Virginia Business Litigation Lawyer Blog

A trademark is a type of intellectual property that generally consists of a distinctive sign or indicator used to identify the originating source of the products associated with the trademark, so that consumers can distinguish the trademark owner's products from those originating from other sources.  Section 45 of the Trademark Act defines the term "trademark" as "any word, name, symbol, or device, or any combination thereof-

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register...,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."  See 15 U.S.C. §1127.  An example of a "word" mark would be TOSHIBA.  There are also design marks, like Nike's instantly recognizable Swoosh.  Even a sound can constitute a trademark (for example, NBC's "ding, dong, ding" chimes).  If you own a trademark, no one else can use it if their use would confuse consumers.  Trademarks are identified in commerce by the symbols ™ (indicating that the trademark has not been registered) and ® (for registered trademarks). 

While registration of trademarks is not required, owners of registered trademarks may commence legal proceedings for trademark infringement to prevent the unauthorized use of that trademark. Unregistered trademarks, known as "common law" trademarks, may also be enforced in court, but generally only within the geographical area within which it has been used or will be used.  A federally registered trademark, on the other hand, provides nationwide protection.  

The term "trademark" technically only applies when the product identified by the mark is a good.  When the mark is applied to identify a service, it is known as a "service mark."  Another similar term is "trade dress," which applies to a product's total image and overall appearance. 

Unlike patents, another form of intellectual property, trademarks can be renewed forever as long as they continue to be used in commerce.  

The Virginia city of Portsmouth agreed to settle a race discrimination case brought by the Department of Justice on March 25, 2009, the same day the suit was filed.  In the lawsuit, the DOJ accused the city of discriminatory hiring practices against African Americans in its hiring of entry-level firefighters, in violation of Title VII of the Civil Rights Act of 1964.

While the civilian labor force of Portsmouth is about 46% African American, only 12.4% of the city's firefighters were African American.  The DOJ attributed the discrepancy largely to the administration of the "National Firefighter Selection Test," a written examination with a pass rate of around 86% for whites but just 42% among African Americans, a "statistically significant" difference, according to the lawsuit. 

The case serves as a reminder that Title VII protects individuals not only from intentional acts of race discrimination, but in some circumstances may even protect such individuals from unintentional discrimination when such is the result of employment practices that may be well-intentioned but nevertheless have a "disparate impact" on members of a particular racial group.  As the United States Supreme Court held in 1971, Title VII "proscribes not only overt discrimination but also practices that are fair in form, but discriminatory in operation. The touchstone is business necessity."  Griggs v. Duke Power Co., 401 U.S. 424, 431

The DOJ did not allege the city's motives were discriminatory; only that the standardized test--while neutral on its face--resulted in the rejection of a disproportionate number of African Americans.  Because there was no business necessity for the test, the disparate impact was alleged to violate Title VII. 

Under the terms of the settlement, the City of Portsmouth will stop administering the test and will deposit $145,000 into a settlement fund that will be used to award "back pay" to eligible African Americans determined to have been harmed by the city's employment practices.