Trademarking the Millennium

January 1999

Managing:Legal Issues

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 program.

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 Andin.

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.

Enforcement
"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.

– WHD

William H. Donahue Jr. is an attorney practicing in New Jersey.



Copyright © 1999 by Bond Communications.


 

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