Episode III: The Circle is Now Complete: Using Overlapping Layers of Protection to Expand RightsAs iron sharpens iron, using overlapping layers of intellectual property protection can also be used to mutually strengthen existing forms of protection, and even build new rights.Here again, the TIE FIGHTER® provides a useful illustration. The U.S. PTO database shows that this three-dimensional TIE FIGHTER® registration shown above was issued under Section 2(F) of the Trademark Act. In general, trademarks must be distinctive in order to qualify for a Federal trademark registration. Thus, trademarks like NIKE® can be registered over footwear because such trademarks are neither generic nor merely descriptive of footwear. By contrast, a word like "SHOE" could not be registered over footwear as such a word would lack the requisite distinctiveness.Trademarks which are not inherently distinctive - a challenge most "non-traditional" trademarks (such as three-dimensional configurations) face at the U.S. PTO - may nonetheless be registered if an applicant is able to show proof of acquired distinctiveness, or "secondary meaning." In other words, proof that a trademark has become distinctive as applied to the applicant's goods or services.In order to register the three-dimensional configuration of the TIE FIGHTER®, Lucasfilm was able to cite to the various intellectual property already covering the TIE FIGHTER® (e.g., the company's trademark registration over the words "TIE FIGHTER") in support of its claim for acquired distinctiveness. Ultimately, the STAR WARS® brand was successful in convincing the Trademark Office of such secondary meaning.This example exemplifies a powerful path towards greater rights which other companies can follow. According to the Trademark Manual of Examining Procedure, a brand holder can make a prima facie showing of "secondary meaning" (and, thus, obtain a trademark registration under Section 2(F)) by providing "proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made."For brand owners - particularly companies intending to devote large marketing budgets to cultivating trademark rights - this can be a catch-22. In order to show "secondary meaning," a brand owner wants to prove that it has made "substantially exclusive and continues use" of a given trademark for five years. Yet, at the same time, such a trademark may not be eligible for trademark registration during this five-year period - making it difficult to stop competitors from making use of the trademark.Like many of Lucasfilm's intellectual property protection techniques, the company's use of overlapping layers of protection provides a roadmap for how brand owners can use copyright and design patent registrations to police a mark until the brand is able to build the necessary "secondary meaning" to obtain a registration.STAR WARS® has used the force of both registration segmentation and overlapping layers of intellectual property protection to grow into a multi-billion dollar brand. In doing so, the franchise helped to revolutionize the film merchandizing industry, and has provided countless examples of successful intellectual property management for small, mid-sized and large rights holders. By applying these same principles, businesses in countless fields can maximize their intellectual property rights.If your company is considering whether to protect its brand through registration segmentation or overlapping layers of intellectual property protection, call us today for a free consultation.Click here to go back to Episode II: "Overlapping Intellectual Property Protection - It's a Trap for Infringers"
