A Star VS A Swoosh For A Trademark
June 22, 2010 by Barbara Berschler
When advising my small business clients about what to consider when they adopt a trademark or service mark, I urge them to look for strong characteristics in the mark that will help to differentiate them from their competitors. In the case of word marks, the farther you get from using descriptive terms, the stronger and more protectable your mark will be.
If having a logo is an important part of your brand development, I suggest that you consider your design carefully, with an eye toward selecting a strong mark, so that you can effectively protect it against competitors. One company has learned the hard way that even with a service mark logo successfully registered with the United States Patent and Trademark Office (USPTO), it could not prevent a direct competitor from using a similarly designed mark.
Here are the bare facts. Amazing Spaces, a self storage company in Houston, Texas, registered with the USPTO a five-pointed star in a circle as one of its marks. Its rival in the same geographic market, Metro Mini Storage, adopted a five-pointed star in a circle for its service mark. Metro Mini refused to back down when Amazing Spaces demanded it cease and desist. You might think this is a no brainer. The registered mark should win, right? Well according to the Fifth Circuit Court of Appeals, Amazing Spaces had a non-protectable mark and dismissed the claim against Metro Mini. The Court’s reasoning is important and goes to the core of what really constitutes a trade mark.
A trademark exists only if in the mind of Ms. Q. Public, it successfully acts as an identifier of the source of the goods or services being sold. In the case of a logo, it is important to avoid adopting ordinary geometric shapes because they can be considered by a consumer as mere decoration.
Even if you successfully were to register such a logo with the USPTO, it later could be cancelled by a challenger under the theory that the design or symbol you adopted was common and likely to be perceived by consumers as ornamentation rather than indicating you as the source of the goods or services. The only way you could defend your mark against such an attack would be by proving that it had acquired “secondary meaning.” In other words, consumers viewing the mark know it refers to you, in the way that the swoosh means NIKE. So while NIKE’s simple curved bar shaped logo upon its introduction in the 1970’s may not have withstood a challenge similar to that raised by Metro Mini, due to NIKE’s longstanding promotional efforts, the swoosh has acquired the necessary secondary meaning.
The clear lesson is that even in the case of a big player like NIKE, having simple geometric shapes acquire the strength to withstand a direct challenge by a competitor could depend on how much time and money you have spent in getting the public to understand that the logo is not merely ornamentation but stands for you.
If you were considering the adoption of a logo for your goods or services, what characteristics would you want the design to have? Do you have any war stories to share related to selecting your logo?