So, you’ve obtained a federal trademark registration for your business’s logo – now every time you use your logo you can use the registration symbol (R), right? And, every time someone else uses your logo you can force them to stop, right? Wrong. One of the most common misunderstandings about federally registered trademarks is that once registration is obtained the registrant owns the word, logo, slogan, etc. outright to the exclusion of the rest of the world. The reality is that a federal trademark registration, while quite valuable, is much more limited than most think. Overstepping those limits can lead to trouble, including cancellation proceedings with the United States Patent and Trademark Office (“USPTO”) or court litigation.
A recent example of a mark registrant misunderstanding the limits of their mark is celebutant Paris Hilton’s attempt to claim ownership of the catchphrase “That’s Hot” and prevent anyone else from using the phrase in any way, shape or form. Through her incessant uttering of “that’s hot,” the saying has become Hilton’s catchphrase. Hilton then federally registered the phrase “That’s Hot” as a trademark for uses associated with clothing. Hallmark manufactured and distributed a birthday card depicting Ms. Hilton as a waitress pointing to a plate and warning a customer “that’s hot.” The inside of the card reads “Have a smokinA’ hot birthday.” Hilton sued Hallmark in federal court in
Hallmark is vigorously fighting back and the case continues. However, Hallmark brought a Motion to Dismiss several of Hilton’s claims, including her claim for trademark infringement of the “That’s Hot” mark. Hallmark pointed out that Hilton’s registered trademark applies only to apparel, and the card, which falls into an entirely different class of goods, therefore cannot infringe her mark. Although Hilton opposed the Motion to Dismiss on all of Hallmark’s other grounds, she (correctly, I think) did not refute Hallmark’s argument with regard to the trademark infringement and the Court dismissed that claim with prejudice.
Ms. Hilton apparently believed that her registration of that phrase “That’s Hot” meant that she could control the use of the phrase in any and all contexts. This misconception is a common one. Many trademark registrants believe and assert that once they own a mark they have total control over the use of it in all media and situations. However, this simply is not the case.
When registering a trademark with the USPTO the applicant (or more likely the applicant’s attorney) is faced with the task of crafting a goods and services description that is broad enough to encompass all of the goods and/or services that the applicant intends to use the mark in conjunction with, and narrow enough that the trademark examiner will accept it. Part of this task involves choosing the appropriate International Class or Classes within which to register the mark.
The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks establishes a classification of goods and services for the purposes of registering trademarks and service marks. All parties to the Nice Agreement (including the
Your mark is only registered in the class or classes for which you apply and are granted registration. Therefore, another applicant can have and use your exact same mark in a different class, or even in the same class for different goods or services, and this type of coexistence of identical marks is not only completely acceptable, but common.
For example, there are almost 40 past, current or pending registrations of the mark “That’s Hot.” In addition to Ms. Hilton’s mark, “That’s Hot” is either registered, has been registered in the past, or is pending registration in class 30 for mints and chewing gum, class 41 for the production of television shows, class 32 for energy drinks, class 30 for frozen yogurt and class 30 for instant noodles.
The bottom line is that a mark registrant must be careful not to overstep the bounds of their registration. A mark and the registration symbol (TM, SM or (R)) should only be used with the goods or services that are recited in your registration. Remember that while federal registration gives you the valuable exclusive right to use your mark in connection with the goods or services covered by your registration, it does not give you the right to prevent all others from using the same or a similar mark in connection with unrelated goods or services. Ownership of a federal trademark does not give you the right to prevent others from using your logo, slogan, catchphrase or other mark in connection with anything not covered by your registration. Attempts to use a mark in conjunction with goods or services not covered by your registration opens the door to various risks, including litigation and the possibility of losing your mark altogether for misusing it.
This information about legal issues is for informational purposes only and is not intended to constitute advertising, invite an attorney-client relationship or serve as a source for legal advice. You should not rely upon any information contained herein for any purpose without seeking legal advice from a duly licensed attorney competent to practice law in your jurisdiction.