KEN KIRSCHENBAUM, ESQ ALARM - SECURITY INDUSTRY LEGAL EMAIL NEWSLETTER / THE ALARM EXCHANGE You can read all of our articles on our website. Having trouble getting our emails? Change your spam controls and white list ken@kirschenbaumesq.com ******************************* What’s so special about your trade name and should you trademark it June 4, 2019 ******************* What’s so special about your trade name and should you trademark it ******************* You gave a good deal of thought about the name of your business and how you present it and yourself to the public. Whether you started your business last month or last century, you want to protect that name. Protect against what? Someone else using the name, infringing on your use by causing consumer confusion, mistake, or deception. Sometimes infringement is purposeful, other times inadvertent. The use of an infringing mark constitutes trademark infringement. To succeed on a lawsuit alleging trademark infringement you must show that you have a valid mark that is entitled to protection under the Lanham Act [Federal law] and that another’s actions are likely to cause confusion with the mark. The first issue you face is do you need to trademark the name? The answer is, not necessarily. There is common law recognition of trademark provided you meet certain standards. But to have a presumption of right to trademark you should register the mark. A recent case discussed the issues. “Ampion is a Michigan corporation that provides electronic repair and maintenance services throughout the United States. and has provided its services since 1993 using an unregistered mark, “Ampion.”. In 2012, Ampion registered a similar mark, “AMPION CORP,” and its design, in International Class 37 as U.S. Trademark Registration No. 4096054 (the “’054 Registration”). Ampion remains the owner of the ’054 Registration and displays the Ampion Marks in interstate commerce in connection with its services. The Ampion Marks have become widely known as identifying Ampion’s services. Beginning sometime after Ampion acquired protectable exclusive rights in the Ampion Marks, AXXA Tech, Inc. (“AXXA”), began using a mark that is virtually identical to the Ampion Marks without Ampion’s permission. Ampion sent AXXA a cease-and-desist letter demanding that AXXA stop doing business under the name “Ampion,” remove the phrase “Ampion” from its website, and change its name with the New York Department of State. After a month went by without any reply, Ampion sent AXXA another letter. A few weeks later, AXXA finally replied, saying that it would “address and mitigate Ampion’s concerns.” But AXXA changed only one letter: from “Ampion” to “Ampeon.” Both Ampion and AXXA provide industrial electronic repair services to consumers. In fact, AXXA provides services similar to those offered by Ampion, and the infringing mark is likely to cause confusion between the services offered by the two companies. For that reason and others, AXXA’s infringing marks and acts are likely to cause damage to Ampion and its reputation.” The court started by finding that Ampion alleged facts that satisfy both prongs of the Lanham Act. First, Ampion has shown that the Ampion Marks are “protectable trademark[s],” and that it has developed substantial goodwill around them. A mark is entitled to protection under the Lanham Act if it is “validly registered or otherwise meets the criteria for protection as an unregistered trademark.” “The criteria for protection as an unregistered mark are the same as the “general principles qualifying a mark for registration” under 15 U.S.C. § 1052. Generally, a mark is protectable unless it “[c]onsists of or comprises immoral, deceptive, or scandalous matter”; so resembles a mark already registered as to be confusing; or is mesdicriptive, among other more specific prohibitions. 15 U.S.C. § 1052. Ampion’s unregistered mark, “Ampion,” is not prohibited under those criteria and therefore is protected. As for Ampion’s registered mark, registration is “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark.”215 U.S.C. § 1115(a); Furthermore, because of Ampion’s “long-term promotional and marketing efforts and the quality of [its] services,” the Ampion Marks have become a “symbol of [Ampion’s] goodwill.” And “customers...associate and identify the Ampion [Marks] exclusively with Ampion.” All these allegations establish that the Ampion Marks are entitled to protection because the marks are “capable of distinguishing the applicant’s goods from those of others.” United States District Court, W.D. New York. Ampion Corp v Axxa Tech, Inc. United States District Court, W.D. New York. Whether you can be successful suing another for using your mark [registered or unregistered], you will have to meet an 8 point criteria: “Second, Ampion has shown the likelihood of confusion. To determine whether a mark is likely to cause confusion among consumers, courts generally rely upon the eight-factor test first applied in Polaroid Corp. v. Polarad Elecs. These factors include (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the two marks; (3) the competitive proximity of the products or services; (4) the existence of actual confusion; (5) the likelihood that the plaintiff will “bridge the gap” between the two markets; (6) the defendant’s good faith in adopting its mark; (7) the quality of the defendant’s product; and (8) the sophistication of the purchasers." In this case the court granted an injunction, damages and legal fees. This case was not defended, so the court accepted all of the allegations presented in the Complaint. Interestingly, there are other companies using the name Ampion, notably a solar energy company and a pharmaceutical company. In fact they come up on an Internet search right on top. But these companies obviously don’t compete with the electronic repair company using the same name, and the “mark” has not taken on the recognition of a mark that might transcend the mark owner’s business, so no trademark infringement has been asserted. You can develop a common law right to a mark, or you can register the mark. In either case you will have to be able to establish that anothers use of the mark is detrimental to your business. It’s not uncommon to find alarm companies called very similar names, sometimes the same name, but they operate in very different markets. Perhaps with DIY and nationwide exposure there will be more infringement cases in the alarm industry. If you want to trademark your common law mark or even if you’re just getting started and you want to get a federal trademark, contact K&K corporate department for assistance. Contact Michael Foster at MFoster@KirschenbaumEsq.com or 516 747 6700 x 308. Concierge Clients should contact Program Coordinator Stacy Spector at SSpector@Kirschenbaumesq.com or 516 747 6700 x 304. ************************ CONCIERGE LAWYER SERVICE FOR THE ALARM INDUSTRY PROGRAM You can check out the program and sign up here: https://www.kirschenbaumesq.com/page/concierge or contact our Program Coordinator Stacy Spector, Esq at 516 747 6700 x 304. *********************** NOTICE: You can always read our Articles on our website at ww.kirschenbaumesq.com/page/alarm-articles *********************** THE ALARM EXCHANGE
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Ken Kirschenbaum,Esq Kirschenbaum & Kirschenbaum PC Attorneys at Law 200 Garden City Plaza Garden City, NY 11530 516 747 6700 x 301 ken@kirschenbaumesq.com www.KirschenbaumEsq.com
