Abandonment of a mark :
Abandonment occurs when the trademark owner stops using the mark with no intention to resume using it. Use of a mark in this context means the bona fide use of the mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. Nonuse for three consecutive years is prima facie evidence of abandonment. Furthermore, failure to police and enforce a mark can lead to abandonment if the trademark owner is deemed to have impliedly consented to confusingly similar uses of the mark. If abandonment occurs, all rights in the mark cease.
Acquiescence :
The failure to take action against infringing parties, or otherwise indicating, implicitly or explicitly, that nothing will be done about the infringing action. Acquiescing can lead to abandonment of trademark rights.
Action (or Office Action) :
A written communication sent by the Examining Attorney from the U.S. Patent and Trademark Office, requesting a response from the applicant regarding some matter pertinent to a pending application for trademark registration.
Actual confusion :
This occurs when an actual consumer is in fact confused as to the source of goods based on confusingly similar uses of a trademark. Actual confusion is not required to prove infringement of a mark, although it is highly probative as evidence that the mark is likely to cause confusion.
Advertising, comparative :
The use of a competitor’s trademarks in advertising. Such use is permitted in the context of comparing a company’s own products or services with those of their competitor, as long as the ad creates no confusion as to source or dilution of the competitor’s marks.
Advertising injury :
This is a category of harm sometimes caused by trademark infringement. The significance is that some insurance policies cover litigation of a trademark dispute to the extent that the dispute falls within an advertising injury.
Aesthetic functionality :
A widely-criticized facet of the functionality doctrine which deems as functional, and thus not trademarkable, any product design feature which is an important ingredient in the commercial success of the product. Thus, if a floral pattern on china makes the china more commercially desirable, such pattern would be deemed non-trademarkable. More recently, courts have recognized that a design feature may be commercially successful and still operate as a product identifier worthy of trademark protection, and thus have not been eager to invoke the doctrine of Aesthetic functionality as a defense to trademark infringement.
Affirmative defenses :
These are defenses to a complaint for trademark infringement that must be pled in the defendant’s answer, or else they are waived. Examples include Fraud, Unclean hands, Misuse, First Amendment, Acquiescence, Fair use, Genericness, Abandonment, Laches, and Estoppel.
Affixation Requirement :
One of the elements that must be present in order to demonstrate that a mark is used in commerce, which is the fundamental requirement for the acquisition of rights in a mark. For a trademark to be “affixed” to goods, the mark should ideally be either placed on the goods themselves, or on their containers or attached tags or labels. The affixation requirement for goods may also be satisfied if the mark is prominently featured on a conspicuous display associated with the goods. If none of the above are practicable, the mark may be used on documents associated with the sale of the goods as a last resort. For services, a trademark is “affixed” if it is used in the sale or advertising of the services, as long as it is used in direct and explicit reference to the services provided.
Alternative dispute resolution (ADR) :
A formalized mechanism by which legal disputes can be settled outside of formal litigation. ADR may consist of mediation, arbitration or binding arbitration. In typical cases, ADR is a lot quicker and less costly than full-blown litigation. However, that may not always be true in trademark litigation where the plaintiff oftentimes succeeds in petitioning the court for emergency intervention and a speedier court docket. Moreover, because ADR eliminates many of the formalities offered by courts as required under constitutional principles of due process, it is not uncommon for participants of ADR to feel as though they were not sufficiently heard. Whether or not ADR is desirable for a particular situation is highly case dependent, and both parties need to agree to be participants.
Amendment to Allege Use :
A special filing sometimes used for Intent to Use registrations in which the applicant amends the application to allege that the mark has in fact been used in commerce. The Amendment to Allege Use may be filed with the U.S. Patent and Trademark Office (USPTO) any time after filing the Intent to Use application, but before the USPTO sends a Notice of Publication stating that the Trademark Examiners have approved the mark and will publish it in the Official Gazette. Once publication occurs, the applicant must wait until after a Notice of Allowance issues from the USPTO before submitting a Statement of Use. A Statement of Use serves essentially the same purpose as the Amendment to Allege Use, except that the former cannot be filed before the Notice of Allowance, and must be filed within six months thereof. The USPTO requires an additional filing fee of $100 to submit either an Amendment to Allege Use or a Statement of Use.
Anti-Dilution statutes :
State and federal statutes that allow the owner of a famous trademark to prevent uses of its mark by other companies in such a way as to tarnish or blur the distinctiveness of the mark. Unlike lawsuits under a traditional trademark infringement lawsuit, the plaintiff in a dilution suit need not prove that there is a likelihood of confusion between the famous mark and the challenged mark.
Arbitrary marks :
These are names that exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used. The pairing of the mark with the particular category of goods or services should appear to be random. Examples include APPLE for computer, BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car. Whether a word is arbitrary or not has everything to do with the context in which it is used. Obviously, the term “apple” used to sell a rounded edible pome fruit of a tree is a generic term, and not trademarkable. Similarly, use of the phrase “Comet Watch” for a newsletter describing the activities of celetial bodies with long tails pointing away from the sun would not be considered arbitrary, but rather descriptive or suggestive.
Arbitration :
A form of alternative dispute resolution in which an authorized individual sits as the arbiter of a legal dispute in lieu of a formal judicial proceeding. Arbitration may be binding or non-binding, depending on the agreement of the parties. Even if arbitration is binding, appeals to a district court can still be made in some cases. Very often, arbitration tends to be less formal, less expensive and faster. However, courts in a trademark infringement or dilution case can often hear a motion for temporary injunction very quickly as well, if all the requirements for a temporary injunction are met.
Assignee :
The party to whom a trademark is being transferred in an assignment.
Assignment of trademark :
An assignment is the legal transfer of ownership of any property such as a trademark or copyright from the owner to another party, who then becomes the new owner. The “assignee” is the person who acquires ownership, and “assignor” is the person who transfers ownership rights. To be effective, a trademark assignment must include the transfer of the goodwill accrued in the assigned mark beyond mere assignment of the mark itself. Traditionally, courts have required the transfer of tangible assets along with the mark such as plant inventory, or product formula or know-how. However, more recently some courts have taken a more liberal view of assignments and do not require the transfer of such tangible assets. However, the assignee must continue to sell goods or services of the same quality and nature as the assignor to ensure that goodwill has indeed passed with the mark. See PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969). When a registered trademark is assigned, it is a good idea to record the assignment with the U.S. Patent and Trademark Office.
Assignment, in gross
Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and 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.
Assignor :
The party who is selling or otherwise transferring ownership of a trademark.
Assumed name :
Also known as a trade name or corporate name, it is the name under which a company conducts its business. Whereas an assumed name identifies the business itself, trademarks identify goods or services. An assumed can also be a trademark if it meets the requirements of a trademark. If so, the assumed name also merits protection under state and federal trademark and dilution laws. However, an assumed name has no exclusive trademark rights unless it is used as a trademark. This is so, even if the name is registered with the appropriate state body regulating business names, usually the Secretary of State.
Attorney-client privilege :
The legal protecting arising out of the communication of a client with his or her attorney. This privilege cannot be waived except by the client. Thus, the attorney is legally obliged to keep secret any information told to him or her by the client, unless the client waives that right, or else in certain limited and rare circumstances.
Attorneys’ fees :
In most cases, the losing party to litigation under the Trademark Act does not have to pay the legal fees of the prevailing party. However, the Lanham Act governing trademark infringements allows for the payment of attorneys’ fees in exceptional cases, such as those involving egregious, bad faith and willful infringement by the defendant. Lawsuits brought only under the common law normally do not award attorneys fees even when there is such bad conduct on the part of defendant.
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Availability opinion (Clearance opinion) :
The legal opinion provided by an attorney to a trademark owner or prospective trademark owner that identifies the legal risks associated with using a particular trademark. Such risks might include, for example, the possibility of infringing or diluting an existing mark and hence being sued, and the likelihood that an application for trademark registration will be rejected. The legal opinion of an attorney can serve not only as immediate advice on the risks in adopting a given mark, but if the opinion is written, which most are, you may be able to deter companies appearing in the opinion from suing for infringement by showing them that at least one attorney has already decided the marks are not confusingly similar. It is important to note, however, that while attorneys are trained to be objective, the inherent subjectivity of trademark law suggests that a second legal opinion is a very good idea if there is any question about the availability of a mark or about conflicts between marks.
