Look Before You Leap - Recent Case Demonstrates the Importance of Careful Trademark Selection
The federal court in the Northern District of Georgia recently held that Wal-Mart’s yellow smiley face is not a protectable trademark. Smith v. Wal-Mart Stores, Inc., 537 F.Supp.2d 1302, (N.D. Ga. 2008). Specifically, the Court held that trademark protection could not be afforded to Wal-Mart’s yellow smiley face, because Wal-Mart failed to show that the public recognizes the yellow smiley face as a designation of Wal-Mart’s products or services. The Court made this finding even though Wal-Mart has been using the yellow smiley face to promote its good and services for many years and has invested substantial resources and years of effort in marketing it goods and services with the yellow smiley face.
Because Wal-Mart’s yellow smiley face was held not to be a protectable trademark, Wal-Mart is unable to prevent others from using a yellow smiley face identical to or similar to Wal-Mart’s to promote their goods and services. In other words, Wal-Mart invested substantial resources and years of effort in promoting and developing a trademark in which it basically has no legal rights.
Because the first step in any company’s marketing campaign is to select a trademark that consumers will associate with the company’s reputation and goods and services, this case emphasizes the importance of taking the necessary steps to properly select your trademark at the early stages of your marketing campaign. Legal counsel can play a vital role in advising you on the relative strengths and weaknesses of your trademark. By having a search performed and discussing your trademark selection with legal counsel, you will be able to ascertain the scope of legal rights that may be afforded by your trademark before expending a great deal of time and resources in developing and promoting the trademark.
