So, you want to trademark a name for your investment fund. You have taken general legal advice and have been told that in a word phrase like ‘BARON INVESTMENTS’ the secondary words in the phrase are of no consequence in determining infringement and trademark ability. Indeed, so long as you have trademarked ‘BARON’ for financial services including investment management in the UK, EU and US markets then you can get an injunction to stop anyone else using the name ‘BARON’ as part of any word phrase for financial services in the UK, EU and US markets, and force them to recall all their advertising and pay you money damages, or/and trademark any secondary word or words with that name, right?
Well the above advice is not always necessarily right. Yes, it is generally right but like almost every general rule there are exceptions. It is right to say that where there is an existing word trademark like say ‘VISION’ as part of a phrase such as ‘VISION COMMUNICATIONS’ within a specified geographical region you would infringe if you use a phrase like ‘VISION SATELLITES’ for the same or similar products or services within the geographical regions in which ‘VISION COMMUNICATIONS’ has been registered. There will be confusion or/and a likelihood of association. Additionally, trademark registration of ‘VISION TELECOMMUNICATIONS’ or ‘VISION INTERNET COMMUNICATIONS’ by the existing owner of VISION COMMUNICATIONS, as part of the VISION family of marks, should sail through. However, trademarking a name and establishing infringement is not always that straightforward particularly when it comes to finding names that distinguish investment funds.
You might be familiar with the trademark dispute between Loomis Sayles & Co and Absolute Investment Advisers LLC in 2011. Absolute had a trademark of the name for its Absolute Strategies Fund and sued Loomis after Loomis had launched Loomis Sayles Absolute Strategies. Loomis argued that the phrase ABSOLUTE STRATEGIES was non-distinctive. Loomis argued that ABSOLUTE STRATEGIES was a term that was used generically in the financial services sector. The two firms reportedly settled in favour of Absolute Investment Advisers because Loomis renamed its service to Loomis Sayles Strategic Alpha.
In that US case, Absolute could protect its mark but the issue of whether a mark is distinctive remains an important one. Is a word or a word phrase that is used generically in financial services distinctive enough to be trademarked? Trademarks are supposed to promote free and fair competition in the business marketplace.
As investment funds move away from traditional names to distinguish themselves as the market place becomes increasingly crowded trademarking becomes more challenging. A name like BRIDGE CAPITAL INVESTMENTS is safe enough but what about BRIDGE HIGH GROWTH FUND or descriptive terms like BRIDGE SHORT TERM PROFITABLE RETURNS FUND or BRIDGE PROFIT COASTER? Such descriptive trademarks are still vulnerable to challenge, even after registration. There could still be an application for invalidity on grounds that the mark is descriptive or non-distinctive, or revocation applications may be filed based on non-use; or because the mark has become generic such as with GRAMOPHONE, LINOLEUM, ELEVATOR AND ESCALATOR; or because use is misleading to the public.
You can trademark a name which is descriptive or non-distinctive if it acquires a reputation that makes it distinctive so long as the use is in accordance with the honest practice in industrial or commercial matters. The law allowing for a descriptive term to become registrable because it has acquired a secondary meaning is limited by a defence from descriptive uses which ensures that descriptive terms in a market place are not effectively removed from that market place. You can also trademark a slogan so long as it has some creativity to it that makes it non-generic or distinctive. Typically UK trademark registration is quite quick, it is possible to register a UK trademark in 4 to 5 months if there are no objections by the examiner or third-party oppositions United Kingdom Trademark Office. A straightforward US trademark can take up to 10.5 months to get approved United States Patent and Trademark Office. An estimate of worldwide international trademark registrations under the Madrid Protocol is available from the World Intellectual Property Office.
If you can think of a unique name even if it includes generic words used in financial services, you might still be able to get it through examination. Examples of such names are PUTNAM INVESTMENT ABSOLUTE RETURN 700; and ACCESS FLEX HIGH YIELD FUND from ProFund Advisors LLC, which are both registered trademarks. There is also MIRAE ASSET GLOBAL INVESTMENTS who registered GLOBAL GREAT CONSUMER FUND.
A trademark does more than just create barriers to entry for competitors, it also makes your product or service stand out from the rest. Figuring out the analysis of goods and services offered for correct classification on the Trade Mark Register; and drafting of specifications of goods and services so that they get through examination are part of the value trademark professionals bring to the registration process.
Peter Adediran is the founder of PAIL Solicitors, a law firm that specialises in intellectual property and information technology. Subscribe to his free blog on technology, IP and Internet law.