Authors: Attorney John C. Mitby & Law Clerk Elizabeth L. Spencer

Phone: 608-575-4077

Email: jmitby@hbslawfirm.com

In December 2016, Metcalfe Inc., filed suit against Festival Foods alleging that it stole the concept of Metcalfe’s trademarked highway marker logo with the phrase “Wisconsin Food Miles” used to show the distance that a food item travelled to the store. Festival Foods has been using a similar looking marker with the phrase “Festival Foods Locally Grown”. Metcalfe argues that the logo is confusingly similar to its own mark. The emerging dispute between these two grocers raises numerous issues. Understanding some of the basics of trademark law can help if you are debating whether to register your own mark.

First, trademarks typically protect brand names and logos. It is important to determine if the intellectual property protection you seek is actually trademark protection and not protection via a patent, for inventions, or copyright, for written or artistic works. Trademark registration can protect not only logos but a wide variety of things including sounds, colors, and scents. Personal names and geographic locales may be registered but only if they have acquired secondary characteristics making them distinctive. Marks that are offensive, derogatory, purely functional, or purely descriptive cannot be trademarked.

Second, it is important to determine if you want to register your mark with just the state or also federally. The general purpose of both state and federal trademark law is to stop unfair competition by preventing one person from passing off his goods and services as those of another. However, federal registration provides more rights to the trademark owner.

Wisconsin trademark law is governed by Chapter 132 of the Wisconsin Statutes and the Wisconsin Department of Financial Institutions. For a $15 fee, a party may register a mark with DFI for a period of 10 years and renew subsequent registration in 10 year periods. Wisconsin registration only provides a mark owner with a public demonstration of ownership and the date the ownership began. While this information can be used when establishing proof of priority of use, it does not provide any substantive or procedural rights. DFI will accept all properly completed applications even if the mark is similar to an already registered mark. DFI provides a searchable database so you can determine if your desired mark is already in use. It is important to note that registration of a business name is not the same as registration of a trademark.

The federal government’s power to govern trademark law is described in the Lanham Act which sets out the process for registration, protection from infringement, remedies, and requirements for continued use of a mark. Federal registration is a considerably lengthier process than state registration. A vital component of each application is the demonstration of actual use of the mark in interstate commerce or a bona fide intent to use the mark in commerce. Before submitting your application is best to search the United States Patent and Trademark database for similar marks. Upon submission to the USPTO of an application and a minimum fee of $225, the application is reviewed by an examining attorney and the mark is compared to previously registered marks. This can result in months of correspondence and includes an opportunity for third parties to object to the mark before a certificate of registration is issued. Once a mark is registered, it is the owner’s duty to police their mark and make sure it is not being infringed upon.

If a mark is not registered it can still receive protection and assert infringement claims. However, only federal registration provides the rights and protections of the Lanham Act including: using the registered trademark symbol: ®; the right to file an infringement lawsuit in federal court; the basis for an international trademark application; the creation of a statutory presumption that the mark is valid, the registrant is the owner, and the registrant has the exclusive right to use it; proof that the mark has acquired secondary meaning; constructive notice of a claim of ownership; entitlement to nationwide priority based on the filing date; and, the registration becomes incontestable after five years subject to certain statutory defenses.

In the Festival Foods and Metcalfe dispute, Metcalfe has federally registered their highway marker food miles badge as a trademark. Thus, they are able to bring this case in federal court. Metcalfe is arguing that the two badges are confusingly similar and that Festival’s use of a similar mark is infringement. Metcalfe is seeking to stop Festival from using the confusingly similar mark and pay damages. Under the Lanham Act, Metcalfe must establish that (1) their mark that was used in commerce; (2) their mark has priority over Festival’s use; and (3) a likelihood of confusion exists. While the first two elements can be easily fulfilled the likelihood for confusion is typically more difficult and is established by a survey of evidence indicating consumer confusion; evidence of actual confusion; or a logical inference based upon a similarity of the marks and the goods or services upon which the mark is used.

Trademark law is a deceptively complicated. There are numerous points along the path of registration and use that can result in disputes. Marks that one may believe to be unique and arbitrary often are already in use or fall into an un-registerable category. Additionally, if a mark is federally registerable there are numerous points in the registration process during which third parties can challenge the mark. Even after registration is granted there is a level of upkeep that must occur or the mark will be deemed abandoned. If you are planning to register a mark consider contacting an attorney.

For more information on Wisconsin trademark registration and search the DFI database visit: https://www.wdfi.org/Apostilles_Notary_Public_and_Trademarks/forms_Trademark.htm

For more information on federal trademark registration and to search the USPTO database visit: https://www.uspto.gov/trademark