Can you imagine being told that you cannot file a trademark just
because another group has become more popularly associated with the name you
want to trademark?
Imagine you are the owner of a record label and one
of your artists is a local popular group named Sacred. After nine years of
association under the group name, the group separates. All of a sudden, a
different group breaks on the screen and becomes a popular sensation, but they
are also named Sacred.
At this point, you try to trademark the name of
your former group, but the other group tries to get the name trademarked as
well.
How will it be determined as to whom the owner of
the group name legally belongs to? Well, courts seem like they are
directing their reasoning objectively regarding this issue. Interestingly, unlike
tangible intellectual
properties like copyrights and patents, you cannot actually touch a trademark. Therefore, who is to
say that a word, name, or phrase, is actually yours? How can a person prove
that he or she is the owner of an intangible trademark that is in a sense,
just a thought or idea?
A recent court decision has ruled that the in the event
where more than one person tries to trademark the same name, the owner will be
determined objectively. Meaning, whomever the public believes to be the owner
will be deemed the owner.
For
example, if you, as the owner of the record label owner from above, wanted to
claim legal ownership of the group name Sacred, the public must know you
to be more associated with the name Sacred, for both its use and name, more so than the new
sensational group.
This
may seem unfair to someone like the record label owner who had formerly used
the name Sacred first, but, this is
the way that courts are deciding these issues.
However,
I think it is unfair to the extent that whoever used the name first should have
the legal ownership of the name. But, that too, causes a problem if that is
allowed. I see two perspectives for the reasons why problems might arise:
Either the law should consider (1) If more than one person files for a
trademark, allow the person who was first associated with the trademark to
become the legal owner or (2) Protect
the person who is more popularly associated with the name in order to prevent
others from using the same name just to profit from it based off of another’s
use of its popularity.
Perspective
#2 is the reasoning for why the law seems to favor the objective approach for
determining who a trademark owner will be. So long as it seems fair to the
public is what seems fair to legislature when making these laws.
I
think that both views stir up problems within trademark law. Is it more
important to honor a person’s idea by allowing perspective #1 to outweigh
perspective # 2 or is it more important to prevent people from using the name
of a popular associated term, word, or phrase, just because they want to make a profit from the
popular term, word, or phrase?
I think this is just a difficult call to make...
