A mental state characterized by an intent to deceive consumers by using a competitor's trademark or one that is confusingly similar to it. Bad faith is not required to find trademark infringement or dilution. However, courts are far more likely to award monetary damages in a case where there is bad faith on the part of the defendant. Evidence of bad faith has been found to exist where the defendant failed to conduct a trademark search prior to adopting a mark. Interestingly, bad faith is not always found where the plaintiff's mark came up in defendant's trademark search. That is because the defendant may have had a good faith belief that the mark was already diluted from extensive use by others, or that the products or services sold by plaintiff were sufficiently different that those defendant planned to sell.

Prior to ordering injunctive relief, which is an equitable remedy, the court must weigh the harm to defendant if the injunction is imposed, against the harm to plaintiff if no injunction is ordered. There have been cases where the court finds likely consumer confusion (the requirement of a finding of trademark infringement), yet refuses to enjoin the defendant from using the mark on the basis that defendant made a substantial good-faith investment in a mark, and the harm to defendant in loosing that investment outweighed the harm to plaintiff. See e.g. Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44 (2d Cir. 1978).

There are a couple steps trademark owners can take to prevent the importation into the United States of counterfeit goodsgray-market goods, or goods that bear confusingly similar marks. First, the owner of a trademark registration or the user of a trade name for six months can record their marks with U.S. Customs who can stop the importation of such goods. Second, the trademark owner can petition the International Trade Commission who has the power to issue temporary or permanent exclusion orders that bar the importation of goods.

An international teaty governing the trademark laws of Belgium, the Netherlands, and Luxembourg. The Benelux Convention was signed 1962, and was followed by a common registration system, the Uniform Benelux Law on Marks, for trademark registration in any of the three countries.  Click here to visit the Benelux Trademarks Office.

 

The period in which an Intent to Use trademark applicant is prohibited from filing an Amendment to Allege Use, or a Statement of Use. This period begins once the mark is published in the Official Gazette, and continues until the Trademark Office issues a Notice of Allowance.

"Blurring" typically refers to the "whittling away" of distinctiveness caused by the unauthorized use of a mark on dissimilar products. Anti-dilution protection extends beyond similar products by protecting against blurring and tarnishment

What constitutes a "whittling away" of distinctiveness is roughly akin to the infringement analysis, namely, the degree of similarity of the marks in question is a primary factor, except that the products are unrelated.  By contrast, trademark infringement requires a finding of product relatedness.

Book titles are generally not protected under trademark law unless they are part of a series. However, even if the book title doesn't belong to a series, it may theoretically receive trademark protection as long as the title qualifies as a trademark and has acquired secondary meaning. Even if the book title belongs to a series, secondary meaning is required if the series title itself is descriptive of the general contents of the series.

"Brand," brand name" and "trademark" are often used interchangeably, but they are not synonyms.  "Brand" refers broadly to a customer's entire experience with a company, not just their "brand name" or logo.  

"Brand name" is the non-legal term for a lingual trademark.  Even "brand name" and "trademark are not synonymous, since a trademark may also be a sound, a color or product packaging, etc, Thus, even though a brand name is always a trademark, a trademark is not always a brand name.  

Brands have no legally protectable rights in themselves.  Trademark law protects brand in various ways, but so too can copyright laws, defamation laws and contract laws.   Specifically, copyright law protects a company's designs and creative works that contribute to a company's image and thus reputation; defamation laws directly protect the reputation of the company by stopping false and misleading statements; and contacts can control behaviors and statements of employees, contractors, vendors, and customers in ways that create and support a positive association with a company.

Thus, when looking how to increase brand value of a company, one should not forget to discuss the many legal strategies available with a legal advisor.

Also known as a "trade name," "assumed name," or "corporate name," a business name is the name under which a company conducts its business.  Whereas a business name identifies the business itself, trademarks identify the goods or services sold by the business.  Also, while a corporate name specifically identifies the name of a corporation, a business name, trade name or assumed name can refer to entities that are not corporations.

Business names frequently receive protection as trademarks, because they often meet the trademark law requirements of use in commerce,distinctiveness, and unobjectionable content.  However, unlike a trademark, business names can obtain protection under the Trademark Act and common law of unfair competition, even if they are not used in direct connection with the sale of goods or services.

A frequent misunderstanding occurs when registering or reservingbusiness names with the appropriate state governmental agency, e.g. the Secretary of State.  In so doing, businesses are often led to believe they have acquired trademark protection.  This is not so.  States require the registration of business names when doing business under a name other than a legal name, in order that the true identity of a company/person can be found.  A state will register or reserve a business name as long as it is not identical (or near-identical) to a name already registered.  By contrast, a trademark that is far less similar to an existing trademark than "near-identical" can infringe a prior mark.

Constructive notice is a legal fiction. In the context of proving good faith as a defense in a trademark infringement lawsuit, constructive notice replaces the requirement that the defendant have actual knowledge of plaintiff's prior use of a mark. Thus, instead of having actual knowledge, bad faith is said to exist.

 

U.S. Customs officials can demand disclosure of the identity of any trademark on imported goods, and under certain circumstances, seize goods bearing infringing marks. Congress has authorized Customs Bureau involvement in preventing the importation of counterfeit goods,gray-market goods and goods bearing infringing trademarks. Such goods can be seized at the border. However, what happens to them after seizure depends on which category they fit into. Counterfeit goods will be destroyed or given to charity after removal of the trademark. Infringing marks will be sent back to the place of origin, or enter the U.S. after removal of the mark. Or, upon consent of the U.S. trademark owner, counterfeit goods or goods bearing infringing marks may enter the U.S. In order for the Customs Bureau to take action at the border, the U.S. trademark owner will have to record with Customs their federally registered mark (or trade name if used for six months). Additionally, trademark owners typically have to alert Customs of specific counterfeit or infringing activity, just as a practical matter, since Customs has far too many trademarks to effectively monitor without such assistance. For more information, visit the US Customs site athttp://www.customs.ustreas.gov/imp-exp2/ipr/iprbroch.htm

 

A federal trademark registration may be canceled by a court in a civil action, or by the U.S. Patent and Trademark Office in a cancellation proceeding. The grounds for cancellation of a mark include; the mark is likely to cause confusion with a prior mark, it is descriptive of the underlying goods or services, or that the mark is generic.

When there is a conflict between marks, there are several types of lawsuits which could be brought including: Trademark infringement in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; False designation or description in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); Trademark dilution in violation of section 43(c) of the Lanham Act, 15 U.S.C. §1125(c); Violation of state trademark infringement statutes; Common law trademark infringement; Violation of state unfair competition and deceptive practices statutes; Common law unfair competition; and Common law or state statutory violations of the right of publicity.

A letter sent by a trademark owner demanding that another company immediately halt using its trademark. These letters are typically accompanied with a threat of a lawsuit if the alleged infringer does not immediately halt use. Before sending such a letter, it is vital that the initiator be 100% certain their rights in the mark are prior to the alleged infringer's rights. Otherwise, it may be the initiator who must cease use. 

A symbol used to identify goods or services that meet certain criteria such as quality ratings or content levels. Typically, a system of rating is established by an independent organization, and the symbol is then licensed to approved manufacturers or service providers. Examples include: the Good Housekeeping Seal of Approval, the , and the Real symbol used on dairy products.

A trade path or channel of distribution or channel of trade refers generally to the route through which a product must travel to reach the consumer.  In 

The path through which goods and services travel from the vendor to the consumer or payments for those products travel from the consumer to the vendor. A distribution channel can be as short as a direct transaction from the vendor to the consumer, or may include several interconnected intermediaries along the way such as wholesalers, distributers, agents and retailers.  

 

A designation required on all federal trademark applications that identifies the kinds of goods or services for which a particular mark will be used. This information is available for those searching for prior uses of a mark prior to adopting it. A good search strategy is to broaden the scope of the search for those classes in which the proposed mark may potentially belong. The application fee for a federal registration includes registration for only one international class. Additional classes can be added at a cost per class. Click here for a list of all international classes.

The legal opinion provided by an attorney to a trademark owner or prospective trademark owner that identifies the legal risks associated with using a particular trademark. Such risks might include, for example, the possibility of infringing or diluting an existing mark and hence being sued, and the likelihood that an application for trademark registration will be rejected. The legal opinion of an attorney can serve not only as immediate advice on the risks in adopting a given mark, but if the opinion is written, which most are, you may be able to deter companies appearing in the opinion from suing for infringement by showing them that at least one attorney has already decided the marks are not confusingly similar. It is important to note, however, that while attorneys are trained to be objective, the inherent subjectivity of trademark law suggests that a second legal opinion is a very good idea if there is any question about the availability of a mark or about conflicts between marks.

These are terms that are invented for the sole purpose of serving as trademarks. Examples include KODAK for photographic equipment, UNIX for a computer operating system, REEBOK for shoes, and XEROX for photocopying equipment. Coined marks receive the highest level of protection, because a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. As a result, infringers of these marks are hard pressed to provide any plausible explanation for their use the mark, leaving the impression that the real reason was in fact a blatant attempt to trade off the goodwill generated by the owner of the trademark.

A symbol used by members of a group to identify their association with the group, such as a union, co-op and trade or professional associations.  

Colors, whether one or a combination of them, can be protected under trademark law if the colors otherwise meet the definition of a trademark. In a 1995 case, Qualitex v. Co. v. Jacobson Prods. Co., 514 U.S. 159, the Supreme court rejected earlier lower court decisions that had refused to protect colors as trademarks. Those earlier decisions claimed that businesses would soon deplete the limited supply of colors available, and unfairly prevent others from entering the marketplace, thus creating an undesirable monopoly. The Court in Qualitex pointed out that there are innumerable shades of colors available, thereby rejecting the depletion of colors theory.

An application for trademark registration containing multiple international classes. Each class costs $245 to register, although all the classes can be applied for on one application.

The Commissioner of Trademarks in the United States Patent and Trademark Office. At the time of this writing there are two commissioners in the TM Office:

Law originating from court decisions and refined through prior court precedents, as distinguished from law created by the legislative branch of government such as statutes. Common law is also referred to as court-made law.

Comparative advertising is the use of another company's trademark in order to compare that company's products with its own. Whether or not comparative advertising qualifies as trademark infringement or dilution is governed by those bodies of law. If, for instance, an ad does not carefully delineate the competitor's mark from its own, and thereby creates a likelihood of consumer confusion, then the use of the mark is infringing. But, where there is no consumer confusion, or dilution, direct claims about another company's product are allowed (if the claims are true, of course). For example, Hudson Pharmaceutical Co. was allowed to copy certain elements from the package and label of METAMUCIL, and to state that its own product, REGACILIUM, was equivalent to METAMUCIL. However, Hudson was required to print the word "equivalent" in at least as large of letters as the mark METAMUCIL, to place a ® next to the term METAMUCIL, and to state that METAMUCIL was made by G.D. Searle and that Searle did not make or license REGACILIUM. G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837, 839 (3rd Cir. 1983). Similarly, SECOND CHANCE perfume was allowed to state in its materials that it was equivalent to CHANEL No. 5 perfume.Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th Cir. 1968).

Use by two or more persons of the same mark in connection with the same or similar products or services, usually limited by geographic boundaries.

An administrative process governed by the Trademark Trial and Appeal Board in which the Board reviews an application for a concurrent use registration, and sends notice to the party identified in the application that their the rights in their mark may be limited as set forth in the application. The non-applicant party has forty days to answer, otherwise the limitations specified in the concurrent use application will be entered as a judgment.

A federal registration which delineates certain limitations on the use of a mark due to the concurrent use of a similar mark. Generally speaking, the first of two companies to use a mark is entitled to nationwide registration rights, except for the specific geographic area in which the second company is using the mark, even if the first user has not used the mark nationwide. If the second user is the first to register, then the second user is the one that receives nationwide registration subject to the first user's geographic region. Concurrent users may agree to leave open certain regions permanently or else long enough for one or the other to begin actual use in that region.

Conflicts between trademarks can occur due to two marks being similar to each other in such a way that consumers are likely to be confused as to which is which. The result of a conflict can lead to one side abandoning their rights rather than fight, or may lead to negotiation, arbitration, mediation, or a lawsuit. There are several different theories of law (causes of action) that relate to trademarks

Likelihood of Confusion (or Confusing Similarity) is the legal standard that determines whether or not trademark infringement has occurred.  The likelihood of confusion test is also one of several examinations conducted by the U.S. Patent and Trademark Office in determining whether to approve an applicant’s trademark application.  

The specific standard itself is defined by a vast body of law and varies jurisdiction by jurisdiction.  The essential ingredient for the likelihood of confusion test is (obvious from the terminology) that consumers encountering one trademark are likely to be confused with a different trademark.  This is not to say the consumer feels puzzled or befuddled or the like.  Usually the consumer referenced in this body of law is a hypothetical consumer who would be completely unaware that two different companies are using the similar/identical mark.  What's more, the hypothetical purchaser is not expected to make detailed, side-by-side comparisons, or to have perfect recall.  

Thus, trademark confusion means the incorrect assumption on the part of a hypothetical consumer that the two trademarks belong to the same source.  And with likelihood being incorporated into this standard, a court or the Trademark Office must merely decide that the propensity for confusion is strong enough to warrant elimination of the newcomer's use of the mark.  Thus many trademark infringement lawsuits proceed without a shred of evidence of any actual confusion.  Of course, evidence of actual confusion would be very influential to the outcome.

It is worth noting here that even if there is no likelihood of confusion, i.e. no trademark infringement, you may still be liable for using another company's trademark if you are blurring or tarnishing their mark under the state and/or federal dilution laws. 

 

See Also...

Likelihood of Confusion Factors

Purpose of the Likelihood of Confusion Standard

Where use of a trademark is deemed to have occurred even without actual use, pursuant to a statute. The legal effect is the same as if there were actual use.

 

Ownership rights in expressive works (not ideas), granting the owner exclusive control over distribution, display, copying, performance, and adaptation of those works. The Copyright Office is the umbrella of the Library of Congress that governs the registration of copyrighted works.

 

Also known as a "trade name," "assumed name," or "business name," a corporate name is the name under which a company conducts its business.  Whereas a corporate name identifies the business itself, trademarks identify the goods or services sold by the business.  Also, while a corporate name specifically identifies the name of a corporation, a business name, trade name or assumed name can refer to entities that are not corporations.

Corporate names frequently receive protection as trademarks, because they often meet the trademark law requirements of use in commerce,distinctiveness, and unobjectionable content.  However, unlike a trademark, corporate names can obtain protection under the Trademark Act and common law of unfair competition, even if they are not used in direct connection with the sale of goods or services.

A frequent misunderstanding occurs when registering or reservingcorporate names with the appropriate state governmental agency, e.g. the Secretary of State.  In so doing, businesses are often led to believe they have acquired trademark protection.  This is not so.  States require the registration of corporate names when doing business under a name other than a legal name, in order that the true identity of a company/person can be found.  A state will register or reserve a corporate name as long as it is not identical (or near-identical) to a name already registered.  By contrast, a trademark that is far less similar to an existing trademark than "near-identical" can infringe a prior mark.

 

The USPTO permits trademark owners to modify certain information on an existing trademark registration for an additional filing fee.  However, there are many aspects that cannot be changed, for example, you cannot broaden the description of goods (you can only narrow it).

 

Court costs can be recovered by the prevailing party as a matter of course, unless the court directs otherwise. This includes filing fees, court reporter fees if necessary to use transcripts in the case, printing and witness fees, and compensation for court-appointed experts. What constitutes a prevailing party is not always obvious. The plaintiff need not win on all claims to recover costs as the prevailing party. Sometimes the defendant may recover costs, as for instance if the case is dismissed with prejudice. Some statutes provide specifically for award of attorneys' fees as costs, such as in the Racketeer Influenced and Corrupt Organizations Act. 18 U.S.C. §1926(c).

 

 

Costs will obviously vary based on what services you need, but you don't always get what you pay for. That said, generally you get much more value out of services rendered by an experienced trademark attorney compared to a trademark paperwork factory that relies primarily on paralegal assistants.  Bottom line is to not make assumptions about what level of service you are getting for your money, but rather, inform yourself as a good consumer.

 

Goods bearing a counterfeit trademark. A counterfeit trademark is defined as a spurious mark which is identical with, or substantially indistinguishable from, a federally registered mark.

While infringement of a trademark requires confusing similarity between marks, regardless of the intent of the infringer, counterfeiting can only occur when the perpetrator knowingly used the counterfeit mark with an intent to traffic in the goods bearing such mark and knowledge that the trademark was a counterfeit.

Intentional trafficking in counterfeit goods is a criminal offense, and can lead to treble damages when pursued in a civil court. The U.S. Customs Bureau and the International Trade Commission can help trademark owners stop the importation of counterfeit goods into the United States.

 

An international treaty providing for "one-stop" trademark registration for all European Union country members. As of yet, trademarks continue to be governed by each individual European country's laws, and there is no harmonization of laws.

The act of registering another company's trademark as your own domain name, presumably with the intent to sell the domain name to the trademark owner at a substantial profit.

Other terms have been applied to the same behavior, such as cyberpirating and domain name hijacking.

Former President Clinton signed a bill on November 29, 1999 that amended the Trademark Act, and provided a clear cause of action against cybersquatters and reverse domain name hijackers.

 

To secure a date of first use in commerce the mark owner must use the mark in trade in a manner that allows consumers to rely on it to identify and discriminate between the user’s goods or services from those of competitors’. Furthermore, since the authority for the Trademark Act is based on the interstate commerce clause, the user must also demonstrate use in interstate commerce in order to obtain a federal registration. The interstate commerce requirement is met so long as use of the mark in trade includes activity that either crosses state lines or affects interstate commerce directly or indirectly such as by selling products or services to interstate travelers.

 

De facto secondary meaning exists where an interest in the public good overrides the protection of a mark that otherwise serves to identify source for consumers and has acquired secondary meaning. De facto secondary meaning exists when a mark is generic or functional. These types of marks can never be granted exclusive rights, even if the mark owner has done everything possible to preserve rights in the mark through proper usage, policing or a heavy advertising campaign resulting in secondary meaning. There is a strong public interest in allowing competitors to all use words that inform the public about the nature of their goods, but doing so is nearly impossible if exclusive rights are granted in the words necessary to describe a product. For this reason, the doctrine of de facto secondary meaning precludes the granting of monopoly powers available under trademark law.

 

A monetary amount awarded to the plaintiff by the court in order to compensate the plaintiff for actual injury sustained by the actions of the defendant. In trademark cases, the basis of damages is typically the plaintiff's lost profits or defendant's profits as a result of the infringing activity, and may include prejudgment interest. Additionally, damages have been based on a reasonable royalty or a the cost of corrective advertising. Finally, the court may award treble damages to the plaintiff where the court deems such damages as equitable and not punitive.

 

Many businesses now provide over the Internet databases of existing and pending trademarks, which the user can search, usually for a very reasonable fee. The services vary in their timeliness and whether or not state trademark registrations are available. The only free database is maintained by the U.S. Patent and Trademark Office (USPTO) itself, and can be accessed on the Internet athttp://www.USPTO.GOV/tmdb/index.html. While this site provides a decent replacement to the CASSIS databases located in specific depository libraries around the country, it can be anywhere from several days to a couple months old. Furthermore, it does not include common law marks nor state registrations. As such, it should be used only as a means of eliminating potential marks prior to investing any money on a more comprehensive search.

The date a mark was first used anywhere. In the United States, the first to use a mark generally has priority, and can exclude all subsequent users of identical or confusingly similar marks.

 

A priority date is the date used to determine which of two opposing parties in a trademark dispute should prevail. Generally speaking, the one with the earliest priority date wins. The United States is one of few countries in the world that deems the date a mark was first used to be the priority date. Most other countries set the priority date as the date a mark was first registered. One exception to the U.S. system of setting priority dates is for the Intent to Use application, in which the priority date is becomes the date the application was filed rather than the date the mark is first used.

 

These are marks that cannot be registered as trademarks because they mischaracterize or mislead consumers as to the underlying product. The usual test for determining whether or not a mark is deceptive is: (1) the mark misdescribes the character, quality, function, composition or use of the underlying product; (2) purchasers are likely to believe that the misdescription actually describes the goods; and (3) purchasers are likely to rely upon the misdescription in making their purchasing decision. Some courts have simply looked for an intent do deceive, instead of apply this test. In any event, if the mark is misleading, but does not qualify for being a deceptive mark because, perhaps, the mark's owner had no bad intent, or because there is not likely to be any reliance by purchasers on the misleading description, then the mark is a deceptively misdescriptive mark.

 

 

Deceptively misdescriptive marks are those that incorrectly describe features of the underlying services or goods to which the mark is affixed. Like deceptive marks, deceptively misdescriptive marks tend to mislead consumers as to the underlying product. However, deceptively misdescriptive marks do not meet the requirements of a deceptive mark (i.e. bad intent or reliance by purchasers upon the misdescription). As such, deceptively misdescriptive marks can be registered on the Principal Register once they acquire secondary meaning.

 

The Trademark Office requires on certain documents, such as an application for registration, a declaration by the trademark owner that all the information in the document is true. Specifically, 37 CFR 2.22 states the requirement:

Section 2.20 Declarations in lieu of oaths.

The applicant or member of the firm or an officer of the corporation or association making application for registration or filing a document in the Patent and Trademark Office relating to a mark may, in lieu of the oath, affidavit, verification, or sworn statement required from him, in those instances prescribed in the individual rules, file a declaration that all statements made of his own knowledge are true and that all statements made on information and belief are believed to be true, if, and only if, the declarant is, on the same paper, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001), and may jeopardize the validity of the application or document or any registration resulting therefrom.

 

Where the plaintiff cannot show harm from lost profits, some courts may still award any of defendant's profits in order to avoid unjust enrichment of the defendant, but such an award is reserved for when the defendant intentionally infringed plaintiff's mark. If awarded, defendant's profits are calculated by plaintiff proving defendant's gross sales, and then defendant proving any deductions based on overhead, operating expenses, materials or labor. Documentary evidence is typically required for defendant to prove any deductions.

 

The following provide a bar or defense to a claim of trademark dilution: (1) the mark used is a federally registered trademark (only bars claims of dilution brought under state or common law; not those under the federal law); (2) use of a famous mark by another person in comparative advertising to identify the competing goods or services; (3) noncommercial use of a mark; and (4) all forms of news reporting and news commentary. In addition to these defenses, which are all specifically identified in the Dilution Act, many of the same defenses for trademark infringement are also likely to apply. However, since the Federal Trademark Dilution Act is relatively new (1996), it is uncertain how the courts will interpret the applicability of these defenses.

A claim of trademark infringement can be responded to by either attacking plaintiff's own trademark rights or else denying the existence of trademark infringement or dilution. The defendant may be able to argue the following defenses: (1) plaintiff abandoned the mark; (2) plaintiff engaged in fraud when registering or maintaining registration of the mark; (3) the mark is generic (4) plaintiff engaged in trademark misuse by using exclusive rights in the mark to violate the law; (5) plaintiff delayed unreasonably before asserting or enforcing rights against defendant (laches) and therefore should be stopped form claiming infringement (estoppel); (6) the mark is functional; (7) plaintiff's explicit or implicit conduct reasonably offered assurances to defendant that plaintiff would permit defendant's use of the mark (acquiescence); (8) defendant is not using the mark as a trademark, but merely to describe defendant's own products (fair use); (9) defendant is not using the mark in a manner that is likely to cause confusion; (10) the First Amendment protects free expression, including certain uses of trademarks such as parody.

These are selected public libraries that house the CASSIS database containing all existing and pending federal trademarks maintained by the U.S. Patent and Trademark Office (USPTO). Beware that the these databases may be up to three months old before receiving updates from the USPTO. While they are usually free, there can sometimes be lines to get onto a host computer in the library. Alternatively, the USPTO now has available a searchable database over the Internet (still not timely updated). You can check their database at http://www.USPTO.GOV/tmdb/index.html.

A description of goods or services is required in all applications for federal trademark registration. Descriptions should be limited to those goods and products which are currently being sold under the proposed mark (or will be sold, if an Intent to Use application is filed). According to the United States Patent and Trademark Office (USPTO), the description should be concise, not vague or overly broad, and should consist of the common commercial description of the goods or services. At the same time, broader descriptions have the potential, if not rejected by the USPTO Examiner, of ultimately providing broader protection. Thus, there is always a tension between drafting a description that is narrow enough to pass the examination, yet broad enough to offer protection out to the boundaries of the goods or services being registered.

Trademarks that describe the ingredients, qualities, features, purpose or characteristics of a product or service. These marks are not inherently distinctive, and thus do not receive trademark protection unless they acquire distinctiveness through secondary meaning. Even if they qualify for trademark protection, descriptive marks are the weakest marks possible, and do not receive as broad of legal protection as suggestive, arbitrary and fanciful marks. Examples of descriptive marks include: BEEF & BREW for a restaurant, LASERGAGE for a laser measurement device, PIZZAZZ for pizza, and WORLD BOOK for encyclopedias. In contrast to suggestive marks, a mark that is merely descriptive immediately conveys knowledge of ingredients, qualities, or characteristics with no imaginative leap required. If a composite mark is not 100% descriptive, then the mark as a whole is not "merely descriptive."

Drawings or designs may be protected as a trademark as long as the drawing or design is used as a trademark. Generally speaking, if the design is an accurate or realistic portrayal of the goods or services that the mark serves to identify, then the mark is descriptive, and receives no protection unless the owner can demonstrate secondary meaning. However if the picture deviates from the underlying goods or services, then the design will be viewed as distinctive, and can receive protection. Common components such as basic geometric figures, stripes or even flowers may be seen as lacking distinctiveness unless the owner can demonstrate secondary meaning.

Dilution has two different meanings in trademark law.  One refers to illegally using someone else's famous mark, as described below under 'Dilution Statutes.'  The other use of 'dilution' is less common.  It refers to the degree to which a mark is, or has become, weakened.  This occurs from overuse of a mark.  Generally speaking, common words such as "tech" or "pro" are seriously diluted because they are used by multiple companies, even within the same industry.  When the first company used "tech" or "pro," the word most likely received very strong protection.  But, as more companies adopted these words for their marks, they lost a good share of their legal strength.

Finding out that a mark is diluted can be a mixed blessing for the trademark owner.   On the one hand, the owner will be able to join the multitude of others using similar marks.  However, when that owner wants to stop another from using a highly similar mark, doing so may be difficult or even impossible.

Even a mark that is highly distinctive, that would normally receive strong protection, may receive little or no protection because of dilution. Since a trademark owner generally wants to preserve the strength of their mark, and their ability to exclude others from using a similar mark, the owner must police and enforce encroaching uses of their mark, or else face that the mark may become diluted, possibly even abandoned.

State and federal statutes that allow the owner of a famous trademark to prevent uses of its mark by other companies in such a way as to tarnish or blur the distinctiveness of the mark. Unlike lawsuits under a traditional trademark infringement lawsuit, the plaintiff in a dilution suit need not prove that there is a likelihood of confusion between the famous mark and the challenged mark.

A statement that the trademark applicant or owner does not claim exclusive rights in an unprotectable component of a federally registered mark.

A statement by the user of another company's trademark that the user is not affiliated with the trademark owner. Such a statement will not automatically relieve the user's liability for trademark infringement. However, if the disclaimer is found by a court to be effective in eliminating consumer confusion as to the affiliation between the two companies. Thus, if the disclaimer is likely to be seen by those who see the trademark, then there is a good chance the disclaimer is effective in eliminating consumer confusion.


The ability of a mark to allow the relevant consuming public to discriminate the source of a product or service. Distinctiveness is a prerequisite to trademark registration on the Principal Register. Fanciful, arbitrary, and suggestive marks are inherently distinctive, while descriptive marks are not distinctive unless used extensively enough to develop a certain level of market awareness, called secondary meaning.


The requirement by the U.S. Patent and Trademark Office that all marks listed on the Principal Register must be distinctive. Marks that are not distinctive may still be federally registered, but are only listed on the Supplemental Register, and do not have many of the benefits of registration on the Principal Register. Courts also require that a mark be distinctive in order for it to have any protection under the common law.

Because trademark rights in the United States on a first to use basis, it is important to document the first date you use a mark. This may be done by taking a dated photograph of the goods bearing the mark or keeping the original advertising if it shows the date the ad ran. You should also keep records of the first sale of goods or services made using the mark. This may include a bill of sale or invoice. If you do not have a dated photograph or advertisement, you might want to notarize a statement on the back of a photo or ad such as "This photo was taken on 12/31/98," or "This ad was placed on 12/31/98." While this provides perhaps less convincing evidence than a dated photo or ad, it is far better than a photo or ad with no date.

This refers to a policy developed by Network Solutions (the first registrar to register domain names in the U.S.) that can be invoked when two parties have a dispute over rights in a domain name. Typically, these disputes involves at least one party who claims the domain name infringes or dilutes their trademark rights. The policy has been revised a couple times in an effort to reduce the amount of litigation and hassles with which Network Solutions has had to contend. Currently the policy can be read at http://www.internic.net/domain-info/internic-domain-6.html The predominant feature of the policy (ver. 3) are that anyone who has a trademark registration issued by any country may ultimately stop the domain name owner who is using the registered trademark as a domain name. The policy has been severely criticized on the basis that it fails to accommodate the fact that trademark law permits use of the same mark for unrelated products or services. Network Solutions' policy has also been criticized because it unfairly favors owners of registered trademarks, even though trademark rights in this country are not granted by registration, but by use. Registrations are only effective under the dispute policy if they were obtained prior to the acquisition of the domain name. For this reason, trademark registration is more important than ever, if you plan to do business on the Internet.

Another important trademark registration consideration prompted by Network Solutions' current dispute policy is whether or not to register design features of marks. Network Solutions' policy currently excludes from its protection any trademarks incorporating a design. It appears from the plain language of the policy that Network Solutions' intended to exclude from protection all lingual marks that are portrayed with special typefaces or colors, as opposed to excluding only those marks that are registered specifically as design marks, which happen to have words in them as well. Thus, if you want to protect design features of a mark, be sure to register a text-only mark without claiming protection for typeface or color, etc., in addition to a registration with the design features.

Domain names are protectable as trademarks if they are used in the web site other than as part of the Internet address alone. For instance, Marklaw.com is a domain name because it is used in the URL, but also a trademark because it is used as a masthead to identify the service of providing trademark information. If Marklaw were not used on the page itself, but merely as a URL, then it is unlikely that it serves as a trademark. However, theoretically speaking, if the relevant consuming public understands a domain name to represent a particular Internet service, then it arguably is a trademark. Courts have yet to work out the fine lines in this area of law pertaining to the Internet.

A hijacker in this context is one who purchases one or many domain names, and attempts to sell them later on to the highest bidder -- often a corporation owning a famous trademark that is identical to the second level domain being sold. This disparaging term is generally reserved for those individuals who purchased the name with no business purpose in mind other than to sell it to the trademark owner or keep it from the hijacker's competitor. There are of course examples of legitimate businesses fighting over a single domain name as well. In the case of hijackers, the new Federal Trademark Dilution Act has been very effective in helping corporations with famous marks retain domain names consisting of their famous marks. However, there are also a few examples of corporations bullying people out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement or dilution, or unfair competition in any manner. These latter kinds of cases are referred to as reverse domain name hijacking cases, and some have speculated that this conduct by companies may be met with cancellation of their mark under the doctrine of trademark misuse.

A resident of the United States to whom service of process may be sent regarding the trademark. Foreign applicants for trademark registration are required to have a Domestic Representative unless they are also represented by an attorney in the United States.

All applications for trademark are required to be accompanied by a separate drawing page, even if the mark being registered is strictly text, which is refered to as Standard Character Drawing.  

Requirements for Standard Character Drawings

An applicant may submit a standard character drawing if:

  • All letters and words in the mark are depicted in Latin characters;
  • All numerals in the mark are depicted in Roman or Arabic numerals;
  • The mark includes only common punctuation or diacritical marks; and
  • The mark does not include a design element.


Submissions that are not standard character drawings are deemed "special form drawings." A special form drawing contains a design element, color, a claim to a particular style or size of lettering, or other distinctive elements. Prior to the 2003 amendments for submitting the drawing page, Standard Character Drawings had to be in all-caps and the drawing page had to include line stippling that defined a particular color.  

Drawings or designs may be protected as a trademark as long as the drawing or design is used as a trademark. Generally speaking, if the design is an accurate or realistic portrayal of the goods or services that the mark serves to identify, then the mark is descriptive, and receives no protection unless the owner can demonstrate secondary meaning. However if the picture deviates from the underlying goods or services, then the design will be viewed as distinctive, and can receive protection. Common components such as basic geometric figures, stripes or even flowers may be seen as lacking distinctiveness unless the owner can demonstrate secondary meaning.

The encircled-R, or "®," is a symbol that designates a specific trade or service mark as a federally registered trademark under the Trademark Act. In order to use this symbol a mark must be currently registered on either the Principal or Supplemental Registers maintained by the U.S. Patent and Trademark Office (USPTO). Willful use of the encircled-R on a non-registered mark may jeopardize future registerability status with the USPTO, and may be evidence of bad intent, which is frowned upon by the courts.

Historically, an equitable defense was one that was only available in the courts of equity, and not the courts of law. Since the focus in the courts of equity was predominately to enforce principals of fairness, it is not surprising that an equitable defense in the modern trademark law context is one that courts tend to invoke out of a sense of justice and fairness when the plaintiff's conduct was somehow lacking. In trademark law, equitable defenses include laches, unclean hands, and acquiescence.

Historically, equitable relief was only granted in courts of equity as opposed to courts of law. Courts of equity tended to resolve matters on principles of fairness and justice, sort of as a last resort when no other relief was available. Thus, in the modern trademark law context, equitable relief is typified by extraordinary measures that are available because no other remedy is capable of realizing justice. Examples include injunctions (temporary and permanent) and estoppel.

Estoppel is a legal term of art for "stopping" certain outcomes requested by a party to a lawsuit. In trademark litigation, the plaintiff is said to be estopped from claiming infringement if plaintiff's actions, or lack thereof, indicated approval of defendant's use of the trademark (acquiescence). Also, Estoppel applies to stop the plaintiff from claiming trademark infringement where the plaintiff delayed for an unreasonably long period of time before beginning enforcement against defendant (laches).

Anyone who has performed a trademark search or, better yet, purchased one from a professional search firm will want to have those results reviewed by an attorney to determine whether or not the proposed mark is available for use and registration. This is one area where failing to obtain legal counsel can be costly, since the determination of whether or not a mark is available for use often requires legal research into the very complex area of law that requires an analysis of "confusingly similar" as it is applied to a given mark.

Pliam Law Group, P.A. provides legal opinions at a reasonable fee. For more information, click here.

All applications for trademark registration in the United States must undergo a very extensive examination process, which is conducted by Trademark Examiners at the U.S. Patent and Trademark Office. The Examiner conducts a limited search of existing trademarks and pending registrations to see if the mark conflicts with any prior rights. If so, the application is rejected. The Examiner also reviews the mark for its adequacy for registration as a trademark. This includes whether or not the mark is distinctive, and whether or not it is forbidden. If the mark is not distinctive, or if it is a forbidden mark, the Examiner will reject the application. (Note: marks rejected for lack of distinctiveness can be registered on the Supplemental Register after a separate filing). Additionally, the Examiner may reject the application for any number of formalities that have not been met, such as inadequate specimens, or a description of goods or services that is too vague. There is an extensive manual that the Trademark Examiners follow when processing applications, called the Trademark Manual of Examining Procedure that can be helpful if you have specific questions about how to treat a certain registration issue. Bitlaw has reproduced the manual with a keyword index and hyperlinks: http://www.bitlaw.com/source/tmep/wordindex.html.


An amendment made by an Examining Attorney to the applicant's federal trademark application.  This occurs most typically when the applicant and the Examining Attorney discuss and resolve a problem raised by the Examining Attorney in an Office Action.  The amendment would then change the application for registration with the applicant's permission and without requiring applicant to submit or fle a response, thereby clearing the way for approval of the application for publication.  


The attorney from the U.S. Patent and Trademark Office who examines the applications for federal trademark registration and determines whether the application should be approved for publication or rejected.

This term refers to the kind of case in which the court may award attorneys' fees for trademark infringement under the Lanham Act. Generally, that kind of case involves deliberate infringement or fraud on the part of the defendant, or for the plaintiff; a lawsuit brought in bad faith or without an investigation of the merits of plaintiff's claim.

The International Trade Commission can help protect against unfair competition from abroad by issuing an exclusion order. An exclusion order is an order issued by the ITC that bars the importation of goods from a particular source, or even the entire class of goods if there are problems enforcing the bar on a particular party. The ITC proceeding can be initiated by submitting a complaint directly to the ITC.

An agreement between a trademark owner and one other party that permits the other party to make certain use of the trademark, with the understanding that the trademark owner will not permit other such uses. Licensing of trademarks can result in the loss of the trademark unless the license contains careful controls over the licensed use

The trademark owner who is licensing its trademark for exclusive use by one other company is the licenor.  The party using the trademark owner's trademark is the licensee. 

Ownership in a trademark that is free of any claim of right by any other party.   

Rights granted to an owner of a trade or service mark which permit the owner to use a mark, and to exclude all others from using the same or a similar mark in a similar manner. For example, Hormel, the owner of the trademark SPAM, can stop any other company from using the word SPAM on meat products. Also, since the mark SPAM is a famous mark, Hormel could theoretically stop the use of SPAM in the many degrading contexts in which it currently is being used based on dilution law. However, as a practical matter, stopping such use may not be feasible, given the widespread use of the word on the Internet, not to mention the public relations problems Hormel would face if it tried to do so.

Abandonment occurs when the trademark owner stops using the mark with an intention to not resume using it. Use of a mark in this context means the bona fide use of the mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

Non-use for three consecutive years is prima facie evidence of abandonment. The trademark owner in such instance has the ability to rebut the presumption of abandonment by submitting evidence of an intention to retain their trademark rights. This may include

The very fact that the presumption of abandonment doesn't kick in until after three years of non-use seems to imply that non-use extending less than three years is not abandonment. While, trademark lawyers may be destined to argue this point, it may not accurately reflect the law on this matter.  Ultimately what matters is the bona fide intent to preserve the trademark and resume using it in commerce, regardless of how much time has lapsed. It's just that after the three years, the burden of proof shifts to the owner to prove intent not to abandon. Common sense also dictates that the longer a trademark owners waits to resume use, the harder it will be to prove their intention to resume use was there all along.     

Furthermore, a trademark can become abandoned inadvertently when the trademark owner causes the mark to become the generic name for the goods or services on or in connection with which it is used - or otherwise allows the mark to lose its significance as a source identifyer.  This may include consenting to a third party's confusingly similar use of the mark, although some jurisdictions look at this consent issue more stringently than others.

If abandonment occurs, all rights in the mark cease.  Some jurisdictions may entertain the argument that residual goodwill in a zombie mark allows for resurrection of some form of trademark rights following abandonment. 

The failure to take action against infringing parties, or otherwise indicating, implicitly or explicitly, that nothing will be done about the infringing action. Acquiescing can lead to abandonment of trademark rights.

A written communication sent by the Examining Attorney from the U.S. Patent and Trademark Office, requesting a response from the applicant regarding some matter pertinent to a pending application for trademark registration.

This occurs when an actual consumer is in fact confused as to the source of a trademark. Actual confusion is not required to prove infringement of a mark, although it is highly probative as evidence that the mark is likely to cause confusion. But even where actual confusion is found, that does conclusively determine a likelihood of confusion exists.

Common evidence of actual confusion would be an email inquiry directed to company 1 that is clearly regarding the products of company 2.   

This is a category of harm sometimes caused by trademark infringement. The significance is that some insurance policies cover litigation of a trademark dispute to the extent that the dispute falls within an advertising injury.

The use of a competitor's trademarks in advertising. Such use is permitted in the context of comparing a company's own products or services with those of their competitor, as long as the ad creates no confusion as to source or dilution of the competitor's marks.

A widely-criticized facet of the functionality doctrine which deems as functional, and thus not trademarkable, any product design feature which is an important ingredient in the commercial success of the product. Thus, if a floral pattern on china makes the china more commercially desirable, such pattern would be deemed non-trademarkable. More recently, courts have recognized that a design feature may be commercially successful and still operate as a product identifier worthy of trademark protection, and thus have not been eager to invoke the doctrine of Aesthetic functionality as a defense to trademark infringement.

These are defenses to a complaint for trademark infringement that must be pled in the defendant's answer, or else they are waived. Examples include Fraud, Unclean hands, Misuse, First Amendment, Acquiescence,Fair useGenericnessAbandonmentLaches, and Estoppel.

One of the elements that must be present in order to demonstrate that a mark is used in commerce, which is the fundamental requirement for the acquisition of rights in a mark. For a trademark to be "affixed" to goods, the mark should ideally be either placed on the goods themselves, or on their containers or attached tags or labels. The affixation requirement for goods may also be satisfied if the mark is prominently featured on a conspicuous display associated with the goods. If none of the above are practicable, the mark may be used on documents associated with the sale of the goods as a last resort. For services, a trademark is "affixed" if it is used in the sale or advertising of the services, as long as it is used in direct and explicit reference to the services provided.

A formalized mechanism by which legal disputes can be settled outside of traditional litigation.

ADR may consist of mediation, dispute resolution coaching, non-binding arbitration or binding arbitration. In most ADR methods, both parties need to agree to be participants in mediation and arbitration.  However, dispute resolution coaching can provide significant resolution possibilities while working with only one participant.  

The promise of mediation and dispute coaching a quicker and less costly result. In theory, this is due to the need for people to be heard and validated before they can think more flexiblyand generously about their conflict. The rules and mechanisms driving litigation tend to enflame and escalate hostility and conflict. In part, this is because the goal of litigation is to find a winner and a loser, rather than to look for win-win possibilities.  Arbitration is similarly a win-lose rather than a win-win process and result.  Speedier process can be expected, but is often due to simply cutting off the timelines.  Thus the result for Arbitration can often be even worse than litigation if an important value of a party is to have their case be heard and fully deliberated with a sense of ultimate justice being done.

While ADR is generally quicker and less costly than full-blown litigation, that may not always be true.  For example, in trademark litigation where the plaintiff can sometimes succeed in petitioning the court for emergency intervention and a speedier court docket, plaintiff's with a strong case may determine an immediate injunction is a better strategy.

Whether or not ADR is desirable for a particular situation is highly case dependent and should be discussed with an attorney and/or ADR specialist.  Note, many attorneys do not fully grasp or appreciate the concept and value of ADR, so you cannot rely on your litigation attorney to explain the pros/cons of ADR in favor of not hiring them for full-blown litigation.

A special filing sometimes used for Intent to Use registrations in which the applicant amends the application to allege that the mark has in fact been used in commerce. The Amendment to Allege Use may be filed with the U.S. Patent and Trademark Office (USPTO) any time after filing the Intent to Use application, but before the USPTO sends a Notice of Publication stating that the Trademark Examiners have approved the mark and will publish it in the Official Gazette. Once publication occurs, the applicant must wait until after a Notice of Allowance issues from the USPTO before submitting a Statement of Use. A Statement of Use serves essentially the same purpose as the Amendment to Allege Use, except that the former cannot be filed before the Notice of Allowance, and must be filed within six months thereof. The USPTO requires an additional filing fee to submit either an Amendment to Allege Use or a Statement of Use.

A treaty between Bolivia, Colombia, Ecuador, Peru, and Venezuela that includes an understanding on trademarks.

State and federal statutes that allow the owner of a famous trademark to prevent uses of its mark by other companies in such a way as to tarnish or blur the distinctiveness of the mark. Unlike lawsuits under a traditional trademark infringement lawsuit, the plaintiff in a dilution suit need not prove that there is a likelihood of confusion between the famous mark and the challenged mark.

These are names that exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used. The pairing of the mark with the particular category of goods or services should appear to be random. Examples include APPLE for computer, BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car. Whether a word is arbitrary or not has everything to do with the context in which it is used. Obviously, the term "apple" used to sell a rounded edible pome fruit of a tree is a generic term, and not trademarkable. Similarly, use of the phrase "Comet Watch" for a newsletter describing the activities of celetial bodies with long tails pointing away from the sun would not be considered arbitrary, but rather descriptive or suggestive.

A form of alternative dispute resolution in which an authorized individual sits as the arbiter of a legal dispute in lieu of a formal judicial proceeding. Arbitration may be binding or non-binding, depending on the agreement of the parties. Even if arbitration is binding, appeals to a district court can still be made in some cases. Very often, arbitration tends to be less formal, less expensive and faster. However, courts in a trademark infringement or dilution case can often hear a motion for temporary injunction very quickly as well, if all the requirements for a temporary injunction are met.

The party to whom a trademark is being transferred in an assignment.

An assignment is the legal transfer of ownership of any property such as a trademark or copyright from one owner to another.  The transferee or "assignee" is the person who acquires ownership, and the transferor or "assignor" is the person who transfers ownership rights.

Great care should be taken when drafting an assignment document and implementing its transfer.  To be valid, a trademark assignment must include the transfer of goodwill accrued in the assigned mark beyond mere assignment of the mark itself. Traditionally, courts have required the transfer of tangible assets along with the trade mark.  More recently, however, some courts have taken a more liberal view of assignments, and do not require the transfer of such tangible assets. Nonetheless, the assignee must continue to sell goods or services of the same quality and nature as the assignor to ensure that goodwill has indeed passed with the mark. See PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969).

You will also want include in the transfer document the assignment of the right to sue for past infringements.  Also consider including a statement about the geographical region for which rights are assigned, the physical transfer of materials establishing the trademark right, and the reasonable cooperation of the assignor, if needed to prove establishment of the trademark.

When a registered trademark is assigned, it is a good idea to record the assignment immediately with the U.S. Patent and Trademark Office, although such recordation is not mandatory.

Assignment of a mark without the necessary transfer of goodwillassociated with the mark. Such assignments are invalid, and result inabandonment of the trademark. If so, the person to whom the mark was assigned will no longer have the benefit of the assignor's earlier first use date to establish priority.

The party who is selling or otherwise transferring ownership of a trademark.

Also known as a "trade name," "corporate name," or "business name," an assumed name is the name under which a company conducts its business.  Whereas an assumed name identifies the business itself, trademarks identify the goods or services sold by the business.  Also, while a corporate name specifically identifies the name of a corporation, a business name, trade name or assumed name can refer to entities that are not corporations.

Assumed names frequently receive protection as trademarks, because they often meet the trademark law requirements of use in commerce,distinctiveness, and unobjectionable content.  However, unlike a trademark, assumed names can obtain protection under the Trademark Act and common law of unfair competition, even if they are not used in direct connection with the sale of goods or services.

A frequent misunderstanding occurs when registering or reservingassumed names with the appropriate state governmental agency, e.g. the Secretary of State.  In so doing, businesses are often led to believe they have acquired trademark protection.  This is not so.  States require the registration of assumed names when doing business under a name other than a legal name, in order that the true identity of a company/person can be found.  A state will register or reserve an assumed name as long as it is not identical (or near-identical) to a name already registered.  By contrast, a trademark that is far less similar to an existing trademark than "near-identical" can infringe a prior mark.

A unique legal protection arising out of the communication of a client with his or her attorney.

The attorney-client privilege is distinguished from the general duty of an attorney to maintain confidential client information.  The privilege is asserted in court to stop an opposing party from forcing the attorney to disclose the protected information.  Meanwhile, even if the court is not involved, an attorney must still generally maintain the private, secret, and confidential information of their clients in a manner that preserves the confidence.  

The attorney-client privilege cannot be waived except by the client.  However the client may end up doing so inadvertently.  This occurs, for example, when the client is overheard discussing the confidential information with their attorney, or tells a friend what their attorney told them.

'The idea behind the privilege is that we want people to be able to tell all to their attorney so they are comfortable and confident their information will be treated with utter confidence.  This allows the attonrey and client to fully understand the legal issues that pertain to the client's particular situation.  

In most cases, the losing party to litigation under the Trademark Act does not have to pay the legal fees of the prevailing party. However, the Lanham Act governing trademark infringements allows for the payment of attorneys' fees in exceptional cases, such as those involving egregious, bad faith and willful infringement by the defendant. Lawsuits brought only under the common law normally do not award attorneys fees even when there is such bad conduct on the part of defendant.

The legal opinion provided by an attorney to a trademark owner or prospective trademark owner that identifies the legal risks associated with using a particular trademark. Such risks might include, for example, the possibility of infringing or diluting an existing mark and hence being sued, and the likelihood that an application for trademark registration will be rejected. The legal opinion of an attorney can serve not only as immediate advice on the risks in adopting a given mark, but if the opinion is written, which most are, you may be able to deter companies appearing in the opinion from suing for infringement by showing them that at least one attorney has already decided the marks are not confusingly similar. It is important to note, however, that while attorneys are trained to be objective, the inherent subjectivity of trademark law suggests that a second legal opinion is a very good idea if there is any question about the availability of a mark or about conflicts between marks.

Fair use of a mark is use in a way that is descriptive of one's products, use that is other than as a trademark, and use that is undertaken in good faith (i.e. not to cash in on the goodwill of the trademark owner.) Fair use is generally treated as an absolute defense to a claim of trademark infringement. However, some courts have said that when there is a likelihood of confusion, then there can be no fair use defense.

A mark that commands a wide degree of familiarity such that it receives special protection under the Federal Trademark Dilution Act. The Act specifies that when determining whether or not a mark is famous, the following factors should be considered: (1) the degree of inherent or acquired distinctiveness in the mark; (2) the duration and extent of use of the mark in connection with the goods or services on which the mark is used; (3) the duration and extent of advertising and publicity of the mark; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the mark is used; (6) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought; (7) the nature and extent of use of the same or similar marks by third parties; and (8) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the Principal Register. (15 U.S.C. Section 1125(c)(1)(a-h)).

These are terms that are invented for the sole purpose of serving as trademarks. Examples include KODAK for photographic equipment, UNIX for a computer operating system, REEBOK for shoes, and XEROX for photocopying equipment. Coined marks receive the highest level of protection, because a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. As a result, infringers of these marks are hard pressed to provide any plausible explanation for their use the mark, leaving the impression that the real reason was in fact a blatant attempt to trade off the goodwill generated by the owner of the trademark.

State trademarks are typically used exclusively in intrastate commerce, while a federal mark must be used in interstate commerce in order to be registered. However, there is no requirement that state marks be used only in one state. Thus, there can be, and usually is, concurrent protection for a mark based on state and federal law. Registration for state trademarks is available in most states, and protects trademark rights in that state only. The advantage to a state registration is that it is cheaper and faster than a federal registration. However, federal registration provides many more benefits, such as providing nationwide priority, which grants rights in a mark even in states in which the mark owner has not used the mark. Those performing a full U.S. trademark search prior to adopting a mark, as they should, will have notice of state registrations as well as federal registrations. Thus, even a state registration can go a long way toward deterring future conflicting uses of a mark.

The filing date is the date in which an application for federal trademark registration is accepted into the U.S. Patent and Trademark Office (USPTO). The filing date can be especially significant for intent-to-use applications since that date becomes the priority date once the Statement of Use is accepted by the USPTO. In order to obtain a filing date, a trademark application must include: the name of the applicant, the name and address where communications can be directed, the drawing page, an identification of goods and services, a claim of bona fide intent to use the mark in commerce, or a date of first use together with at least one specimen of the mark as used, a verification signed by the applicant, and the filing fee for at least one class of goods or services.

There is a constant tension between the First Amendment rights of free speech and the grant of exclusive rights to use words and other symbols as trademarks. Trademark rights are therefore curbed to the extent possible to promote free speech and free competition in the marketplace. For this reason, raising the First Amendment as a defense to a trademark infringement claim can be worthwhile. Where the First Amendment defense most frequently arises is in the context of parodies involving trademarks.  

The date a mark was first used anywhere. In the United States, the first person to use a mark has priority, and can exclude all subsequent users of identical or confusingly similar marks. For this reason, it is important to document the date of first use of a mark. This may be done by taking a dated photograph of the goods bearing the mark or keeping the original advertising if it shows the date that the ad ran. It is also a good idea to keep records of the first sale of goods or services made using the mark. This may include a bill of sale or invoice showing the purchase of advertisement or a mailing.

These are marks that cannot receive protection through the courts nor registration with the U.S. Patent and Trademark Office. They include (1) generic marks; (2) immoral, disparaging or scandalous marks; (3) marks which are primarily functional; (4) marks consisting of a living person's name, portrait or signature, unless written permission has been granted; (5) deceptive marks, and (6) marks consisting of a deceased President's name, unless that President's spouse has granted written permission or is no longer alive.

If a mark has already been registered in a foreign country (or an application has been filed in a foreign country), then use in the United States is not a requirement of registration on the Supplemental Register, as long as the U.S. application for registration is filed within six months of the foreign filing. However, use of the mark in the United States is required in order to receive the benefits of registration on the Principal Register. Foreign applicants who rely on their foreign application as a basis for registration on the Supplemental Register do not need specimens, nor do they need to provide the dates of first use nor specify the manner of affixing the mark to the goods. However, such applicants must specify their priority date in the heading of the application. Also, all foreign applicants must provide the name of a domestic representative on whom notices of process can be served regarding the application.

This refers to the requirement under trademark law that foreign terms be first translated into their English equivalents prior to analyzing the suitability of the foreign term for trademark protection.

When analyzing the trademark potential of a foreign term, that term must first be translated into English. If the word as translated is generic, then the foreign term is not protectable under trademark law.

Fraud occurs when the mark owner knowingly made a false representation to the U.S. Patent and Trademark Office (USPTO) regarding a material fact, or else willfully withheld material information, and the USPTO would not have issued the registration but for its reliance on the false representation. Fraud in procuring or maintaining a trademark registration is a defense to trademark infringement, and can lead to the cancellation of the mark's federal registration (the mark owner retains common law rights). Additionally, under Lanham Act §38 a civil court may award damages to any person who has been damaged by the mark owner's fraud.

According to this doctrine, the functional features of a trademark, or those features having primarily a utilitarian purpose, are not granted protection. Where product elements such as shape, color or design are necessary to improve the saleability of a product, or because the product requires the trademarked element to function optimally, then that feature is not protected by trademark law.

The GATT was originally created in 1946 to work out international agreements on world merchandise trade. Since then there have been several "rounds" of the GATT. While serious trademark discussions occurred in the Tokyo Round of the 70's and again in the '80s, it wasn't until the Geneva Round in which TRIPs (Trade Related aspects of Intellectual Property) marked a true involvement of GATT into the area of intellectual property. The WTO (World Trade Organization) and the TRIPs Council monitor the implementation of TRIPs and its enforcement mechanisms. One of the specific changes to U.S. law arising out of GATT are the 1995 amendments to Lanham Act. Specifically section 2(a) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Generic terms are not trademarks by definition.  That is, they can never receive exclusive usership rights under trademark law.   Generic "trademarks" are words or symbols that communicate what the product or service is categorically. 

For example, "shredded wheat" is a generic term that refers to the category of breakfast cereals that are composed of layers of crunchy wheat strips molded together into a pillow-type shape. This cereal may be manufactured by Kellogg's, Post or others, and each manufacturer is free to use the term "shredded wheat" to advertise their version of the cereal. This allows businesses to communicate freely with customers regarding what is product is actually being sold.  Giving one company a monopoly over "shredded wheat" would mean nobody could compete fairly to sell that cereal. Thus, generic words are never trademarks because that would grant a company a monopoly in the product itself, not in a word or symbol.


Two-Part Test of Genericness

The US Patent and Trademark Office says this about generic terms:

There is a two-part test used to determine whether a designation is generic: (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public.

The Trademark Office examining attorney has the burden of proving that a term is generic by clear evidence.

Treatment of Compound Words

Combining a generic word with another generic words may or may not overcome the generic treatment of the newly formed compound word. This depends on whether the new word itself is the commonly used term for the object being sold.

 

This occurs when a trademark starts out as distinctive or descriptive, but then though use becomes generic. This occurs when the mark becomes part of the common descriptive name of a category or genus of products. Genericide is more likely to happen to marks that are used improperly as nouns instead of adjectives, whether such usage is by the trademark owner or by others.

Defendants can succeed with a genericness defense when the mark which has allegedly been infringed is a mark that describes the entire category or genus of product that the mark is supposed to distinguish, and thus cannot receive protection under the law. Generic marks are either generic from the outset, or become generic after they become part of the common descriptive name of a category or genus of products. Thus a mark that has been registered can loose its registration through a cancellation proceeding or by order of the court where the term has been shown to have become generic through use.

Geographical terms are those that convey to consumers a geographical connotation primarily or immediately , where such consumers are likely to believe that the underlying goods or services in fact come from that location. Such terms fall into three categories (1) primarily geographically descriptive; (2) geographically deceptively misdescriptive; or (3) geographically deceptive. The first two are capable of protection if the owner can demonstrate they have acquired distinction through secondary meaning, while the latter of these, geographically deceptive marks are never capable of receiving protection. If the geographic mark is accurate, it is geographically descriptive. If not, then the mark is either geographically deceptively misdescriptive or geographically deceptive, depending on which test a court applies, and the facts of the situation. A minority of courts look at the intent of the mark owner, while most courts look at whether or not consumers are likely to materially rely upon the misdescription. Thus a mark will be geographically deceptive if either the owner intended to to deceive the public about the origin of the product, or if consumers are likely to rely upon the misdescription in making their purchasing decisions. Finally, after the U.S. implementation of TRIPs, the Lanham Act. 2(a) has been amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

The geographical territory is the territory in which one uses a mark. Use in a territory generally determines the extent of trademark rights granted to the user. The first to use a mark in one region has exclusive rights in the mark for that region, and a junior user of a mark in that region can be forced to cease using the mark there. However, the senior user cannot stop the junior user from using the mark in a different territory as long as the junior user is the first to use the mark in that particular territory. Two notable exceptions to this rule are nationwide priority which is only available to federally registered marks, and the doctrine of natural expansion, which is available to any mark owner.

An area in which a mark has no presence either through actual use, advertising or general reputation. As a general rule, a trademark owner has no rights in geographically remote areas, unless the mark is federally registered in which case the mark has nationwide priority, even if there is no presence in the mark for a given region. For unregistered marks, the doctrine of natural expansion provides another exception to the requirement that a trademark be used in a area in order for rights in it to exist.

When a defendant claims that use of plaintiff's mark is defensible as a fair use, one deciding factor is whether or not the defendant was exercising good faith. Good faith means that the defendant did not use the mark in order to "cash in" on the plaintiffs hard work in generating goodwill with consumers. If it appears that defendant was justifiably using the mark in order to describe the underlying goods or services, then the defendant will likely be found to have had good faith in using the mark. Furthermore, since the plaintiff in a trademark lawsuit is often seeking injunctive relief, which is an equitable remedy requiring the balancing of harms, whether or not the defendant exercised good faith or bad faith can have a considerable impact on the court's decision.

An intangible reward for businesses once they generate "name recognition" and establish public confidence in their goods or services. When this happens, consumers want to return to that business for repeat purchases. Thus, as goodwill increases, so does demand, and the business can then raise its prices in accordance. Without trademarks, most businesses would be unable to establish goodwill because their customers would have no way of recognizing their products or services. Erosion of goodwill occurs when consumer confusion exists as to a product's source. Thus, protection of goodwill is one of the primary purposes of trademark law, and is highly guarded.

Assignment or transfer of a trademark must occur in conjunction with the transfer of goodwill represented by that mark, or else the assignment is invalid. Furthermore, if assignment occurs without goodwill, the trademark is effectively abandoned Typically, it is the assignee's rights in the mark that are abandoned, but sometimes it is the assignor that abandons its rights. The result of such an abandonment on the assignee is that the assignee cannot benefit from the early first use date of the assignor, and must instead go by the assignee's date of first use in order to establish priority.

Failure to use the proper grammatical rules when using a trademark may result in the mark becoming generic, and thereby loosing all its protection. Specifically, it is very important to always use the mark as if it were an adjective, and never use it as a noun. For example, do not allow marketing material to read, "Aurora is the best cat litter on the market." Instead say, "Aurora brand cat litter is the best on the market," or even "Aurora cat litter is the best...." This may seem a ridiculous distinction to some. However, the consequences for dismissing this advice are great. If your mark is challenged on the basis that it is generic, you will have a much harder time arguing that it is not generic when you have treated your mark as if it were a class of goods, rather than a single brand in a class of goods."

These are goods that are manufactured abroad for sale in foreign countries and properly marked with trademarks registered in the United States. Later these goods are purchased and imported into the United States to compete with the United States trademark owner's or licensee's own products. There is considerable incentive to sell gray-market goods in the United States if the prices on goods sold abroad are substantially lower than those sold in the United States. The interesting dilemma created by gray-market goods is that there is ostensibly no trademark infringement since the mark does in fact represent the true source of the goods to which the mark is affixed. For this reason, Congress passed 19 U.S.C. § 1526 to address the problem by stopping such imports at the border, with a couple exceptions. If the foreign manufacturer who affixes the mark to the goods is a related company (i.e. subsidiary or brother -sister company) to the United States trademark owner, then 19 U.S.C. § 1526 will not prohibit the importation. The statute will also not prohibit the importation of goods that are purchased by an individual in a foreign country and brought into the United States for personal use and not for resale.

Cancellation of a trademark registration can occur within the first five years of registration for any reason that the mark could have been precluded from registration in the first place. Specifically, that includes: (1) Likelihood of confusion with petitioner's previously used or registered mark, (2) Fraud, (3) Descriptiveness, (4) Genericness, (5) Abandonment, (6) Misdescriptiveness and deceptiveness. However, fair use, trademark misuse, unfair competition, or violation of anti-trust laws are generally not considered valid grounds for cancellation.

Five years after registration, and if incontestability status has been successfully obtained, the mark can no longer be canceled on the basis that the mark lacks distinctiveness or creates a likelihood of confusion with a prior-registered mark. However, the mark can still be canceled on the basis of: (1) Genericness, (2) Abandonment, (3) Fraud, (4) The mark is forbidden, (5) The mark is an improperly used collective or certification mark, (6) The mark disparages or falsely suggests a connection with persons, institutions, beliefs, or national symbols, or (7) The mark is used to misrepresent the source of goods. Since these latter two grounds (6 & 7) appear akin to likelihood of confusion, which is supposed to be ruled out as a ground for cancellation after the five year period, they have been the subject of criticism. In any event, if you are claiming cancellation on the basis of 6 or 7, you will inevitably need to prove something more than likelihood of confusion to succeed.

In order to have a claim for federal trademark dilution, the mark in question must be famous, and use of the mark must either blur the mark's product identification; or tarnish the affirmative associations conveyed by the mark. State dilution laws may have slightly different grounds, such a mark which is distinctive or well known, rather than one that is famous. Likelihood of confusion is not a required element of a federal dilution lawsuit.

Grounds for trademark infringement lawsuits exist when there is use of another company's trademark that is likely to cause an appreciable number of consumers to be confused about the source of the underlying goods or services. Such use must occur in the same geographic territory as the allegedly infringed mark being used. Click here for more information on confusingly similar marks.

The grounds for opposition can be as broad as "any person who believes that [they] would be damaged by the registration of a mark." Despite this broad language, it is also true that the opposer must have a personal interest in the outcome beyond that of the general public, and generally involved with the goods or services that may be described by the alleged mark. Oppositions are most commonly filed when a mark is (1) likely to confuse consumers with respect to an existing mark, (2) descriptive, (3) generic, (4) misdescriptive, (5) deceptive, or (6) registered under fraud.

Identifying the source of a product or service for the consuming public is the primary objective of trademark law. As such, the Trademark Act grants exclusive rights only to those trademarks enabling a consumer to discriminate between different brands of goods and services. The consumer need not be able to discern the precise manufacturer or service provider by company name. It is enough that the consumer can determine that the maker of this brand is different than the maker of another. For example, nothing in the trademark "Kix" for breakfast cereal tells the consumer that it is manufactured by General Mills. To determine company information, a consumer would have to look elsewhere on the cereal box. What is important is that when the consumer sees a corn-based, puffed cereal with the name "Kix" on it, the consumer instantly knows it is manufactured by an entity different from a similar corn-based, puffed cereal that does not have the word "Kix."

Dudley Younkin

Marks consisting of immoral or scandalous matter cannot be federally registered. Courts have defined scandalous marks to include marks giving offense to the conscience or moral feelings; exciting reprobation, calling out condemnation for a substantial composite of the general public. In re McGinty, 660 F.2d 481 (1981). A fairly recent example of a mark denied registration on the basis of being immoral is the mark DICK HEAD'S accompanied by the logo depicting male genitalia, for restaurant and bar services. In re Wilcher Corp. 40 USPQ2d 1929 (1996).

There are a couple steps trademark owners can take to prevent the importation into the United States of counterfeit goods, gray-market goods, or goods that bear confusingly similar marks. First, the owner of a trademark registration or the user of a trade name for six months can record their marks with U.S. Customs who can stop the importation of such goods. Second, the trademark owner can petition the International Trade Commission who has the power to issue temporary or permanent exclusion orders that bar the importation of goods.

Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and can result in abandonment of the trademark. If so, the person to whom the mark was assigned will no longer have the benefit of the assignor's earlier first use date to establish priority, but must instead start over with the priority date being the assignee's own first use date.

A benefit granted to owners of federal trademark registrations, allowing them to prohibit challenges pertaining to the owner's exclusive rights in a mark. Incontestability can help prevent attacks on the basis that the mark is confusingly similar to another mark, that it is functional, or that it lacks secondary meaning. Incontestability status does not mean a mark is attack-proof. However, the most expensive challenges to defend against are virtually eliminated when you have an incontestable mark. Incontestable marks are still subject to challenges that (1) the mark is generic, (2) the mark was obtained through fraud in registration, (3) the owner has abandoned of the mark, (4) the mark misrepresents the source of goods or services, or it is scandalous in nature, (5) defendant's use is a fair use of the mark, (6) defendant's adoption and use of the mark was prior to plaintiff's registration, (7) defendant's registration of the mark was prior to plaintiff's registration, or (8) the mark is used to violate anti-trust laws.

Infringement is the use of a trademark in a way that is confusingly similar to another company's trademark, without that company's prior permission. While consumer confusion is the touchstone to an infringement lawsuit, actual confusion of a consumer it is not required in order for infringement to exist. All that matters is that an appreciable number of consumers are likely to be confused about the source of the underlying goods or services. Click here for more information on the factors that a court will look at to determine likelihood of confusion

As long as an ingredient in a product is also used as a trademark, it is worthy of trademark protection. An example would be where a cat litter product contains the substance, "GREENGUARD," and a manufacturer or cat litters features the word "GREENGUARD" on its label as a way of distinguishing the product from others.

A mark can be inherently distinctive, or it can acquire distinctiveness over time. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself. The more a mark includes words or symbols related to the good or service, the more likely a consumer will be confused and think that the mark is actually identifying or describing the product itself. Examples of inherently distinctive marks are: DOMINO for sugar, WRANGLER for jeans, BRIM for Coffee, and BLISTEX for lip balm. Each of these trademarks are, in greater or lesser degrees, different enough from the product for which they are used that they serve to identify source rather than describe any qualities of the product. As such, they are inherently distinctive. Fanciful, Arbitrary and Suggestive marks are all inherently distinctive, while descriptive and generic marks are not inherently distinctive.

Where actual trademark confusion is not likely because one party uses disclaimers or other information making clear that the mark in question is not related to the senior user's mark.  An example is where a domain name that is the same as someone's trademark lures people into the competitor's site, but once on the site the browser sees clearly that the site is not the same party, and there is no actual confusion after that point.  If the site which lured the browser with a deceptive trademark sells competing products, then the site is problematic for the senior trademark user, and may be actionable.

A court order that prohibits a party from doing something or demanding that the party undo some wrong or injury. In trademark infringement or dilution cases, an injunction can include the ordering of corrective advertising, demanding the use of disclaimers of association with the trademark owner, product recall, or prohibiting future use of a mark. Since injunctive relief is an equitable remedy, the court will weigh the harm to defendant if the injunction is imposed against the harm to plaintiff if no injunction is ordered.

Injury to reputation occurs when a trademark representing one level of quality is infringed or diluted by a mark that represents a lower level of quality, and the infringement harms the goodwill generated by the original user of the mark. Demonstrating injury to reputation may be extremely difficult, and the plaintiff may have no choice but to rely on market survey data.

Formerly called the United States Trademark Association, this organization lobbies for legislation favorable to trademark owners, and provides a resource for trademark policy development and legal education. The INTA may be reached at:

1133 Avenue of the Americas
New York, NY 10036
(212) 768-9887
http://www.inta.org

The term used to identify a form of property rights granted to intangible creations of the mind. There are distinct varieties of intellectual property, including trademarks, copyrights, patents, trade secrets, and publicity rights. Each state protects intellectual property in its own way, if at all. However trademarks, copyrights, and patents all receive federal protection, in addition to whatever state protection is available, if any.

The mental state of the defendant at the time of adopting a mark is very significant in many aspects of trademark lawsuits. Bad faith on the part of defendant is not required to find trademark infringement or dilution. However, courts are far more likely to award monetary damages in a case where there is bad faith. If it appears that defendant was justifiably using the mark in order to describe the underlying goods or services, then the defendant will likely be found to have had good faith in using the mark, and thereby offer a defense of fair use. Furthermore, since the plaintiff in a trademark lawsuit is often seeking injunctive relief, which is an equitable remedy requiring the balancing of harms, whether or not the defendant exercised good faith or bad faith can have a considerable impact on the court's decision.

An application for a federal registration made to the United States Patent and Trademark Office for a trademark that is not yet being used. ITU applications secure trademark rights prior to actually using the mark. It allows companies the opportunity to see if the USPTO will register the mark without having to invest in the marketing and promotion of the mark in the event the mark is rejected. It also secures an early priority date (normally a priority date is not set until actual use).

Trademark infringement that occurs because the defendant hopes to "cash in" on plaintiff's goodwill generated by the mark. Proving intentional infringement can be quite difficult, just as in proving any state of mind. However, courts can consider circumstantial evidence such as the alleged infringer's choice of a trademark in light of the effectiveness of plaintiff's mark. Award of monetary relief by a court is generally reserved for cases of intentional infringement. Reliance upon legal advice will typically not be sufficient in and of itself to disprove intentional infringement.

These are proceedings before the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO). Conflicts over whether a trademark can be registered are heard in front of the TTAB (or possibly in court too). These proceedings consist of: (1) cancellation of marks registered on the Principal or Supplemental Registers; (2) opposition to applications for registration on the Principal Register; (3) Concurrent use proceedings; or (4) interferences declared by the Commissioner of the USPTO.

This proceeding before the Trademark Trial and Appeal Board is near-obsolete, and reserved for those cases showing extraordinary circumstances. An interference proceeding is declared by the Commissioner of Patents and Trademarks upon petition. At issue in these proceedings is priority of use. Generally speaking, the interference proceeding will not be granted unless the issue of priority which is at stake could not be addressed most efficiently in an opposition or cancellation proceeding.

A designation required on all federal trademark applications that identifies the kinds of goods or services for which a particular mark will be used. This information is available for those searching for prior uses of a mark prior to adopting it. A good search strategy is to broaden the scope of the search for those classes in which the proposed mark may potentially belong. The application fee for a federal registration includes registration for only one international class. Additional classes can be added at a cost per class. Click here for a list of all international classes.

The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC's decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.

There are several treaties that govern trademark rights with respect to other nations, including: the Benelux system of registration, Paris Convention treaty, Trademark Registration Treaty, Madrid agreement, Madrid protocol, and the European Community Trade Mark (CTM). With the exception of the Madrid agreement, these treaties do not attempt to harmonize the trademark laws of the member countries, but instead provide centralized trademark registration filing systems. Click here for more on treaties.

Conflicts over domain names have received the most attention in the trademark legal press. However, such disputes have only affected a small number of trademark owners. Where the Internet has its greatest impact on trademark owners or prospective owners is in searching for prior rights in a mark and policing existing marks. Other areas of trademark law of interest to businesses is whether or not a link to another company's site infringes or dilutes that site's trademark. This latter area overlaps significantly with copyright and unfair competition laws, since linking and framing only implicate trademark infringement or dilution laws in narrow circumstances. Finally, the use of another company's trademarks in meta tags arguably infringes or dilutes that company's trademarks. While there are certainly other trademark issues raised by the Internet, they have not been as widely talked about.

Interstate commerce of a mark occurs when the trademark applicant or owner uses the mark on goods or in connection with the sale of goods or services that are sold or otherwise transported across state lines. The kind of use required to create or maintain a trademark under the Trademark Act must be a "bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark." 15 U.S.C. §1127. Using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing a statement of use under an intent-to-use application, or filing a renewal application.

Typically, the trademark applicant engages in interstate commerce by using the mark on goods that are sold and transported across state lines, or by selling or advertising to sell services to customers from other states or countries.

Commercial trade that takes place entirely within one state, as opposed to interstate commerce which takes place across state and/or national boundaries. Interstate commerce is a prerequisite to federal trademark registration, however marks that are used in intra-state commerce may be registered in the state of trade.

Any assignment of a trademark is invalid if the assignment of the mark is made without assignment of the goodwill associated with the mark. If a mark is invalidly assigned, the usual result is that the company that purchased the mark, the assignee, is deprived of the benefit of the early priority date of the assignor, and must instead start all over with a new priority date beginning when the assignee begins using the mark in commerce.

The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC's decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.

A legal doctrine whereby a party is bound by prior judicial declarations which cannot be contradicted in subsequent proceedings involving the same issues and parties. Where a party's pleadings, statements or contentions taken under oath adopt a particular position in one proceeding, that party is estopped from adopting an inconsistent position in a later proceeding.

The second or subsequent user of a mark who may or may not have rights in the mark depending whether the mark is being used in the same territory as the senior (first) user. The senior user of a mark has rights superior to all others, and can generally exclude others from using their mark. However, a junior user may still have rights in the mark if the junior user is using the mark in a different territory than the senior user, or the junior user registers the mark federally prior to the senior user. If the junior user registers first, then the junior user obtains nationwide priority, and can exclude all uses of the mark except the senior user's use of the mark in the senior user's own territory.

Jurisdiction is the power of a court to inquire into facts, apply the law, make decisions, and declare a judgment. This power is typically determined by the locale of the events leading to a lawsuit, but may also be determined based on other factors, with primary attention always paid to fairness to the party being haled to court. One of the first defenses a trademark defendant may utilize is the lack of jurisdiction by the court demanding the defendant's attention. If defendant succeeds in a motion to dismiss based on lack of proper jurisdiction, the plaintiff can generally bring the same lawsuit to a different court and start all over.

Labels on goods can be protected under trademark law if the features on the label for which trademark protection is claimed identifies source for consumers, and if such features are not functional. Product labels fall into a rapidly expanding area of trademark protection for trade dress.

A defense based upon plaintiff's inexcusable delay in asserting or attempting to enforce trademark rights. This doctrine is based on the theory that equity rewards the vigilant and not those who slumber on their rights.

Enacted by Congress originally in 1946, The Lanham Act provides protection for trademarks via a federal registration system. The federal power to take this broad initiative is found by the Commerce Clause of the US Constitution. Co-existing with common law and state law trademark rights, the Lanham Act provides for protection of trademarks under federal law, protecting consumers against confusion in the marketplace, enforced primarily by the businesses who wish to assert a claim of trademark infringement or trademark dilution (if the mark is famous).

The Lanham Act is contained in Title 15 of the United States Code, sections 1051-1141.


See Also

State vs Federal Trademark Rights

State Trademark Office Resources

Strength of a mark can be measured on two different levels; marketing strength and legal strength. Words that describe very closely the underlying good or service they represent have strong marketing potential, since such marks immediately communicate to customers what the product actually is or does. An example is "Quick Fix Radiator Mix." This tells the customer immediately that it is a substance that fixes radiators quickly. The problem with using descriptive marks such as these is that they are weak from a legal perspective. The legal strength of a mark is generally measured by its distinctiveness, not its descriptiveness. In fact, distinctiveness and descriptiveness are almost two ends on the same spectrum. Generally speaking, the more distinctive the mark, the stronger is the legal protection available for that mark, but the less ability the mark has to communicate with the consumer. Distinctive marks are those that are coined or fanciful (made up), or suggestive (suggesting qualities of the underlying products, without plainly describing them).

Alphabetic and Alphanumeric characters can be protected under trademark law, and indeed comprise the most common form of trademark, otherwise known as textual or lingual marks. Such marks receive their broadest protection if they are used as trademarks in block-letter format, i.e. without specialized fonts, coloring or other stylized features. Alternatively, if lingual marks are used with stylized features, but registered as block letters alone, or used in a variety of different stylized formats, then protection can more reasonably extend to all similar configurations of letters.

An agreement between a trademark owner and one or more other parties that allows the other parties to make limited, specified use of the trademark in question. Licensing of trademarks can result in the loss of the trademark unless the license arrangement provides for a certain degree of control over the licensed use.

Likelihood of Confusion (or Confusing Similarity) is the legal standard that determines whether or not trademark infringement has occurred.  The likelihood of confusion test is also one of several examinations conducted by the U.S. Patent and Trademark Office in determining whether to approve an applicant’s trademark application.  

The specific standard itself is defined by a vast body of law and varies jurisdiction by jurisdiction.  The essential ingredient for the likelihood of confusion test is (obvious from the terminology) that consumers encountering one trademark are likely to be confused with a different trademark.  This is not to say the consumer feels puzzled or befuddled or the like.  Usually the consumer referenced in this body of law is a hypothetical consumer who would be completely unaware that two different companies are using the similar/identical mark.  What's more, the hypothetical purchaser is not expected to make detailed, side-by-side comparisons, or to have perfect recall.  

Thus, trademark confusion means the incorrect assumption on the part of a hypothetical consumer that the two trademarks belong to the same source.  And with likelihood being incorporated into this standard, a court or the Trademark Office must merely decide that the propensity for confusion is strong enough to warrant elimination of the newcomer's use of the mark.  Thus many trademark infringement lawsuits proceed without a shred of evidence of any actual confusion.  Of course, evidence of actual confusion would be very influential to the outcome.

It is worth noting here that even if there is no likelihood of confusion, i.e. no trademark infringement, you may still be liable for using another company's trademark if you are blurring or tarnishing their mark under the state and/or federal dilution laws. 

See Also...

Likelihood of Confusion Factors

Purpose of the Likelihood of Confusion Standard

Lingual marks are trademarks that consist of either words or phrases.  Specifically, the word(s) might be used as a company name, product name, or a tagline.  Lingual marks are the most widely used and registered type of trademark.  

The plaintiff's lost profits may be awarded as damages in a trademark lawsuit, but monetary relief is generally reserved for cases of intentional infringement. To receive plaintiff's lost sales as damages, the plaintiff must show that if it were not for the defendant's infringing activities the plaintiff would have had a certain number of sales that were not in fact had. Proving this is often difficult since there may be a number of reasons besides defendant's infringing use of the mark that could account for plaintiff's lost sales. As such, a market survey may be necessary to prove such damages.

The Madrid Agreement Concerning the International Registration of Marks is an international treaty originally signed on April 14, 1891.The Madrid Agreement is designed to simplify the filing of trademarks and service marks in different countries. The treaty provides for the international registration of an approved trademark by a single filing in one language, under one procedure, with the payment of one fee.

Nationals of member countries must first register their trademark in the country of origin prior to international registration. For this reason, the treaty tends to favor countries having the least rigorous application procedures, and consequently the United States and Canada, having more elaborate trademark registration procedures, have declined to become signatories.

Members of the Madrid Agreement are not necessarily the same as members to the Madrid Protocol.  The Madrid Protocol was enacted after the Madrid Agreement.

Any symbol qualifying as a trademark, service mark, certification mark, or collective mark.

Research conducted by an independent firm and used to support arguments before the US Patent and Trademark Office or civil courts when trying to prove various aspects of trademark viability. For example, a survey may be useful to prove that a mark has acquired secondary meaning, is not generic, is not functional, is legally strong, or is not likely to confuse consumers with regard to an existing trademark. Surveys can also be used to prove plaintiff's lost profits, which is evidence that is notoriously difficult to obtain without a survey. According to Phyllis J. Welter, an expert on trademark surveys, the discussion of surveys in trademark litigation has grown from roughly 5.6% in the 1950's to over 12% in the 1980's. Ms. Welter's book, Trademark Surveys, published in 1998 by West Group, is an excellent source of information on how to utilize surveys in trademark litigation.

Material alteration is the standard used for evaluating amendments to marks in all phases of registration process.    Each case must be decided on its own facts, and the general rules are subject to many exceptions.  The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression.  

Examples of Material Alteration of Trademark Found (i.e. Change not permitted):

GOT STRAPS to GOT STRAPS? 
TACILESENSE” to “TACTILESENSE
Adding "MR. SEYMOUR” to design mark

Examples of No Material Alteration of Trademark Found:

FREEDOMSTONE to FREEDOM STONE
NY JEWELRY OUTLET to NEW YORK JEWELRY OUTLET
GRAN VINO MALAGA LARIOS (plus design) to VINO DE MALAGA LARIOS (with similar design)

 

Related Trademark Reading

Continuing Commercial Impression: Applications and Measurement in Marquette IP Law Journal Vol 10-Iss3 2006.

Both the Lanham Act and the common law provide for two standard methods of calculating damages, if indeed damages are awarded at all. These are typically the plaintiff's lost profits or defendant's profits gained as a result of defendant's infringing activity. Additionally, damages have been based on a reasonable royalty or a the cost of corrective advertising. Finally, the court may award treble damages and prejudgment interest to the plaintiff where the court deems such damages as equitable and not punitive.

An international treaty dealing covering trademarks.  Member countries include Argentina, Paraguay, Uruguay and Brazil.  Mercosur is also known as the Southern Common Market.

Deceptively misdescriptive marks are those that incorrectly describe features of the underlying services or goods to which the mark is affixed. Like deceptive marks, deceptively misdescriptive marks tend to mislead consumers as to the underlying product. However, deceptively misdescriptive marks do not meet the requirements of a deceptive mark (i.e. bad intent or reliance by purchasers upon the misdescription). As such, deceptively misdescriptive marks can be registered on the Principal Register once they acquire secondary meaning.

Often business owners choose misspelled words that are phonetically similar to the correctly spelled word, in hopes of adding distinctiveness, or even perhaps as a marketing ploy. However, trademark law deems words that are misspelled, but otherwise descriptive of a product to be the same as the non-misspelled descriptive term for that product. For instance, "KWIK SNAQ" as a trademark for a convenience food item would be treated as a descriptive term in the same way as if the item were instead named "QUICK SNACK."

An affirmative defense to trademark infringement. Misuse occurs when the trademark owner uses the mark in violation of the law, such as canceling a trademark license on the basis of illegal discrimination. Some legal scholars have also suggested that the misuse of a trademark should result in cancellation of a trademark registration where the trademark holder uses the registration to invoke Internic's domain dispute policy when there is no valid argument for actual trademark infringement by the domain name owner. However, the US Patent and Trademark Office has never canceled a mark yet based on trademark use. Nonetheless, cancellation of patents and copyrights have occurred based on misuse, and it may be a matter of time before a similar precedent is set in trademark law.

Monetary relief is but one form of protection available to trademark owners under the Lanham Act. Monetary relief may include provable damages, attorneys fees, corrective advertising costs, lost profits (either defendants’ or plaintiffs’), prejudgment interest, punitive damages, reasonable royalty or treble damages. Monetary awards are not required when infringement has occurred. The court has wide discretion under "principles of equity" to grant or deny such relief, and frequently requires a finding of intentional infringement before making such a reward.

A privilege vested in one or more parties consisting of the exclusive right to carry on a particular business or trade. In the case of trademark law, a monopoly specifically references the exclusive right to use a word, symbol, sound or trade dress, etc. in association with a particular kind of good or service.

An application for Federal trademark registration in which the applicant seeks registration for more than one international class. The registrant must pay an additional registration fee ($245) for each class applied for.

Trademark protection exists for any sounds or musical compositions to the extent that such music meets the requirements of a trademark. A famous example is the melody to "Sweat Georgia Brown" for the Harlem Globetrotters International.

Musical notes appearing with or without a staff are protected as long as they function as proper trademarks. As such, there is arguably no independent trademark protection against the printing of musical notes as a symbol identifying the specific song communicated by those notes, because they describe the music itself. Moreover, such notation would arguably be functional for the creation of that particular music. However, musical notation as a symbol for anything other than the song itself could operate as a trademark.

Assignment of a mark without the necessary transfer of goodwillassociated with the mark. Such assignments are invalid, and may result inabandonment of the trademark. If so, the person to whom the mark was assigned will no longer have the benefit of the assignor's earlier first use date to establish priority.

Licensing of a trademark without the necessary controls over the use of the mark. Such licenses may result in the inadvertent abandonment of the trademark.

Registering the name of a business with the state in order to reserve that name for the business owner. Most states will reserve a name that is not an exact duplicate of an existing name, with no attention given to confusingly similar names that may infringe existing trademarks. For this reason, it is not sufficient to search a state’s database of existing business names to determine whether or not there is preexisting trademark rights.

A corporation created in order to reserve the name as a corporate name for the owners of that corporation. Corporate names can serve as trademarks only if they are used as such. Otherwise, they receive no protection, unless otherwise dictated by state law.

One approach for determining how citizens of a treaty nation should be treated by the government of another member nation.

Nationwide Priority is an exception to the common law rule that the first person to use a mark in a territory has priority in that territory. A federal trademark registration allows whoever is first to register a mark to have priority in any territory in which the mark is not already being used. Without federal registration, or nationwide priority, a trademark owner can be the first to use a mark in one area of the country, but a junior user is free to use the original owner's mark in a different area of the country. What's more, the junior user can stop the original owner from expanding his/her business into any area where the junior user is using the mark. If the original user owned a federal trademark registration, he/she could stop the junior user. Failing to register the mark means the junior user can do so, and then be the beneficiary of nationwide priority, allowing him/her to keep the original owner from expanding anywhere in the nation, except the small area in which the original owner is using the mark, or in some cases, within the oringinal owner's zone of natural expansion.

Once a company has nationwide priority via a federal registration, they can use the mark without restriction anywhere in which any prior user is not already using the mark. However, the registered owner cannot sue to prevent prior users of the mark from expanding into new regions, until the registered owner of the mark can show actual use or in some cases an imminent intention of using the mark in that region. For example, if BeeBop establishes rights to a mark in territory XYZ, and then DooDah registers the mark federally, DooDah can claim priority over all regions in the country except XYZ. While BeeBop can still expand into regions in which DooDah is not using the mark, BeeBop can be forced to discontinue use in the new region the moment DooDah can demonstrate a presence of the mark in that region or an intent to imminently enter that region. Until DooDah can demonstrate such a presence or imminent intention, the federal registration cannot be used to enjoin BeeBop from using the mark in that territory.

How the Internet may affect nationwide priority
Historically, nationwide priority is listed by trademark attorneys as one of the most important reasons to register a trademark. However, there is an open question raised by the operation of a business over the Internet and whether or not trademarks used on a site are automatically given nationwide priority without a federal registration. Arguably, an Internet site containing a company's trademark is an advertisement available in any state in the country. Trademarks used in advertising are capable of establishing priority under the common law, provided the advertisement creates an association in the mind of the consuming public between the mark and the goods or services. Therefore, one might think that nationwide priority is automatically established by maintaining a web site. However, until the law of the Internet is more evolved, there is no certainty that this will be the case. For example, there is reason to believe this will not be the case for companies that are geared toward a local audience only. In this instance, it should perhaps be irrelevant that the site can be accessed nationwide, as long as the market niche remains local. In fact, the courts may ultimately require actual sales in a state or region before granting a business priority in that area. Given these uncertainties, nationwide priority probably remains one of the greatest advantages to registration in this author's opinion.

 

A doctrine whereby rights in a trademark are granted based on expected use rather than actual use. Expanded rights under this doctrine are granted only when a company is already using the trademark in one area, and can demonstrate that it planed to expand to the claimed area. This doctrine is ineffective if there is a pre-existing federal registration held by another party in the claimed area.

A form of trademark license which grants the person licensed (i.e. licensee) something other than an exclusive entitlement to the mark. The effect is that multiple parties can use the same trademark at the same time for the same thing, and in the same geographic region. If the license agreement granting a nonexclusive license is not carefully worded, the owner of the trademark my inadvertently loose all rights to that mark.

An order from the court that does not dispose of a particular case or legal issue. Nonfinal orders are not appealable until after a final order is made in a case. An example of nonfinal orders include those determining whether or not certain evidence should be admitted in court, or of which jury instructions should be read.

In trademark law, consumer confusion is the test of whether or not a trademark has been infringed. However, such confusion need not be actual, nor does it need to be confusion of purchasers. Likely confusion of nonpurchasers qualifies as infringement as well. An example of nonpurchaser confusion is where a product bearing the infringing mark is likely to be seen by nonpurchasers, such as when it is engraved on the good itself. The actual purchaser may not be confused by the engraving if the packaging or store display may contain disclaimers. Nonetheless, if the nonpurchaser who has not had the benefit of seeing the disclaimer is likely to be confused, there trademark infringement exists.

Notice of trademark rights is given by use of the symbols, TM, SM or ®, or by phrases such as "XYZ Company is the registered owner of the trademark ABC," or "Reg. U.S. Pat. Off." The symbols "TM" and "SM" are used for trademarks and service marks respectively, and provide notice that a company considers its use of a mark to be protected by trademark laws, even though the mark is not federally registered. Use of the "®" symbol gives notice specifically of the existence of a federal trademark registration.Failure to provide notice of federal registration can result in the court denying certain monetary awards, unless the plaintiff can prove the defendant actually knew the mark was registered.

That notice given by the U.S. Patent and Trademark Office to the trademark applicant informing the applicant that their Intent-to-Useapplication has been approved pending the filing and acceptance of aStatement of Use within six months of the issuance of the Notice of Allowance. If it is not possible for the applicant to begin use of the mark and file the Statement of Use within the six month period, the applicant can apply for an extension.

A notice sent to the applicant of a pending trademark registration that their trademark has been approved by the Trademark Examiners and will be published in the Official Gazette for publication.

As long as numbers are used in the manner of a trademark, they are a trademark.

A written communication sent by the Examining Attorney from the U.S. Patent and Trademark Office, requesting a response from the applicant regarding some matter pertinent to a pending application for trademark registration.

The short name for The Official Gazette of the United States Patent and Trademark Office. It is weekly publication containing information about all pending trademarks, changes to existing marks, and trademark renewals.

An adversarial proceeding between an applicant and opposer, which takes place under the auspices of the U.S. Patent and Trademark Office (USPTO) and attempts to resolve whether registration of an applicant’s pending trademark registration would infringe and damage the opposer’s existing mark. Any person who believes they will be damaged by the registration of a mark on the Principal Register may file an opposition with the USPTO within thirty (30) days of the mark's publication in theOfficial Gazette. Typically, oppositions are filed when a mark is (1) likely to confuse consumers with respect to an existing mark, (2) descriptive, (3) generic, (4) misdescriptive, (5) deceptive, or (6) registered underfraud.

Designs that are ordinary or commonplace such as simple lines or geometric figures are not inherently distinctive, but may becomedistinctive though use. Marks that are not distinctive cannot be registered on the Principal Register until they acquire secondary meaning.

This refers to an attribute of a product which may not be protected under trademark law. Under the aesthetic functionality doctrine, those design attributes of a product that are mere ornamentation, i.e. aesthetically pleasing and help improve the salability of a product, but do not primarily assist the consumer in distinguishing the goods from a competitor’s goods, cannot receive trademark protection.

In the United States, ownership rights in a trademark are generally acquired by being the first to use a mark in trade as a source discriminator. In most other countries, ownership is acquired by being the first to file for a trademark registration. Of course, one may also acquire ownership in a trademark by purchasing both the mark and all the goodwill associated with the mark (see assignment of a mark).

A certificate of federal registration provides prima facie evidence of ownership of a mark. For marks which are not yet federally registered, prove of ownership may be demonstrated by producing evidence of use of the mark in commerce prior to another party's use of the mark. For marks affixed to goods, such proof may include a bill of sale for goods bearing the mark. For services, proof may include brochures or other advertising showing the mark.

Protection is available for packaging as long as the elements claimed for trademark protection meet the requirements of a trademark. The elements that are protected may include the shape and color or overall coordination of these elements. However, only those elements that were designed specifically to promote the product are protected; not the functional features of packaging that have a utilitarian purpose.

Goods that are not authorized for importation into the United States. These goods were legitimately sold outside the United States with the approval of the manufacturer, but were not supposed to be resold back into the United States. The importers of Gray Market Goods are attempting to benefit from the higher prices such goods command within the United States as compared to the country into which they were originally sold.

The International Convention for the Protection of Industrial Property. This treaty was originally signed in 1883 and grants, among other things, trademark rights based upon national treatment to all nationals whose countries signed onto the convention. A trademark registration in one's home country sets the priority date for registrations made in all other member countries. 

Click here to see a list of members to the Paris Convention.

The exclusive right to use or sell an invention. The government, under the auspices of the U.S. Patent and Trademark Office, grants such rights only to new, useful and non-obvious ideas for machines, processes or certain designs. Drafting patent applications is an art that some say takes years to develop well. Depending on how the application is drafted a patent can offer very weak and narrow protection, or rather robust and strong protection. Although Pliam Law Firm does not practice in the area of patent law, we do strongly recommend the investment in a good patent attorney, and will gladly make recommendations on where to find a good patent attorney.

Otherwise known as the United States Patent and Trademark Office, or USPTO, this is the administrative body in the United States that oversees the registration and cancellation of trademarks on the Principal andSupplemental Register, as well as patents. Only attorneys can represent other parties before the USPTO, although individuals can represent their own companies. For trademark law, there is no special certification or license required for attorneys to practice before the USPTO. Trademark applications and all other correspondence should be addressed to "The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513." Initial trademark applications should be directed to "Box NEW APP / FEE," while amendments to allege use should be directed to "Attn. AAU," and statements alleging use or requests for an extension of time to file a statement of use should be directed to "Box ITU / FEE."

It is not necessary to have a patent attorney doing trademark related work. A patent attorney is typically an attorney with an engineering or other scientific degree, and who is specially licensed to handle patentmatters before the U.S. Patent and Trademark Office (USPTO). Except insofar as the USPTO governs trademark registrations, patents and trademark have virtually nothing in common, and thus there is no need to have a patent attorney for trademark work.

 

Traditionally, courts have been reluctant proscribe the use of one's own name in business even when another business exists by the same name. As such, courts would try to craft injunctions to be as narrow as possible to permit use of a personal name. More recently, courts have become increasingly insensitive to any prohibition on using one's own name, where such use creates a likelihood of confusion for consumers. Thus, trademarks consisting of a person's own last name (surname) are generally protected under trademark law once the mark has acquiredsecondary meaning. First names may not need to acquire secondary meaning, however they receive very weak protection generally.

 

The party to a cancellation proceeding who seeks to cancel the Federal registration of a trademark held by the registrant in such an action.
 
 
 
Shapes or physical features of products or their containers may receive trademark protection if those features are distinctive and non-functional. 
 

The party who brings a lawsuit. In a trademark suit, the plaintiff may be claiming trademark infringement and/or dilution, or may simply be requesting in a declaratory judgment action for the court to make a determination of which party has prior rights in a mark, or whether there even exists a valid conflict between two marks. Standing to sue in a trademark lawsuit exists once someone claims infringement and threatens to take some action either through the courts or the appropriate administrative body. If this happens, the party accused of infringing a trademark can become the plaintiff in a declaratory judgment action and thereby can often receive the advantage of a more convenient forum.

The plaintiff's lost profits may be awarded as damages in a trademark lawsuit, but monetary relief is generally reserved for cases of intentional infringement. To receive plaintiff's lost sales as damages, the plaintiff must show that if it were not for the defendant's infringing activities the plaintiff would have had a certain number of sales that were not in fact had. Proving this is often difficult since there may be a number of reasons besides defendant's infringing use of the mark that could account for plaintiff's lost sales. As such, a market survey may be necessary to prove such damages.

All trademark owners have a duty, if they want to preserve their trademark rights, to police and enforce those rights. Failure to do so may lead to dilution and ultimately abandonment of their trademark rights.
 
 
 

Interest awarded to a plaintiff in some jurisdictions for trademark infringement. Such interest may be calculated beginning from the date that infringement first began or the first date that plaintiff made a demand for settlement. When the ultimate damage award is large and the case protracted, prejudgment interest is not to be considered lightly.

An order from a court to prohibit or enforce certain conduct on a temporary basis until the court can make a determination based on all the facts and law of the case. The most common example of an injunction in trademark law is a court order to stop using a particular trademark. Since injunctive relief is an equitable remedy, the court will weigh the harm to defendant if the injunction is imposed against the harm to plaintiff if no injunction is ordered. The court will also require a bond to compensate the defendant in the event the injunction was wrongly ordered.

The Lanham Act specifically prohibits use of a President’s name as a trademark, if the President is alive, and has not given express written consent. If the President is deceased, but the President’s spouse is still alive, written consent must be obtained from the spouse before the President’s name may be used.

"Prima facie" is Latin for at first sight, or first appearance. Prima facie evidence is evidence that is sufficient on its face, and if not rebutted or contradicted will remain so.

A term used in the manner of a trademark that conveys to the consumer a geographical connotation primarily or immediately. If the consumer is likely to believe that the underlying goods or services in fact come from that location, and that location is in fact the geographic origin of the underlying goods or services, then the mark is primarily geographically descriptive, and can be registered on the Supplemental Register, or on the Principal Register if the mark owner can demonstrate secondary meaning. However, if the geographic term is not in fact the origin of the underlying goods or services, and the owner of the mark intended to deceive consumers with regard to geographic origin mark, or if the mark falsely induces purchasing decisions, then the mark may be geographically deceptive, and cannot be protected. A minority of courts look at the intent of the mark owner, while most courts look at whether or not consumers are likely to materially rely upon the misdescription. While proving intent with direct evidence is virtually impossible, courts may infer from the circumstances whether or not a person had bad intent. For this reason, it is probably a good idea to stay away from terms that falsely suggest qualities of a geographic region such as SWISS for watches not made in Switzerland, and WISCONSIN for Cheese not made in that state. Finally, after the U.S. implementation of TRIPs, the Lanham Act. 2(a) has been amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

This is the primary registry of trademarks maintained by the U.S. Patent and Trademark Office (USPTO). In order to qualify for registration on the Principal Register, a trademark must be distinctive and currently in use. Trademarks that qualify for Principal Register registration receive the all the benefits of registration, whereas those registered on theSupplemental Register do not.3

A trademark registration that was filed before another. In most countries other than the United States, the first to register a trademark as the right to exclude others from using that mark in a similar manner. While the United States generally grants priority based on use rather than registration, even in the United States rights outside of one's area of use are granted on the basis of who is first to register (nationwide priority).

Trademark rights owned by one party for a given mark prior, and which were established prior to the time a second party gains trademark rights in that same or a similar mark. In the U.S. the party who is the first to use a mark in commerce has the prior right to the mark, and as such can exclude all subsequent uses of the mark in the same geographic territory. However, in most other countries in the world, trademark rights are prioritized based on the first party to register a mark.

Use of a trademark that occurs before a confusingly similar use of that same mark. Such use by the second user infringes the first user's trademark if the use by both parties is in the same geographic territory. In the United States, the first person to use a mark has prior rights, and may exclude all subsequent users of the mark in that territory.

The date that determines who will prevail in a trademark infringement lawsuit. In the United States, the priority date is generally the date a trademark was first used. In most other countries, the priority date is based on whoever is first to file for a trademark registration.

Product design consists of the variety of elements which constitute the configuration of the product. Product configurations are protected as long as they are distinctive, and operate like a trademark. However, only those elements that were designed specifically to promote the product are protected; not the functional features of trade dress that have a utilitarian purpose.

Proving damages is a necessary prerequisite of being awarded damages, yet doing so can be exceedingly difficult. If damages are awarded, they are typically measured by either the plaintiff's lost profits, or defendant's profits. In the case of plaintiff's lost profits, proof issues are particularly tricky since many factors may result in a decline in plaintiff's profits at any given time. A market survey may be useful here to demonstrate loss of reputation which can serve as circumstantial evidence of lost profits. When the award sought is defendant's profits, all that plaintiff must prove is the amount of defendant's gross sales. Then the burden shifts to the defendant to prove reasonable deductions from those sales.

A mark is capable of being registered by the U.S. Patent and Trademark Office (USPTO) and protected in the courts as long as the mark (1) is not being used by someone else; (2) is not forbidden; (3) is distinctive; and (4) is being used in commerce to allow consumers to identify one brand, and distinguish it from others. If a mark is not distinctive, it may still be registered on the Supplemental Register, but it will not receive protection in the courts, nor will it receive the many benefits of a being on thePrincipal Register.

A letter written to the U.S. Patent and Trademark Office (USPTO) in order to protest the registration of a mark.

Once a mark has been approved by the Trademark Examining Attorney, the mark is published in the Official Gazette for 3 months. The purpose of publication is to notify existing mark owners of potentially infringing marks, and give them an opportunity to respond with a protest letter.

Punitive damages are those that a court can award as a punishment for wrongdoing aside from any actual damages suffered by the plaintiff from any such wrongdoing. Punitive damages are specifically prohibited under the Lanham Act. However, a court may award treble damages,prejudgment interest and costs in cases in which the court deems such an award as just, and as long as the award is not made for punitive reasons. Courts can also award reasonable attorneys' fees in exceptional cases such as egregious intentional infringement.

In trademark law, the person who ultimately buys a good or service associated with the use of a particular mark. Although consumer confusion is the test of whether or not a trademark has been infringed, such confusion need not be confusion of purchasers. Likely confusion of nonpurchasers qualifies as infringement as well. An example of nonpurchaser confusion is where a product bearing the infringing mark is likely to be seen by nonpurchasers, such as when it is engraved on the good itself. The actual purchaser may not be confused by the engraving if the packaging or store display may contain disclaimers. Nonetheless, if the nonpurchaser who has not had the benefit of seeing the disclaimer is likely to be confused, there trademark infringement exists.

Quality assurance is a vital part of trademark licensing, because where there is unfettered use of a mark by another party, a trademark will lose its ability to identify a single source. If such uncontrolled use continues it may lead to the inadvertent abandonment of the licensor/owner's trademark rights. Assuring quality may require provisions drafted into the license for adequate restrictions on use, and supervision of the quality of the underlying goods and the use of the mark itself.

One of the purposes of trademark law is to permit competition on the basis of quality. Since a positive experience with a certain brand of product is likely to yield repeat business for that company's brand, the consumer can send a message about quality satisfaction to companies based on repeat sales of the lack thereof. When a company infringes another company's mark, that deprives the trademark owner of consumer feedback on the quality issue. Furthermore, if the defendant's goods are of a lesser quality, that results in harm to the plaintiff's reputation. Such harm, if it can be quantified, is compensable as a measure of damages in cases in which a court decides to award monetary relief.

Reasonable reliance on licensee's quality control provisions has been held by some courts as sufficient to meet the requirement of trademark licensing of maintaining quality control over licensed uses of a trademark.  

Recording of an assignment with the U.S. Patent and Trademark Office (USPTO) is not mandatory, but is generally a good idea, so as not to invite the argument that inadvertent abandonment occurred, and to provide accurate notice enabling courts to award treble damages and costs. Only assignments of registered marks can recorded. The assignor or assigneemay submit the recordation, which should include the USPTO cover sheet, assignment document, and the $100 fee.

Recording a trademark allows U.S. Customs to interdict the importation of counterfeit goods, goods with infringing marks, and gray-market goods. The government fee for recordation is $190, and the process involves providing the appropriate information on corporate stationary to: Intellectual Property Rights Branch, U.S. Customs Service, 1301 Constitution Avenue, N.W., Franklin Court, Washington, D.C. 20229. For more information on how to record, see the INTA publication entitled, Practitioner's Guide to the Recordation of Trademarks with Customs in the U.S. and the E.E.C., edited by June Gardner Kolbert and David Allen Latham. You may order this publication directly from the INTA at http://www.inta.org/publindx.htm#country2ed.

This is the primary registry of trademarks maintained by the U.S. Patent and Trademark Office (USPTO). In order to qualify for registration on the Principal Register, a trademark must be distinctive and currently in use. Trademarks that qualify for Principal Register registration receive the all the benefits of registration, whereas those registered on theSupplemental Register do not.

The Supplemental Register is a secondary list of registered marks maintained by the USPTO. Marks on the Supplemental Register do not qualify for registration on the Principal Register, and as such, these marks do not receive the many benefits of registration available on the Principal Register. However, registration on the Supplemental Register allows the mark owner to use the ® symbol next to their mark, and also provides notice to potential users of the mark that it is already being used. Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, and those that are not descriptive. Once a mark becomes distinctive through extensive use, or has been on the Supplemental Register for five years, the mark owner may petition to have it removed to the Principal Register.

A registration is a grant of rights by the government in a given trademark. Registrations are granted by the Federal government, as well as most state governments. An application for registration requires providing data in the following categories: dates of use, description of goods or services, designation of class, drawing of mark, identification of applicant, specimens, and verification and execution.

An initial refusal to register a mark made by the U.S. Patent and Trademark Office (USPTOExamining Attorney. Marks may be rejected for several reasons, including that the mark is likely to cause confusion with other marks, is not distinctive, is generic or forbidden, or for inadequacies of the application itself such as a description of goods that is too vague, or specimens that don't demonstrate use for the claimed goods or services. If the mark is rejected, the Examining Attorney will send an office action to the trademark owner or their attorney. The owner or attorney then have the opportunity to respond within six months, or the application is automatically canceled.

Unless products are sufficiently related to one another, there can be no trademark infringement.  Relatedness refers to the degree to which products are sufficiently similar to each other to constitute infringement.  Relatedness of goods or services is not a consideration in determining trademark dilution of famous marks.

Depending on one's perspective, a remedy may either be the penalty applied when found liable for infringement or dilution of a trademark, or the relief that the trademark owner may obtain under such circumstances. Remedies available include: injunctive relief to stop use of the mark, monetary relief, a bar on importationcancellation of trademark registration, criminal indictment, a declaratory judgment, or otherequitable relief as the court may see fit.

Registering the name of a business with the state in order to reserve that name for the business owner. Most states will reserve a name that is not an exact duplicate of an existing name, with no attention given toconfusingly similar names. For this reason, it is not sufficient to search a state’s database of existing business names to determine whether or not there is a preexisting trademark right.

This refers to any actual goodwill that may remain in a trademark after it has been abandoned (i.e. discontinued with no intent to resume its use).  

Some courts refuse to recognize the concept, but it remains strong as a doctrine to watch out for. Afterall, the hallmark of trademark law is whether a consumer might be confused. In the case of residual good will, it's easy to see how a consumer could decide to purchase something because of a name the consumer has positive associations with, not realizing what they are actually buying is from another source altogether - and completely unwaware of the original user's abandonment.  

Examples include when the artist formerly known as Prince, appeared to expressly abandon "Prince" in favor of a symbol, and when a company started using "LaSalle" after General Motors stopped using that name for its Cadillac line some 60 years earlier.   

A reply from a trademark applicant to the U.S. Patent and Trademark Office (USPTO) after the USPTO has sent the applicant an initial refusal of registration (office action). A response is due after six months of receiving the office action, or else the application will be deemed abandoned.

Unlike typical consumer confusion in which the second (junior) user of a mark "cashes in" on the goodwill generated by the first (senior) user of that same mark, reverse confusion occurs when the second user becomes better known than the first user. Thus, the first user looses the opportunity to control its own reputation and goodwill. Consumers may even disrespect the first user assuming the second user is the original, while the first user is merely a copycat. The first user is virtually always the prevailing party in any trademark litigation.

This occurs when corporations intimidate people or companies out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement, dilution, or unfair competition in any manner. Some trademark legal scholars have speculated that reverse domain hijacking may be met with cancellation of the company's mark under the doctrine of trademark misuse.  Additionally, victims of reverse domain name hijacking now have a specific cause of action under the new anti-cybersquatting legislation signed into law on November 29, 1999.

The right to exclude all other confusingly similar uses of a mark based on having been the first to use that mark.

The encircled-R  is a symbol that designates a specific trade or service mark as a federally registered trademark under the Trademark Act. In order to use this symbol a mark must be currently registered on either the Principal or Supplemental Registers maintained by the U.S. Patent and Trademark Office (USPTO). Willful use of the encircled-R on a non-registered mark may jeopardize future registerability status with the USPTO, and may be evidence of bad intent, which is frowned upon by the courts.

The scope of a search may vary depending upon: (1) where you intend to use the mark; (2) which industry you are selling your goods or services; (3) how much money you are willing to spend in a search, and (4) your tolerance of the unknown, or legal risks in general.

Generally speaking, a good search will include identical marks in all industries, and confusingly similar marks within your own industry or industries. To the extent that you have enough money, and you don't tolerate risk well, you should pay for a professional search firm to conduct a nationwide search of all existing and pending state and federal government registrations, and perhaps even Secretary of State filings, which are not part of most firms' "full search" requests. If you have even a remote interest in expanding internationally, then you should also conduct a similar search in any country or continent in which you think you may expand. However, if you are low on funds, and highly risk tolerant, then you must, at a minimum, still search obvious places to find possible prior users of your mark, including, but not limited to, the yellow pages, the Internet, and any industry journals in all the regions of the country in which you plan to conduct business.

Recent court decisions indicate that failure to conduct a reasonable search may be deemed "bad faith" in an infringement lawsuit, particularly in light of the ease of searching online databases, and especially for larger companies with the means to investigate prior rights.  Furthermore, even if you don't plan to immediately operate in an adjacent territory, you should still conduct a search there because businesses with plans for expansion into your area may, in some cases, have prior rights in your area. (See the doctrine of natural expansion).

An investigation conducted in order to determine the availability of a proposed mark.  A search report is typically generated by a professional search firm or law firm containing 50 -100 trademarks that may be related enough to the proposed mark to create a risk of infringement.  The report is then analyzed by an attorney in order to assess the legal strength of the trademark, and to determine whether prior uses of the mark present a risk to the client of incurring infringement liability.

There are several popular misconceptions about trademark searching.  First, it is often said that trademark searching is optional.  While it is true that you may have protection in a mark without searching, it is also true you may be held liable for willful trademark infringement if you fail to search.

Second, it is commonly believed that searching identical or near-identical marks will suffice.  This is not true, because the standard for infringement is confusingly similar, which encompasses marks that are less related than near-identical.

Finally, some unscrupulous trademark search firms imply that the searching "requirement" includes only federally registered marks.  In fact, recent cases have said that not only are federal and state registrations important to search, but also common law marks, i.e. marks that are not registered.  Incidentally, the reason some search firms propagate this myth is that they are unequipped to handle common law searching, and they don't want to lose business to the larger search firms who have tremendous common law searching capabilities.

The second level domain is the portion of a domain name that is owned by the domain name registrant.  For example, in the following URL:http://www.etoys.com "etoys" is the second level domain, while "com" is the top level domain.  The combination of a top level and second level domain name is unique.  For example, there can only be one etoys.com, even though there can be multiple etoys second level domains (e.g. etoys.org, etoys.net, etoys.ca, etc.)

The requirement in trademark law that certain marks must obtain a level of market awareness or recognition from consumers prior to receiving any protection.  Descriptive marks, as well as those that are primarily construed as surnames or as geographical indicators all require secondary meaning in order to be registered or to invoke court assistance stop infringers.

The type of market awareness required is recognition from in the minds of the relevant consuming public that the mark is used as a brand, and not merely used to describe a product, region, or someone's surname.  For example, "McDonald" was once mostly thought of as a surname.  When this name became widely used to sell burgers, then "McDonald's" has the power to bring to mind a restaurant chain in the minds of consumers.  Once that happened, "McDonald's" acquired a second meaning, aside from its primary meaning as a surname, and as such, became capable of trademark protection.

Only "relevant consumers" are the ones who must have experienced the cognitive shift from viewing the mark as a descriptive term, surname or geographical term, to a brand-identifier.  This includes not only purchasers, but also those who might someday be purchasers of the products bearing the mark in question.

Secondary meaning is generally acquired only after long-term exposure to the mark as a brand identifier, or else from extensive advertising.  It can be proven by evidence such as a survey of relevant consumers, sales figures, trade literature referring to the mark, large advertising expenditures, or other proof of widespread advertising.  Proof that a mark has been used exclusively for five years is prima facie evidence that the mark has acquired secondary meaning.

Section 15 allows for the incontestability of a mark if a separate filing is made with the USPTO five years after registration.  The filing must attest to the fact that the mark has been used continuously since registration.  Usually this filing is made in conjunction with the required Affidavit of Use.  Additional filings of the Section 15 Affidavit are not required upon renewal of the mark.

A section 2(f) claim is an argument made to the U.S. Patent and Trademark Office (USPTO) that a mark has become distinctive.  This claim can be made by proving continuous and exclusive use of a mark for five years, or by producing other proof of secondary meaning.

Section 2(f) of the Lanham Act (15 U.S.C. 1052(f)) provides that marks that would otherwise be denied registration, can be registered if they have become distinctive by acquiring secondary meaning.

A filing with the U.S. Patent and Trademark Office (USPTO) stating that the mark in question is has been in continuous use for five years since the registration was issued. Failure to file this affidavit between the fifth and sixth years after registration will result in an automatic cancellation of the trademark registration. This affidavit can be filed in conjunction with the Section 15 Affidavit to request incontestability status.

The U.S. Customs Service is authorized to seize counterfeit goods. However, the owner of the trademark must first record a valid U.S. trademark registration with Customs. For marks which are so recorded, U.S. Customs is authorized to seize the counterfeit goods, and provide notice to the trademark owner of the counterfeits. Destruction after seizure is mandatory unless the trademark owner consents to giving the goods to charity after removing the counterfeit marks from the goods.

Simply put, a service mark is a trademark used exclusively for services as opposed to goods.  It is any word, symbol, phrase, picture, color, sound, packaging scheme or other "thing" used in commerce to identify and distinguish one service provider's services from another service provider's services.

Notice of a valid service mark is denoted by the use of the SM symbol, whereas the TM symbol is reserved for marks selling goods. It appears to be common usage to refer to service marks as either trademarks or service marks. However, the reverse seems to not be true.  Nonetheless, the technically proper usage is to apply the SM symbol for services and the TM symbol for goods. While rare and unlikely, one can imagine where this distinction may have legal significance, such as when trying to establish constructive notice for a servicemark when both goods and services are offered in the same communication.

An agreement reached between parties in a lawsuit or potential lawsuit.

In trademark cases, a settlement may include:  the alleged infringer gradually phasing out the allegedly infringing mark;  the alleged rightful owner of the mark licensing use of the mark to the other party;  both parties agreeing to carve out areas in which they can each use or not use the mark;  a monetary payment;  and any other arrangement within the imagination of the parties.

 

Product shapes are capable of trademark protection under the rapidly expanding doctrine of trade dress.  As long as the product shape meets the requirements under trademark law of distinctiveness, andunobjectionable content, and the shape is not a functional feature of the underlying product, it qualifies for trademark protection, and can be registered with the US Trademark Office.

Examples include the famous Coca-Cola bottle, 

and the fish-like shape of a Pepperidge Farm cracker.

 

 

Similar marks cannot co-exist as trademarks if they are similar in such a way that is likely to cause consumers to be confused as to the source of the products using such marks.  When one mark is deemed "confusingly similar" to another, the the second user of the mark has infringed the first user.

Slogans are capable of trademark protection as long as they  meet the trademark law requirements of use in commercedistinctiveness, andunobjectionable content.

Since slogans frequently are used as marketing instruments to describe the underlying product or service, they are almost always descriptive, and lack inherent distinctiveness. Once they are used extensively enough in the market place to acquire secondary meaning, they may be registered.

Trademark protection exists for smells as long as they  meet the trademark law requirements of use in commercedistinctiveness, andunobjectionable content, and as long as the particular smell is not afunctional feature of the product.

Trademark protection exists for sounds or musical compositions to the extent that they meet the trademark law requirements of use in commercedistinctiveness, and unobjectionable content, and provided that the sound is not a functional feature of the product being sold.

A famous example of a sound trademark is the three notes heard along with the NBC peacock.

In trademark law, a source is the unique manufacturer or service provider from whom a trademark originates.  When a consumer sees a trademark, he/she knows the product bearing that trademark is from the same source as all other products bearing the same mark.

It is not necessary that the hypothetical consumer knows the actual name of the manufacturer or service provider. All that is necessary is that the consumer knows the products bearing one mark are from one source, while the products bearing another mark are from a different source.  For example, BETTY CROCKER receives trademark protection, even if nobody knew that the source of Betty Crocker products was actually General Mills, Inc., the company that owns the BETTY CROCKER trademark.

The entire purpose of trademark law hinges on the ability of a trademark to identify a unique source.  If one mark is related enough to another mark, in terms of look, sound, meaning, and use, then they no longer function to identify a single source, and thus cease to function as a trademark  For this reason, a trademark is also referred to as a source discriminator, since it serves to help consumers discriminate between brands when making purchasing decisions.

Another name for a trademark that reflects what a trademark actually does.  See "source" immediately above.

Specimens are submitted with a trademark application as proof of actual use of a trademark.  Choosing the right specimens for your application is critical because the Trademark Examining Attorney uses the specimens to decide whether a mark qualifies as trademark, whether the mark is actually "used" in a trademark sense, whether the mark is too similar to other marks that it cannot be registered, whether the drawing page submitted with the application is appropriate given the specimen submitted, and whether the type of goods or services claimed in the application are in fact those that are sold.    Click here for more about specimens.

The legal term for the right to bring a claim before a judicial or regulatory body. The person bringing the claim must have "a personal interest in the outcome beyond that of the general public."

Standing is a requirement when filing for the cancellation of another party’s mark.  Specifically, the petitioner must believe he or she is damaged by the existence of the registration sought to be canceled. Typically, standing in a cancellation action will exist where there is alikelihood of confusion with petitioner’s mark or when the petitioner’s application was rejected on the basis of the challenged mark’s prior right.

Oppositions may be filed by any person who believes that he/she would be damaged by the registration of a mark.  This rule together with the general law of "standing," means that the opposer should have some commercial involvement with the goods or services that are being described by the mark in question.

State trademarks are typically used exclusively in intra-state commerce, while a federal marks are those used in interstate commerce.  Interstate use of a mark is required in order to register a mark federally.  There is no requirement that state marks be used only in one state. Thus, there can be, and usually is, concurrent protection for a mark under both state and federal law. State and federal trademarks are always common lawmarks, because no matter where a mark is used, it is protected under the common law the moment it is first used in commerce anywhere in the U.S..

Registration of trademarks by the state or federal government provides additional protection beyond what is offered under common law. The benefits of registering a mark federally are far greater than those offered under state registrations. However, the process for registering a mark federally is more extensive, rigorous and time-consuming than it is for state registrations.

A document that must be filed with the USPTO for all Intent to Useapplications, in lieu of an Amendment to Allege Use.   Both the Statement of Use and the Amendment to Allege Use allow the applicant for trademark registration to verify that they have begun using the mark ininterstate commerce.  Specifically, the Statement of Use must include averified statement that: (1) the applicant is the owner of the mark;  (2) the mark is used in commerce; (3) the mark is used on or in connection with the goods or services included on the Notice of Allowance; (4) and a listing of the dates of first use anywhere, the dates of first use in interstate commerce, and the manner or mode in which the mark is used.  Three specimens must accompany the Statement of Use.

The legal strength of a mark is measured in two ways;  the mark's distinctiveness and its level of dilution.  Distinctiveness is a measure of the inherent qualities of the mark with relation to the underlying goods or services sold, while dilution  looks at the number of other companies using the same or similar marks.   The more users there are of a mark, the more it is diluted, and thus the less protection that is available for that mark.

In short, distinctiveness measures the degree to which the inherent meaning of a mark correlates with the qualities and nature of the underlying product.  Generally, the more distinctive the mark, the stronger legal protection it receives.  The distinctiveness spectrum consists of marks that are generic, descriptive, suggestive, arbitrary, and coined or fanciful.  Those marks that are suggestive, arbitrary and coined are considered distinctive immediately upon their first use in commerce.  Descriptive marks are not immediately distinctive, but can acquire distinctiveness, and thus legal protection, if they are used or advertised extensively enough in commerce to acquire secondary meaning.

Very often, marks that are strong for marketing purposes are weak legally, and receive narrow protection, or sometimes no protection whatsoever.  Words that describe the qualities or nature of a product benefit from strong marketing potential in the initial marketing stages, because they communicate instantly to customers what the product actually is or does.  For example, "Quick Fix Radiator Mix," tells the customer immediately that this substance fixes radiators quickly. This presumably saves on initial advertising expenses.  It is worth noting, however, that the long term branding potential of a mark is probably enhanced with strong legal rights that allow for greater distinctiveness.

Trademark law is likely to be one of the most subjective areas of the law. The reason for this is that language and communication, which are at the heart of trademarks, depend completely on one's cultural experiences, whether those experiences are shaped by ethnicity, economic class or even the passage of time. For instance, cases decided one way today might have been decided differently 50 years ago, simply because the connotation of words and symbols change through time.

Because of the inherent subjectivity in trademark law, it is not unusual for a Examining Attorney with the U.S. Patent and Trademark Office, or a federal court judge to have differing views on the legal attributes of a mark. Likewise, a legal opinion given by an attorney regarding theavailability of a mark may not agree with the opinion arrived at by another attorney or judge looking at the same material.  Yet, all may have legitimate opinions. For this reason, it may be a good idea to obtain second and third opinions from different attorneys when clearing a mark for use.

Suggestive trademarks are those that 'suggest' rather than 'describe' qualities of the underlying goods or services.  Examples of suggestive marks include: ACOUSTIC RESEARCH for stereo loudspeakers, HABITAT for home furnishings, GREYHOUND for bus transportation services, and Q-TIPS for cotton-tipped swabs.

Suggestiveness and descriptiveness are not mutually exclusive.  There must exist some description in almost any suggestion. However, by going beyond "mere description" the law elevates a suggestive term into the valuable category of "inherently distinctive" marks, which receive protection immediately upon their first use in commerce.  Courts have clarified this fine distinction by stating that a mark is suggestive if it requires imagination, thought and perception to determine the nature of goods or services in question.  For instance, it takes an imaginative leap to realize that greyhounds are sleek and fast, and that these traits are connoted in the use of GREYHOUND for a bus line.  By contrast, no imaginative leap is required to figure out that QUICK STOP for a convenience store is meant to connote speedy service, and that such a mark would be classified as descriptive rather than suggestive.

The Supplemental Register is a secondary list of registered marks maintained by the USPTO. Marks on the Supplemental Register do not qualify for registration on the Principal Register, and as such, these marks do not receive the many benefits of registration available on the Principal Register. However, registration on the Supplemental Register allows the mark owner to use the ® symbol next to their mark, and also provides notice to potential users of the mark that the mark is already being used.

Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, as well as those that are not descriptive. Once a mark becomes distinctive through extensive use, or has been on the Supplemental Register for five years, the mark owner may petition to have it moved to the Principal Register.

Trademarks consisting of a person's own last name are usually not protected under trademark law unless the mark has acquired secondary meaning through extensive use and/or advertising in commerce.  However, some surnames do not require secondary meaning in order to receive protection. That occurs when the surname also describes some other thing, such as BIRD, KING, or FLOWERS.

Courts have taken two different approaches in analyzing whether or not a surname has a meaning different enough from a last name so as not to require secondary meaning. One view requires secondary meaning when the mark's primary meaning is as a surname, while the other view requires secondary meaning when the mark's only likely impact is as a surname.  Thus, in some courts, a surname can still receive protection without secondary meaning, if the mark is not perceived primarily as a surname, even if the only true meaning of the word is in fact as a surname. However, even if a surname is rare in the public at large, but the relevant consuming public conceives of the name primarily as a surname, it cannot be protected without secondary meaning.

It is worth noting that a surname can always be registered and protected without proof of secondary meaning, if it is used together with arbitraryor fanciful components.  However, such protection will be weak with respect to the surname component alone, except insofar as that component acquires secondary meaning.

Surveys of potential consumers are frequently used in trademark legal battles to prove various aspects of a trademark's legal viability. For example, a survey may be useful to prove that a mark has acquired secondary meaning, that it is not generic, is non-functional, legally strong, or is not likely to confuse consumers with regard to an existing trademark. Surveys can also be used to prove a plaintiff's lost profits, which is evidence that is notoriously difficult to obtain without a survey.

Independent survey firms are used to prevent the appearance of impropriety and bias of the survey data.  According to Phyllis J. Welter, an expert on trademark surveys, use of surveys in trademark litigation has grown from roughly 5.6% in the 1950's to over 12% in the 1980's. Ms. Welter's book, Trademark Surveys, published in 1998 by West Group, is an excellent source of information on how to utilize surveys in trademark litigation.

Trademark law protects any symbol, as long as the symbol meets the requirements of trademarks. Drawings, sometimes referred to as "logos" are non-lingual symbols, and can be registered as design trademarks. However, any word is also a symbol, and can be registered as a lingual mark or a design mark if the trademark incorporates a design or logo in addition to the lingual components.

Tacking is a legal doctrine that allows a trademark owner to make slight alterations in a trademark, without abandoning ownership the original trademark.  Changes in a trademark are often desirable to keep pace with advertising trends & societal changes. However, the doctrine applies only in exceptionally narrow circumstances. 

Normally when the use of a trademark ends, the owner legally forfeits or abandons all rights in their mark (but see zombie trademarks).  Tacking doctrine provides the bridge for reasonable updates over time. If a mark is properly tacked, the trademark owner can claim that the priority date of the earlier mark serves as the priority date of the latter mark, thereby avoiding the abandonment problem.  

In order to tack properly, the two trademarks must create the same, continuing commercial impression. The general rule adopted has been that two marks may be tacked when the original and revised marks are “legal equivalents.” Key to this assessment is that consumers “consider both as the same mark.”  This standard is hard to meet - even more difficult to meet than the material alteration standard used by the Trademark Office when deciding if an amendment to a trademark application is permissible or not

Trademark tacking cases are obscure and thus exact parameters surrounding the right can be difficult to ascertain. For instance, in some jurisdictions the new and old versions of the trademark can co-exist (i.e. the new version commandeers the first-use date of the newer version even while the new version is still used in the marketplace).  While it makes good common sense to allow for overlap at least for a commercially viable time to permit the change-over, prolonged overlap may be harder to defend, since the rationale behind allowing tacking is to allow companies to keep their marks updated, not to allow them to expand rights.

 

Examples of Trademark Tacking

Trademarks that have been denied tacking rights on the basis of being too dissimilar are:  

DCI with dci 
PRO-CUTS with PRO-KUT  
CLOTHES THAT WORK with CLOTHES THAT WORK FOR THE WORK YOU DO
EGO with ALTER EGO
POLO with MARCO POLO


Trademarks that have been granted tacking rights are:

The morton salt girl images that have been updated over time

Related Trademark Reading

Hana Bank Case - Clarifying that tacking is an issue of fact for the jury to decide 

Continuing Commercial Impression: Applications and Measurement in Marquette IP Law Journal Vol 10-Iss3 2006

Under trademark dilution law, a mark may become tarnished when it is "linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context."  The concern over tarnishment is that the public may begin to associate the original mark with the degraded quality or prestige depicted by the imitation.  If so, the value of the mark may be compromised, because the trademark owner cannot control consumer perceptions about the mark.

There need not be any confusion as to source in order for a potential lawsuit to arise out of tarnishment of another company's mark. For example, depictions of the Pillsbury Doughboy and Doughgirl in lewd positions was held to be tarnishment, even though there was no finding of confusion.  Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981).

As long as a telephone number meets the requirements of a trademark, namely that consumers can rely upon it to distinguish the trademark owner's goods or services from those of competitors, then it can receive all the protections provided by trademark and dilution law. Typically, protection for phone numbers is sought for those numbers that are converted to a meaningful word, such as in the case of "Dial L-A-W-Y-E-R-S" in which a court enjoined another company's use of the same phrase, even though the defendant used that number outside of the region in which the original L-A-W-Y-E-R-S phone number was originally secured. See Murrin v. Midco Communications Inc., 726 F. Supp. 1195 (Minn. 1989).

This is an order from a court to prohibit or enforce certain conduct on a temporary basis until the court can make a determination based on all the facts and law of the case. The most common example of an injunction in trademark law is a court order to stop using a particular trademark. Since injunctive relief is an equitable remedy, the court will weigh the harm to the defendant if the injunction is imposed against the harm to the plaintiff if no injunction is ordered. The court will also require a bond to compensate the defendant in the event the injunction was wrongly ordered.

The TM symbol is used next to a trademark.  It provides notice to the world that a trademark owner claims trademark rights in that mark. Companies can use the TM symbol on any mark which serves to identify that company's goods, and the SM symbol on any mark which serves to identify that company's services. There is no need to have a federal or state registration prior to using the TM or SM symbols. However, use of the © symbol requires a federal registration.

This term refers to uses of a trademark that are purely for the purpose of securing rights in a that mark, as opposed to any true interest in or expectation of making commercial sales. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark will become associated with the source of the goods.

If a mark becomes challenged on the grounds of abandonment, the trademark owner will need to prove use in commerce, and token uses will not suffice. Such token uses were more common prior to the 1988 revision of the Trademark Act in which the Intent to Use procedure was added.  The Intent to Use application eliminated the need to secure an early priority date in a mark without actually using it. However, token uses are still continue in an effort by some to avoid the result of abandonment.

Trade dress consists of the overall image of a product and may include features such as size, shape, color or color combinations, texture, graphics, etc.  Trade dress may even include the displays attending goods, and the decor or environment in which a service is provided.  As long as the particular feature in question meets the requirements of distinctiveness in trademark law, that feature receives protection.

Only those elements designed specifically to distinguish the product are protected;  not the functional features of trade dress that have a utilitarian purpose. See functionality doctrine for more information on this subject.

Also known as a "corporate name," "assumed name," or "business name," a trade name is the name under which a company conducts its business.  Whereas a trade name identifies the business itself, trademarks identify the goods or services sold by the business.  Also, while a corporate name specifically identifies the name of a corporation, a business name, trade name or assumed name can refer to entities that are not corporations.

Trade names frequently receive protection as trademarks, because they often meet the trademark law requirements of use in commerce,distinctiveness, and unobjectionable content.  However, unlike a trademark, trade names can obtain protection under the Trademark Actand common law of unfair competition, even if they are not used in direct connection with the sale of goods or services.

A frequent misunderstanding occurs when registering or reserving trade names with the appropriate state governmental agency, e.g. the Secretary of State.  In so doing, businesses are often led to believe they have acquired trademark protection.  This is not so.  States require the registration of trade names when doing business under a name other than a legal name, in order that the true identity of a company/person can be found.  A state will register or reserve a trade name as long as it is not identical (or near-identical) to a name already registered.  By contrast, a trademark that is far less similar to an existing trademark than "near-identical" can infringe a prior mark.

A trademark can be any "thing," such as a word, name, symbol, sound, color, packaging scheme or other device, or any combination thereof, as long as that "thing" is used to identify goods or services of one company and distinguish them from the goods or services of another.  Thus a trademark is a source-identifyer, and communicates to consumers that all products bearing a particular mark are from the same source.   Consumers need not know the exact manufacturer or service provider, but must believe the goods or services bearing the mark are not from the same source as those bearing a different mark.  For example, BETTY CROCKER receives trademark protection, even if nobody knew that the source of Betty Crocker products was actually General Mills, Inc., the company that owns the BETTY CROCKER trademark.

In order to qualify as a trademark, the mark must not be forbidden, must be distinctive, and must be used in commerce.  In a nutshell, the mark cannot consist of objectionable material, must be recognizable as a brand, and must have an effect upon sales.  For federal registration, those sales must be interstate sales.

Trademarks are often confused with trade names, which can be, but are not necessarily, trademarks.  Service markscollective marks andcertification marks are also distinguishable from trademarks.  However, it is not uncommon for the word "trademark" to refer to all such marks.  Finally, when used in some contexts, the word "trademark" refers specifically to a mark used to sell goods, as opposed to a service mark, which is a mark used to sell services.

The Trademark Act of 1946 is a federal statute governing registration and maintenance of trademarks, and provides multiple causes of action.  See 15 U.S.C. §§ 1051 et seq.  Included in the Act are claims fortrademark infringementtrademark dilutionunfair competition,counterfeiting, and more recently, for cybersquatting and reverse domain name hijacking.

When there is a conflict between marks, there are several types of lawsuits which could be brought.  These include trademark infringementin violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; False designation of origins or false descriptions in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); Trademark dilution in violation of section 43(c) of the Lanham Act, 15 U.S.C. §1125(c); Violation of state trademark infringement statutes;  Common law trademark infringement; Violation of state unfair competition and deceptive practices statutes; Common law unfair competition; and Common law or state statutory violations of the right of publicity.

The Trademark Law Treaty became effective in August of 1996.  The treaty attempts to harmonize procedures for trademark applications, assignments, renewals across member countries, and places limitations on the requirements that a member country can impose.

A theoretical cause of action in which one claims that a trademark owner has used its trademark registration to unfairly promote its monopoly trademark rights.  Although purely speculative at this point, some legal scholars have suggested that the owner of a trademark registration should lose their trademark registration if they engage in abusive tactics that violate the boundaries of fair competition. (See article). This doctrine was already applied successfully with respect to patents and copyrights, and thus has some precedential merit.

The trademark misuse theory was proposed most recently to address abuses occurring as a result of Network Solutions' earlier dispute resolution policy, which placed domain names on hold whenever a trademark owner with a federal registration went through the minimal procedural steps required to invoke the hold. Since Network Solutions' old dispute policy did not require proving infringement or even any likelihood of infringement, the old policy gave the trademark owner substantial leverage in negations to acquire a domain name.  Proponents of the trademark misuse theory claimed that unless the trademark owner had a good faith believe that the domain name was infringing their trademark, invoking the hold policy was a misuse of their trademark registration.  As such, the domain name owner should have a right under the misuse theory to have the court order cancellation of the trademark owner's trademark registration.

Abuses by some trademark owners of the earlier dispute policy was one of the reasons that Network Solutions was forced by ICANN to adopt a new dispute policy.  Even though the old hold policy is no longer effective, the trademark misuse theory may still prove useful where a domain name owner is coerced into litigation or arbitration over a frivolous claim of infringement.

An administrative hearing body under the auspices of the U.S. Patent and Trademark Office. The TTAB hears matters concerning federal registration of a mark and the cancellation of federal registrations. Primarily, the TTAB hears appeals from final refusals issued by a Trademark Examining Attorney.

Decisions by the TTAB can be reconsidered by the Board if a request is filed within one month after the decision.  Appeals thereafter can be brought to the Federal Circuit Court of Appeals or to federal district court.

Trademark attorneys do not need a special license or certification to practice in front of the TTAB, as is required when practicing patent law in front of the USPTO.

Trafficking means to transport, transfer or otherwise dispose of goods.  Trafficking or attempted trafficking is a crime if the person engaged in such activity had knowledge that the goods were marked with counterfeit trademarks.  See 18 U.S.C. § 2320.

An assignment is the legal transfer of ownership of any property such as a trademark or copyright from one owner to another.  The transferee or "assignee" is the person who acquires ownership, and the transferor or "assignor" is the person who transfers ownership rights.

Great care should be taken when drafting an assignment document and implementing its transfer.  To be valid, a trademark assignment must include the transfer of goodwill accrued in the assigned mark beyond mere assignment of the mark itself. Traditionally, courts have required the transfer of tangible assets along with the trademark.  More recently, however, some courts have taken a more liberal view of assignments, and do not require the transfer of such tangible assets. Nonetheless, the assignee must continue to sell goods or services of the same quality and nature as the assignor to ensure that goodwill has indeed passed with the mark. See PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969).

You will also want include in the transfer document the assignment of the right to sue for past infringements.  Also consider including a statement about the geographical region for which rights are assigned, the physical transfer of materials establishing the trademark right, and the reasonable cooperation of the assignor, if needed to prove establishment of the trademark.

When a registered trademark is assigned, it is a good idea to record the assignment immediately with the U.S. Patent and Trademark Office, although such recordation is not mandatory.

The party who acquires trademark rights in an assignment or transfer of a trademark.

The party in a trademark transfer transaction (assignment) who conveys ownership rights in a trademark to the assignee/transferee.

A treaty is an agreement between nations. There are several treaties addressing trademark rights.

Some treaties attempt to harmonize the laws between countries, while others set up a centralized trademark registration filing system.  The usefulness of a treaty depends in part on whether the treaty invokesnational treatment or reciprocal rights.

One of the most important treaty rights for new trademark registrants is reciprocal filing rights.  This right allows US trademark registrants to receive the priority in other countries of their trademark registration date in the US if they file for registration in the member country within a six month period following filing in the US.

Treble damages means three times (3x) the amount of provable damages. The Trademark Act authorizes courts to exercise their own discretion in awarding treble damages, and his award is usually reserved for willful violations of the Act. However, any increases over provable, actual damages have to be for the purpose of compensation, and not designed as a penalty.

Otherwise known as the Trade-Related aspects of Intellectual Property, TRIPs is a new agreement within the GATT that addresses intellectual property concerns. TRIPs marks the first serious involvement of the GATT into intellectual property issues. Because of TRIPs, the Trademark Act(section 2(a) of the Lanham Act) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

While the term "service mark" refers to marks used in selling services, "trademark" can be used to refer either to marks selling goods, or as a general word meaning any kind of source identification symbol, such as a certification mark, collective mark, service mark or trademark.

Certification marks are used to signify a certain level of quality, or that specific standards have been met, while Collective marks are used to identify associations of companies or organizations.

Any mark, whether a service mark, trademark, collective mark,  or certification mark, can be made up of a symbol, word, phrase, smell, sound, or even packaging design.  The only requirement to qualify for use as a trademark is that the "thing" must be used to distinguish its own brand of goods or services from other brands.

A "drawing" that satisfies the drawing page requirement in a trademark application by simply typing out the letters of the trademark onto the drawing page.  A typewritten drawing can only be used for lingual (text) trademarks, and must consist of all upper-case letters.

If the applicant is claiming stylized features along with the text, then a graphic depiction of the mark, other than a typewritten drawing, is required.

The USPTO (a/k/a Trademark Office) is the federal agency presiding over the registration and maintenance of patents and federal trademarks. While attorneys must be licensed to practice patent law before the USPTO, no such requirement exists for the practicing trademark law before this body.

The USPTO now accepts applications for trademark registration over the Internet through it's online TEAS system. CAVEAT:  Be sure you understand the finer points to preparing an application before you attempt this on your own. The Trademark Office is getting better about assisting non-lawyers through the process of registration.  However, you must never forget that the Trademark Office has a competing interest at odds with the Trademark Owner's interests.  Specifically, the USPTO has an interest in narrowly and concisely defining the boundaries of your trademark rights.  Meanwhile, the Trademark Owner has an interest in maintaining as broad of rights as possible.  This tension arises throughout the registration process, from choosing specimens and selecting the wording for your description of goods, to responding to Office Actions.

Correspondence can be addressed to "The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202" Actual Use applications should additionally be directed to "Box NEW APP / FEE," while Intent to Use applications should be directed to "Box ITU / FEE."  Statements alleging use or requests for an extension of time to file a statement of use should be directed to "Attn. AAU.

The USPTO can be reached by phone at 1-800-786-9199.  Or, visit the USPTO web site at http://www.uspto.gov .  Here are some site highlights.

This is a legal cause of action based in the common law, and which provides the backdrop to and progenitor of trademark law.  Unfair competition encompasses not only trademark infringement, but all kinds of other unfair business practices such as false advertising, misappropriation, and trade name infringement.

The U.S. Customs Service provides services to trademark owners by enforcing rights at the border.  Customs officials can demand disclosure of the identity of any trademark on imported goods, and under certain circumstances, seize goods bearing infringing marks. Congress has authorized Customs involvement in preventing the importation of counterfeit goods, gray-market goods and goods bearing infringing trademarks. Such goods can be seized at the border. However, what happens to them after seizure depends on which category they fit into. 
Counterfeit goods can be destroyed or given to charity after removal of the trademark. Infringing marks will be sent back to the place of origin, or can enter the U.S. after removal of the mark. Or, upon consent of the U.S. trademark owner, either counterfeit goods or goods bearing infringing marks may enter the U.S.

In order for the Customs Bureau to take action at the border, the U.S. trademark owner will have to record with Customs their federally registered mark (or trade name if used for six months). Additionally, trademark owners typically have to alert Customs of specific counterfeiting or infringing activity.  This is purely a practical matter, since Customs has far too many trademarks to effectively monitor without such assistance.

In the United States, the first to use a mark establishes a prior right in the mark, and can exclude all subsequent users of confusingly similar marks. This is in contrast to most other countries, which grant priority based on the first to register a mark. The different systems present complications for those starting their businesses in the U.S. and expanding later into other countries. Sometimes the first to use in the U.S. is thwarted by another company in a different country who had the foresight to register the mark in the foreign country first. When this happens, the U.S. trademark owner may have to pay a licensing fee just to use its U.S. mark in another country. Worse yet, the U.S. trademark owner may be entirely prevented from using the mark in that country.

The "bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark." 15 U.S.C. §1127.

For federal registration purposes, using a mark in "interstate commerce" is required.  Whereas "use in commerce" refers merely to commercial use in trade, "interstate commerce" occurs only when the commercial use in trade affects, either directly or indirectly, commerce that occurs across state lines. See the interstate commerce glossary entry for more information about the requirements of interstate commerce.

Interstate commerce is required whether applying for a trademark under an actual use application, filing an Intent to Use application, or filing a renewal application. With an Intent to Use application, however, you don't have to demonstrate actual use until sometime within six months after publication (or later if you file an extension).

State and common law marks are protected even when there is no interstate commerce.

In order to qualify for protection, a trademark must be used in commerce. For the purposes of federal registration, use in commerce alone is insufficient, and use in interstate commerce is required.

Proper use of a trademark is necessary to maintain its protectable interest.  Marks that are improperly used are subject to claims of genericide and other attacks.

To use a mark properly, the trademark owner should: (1) always use the mark as an adjective of the underlying product rather than as a noun, as in "people prefer CLUB HOUSE brand steaks" rather than "people prefer CLUB HOUSE;" (2) Italicize, underline, capitalize or boldface the mark when it appears in text, in order to set it out from the generic word for the product (3) affix the mark to the goods or services; (3) provide proper notice of trademark rights.

According to this doctrine, the functional features of a trademark, or those features having primarily a utilitarian purpose, are not granted trademark protection. Where the product requires the trademarked element in order to function optimally, then that element may not be protected by trademark law.Some courts have even barred trademark protection where product features such as shape, color or design increase the aesthetically pleasing nature of the product such that they improve the product's saleability. In recent years, however, the courts have moved away this rigid application of aesthetic functionality. Instead of barring features that serve as an "important ingredient" in the saleability of a product, courts have instead adopted a test inquiring whether the allegedly functional design is "necessary to effective competition." If so, then that element is deemed functional, and thus not protectable as a trademark.

The validity of a trademark is judged primarily by its ability to identify for consumers the source of a good or service and distinguish that source from other brands. However, there are some instances where a mark serves this function perfectly well, but is still invalid as a trademark. This occurs when the mark itself is forbidden.

An affidavit required on many submissions to Trademark Office in which the affiant declares the truth and accuracy of statements made therein.  In certain instances, a declaration can be used instead of a verification.

Warehousing is the practice of making periodic, "token use" of a mark over time, with no present intent to commercially exploit the mark. Prior to the 1988 revision of the Trademark Act in which Intent to Use applications became available, warehousing was used to secure early priority rights in a mark without actually using the mark. Currently, warehousing is still used to circumvent the law of trademark abandonment which states that a mark is abandoned, and thus no longer protectable, when the owner discontinues its use with no intent to resume use in the reasonably foreseeable future.  Technically, "token use" is insufficient use to establish trademark rights, however, circumvention of the actual use requirement can be hard to detect.

Willful infringement occurs when the user of a mark knows or should have known that the mark was already being used by another. While a willful infringement defendant is liable for monetary damages, an innocent infringer can only be forced to stop using the mark.

Willful infringement is presumed (though can be rebutted) when the mark that is infringed is federally registered. Furthermore, recent court decisions suggest that the user of a mark may be deemed to be a willful infringer if they fail to conduct a reasonable search of existing similar trademarks prior to adopting a mark.

Words, called lingual marks, are the most common form of trademark. Whether single words, phrases, hyphenated words or made-up words, all lingual marks are able to receive legal protection, as long as they meet the requirements of a trademark.

The meaning of a word or phrase used as a trademark matters significantly. The closer the word's meaning is to the product being sold, the less distinctive that word is for trademark purposes. Distinctiveness is a major factor in a trademark's legal strength.

A "zombie" trademark is one that was once considered "dead" or abandoned, but has since been awakened from the dead (i.e. its trademark legal status is active and enforceable). There is a presumption given to anyone challenging a zombie mark that three years of non-use means the mark is no longer enforceable.  This implies, that anything less than three years is given the presumption that the mark it still enforceable.  What's more, even after three years of non-use, the trademark owner may be able to demonstrate its trademark is alive and well, it's just that the owner has the burden of proving there was an intention to continue using the trademark, which may not be easy to prove. 


See Also

Trademark Abandonment

Use in Commerce

This doctrine can be used to extend a trademark's prior rights into a new geographical area, or into a new product line.  The doctrine applies when a company is already using their trademark in one area, and the newly expanded-into area is a "natural" extension of the prior use.  In other words, consumers must be likely to believe that use of the mark in the new area is by the same source using that mark in the old area.

Some courts additionally require a showing that the prior user planned to expand its operations and use of the mark into the newly claimed area prior to the opposing party arriving in that area.