Trademarking the Millennium
Can marketers claim title to the word millennium to sell jewelry?
Several companies already have
BY WILLIAM H. DONAHUE JR.
Jewelry and watch companies that use the word millennium in their brand
names may face legal battles over the next two years if they haven't trademarked
the word or phrase they use. Some companies with trademarked lines plan
to go after infringers aggressively. This is despite the fact many experts
believe the word millennium can't be defended as a trademark because of
its generic nature. Still, retailers could get dragged into legal battles
over these issues, so consult a trademark attorney before stocking lines
with a non-trademarked millennium reference.
International Bullion & Metal Brokers, New York City, has registered
the mark Millennium Jewelry Collection® for the chains, bracelets, rings,
earrings, pendants and brooches that are part of its new collection (p.
56). Earlier, Alfred Dunhill Ltd., London, England, received a trademark
for use of the word millennium on watches and jewelry.
A vocal protector of its trademark, IBB has issued over 50 letters warning
potential infringers it owns the right to use these words. "The retailer
should be careful not to sell an item using a name that has been trademarked
that would confuse the public as to its source," says Donald B. Johnson,
legal counsel for IBB. "In other words, if use of the term millennium
in connection with the sale of jewelry could lead a consumer to think it
came from IBB and it did not, there could be a problem with infringement."
One of the companies IBB contacted is Carl K. Gumpert, Los Angeles, CA.
Last year, Gumpert patented a process for producing invisible settings and
registered the trade name The Millennium Collection Invisible Settings in
the state of California. Company President Walter Feinblum says he thought
that would protect his right to use the name in marketing his patented product.
But as soon as he began to use the name, IBB and Alfred Dunhill notified
him that using the word millennium to promote a jewelry product infringed
on their trademarks. Feinblum hired a law firm specializing in trademark
infringement litigation and was told he probably could win if the case went
to trial. But litigation costs would exceed $100,000 and, of course, there
was no guarantee he would win. Rather than spend that much on what might
end up being a pyrrhic victory, he decided not to use the word in his marketing
Ofer Azrielant, chairman of Andin International Inc., New York City,
takes a different approach. He uses the word in a Millennium Heart line
of jewelry that is scheduled for a large rollout in retail stores this year.
He had a trademark registration pending at press time with the U.S. Patent
and Trademark Office. IBB also contacted him.
Like Feinblum, Azrielant consulted his trademark lawyers, who told him
the word millennium is not defensible as a trademark. His lawyers also believe
his logo is distinctive enough to compete with IBB's Millennium Jewelry
Collection without harming that line in the marketplace.
Azrielant says he'll let a court resolve the issue before he'll withdraw
his product line. "My company has a history of winning trademark infringement
cases," says Azrielant, who notes that Andin produces many lines of
jewelry using trademarked names. At press time, IBB had not filed suit against
The Ubiquitous Millennium
Just because a jewelry manufacturer received trademark registration on phrases
using the word millennium doesn't necessarily mean it will prevail in the
marketplace. Any company can contest a registered-trademark holder's effort
to block use of the word, as Andin plans to do with IBB. The courts must
decide whether it can be defended as a trademark.
Registering a trademark with the U.S. Patent and Trademark Office does
not always ensure that the owner of the mark has the exclusive right to
use the words or symbols that make up the trademark. All the PTO attorney
can do is review a particular application for which he or she serves as
preliminary judge and jury.
The attorney conducts a search to see whether a confusingly similar mark
on similar goods or services has already been granted and then makes several
legal judgments. One of them is whether words used in the mark are simply
descriptive or "dilute" a legal term meaning they are in
common use to identify similar products.
Obvious examples in the jewelry industry would be terms such as "wedding
bands," "yellow gold" or "faceted diamonds." These
terms are not unique or distinctive. They simply describe the product and
are the most common way to do that, says Paul Fahrenkoph, a senior examining
attorney at the PTO. According to some experts outside the PTO, millennium
is just such a word. They suggest it should not have been given a registration
number in the first place.
"The word millennium and related words are in such common usage already
and will be more so as we get close to the year 2000 that registered
trademarks using that word have or will become dilute. This means the courts
are not likely to enforce them," says Jane Linowitz, an attorney who
specializes in jewelry trademark and copyright law at the New York City
law firm of Levisohn, Lerner, Berger & Langsam.
But you should still "tread with caution. Have an attorney check
for you to be sure there is no infringement," says Linowitz. As in
most areas of law, very small changes from one case to the next can mean
the difference between victory and defeat. Using a word registered as a
trademark may not be an infringement in one context but could definitely
be an infringement in another.
Several jewelers IBB notified of possible infringements sought an opinion
from the Jewelers Vigilance Committee. Cecilia Gardner, JVC's general counsel
and executive director, believes IBB's registration does not completely
bar use of the term millennium by others in connection with jewelry sales.
Because the PTO has already granted multiple registrations using the word
millennium, dozens of other applications are pending and hundreds of companies
in many fields use the word millennium, the PTO itself would likely consider
the word dilute, she says.
Gardner concludes that retailers' use of the word millennium or derivatives
in advertising or selling jewelry would not infringe IBB's federal rights
and would not be restricted by IBB's registration.
However, like Linowitz and Feinblum, Gardner acknowledges that defending
a trademark infringement lawsuit is expensive and again emphasizes that
jewelers should seek expert help before buying or selling jewelry using
the term "millennium."
What is a Trademark
Trademarks protect symbols, logos, designs, packaging and names companies
use to identify themselves and their products.
Trademark law developed to prevent what is referred to as source confusion.
So who does this benefit and how? In the jewelry industry, it benefits the
jeweler who buys products and the trademark owner.
As a retail jeweler, you are familiar with many trade names and probably
could identify many of the manufacturers of certain products from a product
name or slogan. That you recognize the names and slogans and have an opinion
about them goes to the heart of trademark law.
The trademark owner spends time and money creating that recognition and
a certain reputation associated with it. The retailer comes to rely on the
maker of a trademarked product for a certain level of quality. That's what
gives a trademark its value.
William H. Donahue Jr. is an attorney practicing in New Jersey.
Copyright © 1999 by Bond Communications.