Do You Want Fries with That?

(A Guide to Understanding Trademarks)

By: Gina M. Zippilli, Esq.

Whether we are driving down the New Jersey Turnpike or Route 295, when we see those Golden Arches in the air, we immediately think “McDonald’s cheeseburgers and fries.”  Our mouths begin to water and we think of ways to get off at the next exit to purchase something off of the “Dollar Menu.”  It is amazing how a mere symbol, like those Golden Arches, can cause a physical reaction.  That symbol, is a trademark.

A trademark is a word, symbol, design, set of colors, images or anything else that identifies your company’s product and/or service to the rest of the world.  As with those Golden Arches, a trademark adds value to your company but with any good idea, however, comes the risk that someone else will try and take advantage of your good fortune.  For that reason, trademark laws, both on the state and federal level, are well established and, depending on your use of the mark, are designed to prevent others from using the same mark for similar goods/services.

A person who wrongfully uses another person’s trademark might be found liable of both statutory and common law violations, including federal trademark infringement.  Trademark infringement is the unauthorized violation of the exclusive rights attaching to a trademark.  It can occur when one party, the “infringer,” uses a confusingly similar mark in relation to products or services that are similar to the products and/or services that the mark covers.

Take Mister Softee, Inc. v. Espinosa, 2013 U.S. Dist. Lexis 125759 (D.N.J., September 4, 2013), for example.  In that case, plaintiff, Mister Softee, claimed that defendant, Espinosa (the “infringer”), was operating an ice cream truck with designs and markings similar to those on Mister Softee’s trucks without Mister Softee’s consent.  Mister Softee sued Espinosa for trademark infringement and unfair competition.  The court agreed and entered an order prohibiting Espinosa from further use of the truck and awarded attorney’s fees to Mister Softee due to the infringement being malicious, fraudulent or knowing.

Whether you are considering registering a trademark for your own business or you simply want to stop another from infringing on your mark, it is important to know the law.  Business owners who are considering registering a mark need to “do their homework” to determine if the mark they want to use is already protected.  If you want to bring suit against an infringer, then you must do so quickly or risk losing your right to do so.