Identifying source :
Identifying the source of a product or service for the consuming public is the primary objective of trademark law. As such, the Trademark Act grants exclusive rights only to those trademarks enabling a consumer to discriminate between different brands of goods and services. The consumer need not be able to discern the precise manufacturer or service provider by company name. It is enough that the consumer can determine that the maker of this brand is different than the maker of another. For example, nothing in the trademark “Kix” for breakfast cereal tells the consumer that it is manufactured by General Mills. To determine company information, a consumer would have to look elsewhere on the cereal box. What is important is that when the consumer sees a corn-based, puffed cereal with the name “Kix” on it, the consumer instantly knows it is manufactured by an entity different from a similar corn-based, puffed cereal that does not have the word “Kix.”
Immoral marks (scandalous marks) :
Marks consisting of immoral or scandalous matter cannot be federally registered. Courts have defined scandalous marks to include marks giving offense to the conscience or moral feelings; exciting reprobation, calling out condemnation for a substantial composite of the general public. In re McGinty, 660 F.2d 481 (1981). A fairly recent example of a mark denied registration on the basis of being immoral is the mark DICK HEAD’S accompanied by the logo depicting male genitalia, for restaurant and bar services. In re Wilcher Corp. 40 USPQ2d 1929 (1996).
Importation restrictions :
There are a couple steps trademark owners can take to prevent the importation into the United States of counterfeit goods, gray-market goods, or goods that bear confusingly similar marks. First, the owner of a trademark registration or the user of a trade name for six months can record their marks with U.S. Customs who can stop the importation of such goods. Second, the trademark owner can petition the International Trade Commission who has the power to issue temporary or permanent exclusion orders that bar the importation of goods.
Ingredients, protection of :
As long as an ingredient in a product is also used as a trademark, it is worthy of trademark protection. An example would be where a cat litter product contains the substance, “REDGUARD,” and a manufacturer or cat litters features the word “REDGUARD” on its label as a way of distinguishing the product from others.
In gross assignment :
Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and can result in abandonment of the trademark. If so, the person to whom the mark was assigned will no longer have the benefit of the assignor’s earlier first use date to establish priority, but must instead start over with the priority date being the assignee’s own first use date.
Incontestability status :
A benefit granted to owners of federal trademark registrations, allowing them to prohibit challenges pertaining to the owner’s exclusive rights in a mark. Incontestability can help prevent attacks on the basis that the mark is confusingly similar to another mark, that it is functional, or that it lacks secondary meaning. Incontestability status does not mean a mark is attack-proof. However, the most expensive challenges to defend against are virtually eliminated when you have an incontestable mark. Incontestable marks are still subject to challenges that (1) the mark is generic, (2) the mark was obtained through fraud in registration, (3) the owner has abandoned of the mark, (4) the mark misrepresents the source of goods or services, or it is scandalous in nature, (5) defendant’s use is a fair use of the mark, (6) defendant’s adoption and use of the mark was prior to plaintiff’s registration, (7) defendant’s registration of the mark was prior to plaintiff’s registration, or (8) the mark is used to violate anti-trust laws.
Infringement :
Infringement is the use of a trademark in a way that is confusingly similar to another company’s trademark, without that company’s prior permission. While consumer confusion is the touchstone to an infringement lawsuit, actual confusion of a consumer it is not required in order for infringement to exist. All that matters is that an appreciable number of consumers are likely to be confused about the source of the underlying goods or services. Click here for more information on the factors that a court will look at to determine likelihood of confusion
Inherent distinctiveness :
A mark can be inherently distinctive, or it can acquire distinctiveness over time. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself. The more a mark includes words or symbols related to the good or service, the more likely a consumer will be confused and think that the mark is actually identifying or describing the product itself. Examples of inherently distinctive marks are: SUSUGAR for sugar, MAVIJEAS for jeans, STARBUCKS for Coffee, and AVON for lip balm. Each of these trademarks are, in greater or lesser degrees, different enough from the product for which they are used that they serve to identify source rather than describe any qualities of the product. As such, they are inherently distinctive. Fanciful, Arbitrary and Suggestive marks are all inherently distinctive, while descriptive and generic marks are not inherently distinctive.
Injunctive relief :
A court order that prohibits a party from doing something or demanding that the party undo some wrong or injury. In trademark infringement or dilution cases, an injunction can include the ordering of corrective advertising, demanding the use of disclaimers of association with the trademark owner, product recall, or prohibiting future use of a mark. Since injunctive relief is an equitable remedy, the court will weigh the harm to defendant if the injunction is imposed against the harm to plaintiff if no injunction is ordered.
Injury to reputation :
Injury to reputation occurs when a trademark representing one level of quality is infringed or diluted by a mark that represents a lower level of quality, and the infringement harms the goodwill generated by the original user of the mark. Demonstrating injury to reputation may be extremely difficult, and the plaintiff may have no choice but to rely on market survey data.
Intellectual property :
The term used to identify a form of property rights granted to intangible creations of the mind. There are distinct varieties of intellectual property, including trademarks, copyrights, patents, trade secrets, and publicity rights. Each state protects intellectual property in its own way, if at all. However trademarks, copyrights, and patents all receive federal protection, in addition to whatever state protection is available, if any.
Intentional infringement :
Trademark infringement that occurs because the defendant hopes to “cash in” on plaintiff’s goodwill generated by the mark. Proving intentional infringement can be quite difficult, just as in proving any state of mind. However, courts can consider circumstantial evidence such as the alleged infringer’s choice of a trademark in light of the effectiveness of plaintiff’s mark. Award of monetary relief by a court is generally reserved for cases of intentional infringement. Reliance upon legal advice will typically not be sufficient in and of itself to disprove intentional infringement.
Intent of the defendant :
The mental state of the defendant at the time of adopting a mark is very significant in many aspects of trademark lawsuits. Bad faith on the part of defendant is not required to find trademark infringement or dilution. However, courts are far more likely to award monetary damages in a case where there is bad faith. If it appears that defendant was justifiably using the mark in order to describe the underlying goods or services, then the defendant will likely be found to have had good faith in using the mark, and thereby offer a defense of fair use. Furthermore, since the plaintiff in a trademark lawsuit is often seeking injunctive relief, which is an equitable remedy requiring the balancing of harms, whether or not the defendant exercised good faith or bad faith can have a considerable impact on the court’s decision.
Intent to Use (ITU) application :
An application for a federal registration made to the United States Patent and Trademark Office for a trademark that is not yet being used. ITU applications secure trademark rights prior to actually using the mark. It allows companies the opportunity to see if the USPTO will register the mark without having to invest in the marketing and promotion of the mark in the event the mark is rejected. It also secures an early priority date (normally a priority date is not set until actual use).
Inter partes proceedings :
These are proceedings before the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO). Conflicts over whether a trademark can be registered are heard in front of the TTAB (or possibly in court too). These proceedings consist of: (1) cancellation of marks registered on the Principal or Supplemental Registers; (2) opposition to applications for registration on the Principal Register; (3) Concurrent use proceedings; or (4) interferences declared by the Commissioner of the USPTO.
Interference proceedings :
This proceeding before the Trademark Trial and Appeal Board is near-obsolete, and reserved for those cases showing extraordinary circumstances. An interference proceeding is declared by the Commissioner of Patents and Trademarks upon petition. At issue in these proceedings is priority of use. Generally speaking, the interference proceeding will not be granted unless the issue of priority which is at stake could not be addressed most efficiently in an opposition or cancellation proceeding.
International class :
An international class is a number associated with a category of goods or services into which a trademark may be assigned for the purposes of a trademark registration. Each application for registration must list one or more international classes (at $245 per class). The classes are based upon the type of good or service the mark identifies. Bitlaw has an excellent hypertext listing of the Acceptable Description of Goods and Services Manual which lists all the possible international classes. http://www.bitlaw.com/source/goodscls
Interstate commerce requirement :
Interstate commerce of a mark occurs when the trademark applicant or owner uses the mark on goods or in connection with the sale of goods or services that are sold or otherwise transported across state lines. The kind of use required to create or maintain a trademark under the Trademark Act must be a “bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark.” 15 U.S.C. §1127. Using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing a statement of use under an intent-to-use application, or filing a renewal application.
INTA (International Trademark Association) :
Formerly called the United States Trademark Association, this organization lobbies for legislation favorable to trademark owners, and provides a resource for trademark policy development and legal education. The INTA may be reached at:
1133 Avenue of the Americas
New York, NY 10036
(212) 768-9887
http://www.inta.org
International Trade Commission (ITC) :
The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC’s decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.
International Treaties :
There are several treaties that govern trademark rights with respect to other nations, including: the Benelux system of registration, Paris Convention treaty, Trademark Registration Treaty, Madrid agreement, Madrid protocol, and the European Community Trade Mark (CTM). With the exception of the Madrid agreement, these treaties do not attempt to harmonize the trademark laws of the member countries, but instead provide centralized trademark registration filing systems.
Internet, trademark issues posed by :
Conflicts over domain names have received the most attention in the trademark legal press. However, such disputes have only affected a small number of trademark owners. Where the Internet has its greatest impact on trademark owners or prospective owners is in searching for prior rights in a mark and policing existing marks. Other areas of trademark law of interest to businesses is whether or not a link to another company’s site infringes or dilutes that site’s trademark. This latter area overlaps significantly with copyright and unfair competition laws, since linking and framing only implicate trademark infringement or dilution laws in narrow circumstances. Finally, the use of another company’s trademarks in meta tags arguably infringes or dilutes that company’s trademarks. While there are certainly other trademark issues raised by the Internet, they have not been as widely talked about.
For an elaboration of these topics, see Trademarks on the Internet
Intra-State commerce :
Commercial trade that takes place entirely within one state, as opposed to interstate commerce which takes place across state and/or national boundaries. Interstate commerce is a prerequisite to federal trademark registration, however marks that are used in intra-state commerce may be registered in the state of trade.
Invalid assignment :
Any assignment of a trademark is invalid if the assignment of the mark is made without assignment of the goodwill associated with the mark. If a mark is invalidly assigned, the usual result is that the company that purchased the mark, the assignee, is deprived of the benefit of the early priority date of the assignor, and must instead start all over with a new priority date beginning when the assignee begins using the mark in commerce.
ITC (International Trade Commission) :
The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC’s decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.
