Chapter 13: Definitions Trademark Law


In this section we provide definitions of the words and phrases commonly used in the world of trademark law. Note that we use the word “mark” to refer broadly to trademarks, service marks, certification marks and collective marks. The term “mark” generally encompasses any means by which a service or product is identified and distinguished from competing products and services, as long as the mark’s purpose is to promote the underlying product or service in the marketplace. We also use “mark” to refer to trade dress to the extent it is serving the function of a trademark or service mark.

abandonment of mark

An owner’s exclusive right to use a trademark or service mark can be lost if the mark is considered to be abandoned. Abandonment commonly occurs when the mark is no longer used in commerce and there is sufficient evidence that the owner intends to discontinue use of the mark.

Under the Lanham Act, a mark registered with the U.S. Patent and Trademark Office is presumed abandoned if it is not used for a continuous period of three years or more. This means that the mark’s owner cannot prevent someone else from using the mark unless the owner can convince a court that the mark really wasn’t abandoned, despite the lack of use. Acceptable reasons for non-use of a mark are:

  • temporary financial difficulty

  • bankruptcy proceedings, or

  • the need for a product revision.

A company can also prove that a mark is not abandoned by furnishing documents that indicate the company intended to resume use or by the continued existence of customer goodwill. For example, the owners of the Rambler trademark (for cars) were able to demonstrate that there were many Rambler autos (and related supplies) bearing the mark still in use, signs featuring the trademark were still posted and many consumers still wanted Rambler products as evidenced by Rambler fan clubs. (American Motors Corp. v. Action Age, Inc., 178 U.S.P.Q. 377 (TTAB 1973).)

The typical abandonment scenario occurs during registration when an applicant is denied registration because the PTO examiner has found a similar mark. The applicant knows that the similar mark has not been used for many years. It is up to the applicant to demonstrate to the PTO that the other mark has been abandoned because of nonuse. If the applicant can prove abandonment and the owner of the allegedly abandoned mark cannot prove intent to resume, the mark will be considered abandoned and unprotectible. Proving abandonment is often difficult and expensive. It is also affected by a procedure known as Section 8 affidavit, a document that must be filed by the owner in order to demonstrate continued use. The abandonment presumption is located in the definitions section of the Lanham Act. (15 United States Code, Section 1127.) Abandonment of a trademark is different from abandonment of a trademark application. In the latter case, the owner of a mark simply fails to proceed with a trademark application.

Related terms: continuous use of mark; licensing of marks; loss of mark.

Acceptable Description of Goods and Services Manual

When filing an application for federal trademark registration or deciding whether one mark infringes another, it is useful to classify the mark in question according to the kinds of goods or services it is used with. There are 42 classes of goods and services (36 for goods, six for services) that are used by the PTO for this purpose. Because of the limited number of classes, it is often difficult to tell which class a particular good or service fits within. To help this process along, the International Trademark Association has published the Acceptable Description of Goods and Services Manual, an alphabetical listing of hundreds of discrete goods and services with appropriate descriptions and suggested classification numbers. The Manual is available on the PTO’s website (www.uspto.gov).

affidavit of use

See Sections 8 and 15 Declaration.

Allegation of Use for Intent-to-Use Application, with Declaration

When a trademark application is filed on an intent-to-use basis, the actual registration won’t occur until you file a document with the PTO informing it that the mark is now in actual use, and pay an additional fee. The form to use for this purpose is called Allegation of Use for Intent-to-Use Application. The Allegation of Use form may be filed at any time prior to the date the PTO authorizes the publication of the proposed mark, and any time after the PTO issues a Notice of Allowance. It may not be filed between those two dates.

The Allegation of Use form is a combination of two previous forms—the Amendment to Allege Use form, which was used if the mark was placed in actual use before the PTO authorized publication of the mark in the Official Gazette, and the Statement of Use, which was used if the mark was placed into actual use after a Notice of Allowance issued.

Amendment to Allege Use

See Allegation of Use for Intent-to-Use Application, with Declaration.

Anticybersquatting Consumer Protection Act

The Anticybersquatting Consumer Protection Act (ACPA) was enacted in order to protect businesses against the increasingly common practice of cybersquatting (15 United States Code, Section 1125(d).) A cybersquatter registers a well-known trademark as a domain name, hoping to later profit by reselling the domain name back to the trademark owner. This new law authorizes a trademark owner to sue an alleged cybersquatter in federal court and obtain a court order transferring the domain name back to the mark’s owner. In some cases, the cybersquatter must pay money damages. In order to stop a cybersquatter, the mark’s true owner must prove all of the following:

  • the domain name registrant had a bad-faith intent to profit from the mark

  • the mark was distinctive at the time the domain name was first registered

  • the domain name is identical or confusingly similar to the mark, and

  • the mark qualifies for protection under federal trademark laws—that is, the mark is distinctive and its owner was the first to use the mark in commerce.

If the person or company who registered the domain name had reasonable grounds to believe that the use of the domain name was fair and lawful, they would avoid a court decision that they acted in bad faith. In other words, if the accused cybersquatter can show a judge that he had reason to register the domain name other than to sell it back to the trademark owner for a profit, then a court will probably allow him to keep the domain name because the name was not acquired in bad faith.

Related terms: cybersquatting; domain names; Internet, effect on trademark law.

anti-dilution statutes

See dilution of mark.

arbitrary mark

Sometimes a word or phrase used as a mark appears to be arbitrary (random) in the context of its use. Arbitrary marks are generally considered to be memorable because of their very arbitrariness. For example, Penguin (books), Arrow (shirts) and Beefeater (gin) are arbitrary terms in relation to the products they advertise, and therefore stand out because they are original and surprising. These qualities entitle them to the highest degree of trademark protection available.

Related terms: distinctive mark.

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assignment of mark

An assignment is a transfer of ownership rights and good will associated with the mark. Assignments are most common when a company is sold. An assignment may also occur as part of a bankruptcy or may be used as a security interest when a business seeks to obtain a loan.

Once the assignment is made, the business buying the trademark rights (the “assignee”) becomes the owner, and the seller (the “assignor”) has no further ownership interest. On some occasions, an assignment may be transferred back to the original owner if certain conditions are met. The Lanham Act requires the assignment of a mark to be in writing. Assignments should be recorded with the U.S. Patent and Trademark Office, and the new owners can obtain new certificates of registration in their names.

Related terms: certificate of registration; good will; Lanham Act; ownership of mark in the U.S.

attorney fees in trademark infringement actions

The Lanham Act authorizes a court to award attorney fees only in cases of “exceptional” infringement. To qualify as such a case, the defendant must have acted willfully, intentionally or maliciously. This means there must be facts showing that the infringer was fully aware of the infringement and simply hoped to get away with it.

Attorney fees may also be awarded if infringement occurred as a result of a breach of contract or license that itself provides for attorney fees. In these cases, there is no need to show ill will, intent or malice.

Related terms: infringement action; innocent infringer; Lanham Act.

average, reasonably prudent, consumer

In deciding trademark conflicts, courts often try to imagine whether an average, reasonably prudent, consumer would likely be confused by the two marks. This viewpoint is particularly helpful in deciding:

  • if an infringed mark is distinctive enough to warrant protection by the court, and

  • whether the infringing mark would be likely to mislead or confuse the public.

If a court determines that a hypothetical consumer would be likely to remember the infringed mark because of its distinctiveness and also would be confused by the use of the infringing mark, then infringement may be found.

In a trademark infringement action where consumer confusion is alleged, the parties typically conduct consumer polls to discover the actual views of the “average consumer,” and introduce the results of such polls in support of their case.

Related terms: confusion of consumers.

award, use of trademark in ratings or

A company that receives a rating or award may desire to include information about that award (or an image of the award) in its advertising—for example a software company may want to feature a “World Class Award” from PC World Magazine in its ads or on its packaging. Because such uses are commercial and may confuse consumers, permission should be acquired before using another company’s trademark. Most companies that provide ratings or awards have guidelines for the use of their marks in advertising. Some require a written agreement from the user; some have a policy not to permit the use of their trademarks for other companies’ products regardless of the rating, review or award. For example, Consumers Union, the publisher of Consumer Reports, opposes use of its trademark in product advertisements.

Bureau of Customs

Under the U.S. Customs Act, a trademark owner whose mark is on the Principal Register may record the mark with the U.S. Customs Service. (19 Code of Federal Regulation Part 133, Subparts (A) and (B).) This authorizes customs inspectors to seize any products bearing infringing marks and to contact the mark’s owner. If the infringing importer agrees to remove the offending mark, or the mark’s owner waives the right to object, the goods will be released. Otherwise, they will be destroyed. As a practical matter, most customs enforcement occurs at the behest of trademark owners who conduct their own investigations and tip off the Bureau of Customs to the arrival of infringing goods.

Related terms: Principal Register; protection of marks under Lanham Act.

cancellation of registration

See opposing and cancelling a trademark registration.

certificate of registration

A certificate of registration is proof that a mark has been registered with the U.S. Patent and Trademark Office (PTO) on the Principal Register of trademarks and service marks. The certificate reproduces the mark and sets out the date of the mark’s first use in commerce. In addition, the certificate lists:

  • the type of product or service on which the mark is used

  • the number and date of registration

  • the term of registration

  • the date on which the application for registration was received at the PTO, and

  • any conditions and limitations that the PTO has imposed on the registration, such as restricting use to a certain marketing area to avoid conflict with another registered mark.

The certificate of registration substantially simplifies the task of obtaining relief from a court if it is necessary to file a trademark infringement lawsuit. Besides proving registration, the certificate will be accepted by a court as proof that the registration is valid and that the registrant owns the mark. The exclusive right to use the mark in commerce on the product or service is also specified in the certificate.

Related terms: ownership of mark in the U.S.; presumption of ownership; protection of marks under Lanham Act.

certification mark

A certification mark certifies regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics.

EXAMPLE: The California Certified Organic Farmers have established a standard to certify that food is free of pesticides. Farmers who meet these standards may use the CCOF certification mark on their food.

Certification marks have been described as a “special creature” of trademark law because a certification mark is never used by its owner. For example, the CCOF mark is owned by a voluntary trade association based in Santa Cruz, California. The group never uses the CCOF mark because it doesn’t sell products. Instead, California farmers who meet organic farming standards use the CCOF label in conjunction with their brand name. For example, if you purchased Molino-brand tomatoes, you would see the CCOF certification mark as well as the Molino trademark on the tomatoes.
A certification mark may attest to different qualities. For example, the mark can certify:

  • Safety. The certification mark UL indicates that electrical equipment meets safety standards of the Underwriters Laboratory.

  • Quality. Grass seed that includes the Lawn Institute Seal of Approval is certified as being “capable of yielding a fine-textured lawn which is normally perennial in the climate where marketed.”

  • Accuracy. The certification mark, SPER Certified, guarantees the accuracy of weather-forecasting equipment.

  • Materials Used. Clothing with the certification mark, Grown and Made in the USA, guarantees the apparel was made in the United States with cotton grown in the United States.

  • Mode of Manufacture. The Log Splitter Manufacturer’s Association certification mark indicates that a log-splitting device has been built according to the manufacturing standards established by the LSMA.

  • Regional Origin. The certification mark, Roquefort, authenticates that cheese was manufactured from sheep’s milk in the caves of Roquefort, France, according to long-established methods.

  • Source of Labor. ILGWU - UNION MADE certifies that a garment was manufactured by the International Ladies Garment Workers Union.

  • Morality. The Intelligent Sex Seal of Approval certifies that books and videotapes discuss or portray “sexual relations in a constructive and healthy manner as part of an intelligent non-degrading relationship between fully consenting adults.”

Certification marks are registered under the Lanham Act. The certifier (that is, the organization granting the certification) is the only party permitted to file the certification mark application. The certifier must submit a copy of the certification standards (that is, what it takes to qualify to use the certification mark). However, the PTO does not verify these standards. The owner of the certification mark is usually engaged solely in the certification process, but it is possible that the owner may also engage in sales or services. For example, the Rust-Oleum Company sells a rust preventive coating. The company also has a certification mark, Protected by Rust-Oleum, that certifies those who provide the rust preventative services.

Certification marks must be retained by the persons or groups originating them. Assigning or licensing a certification mark to others destroys any meaning the mark may have had, and constitutes an abandonment of the mark. Certification marks may be registered in the U.S. under the Lanham Act in the same manner as other marks.

Related terms: geographic terms as marks; protection of marks under Lanham Act; trademark, defined.

characters as trademarks

Fictional characters such as Mickey Mouse or Mr. Clean may serve as trademarks. All that is required is that the character be sufficiently distinctive or have acquired secondary meaning. Trademarked characters can be graphic or “drawn” characters such as the Pillsbury Doughboy, or characters portrayed by actors, such as “Eddie the Echo” (McDonald’s) or “Mr. Whipple” (Charmin bathroom tissue).

classes of goods and services

See International Schedule of Classes of Goods and Services.

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coined terms

Coined terms are invented words or phrases with no other meaning than to specifically act as a mark to identify a product or service in the marketplace. Coined terms generally are considered strong or distinctive marks, which means the courts will tend to be willing to protect them against unauthorized use. The easiest way to assure protection for a mark is to make up, or “coin,” a new word.

A coined term may consist of any combination of letters and/or numerals that are not already in use to identify or distinguish another product or service. Thus, “4711 water” is a coined phrase used as the trademark for a particular brand of cologne. Other common examples of coined terms are Sybex (publisher of computer books), “Kodak” (cameras), “Tylenol” (analgesic), “Maalox” (anti-acid medicine) and “Unix” (computer operating system).

Related terms: distinctive mark; strong mark.

collective mark

A collective mark is a symbol, label, word, phrase or other mark used by members of a group or organization to identify goods members produce or services they render. A common use of collective marks is to show membership in a union, association or other organization. Collective marks are entitled to registration and the same federal protection as other types of marks.

A collective mark differs from a trademark or a service mark in that use of the collective mark is restricted to members of the group. The mark’s primary function is to inform the public that specific goods or services come from members of a group, thus distinguishing them from products or services of nonmembers. However, the organization itself, as opposed to its members, cannot use the collective mark on any goods it produces. If the organization itself wants to identify its product, it must use its own trademark or service mark.

EXAMPLE: The letters “ILGWU” on a shirt is a collective mark identifying the shirt as a product of members of the International Ladies Garment Workers Union and distinguishes it from shirts from those made by nonunion shops. If the ILGWU actually started marketing its own products, however, it could not use the ILGWU collective mark to identify them.

Related terms: protection of marks under Lanham Act.

color used as mark

In 1985, a federal appeals court ruled that a single color—pink—could function as a trademark for fiberglass products. (In re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985).) This does not preclude every business from using pink, only other makers of fiberglass and related products. In 1995, the U.S. Supreme Court ruled that a single color—green—could function as a trademark for ironing pads. (Qualitex Company v. Jacobson Prods. Co., 514 U.S. 159 (1995).) The Supreme Court held that a single color is registrable if:

  • over time, consumers have come to view the color as an identification or the source of the product (rather than the product itself), and

  • the color has no function.

    EXAMPLE: In the Qualitex case, the product in question was a green-gold pad designed for dry cleaning presses. The green-gold color was not associated with dry cleaning pads as such, had no functional purpose, and operated only to identify the pads as originating with Qualitex. Once these facts were established, the court saw no reason why the color couldn’t qualify as a trademark as long as it could be shown that consumers relied on the color to identify the source of the pads.

If, on the other hand, a color has a function—for instance, the color blue used to signify a nitrogen content or the color yellow used to signify a type of drug that is always yellow regardless of the manufacturer—it won’t qualify as a trademark.

Related terms: color as an element; distinctive mark; trade dress; trademark, defined.

color as an element of a mark

Treating a particular color as a mark in its own right should be distinguished from the thousands of examples where color appears in combination with a graphic design or words to create a distinctive mark. For instance, IBM is often referred to as “big blue” because of the blue color of its famous IBM logo. And McDonald’s golden arch is well known not only because of its archness but also because of its color. The red tag associated with Levi’s blue jeans is still another example. If registering a mark in which color is claimed as a component, the applicant must submit a written description of the color and indicate where in the mark the color appears.

Related terms: color used as mark.

commerce that Congress may regulate

To qualify for registration and/or protection of a trademark under the Lanham Act, a mark must have first been used “in commerce that Congress may regulate.” The Lanham Act defines commerce as business or trade that the federal government, through the U.S. Congress, is authorized by the U.S. Constitution to control. Technically, this means that to qualify for protection under the Lanham Act, a business must do at least one of the following:

  • ship a product across state lines, as do most manufacturers, wholesalers and mail order businesses

  • ship a product between a state and a territory or a territory and another territory (for instance, between New York and Puerto Rico or between Puerto Rico and the Virgin Islands)

  • ship a product between a state or territory and another country (for instance, between California and Hong Kong or between Puerto Rico and Cuba)

  • advertise its business outside of its home state

  • conduct a service business across state lines, as do most trucking operations and many 900 numbers

  • conduct a service business in more than one state (Taco Bell, Chevron, Hilton Hotels) or across international or territorial borders, or

  • operate a business that caters to domestic or international travellers, such as a hotel, restaurant, tour guide service or ski resort.

    EXAMPLE: Geraldine Smith starts a small business in Vermont that brews a honey wine called “Wine of Geraldyne.” She will not be able to register this trademark with the U.S. Patent and Trademark Office unless the mark appears on the product itself and the product crosses state, territorial or international lines in an actual business transaction. Geraldine cannot, however, just send a bottle to Aunt Dinah in South Carolina for the purpose of satisfying the “commerce” requirement. The commerce must be genuine.

The reason for the “commerce” requirement is that Congress only has power under the commerce clause of the Constitution to regulate U.S. businesses to the extent they engage in interstate, interterritorial or international activity. Thus, the Lanham Act (the statute governing trademark registration) can only affect marks in commerce as defined here. Because Congress has no power under the commerce clause to affect marks used in only one state, the regulation of such marks is up to the individual states.

As a general rule, the PTO doesn’t question a registration applicant’s assertion that a mark is being used in “commerce,” which means the issue of commerce will arise only if the validity of the registration is called into question in an opposition or cancellation proceeding or in an infringement lawsuit. Also, as more businesses do commerce on the Internet, which by definition crosses state, territorial and international boundaries, commerce will become even less of an issue in the future than it is now.

Related terms: Lanham Act; state trademark laws; use of mark.

commercial name

See trade name.

Commissioner for Trademarks

The Commissioner for Trademarks is the title of the person who manages the trademark division of the U.S. Patent and Trademark Office. The previous title for this position was the Assistant Commissioner for Trademarks.

Related terms: Director of the U.S. Patent and Trademark Office; U.S. Patent and Trademark Office.

Community Trademark

Effective April 1, 1996, the European Union started accepting applications for a community trademark that would be good in 15 EU countries. To qualify for registration, the proposed mark must be acceptable in all 15 countries. Applications are to be submitted to the Office for Harmonization of the Internal Market in Alicante, Spain. For more information on the Community Trademark, visit the website at http://oami.eu.int.

competing and non-competing products

When the sale of one product might preclude the sale of another product, the products are said to be competing. For instance, if one company sells a car, it obviously competes with another company’s ability to sell a similar car, but it may also compete with the sales of pickup trucks or motorcycles.

Products are non-competing when consumers could reasonably purchase both items—that is, the purchase of one is not at the expense of the other. For example, perfume does not compete with long-haul trailer trucks.

If the marks used on two competing products or services are similar enough to potentially confuse consumers, the owner of the mark found to be infringed upon may sometimes be awarded money damages measured by the amount of profits the other mark’s owner earned as a result of the infringement (called defendant’s profits). The owner may also be entitled to prevent future infringing use of the mark by the infringing party.

When goods are found to be not competing but are related enough to warrant a finding of potential consumer confusion (for example, they are distributed in the same channels to the same consumer base), the mark’s owner can collect any actual damages, and also prevent the other party from using the mark in the future. However, defendant’s profits are generally not awarded in this situation because the infringer by definition did not earn its profits at the expense of the mark’s owner.

Related terms: infringement action; related products and services.

composite mark

Marks that consist of several words are called composite or hybrid marks. The strength of a composite mark depends on the effect of the whole mark, not just its individual terms. That is, every term in the mark may be ordinary, and yet the whole may be distinctive. For example, the slogan “Don’t Leave Home Without It” is a composite mark owned by American Express. Each term is ordinary, but the whole creates a distinctive and therefore protectible mark. No other financial or travel business can use this phrase, although all of the individual terms are available for use without restriction.

When regisistering a composite mark with the U.S. Patent and Trademark Office, the applicant is usually required to disclaim ownership of the unregistrable parts in order to register the mark as a whole. This may mean that each individual term in the mark is disclaimed, even while ownership in the entire mark is asserted.

Related terms: disclaimer of unregistrable material.

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concurrent registration

In some circumstances, two or more owners of identical or similar marks may be allowed to register their marks with the U.S. Patent and Trademark Office (PTO). This can happen if:

  • both marks were in use in commerce before either owner applied for registration, and

  • the likelihood of consumer confusion is slight, either because the products or services to which the marks will be connected are not closely related or because they will be distributed in entirely different markets.

When allowing concurrent registrations, the PTO may specify marketing and use limitations on each of the marks to preclude consumer confusion. For example, the PTO may restrict the use of one mark to ten western states and allow the use of the other mark in the rest of the states. Or the use of the respective marks may be restricted to their original products or services.

Related terms: competing and non-competing products; interference; related products and services.

confusion of customers

In order to stop trademark infringement, the senior user—the first business to adopt and use a particular mark in connection with its goods or services—must prove likelihood of confusion. When determining likelihood of confusion, courts use several factors derived from a 1961 Supreme Court case. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).) These factors, sometimes known as the “Polaroid factors,” may vary slightly as federal courts apply them throughout the country. The factors are intended as a guide, and not all factors may be particularly helpful in any given case.

  • strength of the senior user’s mark—the stronger or more distinctive the senior user’s mark, the more likely the confusion

  • similarity of the marks—the more similarity between the two marks, the more likely the confusion

  • similarity of the products or services—the more that the senior and junior user’s goods or services are related, the more likely the confusion

  • likelihood that the senior user will bridge the gap—if it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion

  • the junior user’s intent in adopting the mark—if the junior user adopted the mark in bad faith, confusion is more likely

  • evidence of actual confusion—proof of consumer confusion is not required but it is powerful evidence

  • sophistication of the buyers—the less sophisticated the purchaser, the more likely the confusion, and

  • quality of the junior user’s products or services—in some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.

    Related terms: initial interest confusion; infringement.

constructive notice of mark under Lanham Act

When a mark is placed on the federal Principal Register, the law assumes that all other mark users anywhere in the U.S. will know that someone else owns that registered mark. This means that even if a second user has no actual knowledge of the registered mark, such knowledge will be implied because the Principal Register is a public record, available for inspection.

This constructive (assumed) notice precludes anyone else’s legal use of the mark anywhere in the U.S., unless such use began before the registration. Assuming the mark’s owner affixed proper notice of registration to the mark (usually an “R” in a circle— ), the constructive notice also means the trademark owner qualifies to recover large (treble) damages and perhaps attorney fees.

The courts will generally refuse to find infringement if the marks in question are used in geographically separate markets. However, if the owner of a registered mark later chooses to expand into a market in which the infringing mark is being used, the infringer will have to give up the mark, unless its use predated the registration. As a result, it is always wise to do a trademark search before selecting a new mark to make sure the mark is available.

EXAMPLE 1: A California comedy group puts together a satirical revue about lawyers called Lawbotics and performs it in a number of Western states. The California group successfully registers “Lawbotics” as a service mark under the Lanham Act. Anti-lawyer jokes are popular everywhere, and a group of Vermont comedians, never having heard of the California revue, uses the same name for its act and starts packing them in along the Eastern seaboard. Because the California show was registered under the Lanham Act before the Vermont group used the mark, the Vermonters have infringed the California group’s service mark. Also, because registration provides “constructive notice” of prior ownership, the Vermont group will be considered a deliberate infringer if the matter gets to court, even if it was unaware of the prior use. However, the matter will probably only get to court if the California Lawbotics act gets bookings anywhere near the Eastern seaboard.

EXAMPLE 2: Assume the same facts, but this time the Vermont Lawbotics group produces a CD-ROM that is nationally distributed. The California group could move against the infringement. California Lawbotics would be entitled to collect damages for willful infringement because the mark on the CD-ROM would now be in use in California, creating a high likelihood of consumer confusion.

Related terms: geographically separate market; infringement action; Principal Register.

continuous use of mark

A mark that is continuously used for five years after placement on the federal Principal Register may qualify as “incontestable.” That means that the mark may no longer be challenged by another user on the ground that it is too weak (ordinary) to warrant legal protection. Any showing of a substantial interruption in the use of the mark during the five-year period may, however, prevent the mark from becoming incontestable.

Related terms: duration of federal trademark registration; incontestability status.

contributory infringer

Like a criminal accomplice, a contributory infringer is a party who furthers or encourages the infringing activity of another. For example, a store that sells records carrying an infringing mark is considered a contributory infringer, as is the wholesale distributor of the records and any other person or business whose actions contribute to the infringement.

Contributory infringers are not liable for damages or defendant’s profits as long as they were innocent (they didn’t know about the infringement), but they may be enjoined (barred) from any further contributory activity. Thus, the record store owner might have to stop selling the infringing records unless the offending mark were removed. But if a contributory infringer knows of the infringement, he or she can be held liable on the same basis and in the same amount as the principal infringer.

Related terms: infringement action; innocent infringer; publishers of advertising matter.

counterfeit

Counterfeiting is the act of making or selling lookalike goods or services bearing fake trademarks, for example, a business deliberately duplicates the Adidas trademark on shoes. Likelihood of confusion is self-evident in counterfeiting because the counterfeiter’s primary purpose is to confuse or dupe consumers. Even when a buyer knows that the product is a fake, the business is still liable for counterfeiting because the product can still be used to deceive others. Counterfeiting is not limited to consumer products such as watches and handbags. A website that copied the Playboy Bunny logo for adult sex subscription services was assessed $10,000 for trademark counterfeiting. (Playboy Enterprises Inc. v. Universal Tel-A-Talk Inc., 1999 U.S. Dist. LEXIS 6124 (E.D. Pa. 1999).)

The remedies for trademark counterfeiting under the Lanham Act are much harsher than for traditional trademark infringement and only apply if the counterfeiter duplicated the trademark on the goods or services for which the trademark was federally registered. For example, it is not counterfeiting to put the Gucci mark on automobile seat covers as these are not goods for which Gucci has a registered trademark.

An offer to sell counterfeit products can also trigger liability as a counterfeiter. For example, an individual offered to sell counterfeit jeans and provided a sample to an undercover police officer. Proof of actual production or sale of the jeans was not necessary to prove counterfeiting.

Related terms: confusion of consumers; related products and services; same or similar mark.

Customs, Bureau of

See Bureau of Customs.

cybersquatting

The practice that’s come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the Internet. Some entrepreneurial souls registered the names of well-known companies as domain names with the intent of selling the names back to the companies when they finally realized the economic potential of the Internet. Panasonic, Fry’s Electronics, Hertz and Avon were among the early victims of cybersquatters. Opportunities for cybersquatters are rapidly diminishing, because businesses now know the importance of registering domain names and because there are two legal mechanisms of wresting the name from the cybersquatter.

A victim of cybersquatting in the U.S. can now sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA) or can fight the cybersquatter using an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN). The ACPA defines cybersquatting as registering, trafficking in, or using a domain name with the intent to profit in bad faith from the goodwill of a trademark belonging to someone else. The ICANN arbitration system is considered by trademark experts to be faster and less expensive than suing under the ACPA and the procedure does not require an attorney. For information on the ICANN policy, visit the organization’s website (www.icann.org).

Related terms: Anticybersquatting Consumer Protection Act; dilution of mark; domain name; Internet, effect on trademark law; UDRP.

damages in trademark infringement cases

As a general rule, when a mark’s owner proves that the mark has been infringed, a court will order the infringer to compensate the owner for actual losses caused by the infringement (for instance, lost profits from lost sales or loss of good will) and also order that the infringement cease.

If the infringed mark was federally registered and the owner provided proper notice of registration when using the mark (that is, “ ” or “Reg. U.S. Pat. Off.”), a court is also authorized under the Lanham Act to award the owner:

  • treble damages—that is, up to three times the actual money damages suffered as a result of the infringement (37 United States Code, Section 1117)

  • defendant’s profits—the profits made by the defendant from the infringing activity (usually only awarded if infringement was deliberate on products or services that compete in the marketplace), and

  • attorney fees, in clear-cut cases of deliberate infringement.

The court may not, however, award the owner of the infringed mark defendant’s profits and money damages on the same lost sales.

Related terms: deliberate infringer; federal trademark registration; infringement action; trademark, defined.

deceptive terms as marks

Any mark that is deceptive, misleading or just plain false is not entitled to protection under the Lanham Act or under most state law trademark protection statutes. For example, a trademark that suggests chocolate in a product that contains no chocolate is deceptive and so not protectible as a valid mark. Likewise, any mark that uses the word “champagne” would be considered deceptive unless the product originated in the Champagne region of France. For this reason, domestic “champagnes” are usually referred to as “sparkling wines.”

Related terms: geographic terms as marks; prohibited and reserved marks under Lanham Act.

defendant’s profits

Profits earned by a defendant as a result of infringing a mark may be awarded to the owner of a mark federally registered under the Lanham Act if:

  • the owner placed proper notice of registration next to the mark (that is, “ ” or “Reg. U.S. Pat. Off.”)

  • the infringement was deliberate rather than innocent, and

  • the underlying goods or services competed with each other in the marketplace.

Awarding defendant’s profits to the injured party prevents an infringer from realizing any gain from infringement.

To recover defendant’s profits, the owner only needs to prove the amount the defendant earned from the sales of the goods or services. Then, the defendant is given the opportunity to establish his or her costs (for instance, cost of production, sales attributable to other factors, and so on) and deduct them from the gross sales amount to arrive at the amount of profits.

Related terms: competing and non-competing products; damages in trademark infringement cases; related products and services.

deliberate infringer (or willful infringer)

Anyone who uses a mark with actual or constructive notice that the mark is owned by someone else is called a deliberate infringer. Deliberate infringers are generally liable for the harm their infringement causes to the mark’s rightful owner, as well as for profits that they made from their infringing activity. In addition, deliberate infringers may be liable for treble (triple) damages if the infringement was flagrantly willful.

As a general rule, an infringement will be deemed deliberate if it begins after the mark in question has been federally registered, because the infringer is deemed to have notice of the existing mark.

Related terms: constructive notice of mark under Lanham Act; contributory infringer; innocent infringer.

descriptive mark

A descriptive mark is one that describes the type or characteristics of the product or service to which it’s attached. Examples are: “Beer Nuts,” “Chap Stick,” “FashionKnit,” “Bufferin,” “Tender Vittles” and “Rich ’n Chips.” In each of these examples, the names focus more on describing some aspect of the product than on distinguishing it from others in the public’s mind.

Descriptive marks are considered ordinary and therefore weak. Weak marks do not merit much judicial protection because a mark that describes the characteristics of a product or service does not effectively distinguish it from similar products or services offered by others. Protecting descriptive marks does not fulfill the primary purpose of the trademark laws, which is to protect marks that operate as indicators of origin. Also, the law doesn’t want to grant a trademark owner the exclusive use of words and phrases that are in common use as descriptive adjectives, because that would limit others’ legitimate need to use such a word in their advertising. A descriptive mark will only be protected under trademark law if it achieves secondary meaning—that is, it becomes distinctive because consumers associate the mark with specific goods or services.

Marks that are judged to be descriptive and which do not have secondary meaning do not qualify for placement on the Principal Register under the Lanham Act. Instead, they are placed on a list called the Supplemental Register, which offers much less protection than the Principal Register. After a descriptive mark has been in continuous use for five years, however, it can be moved to the Principal Register under the theory that it has developed secondary meaning: it has become a well known identifier of a product or service through public exposure. At that point, a descriptive mark does act to distinguish certain products or services from others.

If a descriptive mark is mistakenly placed on the Principal Register by the U.S. Patent and Trademark Office, another party may challenge the mark’s validity up until the time the mark becomes incontestable (five years on the Principal Register). Once incontestability occurs, the mark is immune from a challenge on the ground that it is descriptive.

Related terms: incontestability status; secondary meaning; Supplemental Register.

dilution of mark

Dilution means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of:

  • competition between the owner of the famous mark and other parties, or

  • likelihood of confusion, mistake, or deception (15 United States Code, Section 1527).

Dilution is therefore different from trademark infringement because trademark infringement always involves a probability of customer confusion whereas dilution can occur even if customers wouldn’t be misled. For example, if Fred starts selling a line of sex aids named “Microsoft,” no consumer is likely to associate Fred’s products with the original Microsoft. However, because Microsoft has become such a strong and famous mark, the use of the word on sex aids would definitely trivialize the original Microsoft mark (dilute its strength by tarnishing its reputation for quality or blurring its distinctiveness).

Until 1996 there was no federal law against trademark dilution. And only about half the states provided some recourse—usually an injunction against further use of the mark. In January 1996, however, the Federal Trademark Dilution Act of 1995 was signed into law (15 United States Code 1125(c); see statutes at the end of this part). As with the state statutes, this new federal law applies only to famous marks, and provides primarily for injunctive relief (a court order requiring the infringing party to stop using the mark). However, if the famous mark’s owner can prove the infringer “willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark,” the court has discretion to award the owner attorney’s fees and defendant’s profits as well as actual damages. In March 2003, in a case involving Victoria’s Secret, the Supreme Court ruled that a trademark owner making a dilution claim under the federal dilution act must prove actual harm—that is, that consumers actually believed that the mark was tarnished or blurred by the second use—not the likelihood of harm.

While it is still possible to sue for dilution under a state statute, most actions to stop dilution are now brought under the new federal law. One exception to this is when use of the famous mark also tarnishes its reputation. For example, in the Microsoft sex aid example, the association of “Microsoft” with sex aids may fairly be said to detract from the dignity of the Microsoft mark (there is little room for humor in the commercial world). Under state statutes, an action may be brought for tarnishment as well as dilution, whereas the federal act does not speak to tarnishment at all, although many observers believe that the courts will interpret the statute to include it as a basis for relief.

Related terms: famous marks; Victoria’s Secret case.

Director of the U.S. Patent and Trademark Office

This is the title of the person who runs the U.S. Patent and Trademark Office, a branch of the U.S. Department of Commerce. The full title is actually: Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Prior to 2000 the title for this position was the Commissioner of Patents and Trademarks.

Related terms: Commissioner for Trademarks; U.S. Patent and Trademark Office.

disclaimer of trademark use

A disclaimer is a statement that disassociates any connection created by the use of another business’s trademark. A disclaimer, by itself, cannot guarantee that a trademark use is permissible. However, courts have recognized prominently placed disclaimers as a factor in reducing consumer confusion. An effective disclaimer must be:

  • prominently placed. It must be reasonably close to the other business’s trademark so that a consumer is likely to read the statement when viewing the trademark.

  • permanently affixed. Detachable tags and labels will not provide adequate notice.

  • capable of being read and understood. The disclaimer must provide a clear statement that the companies and their goods are not associated, and

  • have the effect of minimizing confusion. Many courts seek proof that the disclaimer actually has the desired effect. For this reason, a company may want to test its disclaimer on consumers to be certain it will have the desired effect. Statements such as “unauthorized” may be too general to avoid consumer confusion.

    EXAMPLE: A publisher advertised a Godzilla filmography book. The book’s front cover included the statement, “Unauthorized.” A brief disclaimer was included on the back cover. The owner of the Godzilla trademark sued for copyright and trademark infringement. The court ruled in favor of the trademark owner; the publisher’s disclaimer was inadequate because the word “unauthorized” conveyed limited information. An appropriate disclaimer would have been: “The publication has not been prepared, approved, or licensed by any entity that created or produced the original Toho Godzilla films,” and should have been printed on the front cover and spine of the book in a distinguishing color or typestyle. Toho Inc. v. William Morrow and Co., 33 F. Supp. 2d 1206 (C.D. Cal 1998).

disclaimer of unregistrable material

Often a trademark will consist of a distinctive word (for instance, “Nolo”) in combination with one more unprotectible terms (such as the “.com” in Nolo.com). Or the entire mark may consist of unprotectible terms that taken together are distinctive because of how the terms are combined.

When owners of these types of marks seek to register them with the PTO, the PTO will normally require the applicants to “disclaim” (agree to give up any claim to) ownership of the unprotectible terms, even though the mark itself would be registered. Thus, Nolo had to disclaim “.com” and the owner of “Snappy Salsa” probably would have to disclaim Salsa. These disclaimers make it clear that other businesses are free to use the disclaimed terms, as long as they don’t use them in a way that would conflict with the distinctive aspects of the registered mark.

Related terms: composite mark; geographic terms as marks; protection of marks under Lanham Act.

disparaging mark

See prohibited and reserved marks under Lanham Act.

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distinctive mark

A mark that is unusual in the context of its use—and therefore memorable—is considered distinctive. Some marks are created to be distinctive and typically consist of terms that are arbitrary (Target Stores), fanciful (Midas Muffler), suggestive (Jaguar cars) or coined (Reebok shoes). In addition, mundane or common marks—typically peoples’ names, geographic designators and descriptive terms—can become distinctive if they become well known over time (such as Microsoft Windows).

Distinctive marks excel in distinguishing their products or services from competing ones, which qualifies them for maximum judicial protection under state and federal laws. Because of this protection, distinctive marks are considered to be legally stronger than are marks considered common or ordinary, because they describe the product’s qualities (descriptive marks), use the owner’s name or are in widespread use for the particular product or service (in common use).

For example, any mark using the term “Kodak” would be considered infringing, since “Kodak” is a very strong mark, and has no meaning other than as a mark. On the other hand, a mark with a common term like “data” will probably not infringe on another use of “data,” since that word is already in wide use among large numbers of high-tech businesses.

A mark must be distinctive to qualify for placement on the Principal Register under the Lanham Act. A descriptive mark will only be protected under trademark law if it achieves secondary meaning—that is, it becomes distinctive because consumers associate the mark with specific goods or services.

Examples of Distinctive Marks

Below is a chart showing examples of the different categories of distinctive trademarks. Look at it carefully to see if these distinctions make sense to you.

Suggestive

Fanciful/Arbitrary

Coined

Verbatim computer discs

Jellibeans skating rink

Barbasol shaving lotion

Suave shampoo

Penguin books

Curel hand lotion

Accuride tires

Ajax cleanser

Reebok shoes

Glacier ice

Domino sugar

Exxon oil

Greyhound bus

Apple computers

Nyquil cold medicine

Coppertone tanning lotion

Nova TV series

Amtrak trains

Roach Motel insect trap

Banana Republic clothes

Kodak film

Wearever cookware

Beefeater gin

Blistex lip balm

Maternally Yours clothes

Arrow shirts

Maalox antacid

Esprit clothes

Hang Ten clothes

Tylenol pain reliever

Q-tips

Hard Rock Cafe

Actifed antihistamine

7-Eleven stores

Camel cigarettes

Liquid Paper

Ivory soap

Chicken of the Sea tuna

Double Rainbow ice cream

Wrangler jeans

The Icing apparel

L.A. Gear shoes

Tea Rose flour

Cachet clothes

Guess? jeans

Brim Coffee

Reprinted with permission from Trademark: Legal Care for Your Business and Product Name, by Stephen Elias (Nolo).

Related terms: arbitrary mark; coined terms; descriptive mark; dilution of mark; generic mark; Principal Register; secondary meaning; strong mark; suggestive mark.

domain names

How do customers find businesses on the Internet? Every business on the Web has what’s called a domain name. The domain name is a unique “address” that computers understand, and so if you enter a particular domain name in a Web browser, the computer will know what to do: it links your computer with the website (business location) connected with the domain name you entered.

Consider www.nolo.com. The letters www (World Wide Web) are automatically a part of every domain name. The middle part—Nolo—is the unique name that you select and register for your business.

When it comes to the last part of a domain name—.com, in our example—there are currently (March 2003) ten choices:

  • .com, for commercial enterprises

  • .edu, for educational institutions

  • .gov, for governmental agencies

  • .net, for network-related entities

  • .org, for nonprofit organizations

  • .biz, for businesses

  • .info, for information providers,

  • .name, for individuals.

  • .aero, for the air-transport industry, and

  • .coop, for business cooperatives.

The Internet Corporation for Assigned Names and Numbers (ICANN) the agency that oversees domain name procedures, has approved two more suffixes, which should be available by the end of 2003. They are:

  • .pro, for professionals, such as accountants, lawyers and physicians, and

  • .museum, for museums

For up-to-date information about their status, go to www.icann.org/tlds.

Keep in mind that the guidelines for many of these suffixes are not strictly enforced. For example, anyone can acquire a .com, .net, .org, .biz or .info domain name regardless of the type of business they operate. But strictly enforced standards put the .edu and .gov suffixes in the hands of government and educational institutions respectively. Similarly, the .name extension is for individuals, not businesses. .Coop, .aero, .museum and .pro are also restricted—for example, an .aero registration will be issued only to a business in the air-transport industry.

Most businesses in this country have chosen a .com designation. In fact, registrations for .coms have outpaced any other by 10 to one. While it’s dangerous to predict the future, many observers believe that the preference for .com will continue. Rightly or wrongly, business people seem to feel that the .com designation provides familiarity to consumers and confers an extra measure of prestige on the business using it.

A domain name can be registered under several suffixes—for example, nolo.com, nolo.net and nolo.org.

Every country has a country code. For example, the country code suffix for the United States is .us. For France it’s .fr and for Greece it’s .gr. The rules for obtaining one of these vary from country to country. Your business may qualify for a country code suffix even if it’s not physically present in that country. Still, almost all U.S. businesses (and most other places as well) prefer a generic suffix such as .com.

Occasionally, a business will choose a country code because the letters have some supposed promotional value. For example, the country code for Tuvalu is .tv, making it possible to acquire www.comedy.tv as a domain name. Similarly, the country code for Moldova is .md, so a doctor can nail down www.johnsmith.md. The country code for Andorra is .ad, making it a popular choice for commercial advertising businesses.

For now, the use of country codes is considered a novelty, outside mainstream business practice. In addition, many nations place additional burdens on registrants—for example, to obtain an Andorran .ad, you must register the business name as a trademark in Andorra.

Because each domain name must be unique—so that all the computers attached to the Internet can find it—it is impossible for two different businesses to have the same domain name. If, when Nolo applied for its Web address, another business had already grabbed Nolo as its second-level domain name, Nolo would have had to come up with something at least a little different.

The easiest way is to check if a domain name is available is at one of the dozens of online companies that have been approved to register domain names. A listing of these registrars can be accessed at either the InterNIC site (www.internic.net) or at the ICANN site (www.icann.org). ICANN is the organization that oversees the process of approving domain name registrars. Every registrar provides a searching system to determine if a domain name is available. Type in the domain name choice and the registrar will determine if it is available.

In addition to determining whether a domain name is available, it is possible to locate information about the owner of the domain name. A simple way to check ownership is to use www.whois.net. Type in the domain name, and the website provides the contact information supplied by the domain name registrant.

Beware that some registrants, especially those acting in bad faith, may supply false information about domain name ownership and in these cases, there’s not much that can be done to track down the domain name holder. This lack of information should not stop those pursuing a cybersquatter—a speculator who is holding a domain name for ransom. There are ways to wrestle a domain name from a bad faith registrant even if the identity or location of the cybersquatter is unknown.

Keep in mind that even if a company owns a federally registered trademark, someone else may still have the right to own the domain name. For example, many different companies have federally registered the trademark Executive for different goods or services. All of these companies may want www.executive.com but the first one to purchase it—in this case, Executive Software—is the one that acquired the domain name.

When registering a domain name, a company should be sure that nobody else is using it as a trademark for similar goods and services. If another business is selling similar goods or services with a similar name, the use of the domain name can be terminated under trademark law principles.

EXAMPLE: Jim’s catalog company, Ahab, has been selling ocean-themed artwork and merchandise since 1980. Jim has registered the Ahab trademark with the PTO. Bob registers the domain name ahab.com and uses it to sell artwork depicting whales. Jim can stop Bob’s use of the domain name, ahab.com. If Bob were using ahab.com to sell Ahab-brand educational software, Jim could not stop Bob’s use of the domain name.

Registration of a domain name can be accomplished at any of the approved domain name registrars. A complete list is provided at both InterNIC (www.internic.net) or ICANN (www.icann.org). An applicant completes the online domain name registration form indicating basic contact information (name, telephone number and address). The fee is usually $35 per year, although some registrars offer lower rates. The whole procedure takes a matter of minutes and the domain name registrant is notified by email of the domain name ownership, which is effective immediately.

Payment of the annual fee for a domain name only grants ownership of an address on the Internet; it doesn’t establish a website presence. In order to use it in conjunction with a website, a business must establish a web hosting arrangement with an ISP (Internet Service Provider), usually for a fee of approximately $20 per month. The business must also construct and upload a website and coordinate the reassignment of the domain name from the domain name registrar to the ISP. Usually an ISP will assist the company through the process. Domain name registration grants exclusive title to the domain name owner, who can stop others from using it with the following exceptions:

  • Failure to pay annual domain name fees. Domain name ownership, unlike trademark ownership, must be renewed either every year or every two years (depending on the initial arrangement with the registrar). Failure to pay fees will result in cancellation of the domain name ownership and it may eventually be sold to another buyer.

  • The domain name registrant is a cybersquatter. If a domain name is registered in bad faith, for example, for the purpose of selling it back to a company with the same name, the domain name can be taken away under federal law or under international arbitration rules for domain name owners.

  • The domain name infringes a trademark. If a domain name is likely to confuse consumers because it is similar to another trademark, the domain name use may be terminated. For example, if a company registered adoobie.com for the purposes of selling software, it’s very likely that the Adobe company, makers of graphics software, would be able to stop the use.

  • The domain name dilutes a famous trademark. If a domain name dilutes the power of a famous trademark, the owner of the famous mark can sue under federal laws to stop the continued use. Dilution refers to the fact that the domain name is being used for commercial purposes and it blurs or tarnishes the reputation of a famous trademark. For example, if a company registered guccigoo.com for the purpose of selling baby diapers, the owners of the Gucci trademark could stop the use of the domain name under dilution principles.

    Related terms: Anticybersquatting Consumer Protection Act; cybersquatting; dilution of mark; Internet, effect on trademark law.

domain names, effect of trademark law on

The legal relationship between trademarks and domain names has created some confusion. Two things are certain:

  • registration of a domain name does not automatically create trademark rights, and

  • a trademark owner can sue a domain name owner who is likely to confuse consumers or who dilutes a famous trademark.

Domain name registration, by itself, does not permit the registrant to stop another business from using the name for its business or product. For example, if Sam acquires the domain name greatgrammar.com, that does not mean Sam can stop others from using Great Grammar for services or products online or off. It only means that Sam has the right to use that specific Internet address.

A domain name will function as a trademark only if it is used in connection with the sale of goods or services and consumers associate the name with the Internet business. When that happens, the domain name owner can stop others from using a similar name.

Consider Amazon.com, a domain name that functions as a trademark because consumers associate the name with a certain company and its services. Amazon.com achieved trademark status because the company was the first to use this distinctive name for online retail sales and the name has been promoted to consumers through advertising and sales. If another company sold books on the Internet or off, under the name Amazon, the owners of Amazon.com could sue under trademark law to stop the use.

In short, to be protectible as a trademark, a domain name must be distinctive or must achieve distinction through consumer awareness and the owner must be the first to use the name in connection with certain services or products.

A domain name owner can run into problems if the domain name legally conflicts with an existing trademark. For example, if a company launched a website with the domain name Xon.com to sell automobile accessories, that company could be stopped from using the name by the owners of the Exxon trademark. That’s because Exxon has the right to stop lookalike and soundalike business names that are likely to confuse consumers of a wide range of auto products.

Whether a domain name would legally conflict with an existing trademark depends on which was first put into actual use and whether the existing mark is famous or use of the domain name would confuse customers regarding the existing mark. The legal standards used in these conflicts are no different from other trademark disputes.

Related terms: Anticybersquatting Consumer Protection Act; confusion of customers; dilution of mark; domain name; metatags; UDRP; initial interest confusion.

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duration of federal trademark registration

Once a trademark or service mark is placed on the Principal Register, the owner receives a certificate of registration good for an initial term of ten years (20 years if the registration occurred before 11/16/89).

Although the initial registration is good for a ten-year (or 20-year) period, the registration may lapse unless the registrant files a sworn statement within six years of the filing date (the “Sections 8 and 15 Affidavit”) that the mark is either still in use in commerce or that the mark is not in use for legitimate reasons that do not constitute abandonment.

The original registration may be renewed indefinitely for additional ten-year periods if the owner timely files the required renewal applications (called a Section 9 Affidavit) with the U.S. Patent and Trademark Office. Failure to renew a registration does not void all rights to the mark; however, unless it is re-registered, the mark’s owner will not have the benefits of federal registration, such as the presumed nationwide notice and the presumption of validity.

EXAMPLE: Andramae Associates, Inc., registers a service mark for her graphics design business on May 1, 1995. The registration is good for ten years, or until May 1, 2005. To keep the registration in force, Andramae must file a Sections 8 and 15 Affidavit between November 1, 2000 (five years and six months after her registration date), and May 1, 2001 (the expiration of the six-year period), and she must renew it decennially (for example, between November 1, 2005 and April 30, 2006, and again between November 1, 2015 and April 30, 2016). By continuing to renew the mark in this manner, Andramae can keep it on the Principal Register indefinitely.

Related terms: incontestability status; Sections 8 and 15 Affidavit; Supplemental Register.

eTEAS

This program, found on the United States Patent and Trademark Office Website (www.uspto.gov), allows you to file a trademark application online. A companion program, PrinTEAS, also found on the same site, lets you fill in the application online, but you have to print it out, sign it and send it in by regular mail. Both online programs are free and come with instructions provided by the USPTO.

exclusive right to use mark

See ownership of mark in the U.S.

fair use of trademarks

As a general rule, the owner of a trademark has the exclusive right to use the trademark in a commercial context. However, under a principle known as trademark fair use, another business can use a trademark as a descriptive term. For example, the maker of an electric dishwasher may describe the joy of clean dishes without infringing the trademark, Joy, for dishwashing liquid. A company promoting toothpaste may state that it is the choice of dentists without infringing the trademark, Dentist’s Choice. The fair use defense is set forth in the Lanham Act. (15 United States Code, Section 1115(b)(4).)

The following uses, although technically not trademark fair use, are often lumped under the same label by courts and attorneys:

  • comparative advertising

  • journalistic accounts of the owner of the mark or the goods or services identified by the mark, and

  • parodies involving the mark.

What all of these uses have in common is that the public is not being led to believe that the non-owner is the source of the goods or services identified by the mark. In other words, fair use of a mark is possible when no customer confusion is likely to result from the use.

For example, a California district court determined that an artist’s project including nude Barbie dolls and imagery entitled “Malted Barbie” and “The Barbie Enchiladas” was a noncommercial fair use of the Mattel company’s Barbie trademark. (Mattel Inc. v. Walking Mountain Productions, Inc., 4 Fed. Appx. 400 9th Cir. (2002).)

Related terms: free speech and trademarks; parody.

false advertising

A business that makes misleading advertising statements about its products or another company’s products can be sued in federal court under section 43(a) of the federal Lanham Act. (15 United States Code, Section 1125(a).) It is not necessary to have a federally registered trademark to make a claim under section 43(a). All that is required is that a business has made false or misleading statements as to its own product or another’s, and there is actual deception or at least a tendency to deceive a substantial portion of the intended audience and the advertised goods traveled in interstate commerce. The deception must be material, that is, it is likely to influence purchasing decisions and there must be likelihood of injury to another company in terms of declining sales or loss of goodwill. In other words, if the false advertising has no impact on purchasers, goodwill or sales, then the claim will be dismissed.

For purposes of section 43(a), advertising is more than traditional print and television advertisements; it is any commercial speech intended to influence consumers and disseminated to the relevant purchasing public. “Commercial speech” refers to statements generally made for the purposes of promoting a business or trade; not editorial or informational speech protected under free speech principles. For example, it is not commercial speech to make statements about a product in a newspaper article.

Deceptive advertising is generally categorized as either statements that are simply untrue (or “false on their face”) or statements that are accurate but deceptive. An example of a statement that is false on its face would be falsely claiming that a motor oil additive will increase mileage. An example of a statement that is accurate but deceptive would be that a motor oil additive protects against engine corrosion, but failing to mention that the protection is for boat engines and not automobile engines. In cases of accurate but deceptive claims, a court must examine evidence, for example, to determine if a company’s test results have been distorted or exaggerated.

Related terms: unfair competition; unregistered mark, protection of.

famous mark

Under federal law and most state laws, only owners of famous marks can claim dilution. Examples of famous marks include: the NBA logo of a silhouetted basketball player; Saks Fifth Avenue for retail stores; Hyatt for hotel services; and Godzilla for entertainment services.

Proving a mark is famous requires more evidence than commonly used to show trademark strength and distinctiveness. Courts demand proof that the mark has been heavily advertised or has had widespread acceptance within its channels of trade. Whether a mark is famous depends on several factors, including the distinctiveness of the mark; the duration and extent of use of the mark; the duration and extent of advertising and publicity of the mark; the geographical extent of the trading area in which the mark is used; the channels of trade for the goods or services with which the mark is used; the degree of recognition of the mark in both parties’ trading areas and channels of trade; the nature and extent of use of the same or similar marks by third parties; and whether the senior user’s mark is registered.

Related terms: dilution.

fanciful words and phrases

See distinctive mark.

Federal Trademark Dilution Act of 1995

See dilution of mark.

federal trademark registration

The U.S. Patent and Trademark Office (PTO) maintains two lists of registered trademarks and service marks:

  • the Principal Register, and

  • the Supplemental Register.

The Principal Register is reserved for distinctive marks and marks that have become distinctive through acquiring secondary meaning. There are many benefits to having a mark on the Principal Register rather than the Supplemental Register. Chief among these are:

  • potential competitors will be assumed to know that the marks are off-limits, and

  • the mark can achieve incontestability status if it remains on the Principal Register for five years.

The Supplemental Register is for marks that are not yet distinctive and do not merit the same protection as Principal Register marks. However, registration on the Supplemental Register allows placement of the trademark registration symbol ( ) on the mark, which is likely to scare away most potential copiers.

Federal registration of a mark entails all of the following:

  1. The mark must be used in commerce (used across state, national or territorial lines or used in a way that affects interstate, inter-territorial or international commerce).

  2. A registration application, a Statement of Use or an Application Alleging Use (if an intent-to-use application was previously filed) must be filed with the PTO.

  3. If the mark qualifies for the Principal Register, it will be published in the Official Gazette by the PTO.

  4. If another party claims ownership of the mark in a pending application, the PTO may declare that an interference exists and schedule a hearing. Similarly, an interested party may file an opposition to the registration after publication in the Official Gazette, and the owner may have to refute or reply to the opposition.

  5. If there is no interference or opposition, the PTO will issue a certificate of registration on either the Principal Register or the Supplemental Register.

Once a mark is registered, the trademark registration symbol “( )” or “Reg. U.S. Pat. Off.” should always appear next to the mark whenever it is used. Without this designation, it may be harder to collect damages if a federal court lawsuit is occasioned by an infringement of the mark.

Applications for federal registration of trademarks and information on procedures for registration may be downloaded from the PTO website (www.uspto.gov) or by writing to:

  • Commissioner for Trademarks

  • U.S. Department of Commerce

  • Washington, DC 20231

  • PTO information line: 703-557-4636.

    Related terms: constructive notice of mark under Lanham Act; Principal Register; protection of marks under Lanham Act; Supplemental Register; trademark search.

first to file countries

See prior registration countries.

first to register

See ownership of mark in the U.S.

first to use mark in U.S.

See ownership of mark in the U.S.

flags as marks

See prohibited and reserved marks under Lanham Act.

foreign language equivalent terms

See phonetic or foreign language equivalents for marks.

foreign nationals, registering in U.S.

A citizen, permanent resident or business of another country is entitled to federally register a mark in the U.S. if the other country affords reciprocal trademark rights to U.S. citizens, and if the mark meets U.S. requirements for registration.

Registration of a mark by a foreign national in the U.S. may be accomplished if:

  • the mark has been placed in use in interstate, inter-territorial, or international commerce in the U.S.

  • the mark has been registered within the last six months in another country with which the U.S. has a reciprocal treaty, or

  • the mark has been the subject of an intent-to-use application filed in the U.S.

If the basis for registration in the U.S. is a previous registration in another country, the date of filing in the other country establishes the filing date in the U.S. as well.

A foreign national who registers a mark in the U.S. but lives abroad must designate a U.S. representative to receive notices and official communications from the U.S. Patent and Trademark Office.

Related terms: Inter-American Convention for Trademark and Commercial Protection; international trademark rights; Paris Convention.

franchising, service marks

See naked license.

free speech and trademark law

Trademark law does not prohibit the use of another company’s trademark for purposes of commentary or criticism. For example, the owner of a newsletter can write an article critical of Microsoft and use the Microsoft logo. Two factors may convert such commentary and criticism into a lawsuit based on trademark infringement or dilution: the newsletter is offering goods and services as part of its criticism, or the newsletter is likely to confuse readers as to whether Microsoft is a sponsor of the newsletter. In addition, if the newsletter is making false statements regarding Microsoft, this may trigger additional claims including product disparagement, false advertising and trade libel.

However, if it is clear that the use does not confuse consumers and is not being used deceptively, courts will permit use of trademarks for purposes of commentary. In one case, a disgruntled former customer of the Bally Health Club created a website featuring the company’s logo over which appeared the word “sucks,” and included a statement that the site was “Unauthorized.” A court permitted this use because the site had distinguished itself from the legitimate Bally site by prominent use of disclaimers and the site was not offering competing goods or services. (Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998).)

The Bally case triggered widespread registration of “sucks” domain names (despite the fact that the defendant had not registered ballysucks.com). Disgruntled consumers of other companies registered domain names such as nikesucks.com, toysrussucks.com, waltmartsucks.com and cadillacsucks. In some cases, companies have successfully stopped the use of these “sucks” domain names either because they were determined to be in violation of the law or because the domain name owner refused to respond to the legal action. Keep in mind when using trademarks under free speech principles: even though there is right of free speech, this doesn’t prevent a trademark owner from filing a lawsuit. The economics of litigation often silence company critics despite their free speech rights.

In addition to these rights, trademark law permits the use of trademarks for comparative advertising and for descriptive purposes.

As explained above, sometimes you may be legally entitled to use a trademark without permission on the grounds of free speech. However, you should be aware that even if your use is legally permissible, an aggressive trademark owner might file a lawsuit to intimidate you and get you to stop using the mark. Defending your right to free speech can be expensive, costing tens of thousands of dollars. The chances of a legal confrontation increase when using a famous trademark without permission.

Related terms: fair use; parody.

generic terms

Words or symbols commonly used to describe an entire type of product or service rather than to distinguish one product or service from another are known as generic. Generic terms never receive protection because such terms cannot fulfill the function of a mark, which is to distinguish specific goods or services from competing ones. Therefore they belong in the public domain rather than to an exclusive owner.

EXAMPLE: “Raisin bran” is a generic phrase that describes a kind of cereal; it defines the product itself rather than its source. Several different cereal manufacturers produce raisin bran, each of which is identified by its own mark—for instance, Post Raisin Bran, Kellogg’s Raisin Bran, Skinner’s Raisin Bran. While each of these manufacturer’s marks is entitled to protection, the words “raisin bran” are not.

Some protectible marks may lose their protection by becoming generic. “Genericide” occurs when a mark is used widely and indiscriminately to refer to a type of product or service, rather than the service or product of one company. For example, “escalator” was originally a protected trademark used to designate the moving stairs manufactured by a specific company. Eventually, the word became synonymous with the very idea of moving stairs and thus lost its protection. Other examples of marks that have become generic are lite beer, softsoap and cola.

How can a company keep a mark from becoming generic? To begin, most companies need not worry about this issue, since very few products or services are successful enough to produce a generic mark. But for those that are, the Xerox campaign is instructive. The “Xerox” mark was in danger of becoming generic because it was so commonly used to describe photocopiers, the process of photocopying and the result. To counter this threatened genericide, the Xerox Corporation has spent millions of advertising dollars advising the public that Xerox is in fact a registered mark, should only be used as a proper adjective in connection with a noun (for instance, Xerox brand photocopier), and should not be used as a verb (that is, to xerox something) or as a general noun indicating the result of the photocopying process (a xerox). If anyone challenges the Xerox Corporation’s right to the exclusive use of the word “Xerox” on the ground that it has become generic, Xerox may prevail if it can show that people understood these advertisements, and continued to consider the term “Xerox” as a brand, rather than generic, name.

Related terms: common use of mark; loss of trademark; unfair competition.

geographic terms as marks

Geographic terms (sometimes referred to as geographic designations) are naturals for trademarks because they either identify regional origin (San Francisco Sourdough bread) or they conjure up a quality (the image of Prudential’s Rock of Gibraltar). Geographic terms can indicate a specific location such as a street (Park Avenue), river (Rio Grande), city (Hollywood), state (Wisconsin), mountain (Everest), or even a nickname such as Quaker State for Pennsylvania. The manner in which a geographic term is used and the type of mark—for example, trademark, certification mark, etc.—affects protection. Geographic terms are generally categorized as follows:

Descriptive. A geographic term that describes the origin, location or source of the product or service (for example, First National Bank of Omaha for a bank located in Omaha, Nebraska) is usually considered to be weak and is not protectible unless there is a demonstration of secondary meaning. The reason for this rule is that consumers cannot differentiate the Bank of Omaha from other banks in Omaha (or New York Life from other life insurance companies in New York) without some advertising or marketing effort.

Arbitrary or Suggestive. A geographic term that is used arbitrarily (for example, Atlantic for a magazine) or suggestively to conjure up a regional feeling (for example, Arizona for an iced tea drink) is considered to be strong.

Misdescriptive. When a geographic term misleads consumers into believing that the product originates from a region when it does not, it is not protectible as a trademark—for example, Danish Maid Cultured Products is geographically misdescriptive because the cultured products were not from Denmark.

Many companies use “America” or “American” as a geographic term in their trademarks (for example American Flyer for wagons and American Express for financial services). Most uses of “America” are weak (geographically descriptive), such as Bank of America or American Diabetes Association, because the terms primarily connote American origin. Some uses, however, are strong (arbitrary or suggestive), such as American Girl for shoes, because the use of America is not primarily to connote origin. In those cases, no proof of secondary meaning is required. Some uses are geographically misdescriptive and protection is denied (i.e., “barred”). For example, American Beauty for a sewing machine was barred because the sewing machine was made in Japan.

In the mid-1990s, international makers of wines and spirits successfully lobbied the United States for a special amendment to the Lanham Act that prohibited registration of geographic marks that are inaccurate as to the source of the wine. Although the amendment reiterated the existing rules regarding geographically misdescriptive marks, above, it also reassured foreign wine makers that terms such as Champagne could only refer to a bubbly wine from the Champagne region of France.

Terms that are not primarily geographical in nature (do not refer to defined locations) may be used and protected as marks if they are distinctive in the context of their use or gain a secondary meaning through extended exposure in the marketplace—for example, Southern Comfort (whisky), Metropolitan (life insurance) and Globe (realty).

Geographical terms are also acceptable in certification marks and the owners of such marks are entitled to full protection under the Lanham Act.

Related terms: disclaimer of unregistrable material; prohibited and reserved marks under Lanham Act; secondary meaning.

geographically separate market

When goods or services coming from different sources are sold geographically far enough away from each other to preclude consumers from getting confused, they are said to be in geographically separate markets. In general, using the same or similar marks in geographically separate markets does not constitute infringement.

Related terms: constructive notice of mark under Lanham Act; infringement action; ownership of mark in the U.S.

good will

Good will refers to the tendency or likelihood of a consumer to repurchase goods or services based upon the name or source. In a sense, it is name recognition or at least a recognition of buying habits—for example consumers who are loyal to one brand of cola. A trademark is considered to be inseparable from its good will. When a trademark is infringed, the infringer gets a free ride on another company’s good will. Any assignment of trademark rights must include a transfer of the good will associated with the mark.

Related Terms: assignment of mark.

hybrid mark

See composite mark.

ICANN

The Internet Corporation for Assigned Names and Numbers (ICANN) is the agency that oversees domain name registration and dispute resolution procedures (www.icann.org).

Related Terms: domain names; anticybersquatting; UDRP.

immoral marks

See prohibited and reserved marks under Lanham Act.

incontestability status

When a mark has been in continuous use for five years after being placed on the Principal Register, it may be classified as incontestable, or immune from legal challenge. (37 United States Code, Section 1065.) The business seeking to make its mark incontestable must show that:

  • no final legal decision has issued against the mark owner’s claim

  • no challenge to the owner’s claim is pending

  • a Sections 8 and 15 Declaration describing the mark’s use was filed on a timely basis, and

  • the mark is not and has not become generic.

In essence, achieving “incontestability status” conclusively establishes ownership of the mark for the uses specified in the Sections 8 and 15 Declaration that is filed between the fifth and sixth year after the mark was placed on the Principal Register.

Whether a mark is incontestable usually arises in a lawsuit for infringement where the party being sued attempts to defend by challenging the validity of the plaintiff’s mark. If the plaintiff can establish that the mark is incontestable, the mark will be presumed valid unless the defendant can establish one or more incontestability defenses. The fact that there are a number of these defenses adds up to the fact that the term “incontestable” really means “somewhat difficult to contest.”

Incontestability status may be challenged on any of the following grounds:

  • the registration or the incontestable right to use the mark was obtained by fraud

  • the registrant has abandoned the mark

  • the mark is used to misrepresent the source of its goods or services (for instance, use of the mark involves palming off)

  • the infringing mark is an individual’s name used in his or her own business, or is otherwise prohibited or reserved under the Lanham Act

  • the infringing mark was used in commerce first—before the incontestable mark’s registration

  • the infringing mark was registered first, or

  • the mark is being used to violate the antitrust laws of the United States.

Even though an incontestable mark can still be challenged on these grounds, it is safe from attack on the otherwise common ground that it lacks distinctiveness. Thus, when Park N Fly, Inc., sued Dollar Park and Fly, Inc., for trademark infringement, the U.S. Supreme Court ruled that because the Park N Fly mark had obtained incontestability status, Dollar Park and Fly, Inc., could not allege as a defense that its rival’s mark is actually descriptive.

Related terms: federal trademark registration; infringement action; loss of mark.

infringement action

A party who claims to own a mark (the plaintiff) may file a lawsuit against another user of the same or similar mark (the defendant) to prevent further use of the mark and collect money damages for the wrongful use. An infringement action may be brought in state court or in federal court, if the mark in question is protected under the Lanham Act, which applies to both registered and unregistered marks that are used in commerce that Congress may regulate.

The success of an infringement action normally turns on whether the defendant’s use causes a likelihood of confusion and so weakens the value of the plaintiff’s mark. A mark need not be identical to one already in use to infringe upon the owner’s rights. If the proposed mark is similar enough to the earlier mark to risk confusing the average consumer, its use may constitute infringement if the services or goods on which the two marks are used are related to each other—that is, they share the same market.

The extent of damages awarded in an infringement action will usually depend on whether the infringement was willful and on the actual amount of harm that the plaintiff can prove.

Related terms: confusion of consumers; constructive notice of mark under Lanham Act; incontestability status; injunctions against infringement and unfair competition; opposing and cancelling a trademark registration; trade dress; unfair competition.

ingredient, use of a trademarked product as an

Unless it’s authorized, a company should not give undue prominence to a trademarked ingredient used in its product. For example, if a candy contains Grand Marnier liquor, advertisements should not lead a consumer to believe that the candy is a product of the Grand Marnier company. A prominently placed explanatory disclaimer may also help reduce consumer confusion.

Related terms: disclaimer of trademark use.

initial interest confusion

In a 1999 case, Internet surfers were temporarily misled by the use of metatags containing the term “movie buff.” When they typed the term into a search engine, they received results that favored a rival video business rather than the trademark owner. Although consumers were not prevented from locating the desired search result, a judge ruled that this momentary search engine confusion—referred to as initial interest confusion—was enough to sustain a claim for trademark infringement. (Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).) Although many commentators have criticized the standard, claiming that Internet users are sophisticated enough to sort through these momentary search engine diversions, the initial interest confusion principle remains alive. On the basis of initial interest confusion, a California court prohibited www.taxes.com from using 75 references to a competitor in its metatags. (J.K. Harris v. Steven Kassel, 2002 U.S. Dist. LEXIS 7862 (N.D. Cal. 2002).)

Related terms: metatags; free speech.

injunctions against infringement and unfair competition

The winner in an infringement lawsuit can obtain an injunction—a court order that prevents further infringing activity or unfair competition. The state and federal laws of trademarks, service marks and unfair competition authorize courts to require or prohibit any action or inaction necessary to protect the owner of a mark from economic harm.

Because lawsuits often take years to resolve, the courts have power to issue interim injunctions. Promptly upon filing the case, the plaintiff may be able to obtain a temporary restraining order if the judge is convinced that irreparable injury is occurring. A few weeks later, the court will hold a formal hearing and, if it appears that the plaintiff is likely to prevail when the case is finally decided, the court will issue a preliminary injunction that will last until the case is tried.

If, after a trial, a court finds that infringement or unfair competition has occurred, it will issue a permanent injunction ordering the defendant to stop using the infringing mark. In addition, the defendant may be required to destroy items or labels carrying the offending mark if necessary to prevent further use of the mark. In some cases, especially if the defendant was an innocent infringer, the court may allow some continued use of the mark in a particular locality, but bar it in other parts of the country.

The courts have broad powers (“equity” powers) to fashion their injunctions to obtain justice under varying circumstances. If necessary, an injunction that addresses the parties in a case may be enforced against other parties as well.

Related terms: infringement action.

injury to business reputation

See dilution of mark.

innocent infringer

An infringer who didn’t know that he or she was infringing a mark is termed an innocent infringer. When an infringer is considered innocent, the owner of the infringed mark will usually be able to prevent future infringements but will not be able to collect money damages or defendant’s profits. In some cases, the owner may not even be able to prevent the innocent infringer from continuing to use the mark, at least in a limited geographical area that doesn’t create the risk of consumer confusion.

If a mark has been federally registered on the Principal Register before an infringement of the mark begins, the infringer cannot claim innocence. This is because the registration provides notice that the mark is already owned by someone else, and the infringer could have discovered this fact by doing a trademark search. However, if registration occurs after the infringing activity begins, the infringer may still be able to claim innocence until he or she actually learns of the registration.

Related terms: contributory infringer; infringement action; injunctions against infringement and unfair competition.

click to expand

intent-to-use application

The Lanham Act permits a mark not yet put into commercial use to be reserved for later registration by filing an intent-to-use (ITU) application with the U.S. Patent and Trademark Office (PTO). The initial reservation is for six months from the date the PTO approved the mark (which may be six months to a year after you file your application) and can be extended for up to five additional six-month periods for good cause. The date of the original ITU application serves as the priority date in case of conflict, regardless of when the use actually begins, as long as the applicant completes the registration process.

Actual registration will occur once the owner begins to use the mark in commerce and files an Allegation of Use for Intent-to-Use Application informing the PTO of that fact. Without the timely filing of one of these forms, or a purchase of an extension, the ITU application will lapse.

The initial intent-to-use application costs the same as an actual use application ($325 as of September 2000), plus an additional $150 for each additional six- month extension and $100 to file the Statement of Use—when you finally start using it in commerce.

Related terms: Amendment to Allege Use; Principal Register; Statement of Use.

Inter-American Convention for Trademark and Commercial Protection

This treaty provides reciprocal trademark rights between the U.S. and a number of Latin American nations that are not signatories to the Paris Convention. These countries are: Brazil, Colombia, Cuba, the Dominican Republic, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay and Peru.

Related terms: international trademark rights; Paris Convention.

inter partes proceeding

This type of an administrative hearing is conducted by the Trademark Trial and Appeal Board to resolve:

  • conflicts between pending applications (called interferences)

  • the merits of opposition and cancellation petitions, and

  • disputes over decisions of the Commissioner of Patents and Trademarks about applications for registration under the Lanham Act.

    Related terms: interference; opposing and cancelling a trademark registration.

interference

When two or more marks awaiting registration in the U.S. Patent and Trademark Office (PTO) appear to overlap or conflict with each other, an “interference” is said to exist and the applicants are informed of this fact. Any applicant may then request that the PTO set up an interference hearing to decide who should be the registered owner. Interference hearings tend to be expensive, lengthy, and rare. Most often, applicants facing an interference will simply withdraw their application and devise a new mark, which is then made the subject of a new application.

When an interference hearing is held, the PTO uses a set of rules developed by the courts over the years to decide which applicant is entitled to the registration. The rules are based on such variables as:

  • who was first to use the mark anywhere

  • who was first to use the mark in commerce

  • who was first to file the registration application, and

  • if the first filer is not also the first user, whether the first filer knew or should have known of the previous use.

    Related terms: inter partes proceeding; ownership of mark in the U.S.

International Convention for the Protection of Industrial Property of 1883

See Paris Convention.

International Schedule of Classes of Goods and Services

All marks that are federally registered are classified by the U.S. Patent and Trademark Office according to a master list called the International Schedule of Classes of Goods and Services (used by virtually all countries). Classification allows marks to be efficiently stored and retrieved according to the class assigned to such product or service.

Because a mark’s meaning is inseparable from the product or service to which it is attached, all registered marks must be classified by the category of goods or services it identifies. Because many marks naturally fall into two or more categories, simultaneous registration in different classes is permitted, with an extra fee for each extra class.

If a mark has been registered for use on one type of product or service, and the mark’s owner wants to use it on a type of product or service that falls in a different class, the mark must be registered anew.

EXAMPLE: Sweets Inc., a candy manufacturer, attaches the trademark “TummyYummy Candies” to its line of chocolate candies. Later on, Sweets decides to enter the fresh fruit juice market. If it wants to use the trademark “TummyYummy Fruit Juice,” it should obtain a new registration, since fruit juice and candy are in different classes.

Related terms: federal trademark registration; protection of marks under Lanham Act; trademark, defined.

See the accompanying chart for a listing of the International Schedule of Classes of Goods and Services.

International Schedule of Classes of Goods and Services
  1. Chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids or pastes, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry.

  2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colouring matters, dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators.

  3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

  4. Industrial oils and greases (other than oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, night lights and wicks.

  5. Pharmaceutical, veterinary, and sanitary substances; infants’ and invalids’ foods; plasters, material for bandaging; material for stopping teeth, dental wax, disinfectants; preparations for killing weeds and destroying vermin.

  6. Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles); cables and wires (nonelectric); locksmiths’ work; metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in nonprecious metal not included in other classes; ores.

  7. Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators.

  8. Hand tools and instruments; cutlery, forks, and spoons; side arms.

  9. Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counterfreed apparatus; talking machines; cash registers; calculating machines; fire extinguishing apparatus.

  10. Surgical, medical, dental, and veterinary instruments and apparatus (including artificial limbs, eyes, and teeth).

  11. Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.

  12. Vehicles; apparatus for locomotion by land, air, or water.

  13. Firearms; ammunition and projectiles; explosive substances; fireworks.

  14. Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks and spoons); jewelry, precious stones, horological and other chronometric instruments.

  15. Musical instruments (other than talking machines and wireless apparatus).

  16. Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding material; photographs; stationery, adhesive materials (stationery); artists’ materials; paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers’ type and cliches (stereotype).

  17. Gutta percha, india rubber, balata and substitutes, articles made from these substances and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacture; materials for packing, stopping or insulating; asbestos, mica and their products; hose pipes (nonmetallic).

  18. Leather and imitations of leather, and articles made from these materials and not included in other classes; skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

  19. Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; roadmaking materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots.

  20. Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these materials, or of plastics.

  21. Small domestic utensils and containers (not of precious metals, or coated therewith); combs and sponges; brushes (other than paint brushes); brushmaking materials; instruments and material for cleaning purposes, steel wool; unworked or semi-worked glass (excluding glass used in building); glassware, procelain and earthenware, not included in other classes.

  22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hair, kapok, feathers, seaweed, etc.); raw fibrous textile materials.

  23. Yarns, threads.

  24. Tissues (piece goods); bed and table covers; textile articles not included in other classes.

  25. Clothing, including boots, shoes and slippers.

  26. Lace and embroidery, ribands and braid; buttons, press buttons, hooks and eyes, pins and needles; artificial flowers.

  27. Carpets, rugs, mats and matting; linoleums and other materials for covering existing floors; wall hangings (nontextile).

  28. Games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for Christmas trees.

  29. Meats, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles.

  30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices; ice.

  31. Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt.

  32. Beer, ale and porter; mineral and aerated waters and other nonalcoholic drinks; syrups and other preparations for making beverages.

  33. Wines, spirits and liqueurs.

  34. Tobacco, raw or manufactured; smokers’ articles; matches.

    Services

  35. Advertising and business.

  36. Insurance and financial.

  37. Construction and repair.

  38. Communication.

  39. Transportation and storage.

  40. Material treatment.

  41. Education and entertainment.

  42. Miscellaneous.

international trademark rights

Trademark rights in each country depend solely on the trademark laws of that country; there is no set of international laws. Mark owners must start anew to establish rights to a mark in every new country they enter for commercial purposes, a concept known as “territoriality.” In other words, previous use or registration in other countries is generally irrelevant.

In the U.S., first use often decides who owns a mark. Most other countries, however, award ownership to whoever is the first to register a mark (although use on the same or related goods usually must follow within a reasonable time). As a result, if the seller of wood patio furniture under the mark “Sueno” wants to expand to a first-to-register country, it will have to pick a new mark if “Sueno” is already registered in that country. This is true even if the U.S. seller was first to use the mark and even if the company that registered that mark in the other country does not currently make related goods. This “registration” system often allows people to anticipate international marketing trends, and to register the rights to valuable marks before another company thinks to do so.

The territoriality rule has an important exception: countries that have established treaty rights among themselves, like the U.S. and Syria, may permit nationals of other treaty countries to establish their right to a mark based on prior use or registration in their own country alone. In the U.S., the Lanham Act allows nationals of the Paris Convention countries to register their marks in the U.S. based on registration in their native country without alleging use here first (if they allege a bona fide intention to use the mark in the U.S. within a reasonable time).

Other treaties, like the Madrid Arrangement on International Registration of Trademarks and the Madrid Protocol, use an international bureau, the World Intellectual Property Organization (WIPO) as a central registration office for trademarks in use in the member countries. Each country still can accept or reject any mark registered with WIPO, so the fact that a mark is registered with WIPO does not mean that it will be given protection by any particular country. Rather, the list is primarily for informational purposes. The U.S. has not yet signed the Madrid treaties, but all members of the European Community have, plus 16 other countries.

One other exception to the territoriality rule concerns marks that have such international fame that they act as marks even without use in the U.S. Such marks (like Maxim’s in Paris, or Wimbledon in England) have developed enough trademark recognition, even without use or registration in the U.S., to prevent another’s use of the same mark.

Related terms: foreign nationals, registering in U.S.; Inter-American Convention for Trademark and Commercial Protection; Madrid Arrangement on International Registration of Trademarks and Madrid Protocol; Paris Convention; phonetic or foreign equivalents for marks; prior registration countries.

Internet domain names

See domain names.

Internet, effect on trademark law
Lanham Act

The main federal statute that governs trademarks, service marks and unfair competition is the Lanham Act, passed in 1946 (and amended repeatedly since).

The Lanham Act covers such matters as: (1) when owners of marks may be entitled to federal judicial protection against infringement of a mark by others; (2) the types of remedies for infringement that the federal courts are authorized to provide, such as injunctive relief, money damages and defendant’s profits; (3) procedures for registering marks with the U.S. Patent and Trademark Office (on the Principal Register or Supplemental Register); (4) guidelines for when trademarks become incontestable; and (5) remedies for activity that constitutes unfair competition. Selected sections of the Lanham Act are included at the end of this part.

Related terms: commerce; protection of marks under Lanham Act; unfair competition; unregistered mark, protection of; use of mark.

licensing of marks

The owner of a mark (licensor) gives a “license” when the owner authorizes another party (licensee) in writing to use the mark for commercial purposes. Such written licenses must be very carefully drafted to provide control over the use of the mark, because the unfettered use of a mark by another party can harm the mark’s value as a reliable identifier of a particular product or service. In an extreme case, allowing someone to use a mark without adequate restriction and supervision may result in the mark being considered abandoned (a “naked” license.)

Related terms: abandonment of mark; assignment of mark; naked license; ownership of mark in the U.S.

likelihood of confusion

See confusion of consumers.

loss of mark

Ownership of an otherwise valid trademark may be lost in several situations. This occurs when a mark is deliberately abandoned (non-use), when it becomes the generic term for the goods (genericide), when it is used improperly (in violation of antitrust laws), or when an unfavorable decision is made in a cancellation or interference proceeding (which passes the mark’s ownership to another party).

Related terms: abandonment of mark; generic mark; interference; opposing and cancelling a trademark registration.

Madrid Protocol

On November 2, 2002, President Bush signed into law legislation to implement the Madrid Protocol, an international treaty that will allow U.S. trademark owners to file for registration in various countries by filing a single standardized English-language application at the PTO. The Madrid Protocol, will eventually replace the previous Madrid Agreement and is expected to provide a truly international centralized trademark application system.

The following countries are currently members of the Madrid Protocol: Austria, Benelux (Belgium, Netherlands and Luxembourg), China (People’s Republic), Cuba, Czech Republic, Democratic People’s Republic of Korea, Denmark, Estonia, Finland, France, Georgia, Germany, Hungary, Iceland, Kenya, Lesotho, Liechtenstein, Lithuania, Monaco, Mozambique, Norway, Poland, Portugal, Republic of Moldova, Romania, Russian Federation, Slovakia, Slovenia, Spain, Swaziland, Sweden, Switzerland, Turkey, United Kingdom and Yugoslavia.

Details of the implementation of the Madrid Protocol will be announced at the PTO website sometime in 2003.

Related terms: international trademark rights.

mark, defined

This book uses “mark” to refer broadly to:

  • trademarks

  • service marks

  • certification marks

  • collective marks, and

  • trade dress (when used as a trademark or service mark).

The term “mark” generally encompasses any means that a business uses to identify or distinguish its product or service from competitors in the marketplace. Features of the mark must be nonfunctional and may include symbols, shapes, designs, logos, phrases, colors, tunes and smells.

Related terms: trademark, defined.

mark dilution

See dilution of mark.

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metatag

A metatag is programming code used in the creation of a website. Metatags do not affect the appearance of a website and are not visible when you look at a Web page, but they provide information regarding the content of the site. Metatags are used primarily by search engines that wade through the programming code and text of each page. When a search engine finds a search term in a metatag, it indexes the Web page and displays it in the search results. In other words, metatags have a direct effect on the frequency with which a search engine will find a website.

Even though an Internet user never sees this code, metatags have been the subject of trademark lawsuits because companies have used them to divert or confuse consumers. Instead of using terms that properly describe the site, some programmers substitute the business names of competing companies. For example, a rival shoe manufacturer may bury the metatag “Nike” in its Web page to Web surfers searching for Nike products. In the case of the website selling handmade watches, the metatag might include “Rolex, Swatch, Bulova, Cartier.” One company went so far as to copy and use all of the metatags at a rival site. This kind of deceptive use of another company’s trademark in a metatag is a form of trademark infringement when it confuses consumers. One judge described the practice as similar to a shop owner posting a sign with another company’s trademark in front of its shop. (Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).)

There are some instances when the use of another company’s trademark is permitted in a metatag. For example, it is permissible to use another company’s trademark as a metatag if it is used only to describe the goods or services of a company, or their geographic origin. This is permitted under trademark law as a “fair use.” In one case, former Playmate Terri Welles created a website and used Playboy and Playmate in her site’s metatags. This use of Playboy’s trademarks was permitted because Ms. Welles was using the terms to describe herself and to properly index the pages. In addition, the court was influenced by the fact that most of the free Web pages at the site included a disclaimer at the bottom: “This site is neither endorsed, nor sponsored by, nor affiliated with Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR and PLAYMATE OF THE MONTH are registered trademarks of Playboy Enterprises, Inc.” (Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002).)

Related terms: fair use; free speech and trademarks.

misuse of mark

See loss of mark.

money damages for mark infringement

See damages in trademark infringement cases.

naked license

An owner of a mark gives another party a “naked license” when he or she allows the party to use it without adequate safeguards or restrictions. In some situations, especially those involving franchise operations, the grant of a naked license can result in the abandonment of the mark. This occurs when the mark is used on goods and services of varying quality so that it no longer identifies and distinguishes specific products and services from competing ones, and does not indicate a particular level of quality attached to some product or service.

EXAMPLE: Barcamerica licensed its registered trademark, Leonardo DaVinci, to Rennaisance Vineyards for the sale of wines. The licensing agreement did not contain a quality control requirement and there was no evidence that Barcamerica controlled the quality of the licensed wine. When Barcamerica sued to stop another company, Tyfield, from using a similar mark, Tyfield argued that Barcamerica abandoned its rights as a result of its naked license. A federal court agreed and Barcamerica lost its rights to the Leonardo DaVinci mark and federal registration. Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002).

Related terms: abandonment of mark; licensing of marks.

names as marks

Names that are primarily surnames (last names) are considered weak and cannot be listed on the Principal Register unless they acquire a secondary meaning (for example, Heinz, Macy’s, Miller). First names and nicknames, unless very unusual or memorable as a mark but not as a name, need to acquire secondary meaning by becoming very well known over time before others can be stopped from using them.

EXAMPLE: “Henry’s” is a mark used to advertise the Henry Weinhart’s line of beers. Over time, “Henry’s” has become associated in the public’s mind with the underlying product and therefore has taken on a secondary meaning. If Henry Clark came along and used his first name to advertise his line of beers, the Henry Weinhart company could probably successfully sue him for infringement of its “Henry’s” mark.

Related terms: prohibited and reserved marks under Lanham Act; secondary meaning; surnames as marks.

non-competing goods

See competing and non-competing products.

nonprofit corporations and trademarks

A nonprofit corporation is entitled to the same protection as a for-profit entity for its trademarks and service marks.

Related terms: protection of marks under Lanham Act; state trademark laws; trade name.

notice of trademark registration

To denote that a mark is registered with the U.S. Patent and Trademark Office (PTO) under the Lanham Act, a symbol must be placed next to the mark. The most commonly used symbol in the U.S. is an “R” in a circle “( )” but “Reg. U.S. Pat. Off.” is equally valid. Both symbols indicate that the mark is registered with the PTO on either the Principal Register or the Supplemental Register (a list of marks that didn’t qualify for the Principal Register because they lacked distinctiveness).

If a mark owner systematically does not use one of these symbols to identify a registered mark when using it to promote a product or service, the owner cannot collect treble damages or defendant’s profits for an infringement, unless he or she can show that the infringer actually knew the mark was registered.

EXAMPLE: While searching for a name for his new computer game, Phil Hacker sees an advertisement in the newspaper for a new database manager called “Sorcerer’s Apprentice.” No notice of registration appears in the advertisement, so Phil concludes the mark is probably not registered and proceeds to use the name as a trademark for his program. The mark had in fact been registered. While the owners of the mark “Sorcerer’s Apprentice” could sue Phil for infringement, they won’t be able to collect treble damages, defendant’s profits or attorney fees unless they can show that they generally did accompany the mark with a proper notice of registration, and that the absence of a notice on the advertisement was an oversight.

Related terms: constructive notice of mark under Lanham Act; damages in trademark infringement cases.

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Official Gazette

As part of the application process for placing a mark on the Principal Register, the U.S. Patent and Trademark Office (PTO) publishes the mark in a newspaper called the Official Gazette (OG) also available at the PTO website (www.uspto.gov).

The OG contains lists of marks proposed for registration on the Principal Register, together with examples of their designs, to give other mark owners notice of the impending registrations. If any other mark owners believe the new mark would infringe on or dilute theirs, they can file an opposition to protest the registration.

If no one objects to the mark’s registration within 30 days of the publication date, the PTO will register the mark. If, however, any interested person files a timely opposition to the registration, the PTO will schedule an administrative (inter partes) hearing to resolve the dispute.

Related terms: opposing and cancelling a trademark registration; Principal Register; U.S. Patent and Trademark Office (PTO).

opposing and cancelling a trademark registration

Under the Lanham Act, any party who may be damaged by the actual or proposed registration of a mark is entitled to challenge the registration. If the mark has been published for proposed registration on the Principal Register, the party—usually the owner of a competing mark—can oppose the registration. The opposition must be in writing and be filed within 30 days of the proposed mark’s publication in the Official Gazette. The U.S. Patent and Trademark Office (PTO) may grant extensions of the 30-day period upon written request.

If the mark has already been placed on the Principal Register, the party may petition the PTO for cancellation of the registration. (15 United States Code, Section 1064.) A cancellation petition may be filed:

  • within five years from the date the mark is published in the Official Gazette

  • any time, if the mark becomes generic, is abandoned or its use becomes fraudulent in some way, or

  • any time, if the mark is a certification mark and it is being misused (for instance, the registrant no longer exercises control or the registrant begins to manufacture goods subject to the certification).

Marks proposed for placement on the Supplemental Register are not published for opposition. If a party believes that a mark’s placement on the Supplemental Register may cause it harm, the party may file an application with the PTO to have the registration cancelled. (15 United States Code, Section 1092.)

When a petition for opposition or cancellation is filed, or the PTO declares an interference, an inter partes proceeding to resolve the dispute will be scheduled before the Trademark Trial and Appeal Board. (15 United States Code, Section 1067.) At the conclusion of this hearing, the Patent and Trademark Commissioner may:

  • refuse to register the opposed mark (in an opposition case)

  • cancel the registration of a mark or place restrictions on its use (in a cancellation case)

  • refuse to register any mark, or some or all of several marks (in an interference case)

  • register the opposed mark or marks of persons who are found to be entitled to ownership, or

  • order concurrent registration of marks along with conditions or restrictions on their use designed to prevent consumer confusion in the marketplace.

The PTO will cancel a mark on its own—without anyone asking for it—if the mark’s owner fails to timely file a Section 8 and Declaration showing that the mark is still in use. Because this form must be filed between the fifth and sixth years following the initial registration, and because the PTO doesn’t send a reminder, the registrations of many marks are cancelled for this reason. And because the PTO also doesn’t send notice of the cancellation, many trademark owners continue to use their marks in the belief that they are registered, when they’re not.

The fact that a mark’s registration is cancelled in no way affects the right of the mark’s owner to challenge other users of the mark on the basis of first use. But as long as the mark remains unregistered, the owner will not be entitled to the benefits of registration should a trademark infringement suit become necessary.

Related terms: federal trademark registration; interference; ownership of mark in the U.S.

ownership, presumption of

See presumption of ownership.

ownership of mark, international

See international trademark rights.

ownership of mark in the U.S.

In the U.S., ownership of a mark generally comes from first use. Use of a distinctive mark on goods or services in the marketplace is sufficient to establish ownership in that mark unless:

  • someone else is already using the same or similar mark on related goods or services, or

  • an intent-to-use (ITU) application has been filed for the mark.

If, however, a business that is first to use a mark does not federally register it, and a second business uses the mark in a geographically separate market (which means no consumer confusion is likely), it is possible for both businesses to concurrently own the mark.

As mentioned, ownership of a mark may arise from the filing of an ITU registration application, before a mark goes into use. The ownership vests (becomes effective) when the mark is put in use and the application process is complete, but ownership will begin on the date the ITU application was filed.

Whether derived from actual use or from the ITU application, ownership of a mark confers an exclusive right to use that mark in a certain way and in a certain place.

Ownership rights may last forever, unless the mark is abandoned or becomes generic. The fact that a mark is not registered or that a registration is cancelled or not renewed does not affect the basic ownership of the mark, which is primarily based on use. However, additional remedies provided by federal registration will not be available to the owner of an unregistered mark if an infringement occurs.

Although the exclusive right to use the mark initially exists in the geographic area where the mark is being used, if someone uses the same or similar mark in the U.S., the scope of this right depends on the following factors:

  • Which mark was first used anywhere in the United States?

  • Which mark was first subject to a registration application under the Lanham Act on the basis of actual use or an intent to use the mark in the future?

  • Was the first registrant under the Lanham Act the junior user or the senior user?

  • If the first registrant under the Lanham Act was the junior user, did that party know of the mark’s prior use by the senior user?

  • Is there geographical proximity between areas in which two conflicting marks are used?

  • Are the types of products or services to which the marks are attached related or unrelated?

  • Is confusion of consumers likely to result from the use of the two marks?

    EXAMPLE 1: Malou markets her marshmallow cookies, “Malou’s Marvelous Mallows,” in California only. Because there is no interstate use, Malou is only entitled to register her mark under her state’s trademark laws. Lou, who lives in Colorado, decides to market cookies exclusively in Colorado under the name of “Lou’s Marvy Mallows.” Although Lou’s mark is confusingly similar to that used by Malou, Malou probably would have no recourse as long as Lou’s mark was confined to the Colorado market (there would be no likelihood of consumer confusion).

    EXAMPLE 2: Suppose now that Malou markets cookies only on the West Coast while Lou markets his cookies only in the East. Even if Malou federally registered her mark before Lou started using his mark, Malou will not be able to force Lou to stop using his mark unless she can show a likelihood of consumer confusion as a result of the two uses. But since Malou is the national owner of the mark, if Malou later decides to start marketing her product in the East, Lou could be forced to stop using his mark.

    EXAMPLE 3: Using the same facts, with a last wrinkle, if Lou federally registers before Malou and Lou does not know of Malou’s prior use of the mark, Lou will become entitled to exclusive use on a national basis except where Malou is already marketing. If Lou does know of Malou’s prior use or if Malou objects to the registration, however, his registration may be deemed fraudulent and set aside.

These priorities can be somewhat complicated and obviously depend greatly on the facts of each case. We only discuss them to provide the reader with a general idea of the parameters.

Trademark law as it exists today developed at a time when geography played an important role in resolving trademark conflicts. If the same trademark was used by different businesses in different parts of the country, there was no likelihood of customer confusion and therefore no need for intervention by a court unless and until one of the users expanded into the other user’s territory. As more and more businesses start to do commerce on the World Wide Web, however, this concept of territory is becoming less and less important as more and more businesses buy and sell goods and services on the Internet. Although most businesses are still local in the sense that they aren’t franchises or chain stores, doing business on the World Wide Web automatically extends a business’s marketing activity to all parts of the country and world simultaneously.

The more important information becomes to our society, the greater the chance that users of the same mark anywhere in the country or world will be offering goods and services that will compete in that new territory called cyberspace. And this competition will put the marks in competition, a state of affairs that can only lead to trademark infringement issues.

Related terms: assignment of mark; infringement action; Internet, effect on trademark law; licensing of marks; protection of marks under Lanham Act.

palming off

A person engages in palming off (also called “passing off”) when he or she intentionally causes one product or service to be confused with another for commercial gain. Examples of palming off include:

  • substituting one product for another—for instance, representing a computer as having one kind of microprocessor when it has another, or

  • deliberately infringing a mark belonging to another—for instance, using “IBN” as a mark on a new computer line.

Although the phrase “palming off” is appropriate only in situations where there is an intent to confuse, it is sometimes used colloquially to designate any infringement where there is a likelihood of confusion, even where the infringer may not have intended it.

Related terms: confusion of consumers; infringement action; innocent infringer; reverse palming off.

Paris Convention

The primary treaty regulating trademark relations between the U.S. and other countries is called the Paris Convention. The Paris Convention provides that each signatory country will give members of other signatory countries the same protections regarding marks and unfair competition that it affords its own nationals.

Related terms: foreign nationals, registering in U.S.; international trademark rights.

parodies of trademarks

A trademark parody occurs when someone imitates a trademark in a manner that pokes fun at the mark, for example, distributing a newspaper called The San Francisco Comical in order to poke fun at the San Francisco Chronicle. Below are some trademark parody court cases.

A college student sold T-shirts at Myrtle Beach depicting a red, white and blue beer can with the phrase, “This Beach is for You.” Anheuser-Busch, the owners of the Budweiser trademark, filed a lawsuit, seized all of the T-shirts and raided the college student’s home and his mother’s business. A jury determined that the T-shirts were a parody, but the judge overturned the jury verdict and ruled for Anheuser-Busch. An appeals court ruled that the use was a parody. Seven years and several lawsuits later, the parties reached a settlement in which Anheuser-Busch granted a license for sales of the T-shirt. (Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 321 (4th Cir.), cert. denied, 113 S.Ct. 206 (1992).)

During a half-time show, the “San Diego Chicken” mascot initiated a fistfight with Barney, the popular purple dinosaur. A court held the use of the Barney trademark a permissible parody because the aggressive manner in which Barney behaved was not likely to cause consumer confusion. (Lyons Partnership L.P. v. Giannoulas, 14 F. Supp. 2d 947 (N.D. Texas).)

A gaudy, ’60s style nightclub in Houston used the trademark “The Velvet Elvis” and, after being sued by the owner of the Elvis trademark, claimed that the club’s name was an Elvis parody. A court disagreed, pointing out that the intent of the club’s name and decor was to parody the Las Vegas lounge scene and the velvet painting craze, not to parody Elvis. (Elvis Presley Enterprises v. Capece, 141 F.3d 188 (5th Cir. 1998).)

Conflicting case law and the discretionary power of judges make it difficult to predict the outcome of a lawsuit based on trademark parody. It is also difficult to predict when a company will take action against a parodist. Some companies, like Anheuser-Busch, prefer to fight to the end while others believe that chasing parodists generates negative publicity and prefer to let the parody run its course.

As a general rule, a trademark parody is less likely to run into problems if it:

  • Doesn’t compete. That is, the use of the parody product does not directly compete with the trademark product.

  • Doesn’t confuse. That is, the parody does not confuse consumers; they get the joke and do not believe the parody product comes from the same source as the trademarked goods.

  • Does parody. Keep in mind that all humorous uses are not parodies. To avoid trouble, the use should specifically poke fun at the trademark.

    Related terms: fair use; infringement; free speech.

passing off

See palming off.

Patent and Trademark Depository Library

See trademark search.

phonetic or foreign equivalents for marks

In trademark law, a word that sounds the same as another mark, or one that means the same in another language, will normally be treated similarly. If a word or phrase is descriptive or generic (ineligible for protection), simply misspelling or translating it will not make it distinctive (that is, eligible for protection).

EXAMPLE: If DateTime is too descriptive for a singles dating service, then Dayttyme won’t work either. Or, if GoodTimes is considered too descriptive for a party-catering service, then using the French equivalent BonTemps will not help.

Related terms: composite mark; generic mark; international trademark rights.

pictures and symbols used as marks

Pictures and symbols may be protectible as marks if they are distinctive rather than descriptive. For example, the Quaker man on Quaker Oats cereals is a strong, distinctive pictorial mark. Similarly, the apple on Apple computer products is very distinctive and non-descriptive. A generic illustration such as the no-smoking symbol—a diagonal bar through a burning cigarette within a circle —would be barred from trademark use for an anti-smoking product or service.

Related terms: descriptive mark; secondary meaning; trademark, defined.

presidents’ names and likenesses as marks

See prohibited and reserved marks under Lanham Act.

presumption of ownership

If an infringement suit is filed, a court will assume that the owner who is listed on a certificate of registration on the Principal Register is the owner of a mark. This presumption means that the owner does not have to present further evidence to support the ownership claim unless the defendant offers evidence to the contrary. In that event, the certificate holder will need to introduce evidence to back up the ownership claim.

The presumption of ownership is not available for marks on the Supplemental Register (a list of marks that didn’t qualify for the Principal Register because they lacked distinctiveness).

Related terms: certificate of registration; infringement action.

Principal Register

The Principal Register is the list on which distinctive trademarks and service marks approved for federal registration are placed. To qualify for placement on the Principal Register, the mark must be distinctive and:

  • It must not infringe another mark that is already registered.

  • It cannot include certain types of pictures, words and symbols—the U.S. flag; other federal and local governmental insignias; names of living persons without their consent; names or likenesses of dead U.S. presidents without their widows’ consent; words or symbols that disparage living or dead persons, institutions, beliefs or national symbols; or marks that are judged immoral, deceptive or scandalous.

  • It cannot consist primarily of surnames or of deceptive geographical names.

Benefits of placement on the Principal Register include all of the following:

  • It provides official notice to all would-be copiers that the mark is in use on particular goods or services, and that someone claims ownership of the mark for that use.

  • It gives the owner the right to file an infringement action in federal court.

  • It creates a presumption, in the event of litigation, that the registrant owns the mark, requiring the other party to challenge the registrant’s ownership. (Placing the burden of proof on the challenger can often make the difference between winning and losing a lawsuit.)

  • It gives the owner the right to seek an award of treble damages, defendant’s profits and attorney fees.

  • It gives the owner the right to register in countries that afford reciprocal rights to the U.S.

  • It confers on the owner the right to exclusive use of the mark in all parts of the U.S., except where a senior unregistered user may have already been using the mark at the time of registration.

  • After the mark is on the Principal Register for five years, it gives the mark’s owner the right to file for incontestability status. If granted, incontestability status prevents a challenger from challenging the registrant’s ownership on the basis that the registered mark lacks sufficient distinctiveness to warrant protection.

    Related terms: incontestability status; opposing and cancelling a trademark registration; prohibited and reserved marks under Lanham Act; protection of marks under Lanham Act; Supplemental Register.

prinTEAS

See eTEAS.

prior registration countries

Most countries determine ownership of a mark by who registers first, instead of who uses it first. These are called prior registration countries (or first to file countries) to distinguish them from countries that base trademark rights on first use, such as the U.S. However, since the U.S. has permitted the filing of intent-to-use applications, the line between the U.S. and first to file countries has become somewhat blurred.

Related terms: international trademark rights.

profits

See defendant’s profits.

prohibited and reserved marks under Lanham Act

Under the Lanham Act, certain marks may be refused federal registration. (15 United States Code, Section 1052.) These are:

  • marks that comprise “immoral,” “deceptive” or “scandalous” matter. For example, a mark resembling a sex organ would be considered immoral; a mark suggesting miracle properties in a product that are not substantiated would be deceptive; and a mark showing a mutilated corpse would be scandalous.

  • marks that disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs or national symbols.

    EXAMPLE: A mark that showed Clara Barton clad only in a Red Cross-decorated bikini would constitute a disparagement of a person, of an institution (the Red Cross), and, if she were wearing the bikini while embracing Uncle Sam, of a national symbol. A baseball insignia with Babe Ruth’s face would falsely suggest a connection with Babe Ruth unless authorized by his heirs.

  • marks comprising the flag or coat of arms or other insignia of the United States, or of any state or municipality, or of any foreign nation, or any simulation of these items.

  • marks that consist of or comprise a name, portrait or signature identifying a particular living individual (except with his or her written consent), or the name, signature or portrait of a deceased president of the United States during the life of his widow, if any, except with the written consent of the widow.

  • marks that so resemble marks previously registered with the U.S. Patent and Trademark Office that their use is likely to cause confusion or mistake, or to deceive consumers.

  • marks that are merely descriptive, are primarily surnames, geographical names or terms that describe the qualities or characteristics of the product or service. This last category of marks may be placed on the Supplemental Register until they have become well known enough to qualify as distinctive under the secondary meaning rule.

In addition to these prohibitions, certain organizations, such as the Boy Scouts and the U.S. Olympic Committee, have the exclusive right to use their marks and symbols mandated by statute. Similarly, the use of the character and name “Smokey the Bear” is reserved to the Department of the Interior.

Related terms: Principal Register; Supplemental Register.

protection of marks under Lanham Act

The degree of protection offered to a mark under the Lanham Act (the federal statute that addresses trademark protection) depends on many variables, such as:

  • whether the mark is listed on the Principal Register or the Supplemental Register

  • the length of time the registration has been in effect

  • whether the registrant is the senior user or the junior user, and

  • whether the infringer had either actual knowledge or constructive knowledge of the registrant’s mark.

Protection under the Lanham Act varies in scope and effectiveness. The owner of a registered mark can prevent others from later using a similar mark if such use would likely confuse the average, reasonably prudent, consumer as to the source of the product or service.

In addition, owners of such marks can prevent persons in other countries from using the same or a similar mark on their goods or services anywhere in the U.S. where consumer confusion is likely to result. On the other hand, the owner of a registered mark may have to accept another’s use of the same or similar mark in a specific marketing area where the mark has already been in use by the other party.

Although state and federal statutes and court decisions offer unregistered marks some local protection against mark infringement, this protection is greatly expanded if the mark is federally registered under the Lanham Act. For example, by federally registering a mark that’s in use in two or three states, its owner may reserve the rest of the country for the trademark, except in places where the same or similar mark is already in use.

Some provisions of the Lanham Act are available to unregistered trademarks. For example, Section 43(a) of the Lanham Act protects against unfair competition. It makes anyone liable to another business that suffers damages as a result of its use of a false designation of origin, a false description or a misleading mark, word, symbol or name on any goods or services in commerce, in a way that is likely to cause confusion. This is the section most often used when a plaintiff claims that its trade name, unregistered mark or trade dress has been misappropriated.

Related terms: constructive notice of mark under Lanham Act; incontestability status; infringement action; ownership of mark in the U.S.; Principal Register; Supplemental Register; unfair competition.

protection of marks under state law and common law

See state trademark laws.

PTO

See U.S. Patent and Trademark Office (PTO).

public domain

See generic mark.

publication of mark in Official Gazette

See Official Gazette.

publishers of advertising matter

If an infringement of a mark occurs in advertising copy carried in a magazine, newspaper or other periodical, and the publisher has not been made aware of the infringement, the Lanham Act exempts the publisher from liability for money damages or profits. (15 United States Code, Section 1114.)

A court may bar (enjoin) the publication from any future advertising copy carrying the infringing mark unless the effect of the injunction would be to delay the normal publication, delivery or distribution of a scheduled issue. Such a compromise is needed to prevent the injunction from harming the innocent publisher.

If a publisher engages in infringing activity after becoming aware of the infringement, it can be treated like any other deliberate infringer.

Related terms: contributory infringer; false advertising.

puffery

When advertising claims are so broad that consumers do not take them seriously, they are referred to as “puffery” and they do not give rise to claims of false advertising. For example, grand and immeasurable statements such as “world’s greatest detergent” or “the best hamburger in the world” are considered as puffery. Consumers understand that these claims are generalities intended to “puff up” a product. However, if the statement is capable of being measured or the puffery is related to specific attributes, the statement may be subject to false advertising claims.

EXAMPLE: Pennzoil advertised that its motor oil “outperforms any leading motor oil against viscosity breakdown” and provides “longer engine life and better engine protection.” A court determined that these statements were measurable, went beyond puffery and were “literally false.” Castrol Inc. v. Pennzoil Co., 987 F.2d 939 (3rd Cir. 1993).

Related terms: false advertising.

punitive damages

In trademark infringement lawsuits, the Lanham Act bars a court from awarding punitive damages—civil damages that are intended to punish a wrongdoer and serve as an example to future potential wrongdoers. The Lanham Act does, however, authorize treble (triple) damages in instances of egregious and intentional infringement. Also, unfair competition and related laws of many states provide for either punitive or treble damages. Therefore, in an effort to qualify for more generous damages, it is common to charge an alleged infringer with violations of both the Lanham Act and any applicable state laws.

Related terms: damages in trademark infringement cases; state trademark laws; unfair competition.

reasonably prudent consumer

See average, reasonably prudent, consumer.

reconditioned goods

A business selling reconditioned goods, for example, “Rebuilt Compaq computers,” must make it obvious to consumers—unless authorized by the trademark owner—that the goods are reconditioned or contain generic, non-trademarked parts. The words REPAIRED, USED or RECONDITIONED must be prominently displayed with an explanation on the cartons and all printed matter. A claim for false advertising, dilution or infringement may result if consumers are misled to believe that the company is related to, or is an authorized representative of, the trademarked goods. If a reconstruction of goods is especially extensive, the trademark should be removed from the goods and all advertising.

EXAMPLE: A company customized Rolex watches by replacing internal and external elements and adding diamonds to enhance the appearance. The company then advertised and sold these as Rolex watches. The owner of the Rolex trademark (Rolex Watch U.S.A.), sued the company claiming that the addition of non-Rolex parts affected the quality of the watch and its waterproofing and insertion of diamonds affected the functioning of the watch hands. A court prohibited the promotion and sale of the watches under the Rolex trademark since the reconditioning was so extensive that it was a misnomer to call the resulting watch a Rolex. Rolex Watch U.S.A. Inc. v. Michel Co., 50 U.S.P.Q. 2d 1939 (9th Cir., 1999).

“Reg. U.S. Pat. Off.” or “ ”

See notice of trademark registration.

registered mark

Technically, any trademark, service mark, certification mark or collective mark that is placed on a state or federal list of protected marks is considered registered. Registered marks are usually entitled to a higher degree of protection than unregistered marks. However, under Section 43(a) of the Lanham Act, unregistered marks used in commerce receive protection comparable to that provided marks placed on the federal Principal Register.

Because state laws usually provide a mark much less protection than does the Lanham Act, the phrase “registered mark” commonly is understood as applying only to federally registered marks—that is, marks placed on the Principal Register.

Related terms: commerce; Principal Register; Supplemental Register; unregistered mark, protection of.

registered with the U.S. Patent and Trademark Office

See protection of marks under Lanham Act.

registrable matter

Under the Lanham Act, certain parts of a mark may meet the standards for registration while others do not. The parts that do are called registrable matter; those that don’t are disclaimed as unregistrable.

Related terms: disclaimer of unregistrable material; Principal Register; protection of marks under Lanham Act.

registrant

A registrant is any person or business who registers a mark under the Lanham Act or under state registration laws. The registrant is also usually the owner at the time of registration.

Related terms: registered mark.

related products and services

Deciding whether goods or services are related is a key determination in trademark conflicts and in deciding whether a mark qualifies for federal registration. This is because the extent to which goods or services are related will determine whether marks used on them are likely to confuse consumers if the marks are the same or very similar to one another.

How closely related goods or services are considered to be depends on many factors, the most important of which are:

  • the international product/service categories (international classes) to which the goods and services belong. If they are in the same class, they will be presumed to be related and the U.S. Patent and Trademark Office (PTO) will not register the second mark.

  • whether the goods and services pass through related marketing channels. For example, if goods are sold in similar outlets, marketed in similar media, placed near each other in stores, and generally considered similar by the consumer, they will be considered related.

The courts have developed a number of additional criteria to determine when one product or service is related to another, which are used in infringement cases. These are:

  • the likelihood that the goods or services of one business will be mistaken for those of the other

  • the likelihood that one business will expand its activities so that its goods or services will compete with those of another business

  • the extent to which the goods or services of businesses have common purchasers or users

  • the market relationship, if any, between the goods produced, or the services provided, by the two businesses

  • the degree of distinctiveness of the mark in question when compared to a competing mark

  • the degree of attention usually given to trademarks or service marks in the purchase of goods or services of the type provided by the two businesses

  • the length of time during which the allegedly infringing business has used the designation, and

  • the intent of the allegedly infringing business in adopting and using the mark in question.

When products or services are considered to be totally unrelated, the courts will generally find that use of the same or similar mark does not constitute infringement. On the other hand, if the products or services are found to be related, infringement may be found to exist, assuming the other requirements for infringement are also present.

Whether a product or service is considered related or unrelated depends on the exact facts of the case, how the criteria listed above are weighed in light of the facts, and the subjective perceptions of the judge, based on the evidence, as to whether the average consumer might be confused by the use of the same or similar marks on different products or services. In short, there is no firm dividing line between marks that are ruled to be related and those that are not.

EXAMPLE: Ethereal Fragrance Company produces a line of perfumes with the distinctive registered trademark “Ekbara Scents,” which it markets primarily to boutiques in Western states. One day, Ruben Santiago of Portland, Oregon, opens a small printing company specializing in business cards; he calls his product “Ekbara Cards” and markets the cards to small businesses in the Portland area. Ethereal claims infringement and Santiago denies its assertion. The courts could use the following analysis: “Purchasers of business cards will not likely think they come from a fragrance company. In addition, neither business is likely to begin competing with the other. The purchasers of the two products, as well as the distribution channels, are different; there is no relationship between the functions of the two goods; consumers give little attention to the origin of business cards; there is no indication that Ruben Santiago intended to take advantage of Ethereal’s reputation; and length of use is not a factor. Therefore, the uses are unrelated and there is no infringement. The fact that Ethereal has a very strong mark is simply not enough to overcome all the other factors.” On the other hand, if Ruben created a line of scented greeting cards and marketed them under the Ekbara mark to boutiques as well as card shops, he may be held liable for infringement.

Although the use of the same or a similar mark might not result in a finding of infringement under the “related/unrelated” analysis, this does not mean that the alleged infringer may continue to use the mark. Even though no infringement is found, the court may rule that the use of the allegedly infringing mark constitutes dilution of the original mark and restrict further use of the mark on that ground. However, the dilution rule only applies if the original mark is famous.

Related terms: competing and non-competing products; dilution of mark; ownership of mark in the U.S.

renewal of registration

See duration of federal trademark registration.

reservation system for acquiring ownership of mark

See intent-to-use application; international trademark rights.

reverse confusion

In traditional trademark infringement cases, the second user of a trademark confuses consumers into believing that they are buying goods from the first user. However, it is possible that through massive advertising, a second user may create the impression that it is actually the first to use a trademark and that the real senior user is the infringer. This is known as reverse confusion.

EXAMPLE: Big O Tires, a mid-sized regional tire distributor, began marketing a bias-belted tire under the unregistered mark BigFoot in early 1974. The tire giant Goodyear decided to market a radial tire under the BigFoot mark in late 1974. The larger company pumped millions of dollars into its advertising effort, which overlapped Big O’s advertising effort to some extent. As a result, the public began coming to Big O asking for Goodyear’s tire. Angry and disappointed, consumers suspected Big O of stealing the idea from Goodyear. But in fact Goodyear had become aware of Big O’s prior use of the same mark midway into its marketing plans, and had unsuccessfully negotiated to buy the mark from them. Nevertheless, they continued to use the mark. Under a theory of reverse confusion, Big O was awarded a judgment of $4.7 million dollars. (Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 408 F. Supp. 1219 (D. Col. 1976) affirmed 561 F.2d 1365 (10th Cir. 1977).)

The Big O case introduced the theory of reverse confusion, a form of unfair competition, to trademark law. Goodyear competed unfairly because it intentionally undertook conduct with its trademark that deceived the public into thinking badly of a competitor. The traditional likelihood of confusion factors are used in a reverse confusion dispute. The only difference is that the court focuses on the strength of the junior user’s mark rather than the senior user’s. That’s because the essence of reverse confusion is that the senior user’s mark may be less well known than that of the powerful junior user.

Related terms: confusion of customers; unfair competition.

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reverse palming off

Palming off occurs when goods are marketed in a way that makes people think they are really manufactured by someone else; to do this, an infringer usually uses the true trademark on substitute goods. Reverse palming off, on the other hand, occurs when a non-infringing label is placed on someone else’s goods and the goods are then sold under the non-infringing name.

EXAMPLE: Joe Kane buys 500 pairs of Levis (manufactured by Levi Strauss), rips the labels off them, puts his own designer jean label on them, and sells them for twice as much as the going price for Levis.

Either way, the public is being deceived and the owner of the original goods or mark may file a lawsuit under Section 43(a) of the Lanham Act to prevent this type of activity and recover damages caused by it.

Related terms: palming off.

right of publicity

The right of publicity is the right of a person to prevent the use of his or her name or persona for commercial purposes. Although the right of publicity is commonly associated with celebrities, every person, regardless of how famous, has a right to prevent unauthorized use of his or her name or image to sell products. The right extends beyond the commercial use of a person’s name or image and includes the use of any personal element that implies an individual’s endorsement of a product, provided that the public can identify the individual based upon the use.

For example, the right of publicity extends to a performer’s identifiable voice. For this reason, courts have ruled that vocal performances that sounded like singers Tom Waits or Bette Midler could not be used to sell products. In many states, the right of publicity survives death and can be exercised by the person’s estate. Because the right of publicity can trigger a claim of false endorsement or false advertising, these claims are sometimes brought under unfair competition laws, such as Section 43(a) of the Lanham Act. (15 United States Code, Section 1125(a).)

Related terms: false advertising; infringement action; unfair competition.

same or similar mark

Any mark that is enough like another mark in appearance or meaning to lead the average, reasonably prudent, consumer to confuse the two under the circumstances is considered the “same or similar.” Whether any mark is deemed the same as or similar to another mark is necessarily decided on a case-by-case basis.

Related terms: confusion of consumers; counterfeit mark; infringement action.

secondary meaning

Marks that are not distinctive when they are first used can become so in the minds of the consuming public over time and through long, widespread use and/or intensive advertising. This distinctiveness arises from the fact that the mark has acquired a secondary meaning as a mark that transcends the literal meaning of its words.

EXAMPLE: The mark “Dollar a Day” initially just described a service—car rentals for a dollar a day. However, over time, and with the help of an advertising campaign and virtually exclusive use of the phrase by the firm, the phrase lost its descriptive literal meaning and instead stood for a specific car rental service.

If the owner of a non-distinctive mark can show (usually through consumer polls) that the mark has acquired a secondary meaning, the mark will qualify for placement on the Principal Register. Even without such a showing, a mark that is kept in continuous and exclusive use by its owner for five years will be presumed to have acquired such secondary meaning and will qualify for registration on the Principal Register as a distinctive mark.

Related terms: descriptive mark; distinctive mark; Principal Register; Supplemental Register.

secondary register

See Supplemental Register.

Section 8 Declaration

Sometime during the fifth year after federal registration, the trademark owner must file a Declaration of Use of a mark declaring the continued use of the mark (or an explanation as to the special circumstances for any period of nonuse). The declaration must also be filed at the time of trademark renewal. The requirements for the declaration are set forth in Section 8 of the Lanham Act. (15 United States Code, Section 1058.) The fee must be enclosed along with a specimen of the mark as it is currently used for each class of goods or services. In lieu of the specimen, the trademark owner may recite facts as to the sales or advertising that demonstrate that the mark is in use.

If the owner fails to timely file the Section 8 Declaration, federal trademark rights will be canceled. There are no extensions for filing the declaration. The only way to reclaim federal trademark rights is to file a new application for registration. In the event that the mark has been assigned to a new owner since registration, the Section 8 Declaration is filed by the current owner and the change in ownership should be reflected by the current owner filing a copy of the assignment with the PTO. When the Section 8 Declaration is filed for the first time (between the fifth and sixth years of registration) it is usually combined with a Section 15 Declaration. Forms for the Section 8, Section 15 and combined Sections 8 & 15 Declaration can be downloaded from the PTO website (www.uspto.gov).

Related terms: Section 15 Declaration.

Section 15 Declaration

After five years of consecutive use from the date of federal registration, the mark may be declared incontestable. An incontestable mark is immune from challenge except if it has become the generic term for the goods, abandoned for nonuse or the registration was acquired under fraudulent conditions. In order to achieve incontestability, a Declaration of Incontestability must be filed containing the requirements as provided in Section 15 of the Lanham Act. (15 United States Code, Section1065.)

A Section 15 Declaration is not necessary for maintaining ownership or rights under trademark law and the failure to file the declaration does not result in the loss of any rights. However, the filing of the Section 15 Declaration is recommended because it expands trademark rights by making it more difficult to challenge the mark. A Section 15 Declaration form can be downloaded from the PTO website. The Section 8 Declaration and Section 15 Declaration can be combined into one declaration and a copy of this combined declaration can be downloaded from the PTO website.

Related terms: Section 8 Declaration.

Section 43(a)

See false advertising; unfair competition; unregistered mark, protection of.

selling goods or services with infringing marks

See contributory infringer.

senior and junior users of marks

When a dispute exists over the ownership of a mark, the person (or entity) who first used the mark is called the senior user and the second person or entity to use the mark is termed the junior user. Although the senior user will usually be found to be the owner of the disputed mark, this is not always so. For example, if the junior user did not know about the senior user, and is first to register the mark under the Lanham Act or under state laws, the junior user may still be able to use the mark in areas other than where the senior user’s mark is being used.

Related terms: infringement action; ownership of mark in the U.S.

service mark

A service mark promotes a service in the same way as a trademark promotes a product. Examples of services and their marks are Jack-in-the-Box (prepares and sells food), Blue Cross (sells health insurance), Berkeley Repertory Theatre (produces live plays), the Cirque de Soleil (produces a circus) and Greyhound (transports people by bus).

In the U.S., the rules for determining when and how service marks qualify for protection are the same as the rules applicable to trademarks. This means that when you read this book or other sources of information on trademarks, every time you read “trademark” (or “mark”) in relation to a product, you can substitute the words “service mark” and “service” instead. One exception to this general rule is that some states will register trademarks but refuse to register service marks.

Note that a service mark is different from a trade name. A service mark is the name under which the service is promoted; a trade name is the name of the business that does the promoting. McDonald’s Corp. (trade name) prepares and sells food under the service mark McDonald’s, and sells one specific product under the trademark Big Mac. Especially for small businesses, the service mark and trade name are often the same words, but used in different contexts. For instance, Universal Auto Repair is both the name of a business (it appears on the company checks, invoices and stationery) and the name that appears on the sign designed to bring consumers into the shop (that is, a service mark).

Some countries, like the United Kingdom, do not protect service marks at all.

Related terms: trade name; trademark, defined.

similar marks, use of

See ownership of mark in the U.S.; same or similar mark.

slogans used as marks

Advertising slogans that function as marks may be protected as marks. To qualify as protectible marks, slogans must be either:

  • inherently distinctive and creative, or

  • have developed enough secondary meaning to immediately call a product or service to mind.

The more mundane a slogan is, the more secondary meaning the owner will need to show to obtain protection from imitators. For example, the owners of Excedrin had to prove that “Extra Strength Pain Reliever” had developed a strong secondary meaning.

Related terms: composite mark; secondary meaning; strong mark.

state trademark laws

In addition to the federal Lanham Act, all states have laws under which marks may be registered and receive judicial protection should infringement occur. State trademark protections are, like federal law, based on use. However, unlike federal law, no state offers registration on an intent-to-use basis; use of a mark must always precede its state registration. Registering with the state does not give a mark owner significantly greater rights, but it does offer notice to potential infringers who bother to search the registration list, and in a few states may provide litigation benefits (for instance, attorney fees, presumptions of validity of the ownership claim, punitive damages).

Generally, marks used only within a state are limited to invoking state law protections, while marks used in two or more states (interstate), or across territorial or international boundaries, may use both national and state trademark laws. Simultaneously registering under both state and federal systems is a way to provide notice to both local and national competitors of claims of ownership of a mark. It also provides a choice of remedies and courts in which to sue. Also, because the laws of many states provide for punitive damages in situations where the Lanham Act does not, it is common for an infringement action to claim violations of both federal and state trademark statutes.

In addition to trademark infringement laws, most states have laws prohibiting unfair competition (business practices that confuse or deceive the consumer public). Often the facts that prove infringement of a mark will also prove unfair competition, thus most states offer at least two theories under which a business’s mark will be protected.

Although the federal Lanham Act has generally replaced state law as the most important source of protection for marks on goods and services that move between states or across territorial or national borders, the state systems are still the only source of trademark or service mark protection for those businesses, nonprofit organizations, craftspersons, dance and artist groups, theater companies and restaurants that only operate on a local basis.

Finally, a number of states offer protection against dilution of a famous mark. This protects against the use of a famous mark in a context where consumers aren’t likely to be confused but the use is likely to detract from the distinctiveness of the mark. Since the Federal Trademark Dilution Act was signed into law in January 1996, these state statutes are expected to diminish in importance.

A listing of state trademark agencies can be found on the Internet at http://statetm.tripod.com/ or at www.ggmark.com.

Related terms: dilution of mark; presumption of ownership; protection of marks under Lanham Act; unfair competition.

Statement of Use

See Allegation of Use for Intent-to-Use Application, with Declaration.

strong mark

A mark that effectively identifies the origin of a product or service rather than its characteristics is a strong (good) mark and a court can protect it from most or all uses by others. For example, the word “Cobalt” as a mark for a music recording label would be strong. As a word that means a metal and a blue color, its use on music is original and in no way descriptive. Thus it is distinctive and highly protectible. As a general rule, strong marks are made up of terms that are:

  • arbitrary (Owl Ice Co. or Diesel, a Bookstore)

  • coined (Rackafrax Wax)

  • fanciful (Pea in a Pod Maternity Clothes), or

  • suggestive (ShadeTree Restaurant).

Only strong marks are entitled to be listed on the federal Principal Register; however, even unregistered strong marks are entitled to wide protections. Courts can enjoin (prevent) almost any infringing use of a strong mark. The test is whether the allegedly infringing use is likely to cause consumer confusion. The stronger the mark, the greater the likelihood that its use by another will confuse consumers. Because a strong mark stands out as the mark of a particular service or product, any imitation of it would be confusing.

Descriptive marks are weak but they can be made strong by advertising and consumer awareness (secondary meaning). The weaker the mark, the more reluctant a court will be to find it has been infringed, and the less protection it will receive.

Related terms: distinctive mark; Principal Register; related products and services; secondary meaning; weak mark.

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suggestive mark

A suggestive mark is a lesser cousin of the family of distinctive marks, which also includes coined, arbitrary and fanciful marks. Suggestive marks qualify for the federal Principal Register, but are not as strong as their cousins. They escape being descriptive, however, because they suggest interesting qualities or concepts about a product or service, rather than directly describing it. Examples of suggestive marks are “Roach Motel” insect traps and “Accuride” tires.

Whether a mark is descriptive or suggestive is a highly subjective determination depending on how a consumer (or a judge) perceives the word in relation to the product or service. For example, the mark “Enduring” can be descriptive on lipstick, suggestive on a photographic service, and arbitrary/fanciful on ice cream.

As a general rule, the more brain power it takes to see the descriptive qualities underlying a suggestive mark, the greater the protection it will receive.

Related terms: descriptive mark; distinctive mark.

Supplemental Register

The federal Supplemental Register is a secondary list maintained by the U.S. Patent and Trademark Office for trademarks and service marks that do not qualify for the Principal Register. Any name or symbol may be placed on the Supplemental Register as long as it is in actual use in commerce that Congress may regulate and can in some way distinguish the applicant’s goods or services from others.

Descriptive, surname and geographical term marks all qualify for the Supplemental Register. Generic terms do not qualify, since by definition a generic term calls to mind a type of product rather than a specific product. For instance, “Blue Jeans” means any pants made of blue denim, rather than a specific manufacturer’s jeans. Marks that are barred from the Principal Register for reasons other than sheer descriptiveness are also barred from the Supplemental Register.

It is often difficult to prove infringement of a mark listed on the Supplemental Register, because such registration is an admission by the mark’s owner that the mark is insufficiently distinctive to be placed on the Principal Register. Neither trademark nor unfair competition laws protect marks in any significant way unless consumer confusion is likely to result. Consumers are not likely to be confused by dual uses of any marks unless they are well known or memorable—in other words, distinctive. As a result, marks on the Supplemental Register do not receive all the protections given to those on the Principal Register. Specifically, placement on the Supplemental Register does not:

  • provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation

  • support a later claim of incontestability status

  • imply the right to exclusive use of the mark, or

  • allow the mark’s owner to request exclusion of imports by the Bureau of Customs.

On the other hand, supplemental registration does offer some benefits such as:

  • the right to use the circled “ ” or “Reg. U.S. Pat. Off.” abbreviation to discourage would-be infringers

  • the ability to register the mark in countries that offer reciprocal trademark rights, and

  • the right to obtain injunctive relief, money damages, treble damages and defendant’s profits, in the unlikely event that the mark owner should win an infringement action (assuming that the mark bore the proper notice of registration).

An applicant should always apply for the Principal Register first. If rejected, an applicant can then apply for the Supplemental Register.

Related terms: commerce that Congress may regulate; prohibited and reserved marks under Lanham Act; unfair competition.

surnames as marks

The use of surnames (family names) is sometimes a controversial issue because some business owners believe they have an inalienable right to use their own name as a trademark. They are surprised to find they cannot register their name or that someone else has preempted the field. For example, anyone with the family name McDonald or Denny would not be able to obtain a trademark for restaurant services.

A mark that is primarily a surname does not qualify for placement on the Principal Register under the Lanham Act unless the name has become well known as a mark through advertising or long use—that is, until it acquires a secondary meaning. Until then, surname marks can only be listed on the Supplemental Register. To register a mark that consists primarily of the surname of a living person (assuming the mark has acquired secondary meaning), the mark owner must have the namesake’s written permission to register the mark.

Surnames are treated this way because theoretically everyone should be able to use his or her own name to promote their own business or product. In practice, however, as soon as someone establishes secondary meaning for a surname, it becomes off-limits for all uses that might cause consumer confusion. Del Monte, Disney, Spiegel and Johnson & Johnson’s are just a few of the hundreds of surnames that have become effective marks over time.

A trademark is “primarily a surname” if the public would initially recognize it as a surname. However, a mark that is part surname and part distinctive mark may be registrable if the mark as a whole is distinctive, or if the surname is disclaimed as unregistrable material.

For example, two names may be combined (Smith and Wesson) or perhaps a name used with a design may be registrable. The reason for this is that when a surname is used with other matter, the “other matter” can affect public perception diminishing (or perhaps reinforcing) the impact of the surname. If a surname has a dictionary meaning (that is, it also functions as a word), it is treated like any other trademark. For example, King and Bird both have significance other than as a family name.

Whether registered or not, if a name mark has become well known, even a person with the same name may not be able to use that name as a mark. Courts do, however, sometimes permit two conflicting uses of the same surname with modifications to try to minimize consumer confusion. For instance, if McGuffy’s bar faces a crosstown competitor by the same name, the second McGuffy may be forced to use a modifier, such as McGuffy’s Cross-Town Bar.

A person who obviously tries to capitalize on his own name to take advantage of an identical famous mark (for example, Fred Ford opens Ford’s Muffler Service) can be forced to give up all use of that name.

Related terms: composite mark; dilution of mark; disclaimer of unregistrable material; personal names as marks; right of publicity; Supplemental Register.

symbols and pictures as marks

See pictures and symbols used as marks; prohibited and reserved marks under Lanham Act.

TM

Although only marks that are federally registered can use the “ ” symbol, any business that uses a mark can place the “™” symbol after it to publicly claim ownership of the mark. The “™” mark has no legal significance other than to notify the public that the mark owner views the words, design and/or symbol as a protectible trademark. It also may serve as evidence against a claim of innocent infringement by a junior user, and thus enhance the possibility of collecting damages.

Related terms: damages in trademark infringement cases; infringement action.

trade dress

Trade dress consists of all the various elements that are used to promote a product or service. For a product, trade dress may be the packaging, attendant displays and even the configuration of the product itself. For a service, it may be the decor or environment in which a service is provided—for example, the distinctive decor of the Hard Rock Caf restaurant chain.

As with other types of trademarks, trade dress can be registered with the PTO, and receive protection from the federal courts.

To receive protection:

  • the trade dress must be inherently distinctive, unless it has acquired secondary meaning, and

  • the junior use must cause a likelihood of consumer confusion.

For trade dress to be considered inherently distinctive, one court has required that it “must be unusual and memorable, conceptually separable from the product and likely to serve primarily as a designator of origin of the product.” (Duraco Products Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431 (3d Cir. 1994).)

The U.S. Supreme Court found that a Mexican restaurant chain’s d cor could be considered inherently distinctive because, in addition to murals and bright colored pottery, the chain also uses a specific indoor and outdoor decor based upon neon colored border stripes (primarily pink), distinctive outdoor umbrellas and a novel buffet style of service. (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).) However, the Supreme Court ruled that product designs such as the appearance of a line of children’s clothing are not inherently distinctive and can only be protected if they acquire distinctiveness through sales or advertising. (Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 120 S.Ct. 1339, 146 L.Ed. 2d 182 (2000).)

Functional aspects of trade dress cannot be protected under trademark law. Only designs, shapes or other aspects of the product that were created strictly to promote the product or service are protectible trade dress.

EXAMPLE: Many liqueur bottles have a unique shape designed for advertising rather than for any particular function. The tall, tapered shape of the bottle used for Galliano is not necessary to hold the product, but helps to identify it and is therefore protectible as trade dress.

The trade dress aspect of packaging may be protected if a showing can be made that the average consumer would likely be confused as to product origin if another product is allowed to appear in similar dress. Legal protection is provided under the Lanham Act provisions relating to registered and unregistered marks.

Related terms: confusion of consumers; Lanham Act; trademark, defined; unfair competition; WalMart v. Samara.

trade name

Trade names are used to identify both nonprofit and for-profit business entities, whereas marks are used to identify products and services produced by such entities. Under the Lanham Act, a trade name is the name of any commercial firm, association, corporation, company or other organization capable of suing and being sued in a court of law.

Trade names cannot be registered under the trademark and service mark provisions of the Lanham Act. However, they are entitled to protection under the unfair competition provision of the Lanham Act. (15 United States Code, Section 1125.) They are also protected under state unfair competition statutes and court decisions, if the public is likely to be confused by the use of the same or a similar name.

Companies frequently use their trade names as trademarks or service marks for their products and services—that is, as designators of origin in their advertising and on the products. For instance, Apple Computer Corporation uses the trade name “Apple” as a trademark, and the McDonald’s fast food chain uses “McDonald’s” as a service mark. In these situations, the trade name may be registered in its capacity as a mark, and may receive additional protection under the Lanham Act’s provisions applicable to infringement of marks.

Related terms: confusion of consumers; service mark; trademark, defined; unfair competition.

trademark, defined

Manufacturers and merchants use trademarks for the sole purpose of distinguishing their products from those of others in the marketplace, not for any functional purpose. A trademark usually consists of a word, phrase, logo or other graphic symbol. Examples of trademarks are Honda (automobiles), Post (cereals), Hewlett-Packard (computer equipment) and Quicken (software). A trademark is not limited to a brand name or logo. It can also consist of a distinctive shape, letters, numbers, package design, sound, smell, color or other aspects of a product that tend to promote it. Titles, character names or other distinctive features of movies, television, video games and radio programs can serve as trademarks when used to promote a product.

Many people use the term “trademark law” to refer broadly to all the laws that cover how businesses distinguish their products and services from those of others. This includes subjects like trade names, trade dress, commercial misappropriation, unfair competition, unfair business practices and palming off. The above definition, however, focuses on the narrower meaning of “trademark” as a product identifier.

Related terms: federal trademark registration; International Schedule of Classes of Goods and Services; service mark; trade dress.

trademark dilution

See dilution of mark.

trademark infringement action

See infringement action.

trademark owner

See ownership of mark in the U.S.

trademark protection

See protection of marks under Lanham Act; state trademark laws.

trademark search

A trademark search is an investigation to discover any potential conflicts between a proposed mark and an existing one. Preferably done before a proposed new mark is used, a trademark search reduces the possibility of inadvertently infringing a mark belonging to someone else.

Trademark searches are extremely important. If a chosen mark is already owned and/or registered by someone else, the proposed mark may have to be replaced. Obviously, no one wants to discover that a new mark infringes another mark and must be changed after time and expense have been put into marketing, advertising and implementing usage of the mark. In addition, if the earlier mark was registered under the Lanham Act prior to an infringing use, the infringing mark’s owner may have to pay the mark’s rightful owner any profits earned from the infringing use (defendant’s profits).

Although the most thorough trademark searches are accomplished by professional search firms such as Thomson & Thomson, it is also possible to conduct a preliminary online trademark search to determine if a trademark is distinguishable from other federally registered trademarks. This can be accomplished using the PTO’s free trademark database at www.uspto.gov which provides free access to records of federally registered marks or marks that are pending (applications undergoing examination at the PTO). Privately owned fee-based online trademark databases often provide more current PTO trademark information. Below are some private online search companies:

  • Saegis (www.thomson-thomson.com)

  • Dialog (www.dialog.com)

  • Micropatent (www.micropatent.com)

  • Trademark.com (www.trademark.com)

  • Trademark Register (www.trademarkregister.com).

  • Marksonline (www.marksonline.com), and

  • LEXIS/NEXIS (www.lexis-nexis.com).

It’s also a good idea to check the World Wide Web for a possible conflict with existing domain names as well as names of firms already doing business there. The report issued by the searcher notes all uses of identical or similar marks and the products or services on which they are used.

If the search fails to disclose use of the same or similar mark by anyone in a related business, the mark owner can feel free to use it and register it federally (if used in commerce), or with the state (if only used within one state).

Related terms: damages in trademark infringement cases; federal trademark registration; Internet domain names.

Trademark Trial and Appeal Board

An administrative arm of the U.S. Patent and Trademark Office, this body hears and decides disputes involving the registrability of, or conflicts between, marks. The Trademark Trial and Appeal Board consists of the Trademark Commissioner, the Deputy Commissioner, Assistant Commissioners and members appointed by the Trademark Commissioner.

Related terms: opposing and cancelling a trademark registration; U.S. Patent and Trademark Office (PTO).

UDRP

In 1998, the international agency that oversees domain names (ICANN) established a dispute resolution procedure for trademark owners who believe that their domain name has been hijacked. The Uniform Dispute Resolution Procedure (UDRP) is a non-binding arbitration procedure that is usually resolved within 60 days—much faster than any court decision would take. However, some commentators have argued that the UDRP procedure has become more cumbersome and expensive than originally intended and occasionally unpredictable in its outcome. In addition, since the UDRP results are not binding, either party can take the case to a local court if unhappy with the result. Also, based upon past ICANN arbitrations, the odds seem to be stacked heavily in favor of the person who has or claims to have trademark rights. To review the ICANN dispute resolution rules, go to www.icann.org/udrp/udrp.htm.

unfair competition

Unfair competition is the legal umbrella that governs any commercial activity that tends to confuse, mislead or deceive the public about the sale of products or services. Such diverse activities as trademark infringement, trade name infringement, simulation of trade dress and packaging, palming off, false advertising, false designation of origin and theft of trade secrets all constitute unfair competition. Once a court defines any given activity as “unfair competition,” it generally is authorized to enjoin (judicially prevent) further activity from occurring, and to award money damages.

Although most unfair competition law in the U.S. has been fashioned by legislatures and courts at the state level, Section 43(a) of the Lanham Act provides remedies for a broad range of activity generally described as unfair competition.

EXAMPLE: For two years, Henry Landberry has run a stand on a popular North Carolina beach selling “Landberry’s Homemade Cherry Cider.” One day, Paul Landberry (no relation), decides to establish a “Landberry’s Homemade Peach Nectar” stand at the other end of the same beach, hoping to cash in on Henry’s success. Even though Henry cannot register his mark (because it is primarily a surname that has not yet acquired secondary meaning), he can go to court to get Paul ordered (enjoined) to cease using the Landberry name because its use deceives consumers into thinking both products come from the same source. Henry can use the North Carolina unfair business practices act to do this, and possibly the unfair competition provision in Section 43(a) of the Lanham Act, if his service affects commerce that crosses state, territorial or international boundaries (for instance, assume the beach is famous and visited by people from all over the world).

State unfair competition laws provide judicial relief in situations where a mark or trade name has been copied or simulated, but where federal or state trademark infringement laws don’t apply. Also, in most cases where trademark or service mark infringement is alleged, unfair competition claims are also raised as an alternative basis for judicial relief, in part because state law may offer the successful plaintiff the chance to get more money in the form of damages.

Related terms: false advertising; loss of mark; secondary meaning; unregistered mark, protection of.

unregistered mark, protection of

Unregistered distinctive marks are entitled under the Lanham Act to nearly as much protection from infringement as are registered ones. Federal registration does, however, make it easier to prove infringement and recover significant damages; thus strong marks are usually registered.

The federal unfair competition statute, Section 43(a) of the Lanham Act (15 United States Code, Section 1125), is the main mechanism for protecting unregistered marks and trade names in interstate commerce. It prohibits two basic types of commercial activity (which are, in most cases, also treated as unfair competition under state laws):

  • the use of a mark or label to designate falsely the origin of any product or service, and

  • the description of a product or service in false terms (that is, false advertising).

If the products or services carrying the false designation or description were used in interstate commerce, anyone who engages in such activity may be sued in federal court by a person or business who can prove resulting economic injury.

This type of unfair competition suit for infringement of unregistered marks is not technically a trademark infringement action due to the lack of registration. Such an action does, however, enable the owner of an unregistered mark to use the federal courts to stop the use of a similar mark that is likely to lead to consumer confusion. But the plaintiffs in such an action do not get some of the litigation benefits of federal registration, such as presumption of ownership, constructive notice and incontestability. They are, however, entitled to recover triple damages and possibly attorneys’ fees in case of a willful infringement.

Related terms: false advertising; Lanham Act; registered mark; unfair competition.

unregistrable material

See disclaimer of unregistrable material.

unrelated goods and services

See related products and services.

U.S. Patent and Trademark Office (PTO)

The PTO is the federal governmental wing of the U.S. Department of Commerce that governs trademark registration. As a practical matter, the PTO determines the initial degree of protection that a mark is likely to receive in the courts. If registration of a mark is disputed, the Trademark Trial and Appeal Board, an arm of the PTO, will hold hearings to resolve the dispute.

Related terms: federal trademark registration; Official Gazette.

use it or lose it

See abandonment of mark.

use of mark

The term “use” has a special meaning when it comes to protection and registration under the Lanham Act. As a general rule, “use” means that the mark has been, is being or will be actually utilized in the marketplace to identify goods and services. This doesn’t mean that the product or service actually has to be sold, as long as it is offered to the public under the mark in question.

A mark is being used for a service if the service is being marketed under the mark and the service can be legitimately delivered upon request by a consumer.

A mark is used for goods if the mark is place on the goods or on labels or tags attached to them, and the goods are shipped to a store for resale. However, sales made only for the purpose of getting a mark in use don’t count.

Related terms: commerce; service mark; trademark, defined.

Victoria’s Secret case, (Moseley v. Secret Catalogue, Inc)

Victor’s Secret, a New Jersey store, sold adult videos, adult novelties, hosiery, temporary tattoos and lingerie. Victoria’s Secret—a lingerie and clothing company that distributes over 400 million catalogs annually—asked the New Jersey store to change its name. The store complied, altering its name to “Victor’s Little Secret.” When the store refused to modify the name further, Victoria’s Secret sued for dilution arguing that Victor’s Little Secret tarnished and blurred their famous mark. The district court and court of appeals agreed with Victoria’s Secret but the Supreme Court reversed. The Supreme Court acknowledged that the Victoria’s Secret trademark was a valuable and famous mark and that consumers made a mental association when seeing the two trademarks—Victoria’s Secret and Victor’s Little Secret. But the mental association, by itself, was not enough to prove dilution. In order to prove dilution, the Court ruled that the trademark owner must demonstrate actual harm. The case was remanded for a new trial. Many commentators believe that the ruling will make it harder for some famous marks to claim dilution because the trademark owner will have to demonstrate actual harm—that is, that consumers actually believed that the mark was tarnished or blurred by the second use. (Moseley v. Secret Catalogue, Inc., ___ U.S. ____ (2003).

Related terms: trade dress.

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 120 S.Ct. 1339, 146 L.Ed. 2d 182 (2000), the Supreme Court ruled that product designs, like colors, are not inherently distinctive. Samara created a line of children’s clothing that featured one-piece seersucker outfits decorated with appliques of hearts, flowers, fruits, and the like. Wal-Mart authorized another clothing company to copy Samara’s designs and then sold the knock-offs at a lower price than that offered by Samara. Samara sued Wal-Mart and a district court ordered Wal-Mart to pay Samara $1.6 million. The Supreme Court eventually overruled that decision, holding that the designs were not protected under trademark law because they were not distinctive. The result is that no matter how creative and clever a product design is made, it will only be protected under trademark law if the owner can demonstrate secondary meaning—that the public associates that product design with one source.

weak mark

Trademark protection is based around a “strength” classification system. Strong trademarks are distinctive and are protectible. Weak trademarks are not distinctive. Weak marks cannot be registered or protected unless the trademark owner pumps up the mark with consumer awareness or “secondary meaning.”

As a general rule, the more that the mark describes the goods or services (for example, Shake ‘n Bake), the weaker or less distinguishable the mark. In some cases, if a mark is so descriptive that it is indistinguishable from the goods or service (for example, Light Beer for a beer low in calories), then it may be generic or too weak to ever obtain protection.

There are three common types of weak marks: descriptive marks that merely describe the nature, quality, characteristics, ingredients or origin of a product or service; geographic marks that describe the origin or location of the goods or services; and family names (surnames) that are used as trademarks. All weak marks are capable of becoming strong if secondary meaning can be demonstrated.

Related terms: descriptive mark; generic mark; geographic terms as marks; surnames as marks.

words in common use

See common use of mark; weak mark.

willful infringer

See deliberate infringer.

World Intellectual Property Organization (WIPO)

See international trademark rights.

World Wide Web and trademarks

See Internet, effect on trademark law.




Patent Copyright & Trademark
Patent, Copyright & Trademark: An Intellectual Property Desk Reference
ISBN: 1413309208
EAN: 2147483647
Year: 2003
Pages: 152

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