Tell it to the judge.

Finn, Michael

YOU MAY WELL BE ONE OF THE MANY WRITERS AND Editors who periodically receive mildly threatening letters from corporations or law firms advising you to cease and desist misusing a trademark. And if you haven't been fortunate enough to receive such a letter, it is likely that you have read about a court case involving trademarks over the past year. In recent years, such coverage included a multimillion dollar award to a four-person company in Vermont, which took on the giant Quaker Oats Co.'s Gatorade and won. Other cases involved such entities as Tarzan (the Edgar Rich Burroughs organization), Vogue magazine, New York magazine, the Farmer's Almanac and prominent dictionary publishers, to name a few. There have even been a few trademark cases that made it to the U.S. Supreme Court.

Why go to court? Typically, it is to protect a trademark (also known as a brand name) from various forms of abuse, misuse and other happenings. It is obvious from these extreme steps that trademarks are, in many circles, considered very valuable pieces of intangible property.

Why else would the press be subjected to dunning from the lawyers for misuse of a broad list of trademarks that includes Rollerblade in-line skates, Kleenex tissues, Xerox photocopies, Day-Glo fluorescent colors, Post-it notes, Gore-Tex fabric, Velcro fasteners, Lycra spandex and a whole lot more? It's also why many of the owners of such trademarks advertise in publications whose readership is primarily writers.

The majority of court cases involving trademarks are legalistic in nature, but if you read between the lines, most are understandable. A list of reasons for court decisions in the U.S. last year includes likelihood of confusion; merely descriptive word or words; person's name used without consent; configuration of goods; ornamental design; generic terms; trade dress; suggestive marks; arbitrary and fanciful marks; and dilution. And the list goes on.

Where are these cases tried? Many are heard by the United States Patent and Trademark Office's Trademark Trial and Appeal Board, and a surprisingly large number are decided in the Court of Appeals for the Federal Circuit.

Who goes to court? Well, it reads like a combination of the Fortune 500 and names of companies and individuals that are unrecognizable (at least to me). Defendants and plaintiffs who battled it out in court in 1994 included the following (and this is just a random sampling of names to indicate the scope of the actions): United States Olympic Committee, Nike Inc., Ford Motor Company, Marvel Comics Ltd., Holmes Products Corp., Levi Strauss & Co., Albert Rostel & Sons Co., American Angus Assoc., Playboy Enterprises Inc., Twin Peaks Productions Inc., Stem's Miracle Gro Products Inc., Breakers of Palm Beach Inc., Kohler Co., Wachovia Bank & Trust Co., Deenin, AccuStaff Inc., French Transit Ltd. and Walt Disney Co. And that's just a small segment of the litigants.

What is probably even more revealing is the fact that court decisions are being made all over the world, based, of course, on local trademark laws that vary greatly from country to country. The nations in which trademark cases were decided by federal and other courts in 1994 ran the gamut from "A" (Argentina, Australia and Austria) to "V" (Venezuela). And you must keep in mind that these were only the cases for which specific and accurate information was available.

There are some striking similarities to U.S. legal protection for trademarks in many countries, legal justification for taking an entity to court, among them are similarity of marks, famous marks, deceptive marks, trade dress and personal or surnames.

It might also surprise you to learn that a large percentage of trademark trials do not involve U.S.-based giant corporations. Of course, U.S. companies continue to zealously guard their marks whenever and wherever possible, but often local laws do not afford the protection they demand.

Let's look at some of the actions that occurred last year in various countries, starting close to home, in Canada. McDonald's Corporation demanded a trial after Coffee Hut Stores Ltd., had been permitted to register the trademark McBeans for coffee makers and accessories, coffee, coffee beans and tea, etc. In its application, Coffee Hut acknowledged that McDonald's was the only registrant in Canada featuring trademarks having a prefix "Mc" and combining it with a food or food item type. There were more than 30 of these registrations owned by McDonald's.

You have to understand where McDonald's was coming from. In the U.S., the company had successfully and legally deterred a variety of organizations from using "Mc," among them a motel chain that wanted to call its facilities "McSleep," and a small dental practice that called itself "McTooth." When the case was appealed to Canada's Federal Court, Trial Division, it was ruled that there was no likelihood of confusion since McDonald's and McBeans were two very different kinds of businesses.

In Argentina' the courts have ruled that there was no likelihood of confusion in the following cases: Aeroplast vs. Aerogal Galien; Adinator vs. Akineton; and Sinvacor vs. Siduscor.

Because product names like the ones above are likely to be as unfamiliar to you as they were to me, let's focus on the court cases involving names we all recognize. And to understand the world of trademarks better, you should be aware that trademarks are categorized according to classes, according to the goods, products or services involved. Thus, it i,s possible in many countries to register the same name in a different class. For example, you might register "Bow Wow" for dog food while another company might be allowed to register "Bow Wow" for furniture, with the courts ruling there is no likelihood of confusion.

In Chile, as a case in point, the Department of Industrial Property ruled against an application for the mark "House of Pancakes" for a discotheque and cabaret (Class 41) after The International House of Pancakes opposed the registration. The latter's mark was registered in Class 42 (restaurant services). The department stated that the marks were "confusingly similar" and that the services in both classes were "closely related and the co' existence of the two marks was likely to cause errors and deception among Chilean consumers."

Trademark protection often gets sticky in different parts of the world. Colombian courts ruled that because the Banana Republic was registered in the United States and not in Colombia, another company could use the mark for apparel in that country.

First use (and first registration) in many countries is sufficient to own a mark. Take the case of Mohamed al Chadily in Djibouti. He properly registered The Scissors (word) and The Scissors (label) for matches, of all things. And he won a claim of infringement against Naguis S. Abdallah, who claimed that the proper owner of the mark was a Czechoslovakian state-owned enterprise. The Djibouti Court of Appeals said, basically, "That doesn't cut any mustard here. Mohamed was the first, and that's that!"

In the Dominican Republic, SmithKline Beecham Corp. screamed and yelled when Aqua Verde was registered in Class 50 to protect perfumery and cosmetics because that was the same class in which SmithKline Beecham had already registered Aqua Velva and Aqua Fresh. Likelihood of confusion, said the powers that be, and Aqua Verde bit the dust.

The French also have been embroiled in trademark cases. A Supreme Court decision stated "Kir" (for a black currant/white wine-based cordial) was not generic and could be used as a trademark. I won't go into the reasoning, because the French are very touchy about their wines, trademarks and all.

Also in France, in Strasbourg District court, the trademark "Murosol" was invalidated for all types of floor and wall coverings. "Why?" you may ask. Because "mur" means "wall" in French and "sol" means "floor" and you can't grant exclusive use of these merely descriptive terms to a single owner.

India continues to change things English by a High Court ruling that protects world famous, well-known trademarks and internationally recognized trade dress. For the uninitiated, trade dress is the look of a mark, in. eluding the packaging. In a recent ruling, the court went after a copycat of the famous Mercedes Benz trade dress hood ornament. It noted that Benz had been registered in India in 1951 and restrained a defendant from selling undergarments in the name of Benz and its symbol, the "Three Pointed Human Being in a Ring." In a strong statement the court said, "There are names and marks which have become household words. Benz as name of a car would be known to every family that has ever used a quality car." Quite an endorsement. Can you imagine the U.S. Supreme Court issuing a similar statement?

Turkey was the site of a battle, between Fendi and Efendi, which went all the way up to the Civil Chamber of the Supreme Court there. Fendi, in case you hadn't noticed, is a world-marketed maker of cosmetics, perfumes and leather goods, and is a registered trademark in Turkey (and many other countries). The company claimed that Efendi, which means "master" or "sir" or "gentlemen" in Turkish, was none of those and that its use of the trademark for cosmetics was unfair competition and an infrigement of the Fendi mark.

Efendi shouted foul. Its mark was officially and legally registered. Further, it argued that the two companies didn't really compete since Efendi sold cosmetics and Fendi, leather goods. It added that there was no similarity in the marks, noting also that Fendi means nothing in Turkish whereas Efendi's name was translatable.

The courts brought in a committee of experts to evaluate the claims and, based on that report, made the following ruling: The Efendi trademark was to be cancelled; all acts of unfair competition based on the use of the mark are to cease; Fendi is a famous mark and, according to the Turkish Code of Obligations, Efendi acted in bad faith, thereby "committing a heavy fault"; and because of that heavy fault, damages are to be granted.

So much for the "gentlemen."

Beware, editors and writers, the next time you're tempted to use Spackle or Rollerblade or Xerox as a verb, or to write about Kleenex or Styrofoam or Jockey (if you're referring to undergarments) without an initial cap. The trademark protectors may be out to get you!

Michael Finn is a retired communications consultant for the International Trademark Association. This article was commissioned by AJR's advertising department.