As jewelers, you’ve probably heard lots of rumors and half-truths about trademark protection. Many jewelers have been instructed that jewelry must be marked in some way, but don’t necessarily understand what that means. As jewelers, registering a trademark can be a business advantage; it’s important to learn what trademark protection can do for your brand.
A trademark is a word, logo, package design, Jewelry Design or a combination, that a merchant uses to identify its goods or services and distinguish them from others. This can include brand names (such as “David Yurman” for precious metal jewelry), the graphics, color or shape of packaging (such as the Tiffany blue box and white ribbon), or service marks identifying services offered (such as “Zales the Diamond Store” for retail jewelry services.) All of these examples serve to identify the source of the goods and distinguish them from other goods in the marketplace.
Some words cannot be used as trademarks. This is the common name for the product or service in connection with which it is used, such as “gold” when used in connection with the chemical element Au. A generic term cannot serve the essential trademark function of distinguishing the product or service of one business from the products or services of another business. Therefore, a generic term cannot be afforded any legal protection. Descriptive marks, or those terms with a dictionary meaning that is used in connection with products or services directly related to that meaning, also cannot be used as trademarks unless it can be shown that distinctive character has been established in the term through extensive use in the marketplace. Therefore, a term such as “Jewelry Store” would not be able to be registered as a trademark unless there was significant brand identification with that name.
Many jewelers confuse trademarks with hallmarks or maker’s marks. A hallmark is an indication of the quality of the metal contained in a piece of jewelry, such as “14K” or “.925.” Hallmarks cannot be used as a trademark, as they convey descriptive information about the quality of the metal content. A maker’s mark, however, is a small symbol or set of letters that indicate the maker of the jewelry. Because this can identify the source of goods, a maker’s mark can be used as a trademark if it is unique.
A trademark also provides exclusivity: once you have used a trademark in interstate commerce, you have a superior claim over anyone who subsequently uses that trademark. Since a trademark identifies a single source of goods, it is important that consumers not be confused as to that source.
What legal issues can arise when I register a trademark?
Your application can be opposed by any entity (probably a competitor) who concludes that your mark is similar to theirs, is misdescriptive, deceptively misdescriptive, or otherwise infringes on their intellectual property rights. JVC has opposed some trademarks whose registration could have a negative impact on the jewelry industry.
For example, JVC opposed an application for the trademark “Precious Metal” for use to market coin shaped items made of base metals. Of course, the term “precious metal” should be freely available to all in the jewelry industry in order to accurately describe their products. Further, the mark for these items was not truthful -- they were not made of precious metal.
Additionally, it is important to make sure that in your application, you disclaim any words or phrases that are used widely in our industry -- these are generic, and are not available for registration by one individual or entity in the jewelry industry. There is a standard format for a disclaimer, fast and furious cross necklace and it can be done on the USPTO website when you first apply for registration or at any time after the process begins.
It is also possible that a party can move to cancel your trademark. Some grounds for cancellation include descriptiveness, genericness, bad faith or fraud, likelihood of confusion, priority (the trademark was already registered to someone else), or it is a well-known or famous mark being used inappropriately. Usually, a cancellation proceeding must be filed within five years of registration of a trademark.
Why should I get a trademark?
Registration provides a lot of benefits, primarily: public notice of your claim of ownership of the mark, legal presumption of ownership, the ability to bring an action in federal court, the use of U.S. registration as a basis to obtain registration in foreign countries, the ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods, the right to use the ? symbol, and listing in the USPTO online databases.
You would also be able to protect your trademark by forcing others using confusingly similar marks to stop using them via enforcement actions. All of these benefits are yours upon registration.
However, it’s also important to understand the responsibilities of maintaining a trademark. Because you have exclusivity over the trademark, it is your responsibility to maintain the registration via periodic filings with the USPTO.
Additionally, federal courts have decided that you must protect and police your trademark if you wish to keep it. This means making sure that others aren’t using your mark without permission, or using confusingly similar marks which dilute your brand. Always monitor the registration applications (can be done online) and keep vigilant for other trademark usage in the jewelry industry. If you see a use of your mark that you did not approve, or a confusingly similar mark, you should consider litigation if the problem cannot be resolved out of court.
The best part of all, though, is that trademark protection lasts as long as you keep using the trademark in interstate commerce. If you keep using a trademark and maintaining its status via USPTO filings, and the trademark does not come to be generic for the specific goods (such as what happened to the trademark “aspirin,” which used to be a brand name but is now considered generic for the drug), it can serve as a source indicator for as long as you want it to -- something that with the right trademark can be invaluable.
Conclusion
Your trademark is the symbol of ownership of your products -- and it is the symbol of the hard work that you put into your products. By registering your trademark, you take ownership and responsibility for the products that bear that mark and you ensure that the mark is yours forever. Register it and it will never be anyone else’s!
