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Trademark and Trade Dress

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A trademark is generally some symbolic representation identifying a particular company, product or group of products such as an emblem or symbol, words or a phrase. Trademarks or service marks identify the source of goods or brands. They can be established through official registration or through use. Unlike patents and copyrights they do not expire so long as they are used in commerce. Official registration requires the filing of specific documents and the payment of a fee. It must also be renewed.

Filing is with the United States Patent and Trademark office. Official filing provides notice to others of the mark and presumptions in favor of the filing.

A trademark can even evolve from the shape of a product. For example, a local retailer of biomechanical devices that distributes such devices nationally, placed a cartoon character on its brochures, marketing materials and other medial known as “Tubeman.” Tubeman’s body was a type of plastic tube used in centrifuges and other applications with an attached flip open lid. The tube was the body, the lid was his hat, and Tubeman had stick arms and legs with chubby gloves and shoes like Mickey Mouse. He had googlie eyes and a smile. A German manufacturer claimed that Tubeman and his hat in particular violated their trademark due to its particular shape, resulting first in a “cease and desist letter” and thereafter a lawsuit in the United States District Court for the Southern District of New York, located in New York City.

Ultimately, the German manufacturer discontinued its lawsuit against the Rochester based retailer, and it received no settlement. A trademark claim can be based on product shape with exceptions such as when the shape althrough distinctive is necessary to a product’s function. Mr. Smith defended the matter. Smith Law Firm has the experience to handle trademark matters.

What this example show is that in business what may seem simple, like a cartoon character conceived through a Rochester business man’s original thinking to draw attention to his product, can result in a worldwide distributor of a particularly shaped product to sue to protect its “famous” or at least well-known product mark.

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Prior cases do not guarantee similar results. For more information on trademarks and trade dress call the Smith Law Firm at (585)-685-7000.

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