Trademark Glossary Entries (D Through F)
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D

Damages
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.
Database, trademark
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 at http://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.
Date of first use
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.
Date of first use in commerce
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.
Dates, priority
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.

Deceptive marks
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
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.
De facto secondary meaning
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.
Defendant's profits as damages
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.
Defenses to dilution
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.
Defenses to infringement
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.
Depository libraries
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.
Description of goods or services
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.
Descriptive marks
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."
Designs, protection of
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 Statutes
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.
Disclaimer, in a trademark registration
A statement that the trademark applicant or owner does not claim exclusive rights in an unprotectable component of a federally registered mark.
Disclaimer, in conjunction with use of another person's 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.
Distinctiveness
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.
Distinctiveness requirement
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.
Documenting First Use
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.
Domain name
A component of an Internet address (URL) which is comprised of a top-level domain such as .com or .net and a second level domain, which is the part the domain name owner gets to make up. In Pliam Law Group, PA's URL,
http://www.pliam.com, "pliam" is the secondary level domain, and ".com" is the top level domain. Together, "Pliam" and ".com" make up the entire domain name. 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.
Domain name hijacking
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.
Domain dispute policy
This refers to a policy developed by Internic (the body that registers most 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 Internic has had to contend with. 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. Internic's 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 Internic's current dispute policy is whether or not to register design features of marks. Internic's policy currently excludes from its protection any trademarks incorporating a design. It appears from the plain language of the policy that Internic 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.


Domestic representative
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.
Drawings, protection of
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.
Drawing page of trademark application
All applications for trademark are required to be accompanied by a separate drawing page, even if the mark being registered is strictly text. In the case of lingual or text marks, you need only type the mark IN ALL CAPS. The trademark office has an elaborate set of very rigid regulations for submitting the drawing page, including codes for coloring, and a size limitation of 4" x 4".

E

Encircled-R (The symbol)
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 Principle 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.

Equitable defenses
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.
Equitable relief
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
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).
Evaluation of Search Results
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, PA provides legal opinions at a reasonable fee. For more information, visit our web site at http://www.pliam.com.
Examination, of trademark application
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.
Examiner's amendment
An amendment made by an Examining Attorney to the applicant's federal trademark application.
Examining Attorney
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.
Exceptional cases
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.
Exclusion orders from the International Trade Commission (ITC)
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.
Exclusive license
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.
Exclusive licensee
The party to whom a trademark owner grants an exclusive license to use a trademark.
Exclusive licensor
The trademark owner who is licensing its trademark for exclusive use by one other company.
Exclusive ownership
Ownership in a mark which is free of any claim of right by any other party.
Exclusive rights
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.

F

Fair Use
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.
Famous mark
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)).
Fanciful terms (coined terms)
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.
Federal versus state trademarks
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.
Filing date, obtaining:
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.
First Amendment
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 is often worthwhile. Where the First Amendment defense most frequently arises is in the context of parodies involving trademarks.
First use date
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. If a dated photograph or advertisement is not available, another method of documenting first use is 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.
Forbidden marks
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.
Foreign applicants, requirements of
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.
Foreign equivalents, doctrine of
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.
Foreign terms, trademark protection of
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
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.
Functionality doctrine (utilitarian functionality)
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.

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