living person whose consent is not of record, improper use of a mark, failure to comply with applicable government regulations such as FDA labeling requirements, and so on.

More than 90% of all federal trademark applications are rejected initially. The applicant's trademark attorney then argues back and forth with the Trademark Office until the mark is approved or finally rejected. If approved, the Trademark Office publishes the mark in the Trademark Gazette for opposition. The public then has 30 days within which to object before the registration issues. Assuming only minor difficulties are encountered, the federal registration process generally takes about a year.

Maintaining Trademark Rights

Rights in a trademark persist as long as the trademark is properly used. Some marks, such as Crosse and Blackwell for packaged food products, have endured for centuries.

A mark can be abandoned by nonuse, or lost by misuse. Misuse of a mark generally consists of widespread public use as a noun, rather than as an adjective. The use of "a xerox" to refer to a photocopy is an example of such misuse. Used as a noun, a trademark no longer serves to identify the origin of a product, but rather serves as the name of the product. Examples of marks lost by widespread misuse include the now generic words: escalator, yo-yo, dry ice, kerosene and aspirin. (Aspirin is still a valid trademark of Bayer for acetylsalicy-clic acid in some foreign countries.)

Some familiar trademarks are presently flirting with loss by misuse. Examples include Kleenex for Kimberly Clark's brand of facial tissue, Xerox for Xerox Corp's brand of copying machines and Band-Aid for Johnson & Johnson's brand of adhesive bandages. These companies are very careful to use their marks exclusively as adjectives in advertising and product packaging in an effort to encourage proper use by the public.

To highlight the trademark status of a word, many companies denote the word when printed as being a trademark. If the mark is not registered anywhere, but the owner wants to indicate a claim of trademark status, the mark can be labelled with a "TM" or with a footnote stating that the word is a trademark. If the mark has been registed in a state, it can be labeled with a "TM" or with a footnote stating that the word is a registered trademark. If the mark is federally registered, the mark can be labeled with an ® in a circle or with a footnote stating that the word is registered at the US Patent and Trademark Office. In addition to these measures, the first letter of a trademark should always be capitalized to designate its status as a proper, rather than a common, adjective.

The above discussion, of course, only barely scratches the surface of the trademark topic. It may, however, provide some insight into the inconspicuous ® that pervades our hobby and our society.

Bits

FCC Trying to Accommodate ACSSB Users

Almost one year after the FCC officially recognized ACSSB in Docket No. 84-279, the technology continues to evolve less rapidly than anticipated. The level of interest and use of ACSSB continues to grow each month, but according to marketing, not fast enough for profits.

One reason for this sluggish growth is that manufacturers have not been promoting the advantages of using ACSSB. Most ACSSB equipment remains physically bulky and expensive. Manufacturers of conventional radio systems use the newest technology available to minimize size and reduce the production cost of their product. Also, the technology must compete against a 50-year old widely accepted mode of communication—FM.

The first Notice of Proposed Rulemaking reviewed by the FCC set aside spectrum space in the 150-MHz band for ACSSB. According to several officials of land mobile communication industries, ACSSB in the 150-MHz band won't work.

20 QEX

Most land mobile communications takes place at a high frequency, but there congestion and interference frequently exists. No amount of frequency monitoring, filtering or any other technical solution can smooth the ACSSB signal in such a hostile environment. The FCC needs to assign spectrum space solely for ACSSB! Field tests and experiments have proven that an ACSSB system, operating at its full potential in a free, un-congested area, is among the superior type of land mobile communication system available. More coverage is achieved with less power.

On May 13, 1985, the FCC added a petition to the Public Notice concerning an ACSSB reallocation of 4 MHz of the 216- to 220-MHz band to the Private Land Mobile Services. Industry, thus far, has come forth to support and comment on the FCC's ruling. As individuals in the FCC, industry and the public reeducate themselves about the benefits ACSSB has to offer, its popularity is certain to increase.—Maureen Thompson, KA1DYZ [The above information was excerpted from L. Testa and P. Murray, "ACSB Still Fighting for Acceptance One Year After Official FCC Recognition," Radio Communications Report, June 1, 1986, vol 5, no. 11, p 46.]

Static in the Workplace

Static charges in the work environment has ruined more projects than one can imagine. In the electronics industry alone, it is a fact that static electricity generated through a human body damages certain microcomponents. How, then, can you protect your devices from that devastating blow? The Static Control Systems Division of 3M offers an annual catalog that lists numerous products designed to control static charge. Special protective floor and table mats, tapes, shipping packages and even educational materials are available. For your copy of Total Control of the Static in Your Business, contact the Static Control Systems Divisions, 225-4S, 3M Center, St. Paul, MN 55144.—KA1DYZ

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