Question: What about common words that are used for many purposes?
Answer: Common words and alphabetical letters can be protectable trademarks if they are used in arbitrary or unusual ways. One cannot trademark DIESEL to sell that generic type of fuel, otherwise no other diesel fuel dealer could use the word to identify the product. However, one could trademark DIESEL as a brand of ice cream. The owner of the ice cream mark can't use its rights to prevent fuel dealers from using the word on their station pumps nor can it prevent anyone else from using the word for non-trademark purposes, such as a website listing diesel fuel dealers.
In general, the more a mark describes the good or service that it labels, the less strong the trademark protection it gets and the more freedom others have to use the same word for other purposes.
See also this question on the strength of trademarks.
>>top
Question: Do I have to register my brand name to get trademark rights?
Answer: Not in the United States. Here, you do not need to register a mark to establish rights to it, though registration provides important advantages. Registering a mark means that the registrant is presumed to be the owner of the mark for goods and services specified in the application. This makes proving your rights easier in court.
However, US federal law also provides rights to unregistered (?common law?) marks if they are actually used in commerce. In addition, each state provides local protection for both registered and unregistered marks under regulations governing unfair competition. Most other countries require prior registration to protect a mark.
If you register a trademark with the PTO, you have rights to the mark only in the United States and its territories. If you want protection in other countries, you must register the mark in each country in which you want to protect it. However, you can file a single trademark application that covers all the European countries. Contact an attorney for help on rights and procedures in other countries.
>>top
Question: How do I register a trademark?
Answer: There are three ways to register:
file a use application, which lets someone who is already using the mark register it,
file an intent to use application, which states that you honestly intend to use the mark in commerce. The mark must be associated with commerce, instead of simply being a mark that you want to reserve. Merely using the mark in advertising or promotion does not qualify under this category -- the use must be associated with an actual commercial purpose, or
(non-US applicants only) file based on an existing foreign registration.
All applications require a fee. Remember that it is not necessary to register a trademark to gain protection in the United States.
Four months after registration, the trademark application is examined by an attorney at the PTO. The attorney determines whether the mark is registerable. If not, the applicant receives a letter stating the grounds for refusal and information on needed corrections (if applicable). If the attorney requests additional information, the applicant has six months to respond; after six months, the application is deemed abandoned.
The most common reason for being unable to register is that the mark is confusingly similar to an existing mark. If the attorney finds a conflicting mark and cannot grant the application, the PTO does not refund the application fee.
If the mark can be registered and the application passes, the attorney approves the mark for publication in the PTO?s Official Gazette. When the mark is published in the Gazette, anyone who opposes registration must state their opposition within thirty days.
For marks used in commerce before filing that are unopposed, the PTO registers the mark, and the certificate of registration is available about twelve weeks after publishing. If the application is based on intention to use the mark in commerce, the PTO issues a notice of allowance. This notice lasts for six months, during which the applicant must
use the trademark in commerce and submit a statement of use, or
request an extension to file a statement of use.
Once the PTO approves the statement of use, registration is complete.
Anyone with trademark rights can use the trademark symbol TM or service mark symbol SM to designate ownership. This serves notice to the public that you have claim to the designated mark. However, only a mark registered with the PTO may use the symbol ?.
>>top
Question: What is a trade name?
Answer: Answer: A trade name is the actual name of the company. It may or may not also be a trademark. Trademarks are used to label specific goods or services; trade names identify the organization itself. For example, "Ford Motor Company" is a trade name as well as a trademark. "Bronco" is a trademark only. In those cases, if the trade name is registered as a domain name, the name owner is protected against cyber-squatting under traditional trademark provisions and also under the newer Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Dispute Resolution Policy (UDRP) of ICANN.
If a trade name is not used as a trademark, it may still be protected under other kinds of laws (having different criteria and remedies), such as unfair competition. However, if the trade name is registered as domain name, the owner will not be protected against cyber-squatting under the Anti-Cybersquatting Consumer Protection Act (ACPA) or the Uniform Dispute Resolution Policy (UDRP) of ICANN since they both apply only to trademarks.
>>top
Question: What is the difference between a trademark and a service mark?
Answer: Trademarks refer to goods and products, that is, physical commodities which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed.
Service marks refer to intangible activities which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.
Because the legal rights are essentially the same, the term "trademark" is frequently used to refer to both types of marks.
To learn about other types of marks, see Chapter 100 of the USPTO's Trademark Manual of Examining Procedure.
To tell whether something is a good or a service, see 37 C.F.R. ?6.1.
>>top
Question: Where can I find federal trademark law?
Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered.
Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.
>>top
Question: Where can I find state trademark law?
Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and remedies.
If marks are used in interstate commerce, then federal law will also apply.
>>top
Question: What are the benefits of federal trademark registration?
Answer: Federal registration of a trademark has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration.
Registration Provides the Following:
1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
>>top
Question: What are "common law" rights in a trademark?
Answer: Common law rights are those that are recognized by courts as a matter of traditional equitable principles and fairness, even when there is no statute or other law that has been enacted by the legislative branch of government to cover the situation. It also arises from the leeway that judges have in interpretating the language of the written laws when the meaning is not clear. Common law is often known as "judge-made" law. Common law is learned by reading the actual decisions made by courts.
>>top
Question: What are the limits on dilution?
Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark.
A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games.
Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer.
The following uses of a famous mark are specifically permitted under the Act:
1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.
In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient.
Many states also have antidilution laws protecting mark owners.
>>top
Question: What does "Secondary Meaning" refer to?
Answer: Many words are commonly used in ordinary language. Can they become trademarks? They can if they acquire special significance in reference to particular goods. For example, "apple" is a common word, but also a trademark for computers and for recordings. The word has acquired "secondary meaning" in each product category because consumers associate it with a particular brand of product.
Secondary meaning gives trademark owners protection, but does not prevent people from using the same word for other types of products or in common conversation.
>>top
Question: What is trademark tarnishment?
Answer: Trademark "tarnishment," a kind of dilution, can occur if a non-owner uses the mark in connection with shoddy or unsavory products or services, illegal activity, or activity that is likely to offend the average person. For example, using a Walt Disney trademark on a website filled with pornography could be claimed to tarnish the reputation of the Disney mark in the minds of viewers who saw this material. Tarnishment is not always actionable -- it might be non-commercial or parody use.
>>top
Question: What is contributory trademark infringement?
Answer: Even if you are not using someone's mark directly in a product or service you sell, your opponent may say you have liability under the theory of "contributory trademark infringement." This liability may exist if you knowingly allow someone else to violate another party's trademark rights and personally gain from such violation. It may also exist if you intentionally encourage another person to violate a trademark.
For example, in one case a court found that the operator of a California swap meet was liable for contributory trademark infringement because it was aware that vendors at its swap meet were selling counterfeit recordings that violated the trademark of the company that owned the rights to the recordings. While the swap meet operator did not sell the counterfeit items itself, it profited on the sale of the items by selling booth space to the vendors and collecting an entrance fee from the customers buying the infringing products. In another case the manufacturer of a generic drug was found liable for contributory trademark infringement because it continued to supply the drug to pharmacists it knew were mislabeling the drug with the name of the trademarked medication.
However in another case a court felt that a company providing domain name registration, had less control over the use of its service and was not liable for contributory trademark infringement when someone registered a domain name that infringed a trademark.
The important issues in determining liability for contributory trademark infringement are if you are aware of the infringement, if you have the ability to monitor and control the use of your product or service, and you are in a position to receive some benefit from the violation.
>>top
Question: Why do trademark owners worry about meta tags?
Answer: A meta tag on a Web page stores key words describing the Web site to a search engine for use when someone searches for one of those keywords. Some courts have held that it is trademark infringement when one company uses another?s trademark to attract people who search for the competing company. There are meta tag uses that are considered fair use -- for example, when a site uses a descriptive term that is also a trademark.
>>top
Question: What does it mean to take all reasonable steps to protect a trademark?
Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services.
If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial.
If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement.
Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark distinctive.
>>top
Question: What is "goodwill"?
Answer: Goodwill is a business or trademark owner's image, relationship with customers and suppliers, good reputation, and expectation of repeat patronage. It is the value a trademark owner builds in a brand.
>>top
Question: What is a "generic name"?
Answer: A generic word is one used by much of the public to refer to a class or category of product or service. A generic name can not be protected or registered as a trademark or service mark. For example, no one seller can have trademark rights in "telephone" or "oven." If a seller did have exclusive rights to call something by its recognized name, it would amount to a practical monopoly on selling that type of product. Even established trademarks can lose their protection if they are used generically: thermos and escalator are famous examples.
>>top
Question: What is a "counterfeit" mark?
Answer: The Lanham Act defines a counterfeit mark as a false mark which is identical to or substantially indistinguishable from a registered mark.
>>top
Question: What is the difference between copyright and trademark?
Answer: Copyright protects original expression in literary and artistic works such as plays, books, films, songs, software, performances, etc.). To qualify for copyright protection, a work must be an original creation of the author and not copied from any other source. In the U.S., copyright does not protect facts. Individual words cannot be copyrighted, and there is a gray area of protection for short phrases. Copyright owners have strong rights to prevent copying of their material, subject to the doctrine of "fair use." Copyrights arise when the work is fixed in a permanent form. Infringement consists of copying, publicly distributing, making changes to, or publicly distributing or performing the work without the author's permission.
Trademark only protects names and logo images that are used to label goods or services. Trademark does not require originality; its purpose is to identify the source of goods. In the U.S., trademark rights arise only when there is actual use in commerce. Infringement consists of selling goods or services under the same or a confusingly similar name. Trademark has its own types of "fair uses" including use for product comparison and criticism, news reporting, and parody.
>>top
Question: What defenses are there to trademark infringement or dilution?
Answer: Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody.
Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary (trademark), meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to describe its cereal as consisting of "all bran," without infringing upon Kelloggs' rights in the mark "All Bran." Such a use is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that the defendant's use of "fish fry" to describe a batter coating for fish was fair use and did not infringe upon the plaintiff's mark "Fish-Fri." Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are privileged because they use the terms only in their purely descriptive sense.
Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer's product, not the user's own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark "New Kids on the Block" was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party's products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
Finally, certain parodies of or using trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of incorporating such First Amendment interests into the analysis. For example, some courts have applied the general "likelihood of confusion" analysis, using the First Amendment as a factor in the analysis. Other courts have expressly balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that parodies involve commercial use of the mark.
So, for example, a risqu? parody of an L.L. Bean magazine advertisement (L.L. Beam's "Back to School Sex Catalog") was found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like character named "Spa'am" in a Muppet movie was found not to violate Hormel's rights in the trademark "Spam." Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). On the other hand, "Gucchie Goo" diaper bags were found not to be protected under the parody defense, Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo "Enjoy Cocaine" were found to violate the rights of Coca-Cola in the slogan "Enjoy Coca-Cola", Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). In short -- although the courts recognize a parody defense, the precise contours of that defense are difficult to outline with any precision.
>>top
Question: What does the PTO's refusal to register a trademark mean?
Answer: The Trademark Office can reject a proposed mark for a number of reasons, for example, that the term does not function as a trademark (does not identify the source of goods or services), that the term is generic for the goods or services, or that the term is likely to cause confusion with an existing registered mark. Further, an application might be rejected because of non-compliance with procedural rules, such as improperly specifying the class in which the mark is used. If the applicant does not respond to the "office action", the application is abandoned.
See the Trademark Office's Frequently Asked Questions for more.
>>top
Question: What is trade dress?
Answer: Trade Dress is a distinctive, nonfunctional feature, which distinguishes a merchant's or manufacturer's goods or services from those of another. The trade dress of a product involves the "total image" and can include the color of the packaging, the configuration of goods, etc... Even the theme of a restaurant may be considered trade dress. Examples include the packaging for Wonder Bread, the tray configuration for Healthy Choice frozen dinners, and the color scheme of Subway sub shops. Such a broad and ambiguous definition makes trade dress very easy to manipulate. Seeking protection against trade dress infringements can be vital to the survival of a business.
>>top
Question: What is trademark misuse?
Answer: Trademark Misuse is a largely theoretical argument about how a trademark holder can use its rights. It would be similar to the defenses brought in copyright and patent cases, which dictate that if the owner of the intellectual property rights (e.g. a patent or copyright) over-exerts its rights (e.g forces someone to buy an unrelated product to gain acess to the protected work), then the copyright or patent holder loses its right to sue for infringement.
Recently, the theory was employed in challenging Network Solutions' dispute policy which held that registered trademark holders had the right to have Network Solutions immediately freeze any allegedly infringing domain names until the dispute was settled. It was argued that often claims with little or no support were being alleged by registered trademark holders so as to prevent possibly infringing sites from materializing. Although the trademark holder's registration (and rights) were not cancelled, the argument that giving "extra" rights to registered trademark holders was unfair ultimately led to a change in Network Solution's dispute policy.
It is believed that the trademark misuse theory may still prove useful where a domain name owner is forced by a trademark owner to litigate or arbitrate a frivolous claim of infringement.
>>top
Question: What is a "coined term"?
Answer: A coined term is a made-up word, such as Kodak or Xerox, with no pre-existing use than as a trademark. These generally receive the strongest protection under the law because they are usually not similar to other terms or descriptive of other goods.
>>top
Question: What is non-commercial use of a trademark? Is non-commercial use infringment of a trademark?
Answer: Non-commercial use of a trademark is generally that use which is not related to the sale of goods or services. If no funds are solicited or earned by using someone else's mark, this use is not normally infringement.
Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
One example of non-commercial use is descriptive use (where the name is used to describe something, such as "He went to MacDonald's for lunch" or "She was wearing the MacDonald tartan.")
>>top
Question: What is Section 43(a) of the Lanham Act?
Answer: The Lanham Act is the basic federal trademark and unfair competition law. Section 43(a) (15 U.S.C. 1125(a)) is intended to protect consumers and competitors against false advertising and false designations of origin.
The law allows for suit against someone who makes false claims about its own or a competitor's products.
Sec. 1125. False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
>>top
Question: I want to complain about a company. Can I use their name and logo?
Answer: Yes. While trademark law prevents you from using someone else's trademark to sell your competing products (you can't make and sell your own "Rolex" watches or name your blog "Newsweek"), it doesn't stop you from using the trademark to refer to the trademark owner or its products (offering repair services for Rolex watches or criticizing Newsweek's editorial decisions). That kind of use, known as "nominative fair use," is permitted if using the trademark is necessary to identify the products, services, or company you're talking about, and you don't use the mark to suggest the company endorses you. In general, this means you can use the company name in your review so people know which company or product you're complaining about. You can even use the trademark in a domain name (like walmartsucks.com), so long as it's clear that you're not claiming to be or speak for the company.
Since trademark law is designed to protect against consumer confusion, non-commercial uses are even more likely to be fair. Be aware that advertising may give a "commercial" character to your site, and some courts have even gone so far as to say that links to commercial sites makes a site commercial. (See PETA v. Doughney)
>>top
Question: Can I use a trademark in my blog's name or in the title of a blog post?
Answer: Yes, if it is relevant to the subject of your discussion and does not confuse people into thinking the trademark holder endorses your content. Courts have found that non-misleading use of trademarks in URLs and domain names of critical websites is fair. (Bally Total Fitness Holding Corp. v. Faber, URL
http://www.compupix.com/ballysucks; Bosley Medical Institute v. Kremer, domain name
www.bosleymedical.com). Companies can get particularly annoyed about these uses because they may make your post appear in search results relating to the company, but that doesn't give them a right to stop you.
Sometimes, you might use a trademark without even knowing someone claims it as a trademark. That is permitted as long as you're not making commercial use in the same category of goods or services for which the trademark applies. Anyone can sell diesel fuel even though one company has trademarked DIESEL for jeans. Only holders of "famous" trademarks, like CocaCola, can stop use in all categories, but even they can't block non-commercial uses of their marks.
>>top
Question: Is there a DMCA notice-and-takedown requirement for trademark?
Answer: No. The DMCA Safe Harbor and notice-and-takedown requirements apply only to claims of copyright infringement. However, because CDA 230's immunity does not apply to trademark either, Internet hosts may be concerned about possible contributory liability if they do not remove alleged trademark infringement once notified of it.
>>top
Question: What are some of the trademark issues that frequently arise online?
Answer: Trademark issues can arise around use of marks (words or images) in web pages, in domain names, in advertisements or keywords. A few of the most frequently-referenced questions include:
Question: What can be protected as a trademark?
Answer: You can protect
names (such as company names, product names)
domain names if they label a product or service
images
symbols
logos
slogans or phrases
colors
product design
product packaging (known as trade dress)
Question: What exactly are the rights a trademark owner has?
Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.
There are two trademark rights: the right to use (or authorize use) and the right to register.
The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.
The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).
Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.
Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.
Question: What implication does alleged confusion have on claims of trademark infringement?
Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include:
proof of actual confusion
strength of the established mark
proximity of the goods in the marketplace
similarity of the marks? sound
appearance and meaning
how the goods are marketed
type of product and how discerning the customer is
intent behind selecting the mark
likelihood of expansion in the market of the goods
Question: What are the limits of trademark rights?
Answer: There are many limits, including:
Fair Use
There are two situations where the doctrine of fair use prevents infringement:
The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
Nominative fair use
This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
the product or service cannot be readily identified without the mark
he/she only uses as much of the mark as is necessary to identify the goods or services
he/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant
Parody Use
Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody.
Non-commercial Use
If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially.
Product Comparison and News Reporting
Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt.
Geographic Limitations
A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy's Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy's Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused.
Non-competing or Non-confusing Use
Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark.
Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?
Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same.
Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion.
You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.
A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.
A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.
A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.
Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).
If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.
There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.
Question: What do these registration numbers mean? or Why don?t I have any registration numbers in my C&D?
Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.
If your opponent has registered its mark on the Patent & Trademark Office?s register, then you know that litigation about the mark could occur in federal court. If your opponent has not included any registration numbers, you still could be sued in federal court, but your opponent might simply be relying on state law (or just trying to scare you). If the C&D does not reveal any registration numbers, you should ask if the marks are registered.
If the opponent has included registration numbers, look them up on the Patent & Trademark Office's Trademark Electronic Search System (TESS). You can check the status of a trademark by entering the registration number into TESS's search engine. If your opponent's trademark is labeled "LIVE," then it is likely to be protected by federal law; if TESS labels the mark "ABANDONED," then you have reason to believe that federal law will not protect it (although even abandoned marks can garner protection in some instances). Pending trademark applications are also marked "LIVE", but they do not get a "Reg. Number" unless/until the registration issues.
A Community Trade Mark (CTM) offers regional trademark protection throughout the European Union. The CTM database of registered marks is OAMI-Online.
Question: What does the "reservation of rights" language mean? What are they "waiving" at me?
Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.
Question: What are the limits on dilution?
Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark.
A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games.
Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer.
The following uses of a famous mark are specifically permitted under the Act:
1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.
In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient.
Many states also have antidilution laws protecting mark owners.
Question: Is there a DMCA notice-and-takedown requirement for trademark?
Answer: No. The DMCA Safe Harbor and notice-and-takedown requirements apply only to claims of copyright infringement. However, because CDA 230's immunity does not apply to trademark either, Internet hosts may be concerned about possible contributory liability if they do not remove alleged trademark infringement once notified of it.
For more information on Trademark, see the FAQs on Trademark. For more information on Trademarks and Domain Names, see Domain Names and Trademarks.
>>top
Maintained by Berkman Center for Internet & Society
