High court ruling looms in descriptive trademark case

In October, the Supreme Court heard arguments that could directly affect the enforcement of many federally registered trademarks and the rights of advertisers.

The trademarks specifically affected are descriptive registered trademarks. Descriptive trademarks normally cannot be registered, but if a business entity creates a secondary or distinctive meaning for an otherwise descriptive trademark, that trademark may be federally registered.

A good example of a descriptive registered trademark is the National Football League. The NFL’s trademark, while descriptive of the services it provides, has distinctive meaning as the source of an entertainment service and was permitted to be federally registered as a result of that distinctive meaning.

Trademarks are used by companies to help the marketplace identify the companies’ goods or services. If you purchase an Apple computer and you have good results with it, when you go to buy another computer, you may choose to buy another Apple computer with the expectation of having the same positive result. If another computer company starts putting the Apple trademark on its product, you as a consumer will have difficulty finding a computer produced by the same company that produced your first computer. Hence, trademarks are used to avoid confusion in the marketplace.

The problem with descriptive trademarks is they can have the effect of impeding competitors from adequately describing their products. Can the Arena Football League describe itself as a national football league without infringing the trademark rights of the NFL? Can an electronics store advertise it has the best buys in home electronics without infringing on the rights of Best Buy? Can a sporting goods store advertise that they employ sports authorities? These are the issues commonly raised by descriptive, registered trademarks and these issues are affecting businesses across the country on a daily basis.

In Portsmouth, a company called Vision Fitness Center is confronting this very issue.

Vision Fitness Center is open to its customers 24 hours daily, and advertises its hours on its Web site. As a result of that advertisement, Vision Fitness Center is being sued by 24 Hour Fitness, a company that has 300 fitness centers in 16 states (none in the Northeast) for trademark infringement.

The question that will soon need to be answered by the U.S. District Court in New Hampshire is whether this Portsmouth company can be barred from using plain, descriptive terms to advertise its services.

A recently argued U.S. Supreme Court case may soon shed some light on this issue.

The case, KP Permanent Make-Up Inc. v. Lasting Impression Inc., is a trademark infringement case involving Lasting Impression’s registered trademark, “micro colors.” According to KP, the term “micro colors” is a descriptive term that describes makeup products KP sells.

KP’s defense is known as the fair use defense. The fair use defense is based on the idea a company has the right to use plain, descriptive terms to inform consumers with regards to the qualities of its goods. Arguably, KP’s use of Lasting Impression’s trademark is causing confusion in the marketplace, but limiting KP from using the term “micro colors” limits KP from a fair opportunity to describe and advertise its products.

The Supreme Court is being asked to decide which right is superior: the trademark right to identify the source of goods and avoid confusion in the marketplace, regardless of the burden the trademark owner puts on its competitors, or the right of businesses to use descriptive terms to identify its products, regardless of the trademark rights of others?

This case may prospectively damage the trademark rights of many trademark owners throughout New Hampshire or, conversely, create trademark infringement concerns for every business owner attempting to advertise his or her product.

Todd A. Sullivan is a patent attorney with Hayes Soloway PC, Manchester. For more information, he can be contacted at tsullivan@hayes-soloway.com or by calling 668-1400.

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