European Community Trade Mark « Trademark Law Litigation

March 3, 2009

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Cancellation of trademark (cancellation proceeding) :

A federal trademark registration may be canceled by a court in a civil action, or by the U.S. Patent and Trademark Office in a cancellation proceeding. The grounds for cancellation of a mark include; the mark is likely to cause confusion with a prior mark, it is descriptive of the underlying goods or services, or that the mark is generic.

Causes of Action for Trademarks :

When there is a conflict between marks, there are several types of lawsuits which could be brought including: Trademark infringement in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; False designation or description in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); Trademark dilution in violation of section 43(c) of the Lanham Act, 15 U.S.C. §1125(c); Violation of state trademark infringement statutes; Common law trademark infringement; Violation of state unfair competition and deceptive practices statutes; Common law unfair competition; and Common law or state statutory violations of the right of publicity.

Cease and desist letter :

A letter sent by a trademark owner demanding that another company immediately halt using its trademark. These letters are typically accompanied with a threat of a lawsuit if the alleged infringer does not immediately halt use. Before sending such a letter, it is vital that the initiator be 100% certain their rights in the mark are prior to the alleged infringer’s rights. Otherwise, it may be the initiator who must cease use.

Certification mark :

A symbol used to identify goods or services that meet certain criteria such as quality ratings or content levels. Typically, a system of rating is established by an independent organization, and the symbol is then licensed to approved manufacturers or service providers. Examples include: the Good Housekeeping Seal of Approval, the , and the Real symbol used on dairy products.

Class, international :

A designation required on all federal trademark applications that identifies the kinds of goods or services for which a particular mark will be used. This information is available for those searching for prior uses of a mark prior to adopting it. A good search strategy is to broaden the scope of the search for those classes in which the proposed mark may potentially belong. The $245 application fee for a federal registration includes registration for only one international class. Additional classes can be added at a cost of $245 per class.

Clearance Opinion (Availability 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.

Coined terms (Fanciful terms) :

These are terms that are invented for the sole purpose of serving as trademarks. Examples include CANNON for photographic equipment, UNIX for a computer operating system, LOTTO for shoes, and TOSHIBA for photocopying equipment. Coined marks receive the highest level of protection, because a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. As a result, infringers of these marks are hard pressed to provide any plausible explanation for their use the mark, leaving the impression that the real reason was in fact a blatant attempt to trade off the goodwill generated by the owner of the trademark.

Collective mark :

A symbol used by members of a group to identify their association with the group, such as a union, co-op and trade or professional associations.

Colors, protection of :

Colors, whether one or a combination of them, can be protected under trademark law if the colors otherwise meet the definition of a trademark. In a 1995 case, Qualitex v. Co. v. Jacobson Prods. Co., 514 U.S. 159, the Supreme court rejected earlier lower court decisions that had refused to protect colors as trademarks. Those earlier decisions claimed that businesses would soon deplete the limited supply of colors available, and unfairly prevent others from entering the marketplace, thus creating an undesirable monopoly. The Court in Qualitex pointed out that there are innumerable shades of colors available, thereby rejecting the depletion of colors theory.

Combined application :

An application for trademark registration containing multiple international classes. Each class costs $245 to register, although all the classes can be applied for on one application.

Commissioner :

The Commissioner of Patents and Trademarks in the United States Patent and Trademark Office. At the time of this writing, that position is held by Bruce Lehman.

Common law :

Law originating from court decisions and refined through prior court precedents, as distinguished from law created by the legislative branch of government such as statutes. Common law is also referred to as court-made law.

Comparative advertising :

Comparative advertising is the use of another company’s trademark in order to compare that company’s products with its own. Whether or not comparative advertising qualifies as trademark infringement or dilution is governed by those bodies of law. If, for instance, an ad does not carefully delineate the competitor’s mark from its own, and thereby creates a likelihood of consumer confusion, then the use of the mark is infringing. But, where there is no consumer confusion, or dilution, direct claims about another company’s product are allowed (if the claims are true, of course). For example, Hudson Pharmaceutical Co. was allowed to copy certain elements from the package and label of METAMUCIL, and to state that its own product, REGACILIUM, was equivalent to METAMUCIL. However, Hudson was required to print the word “equivalent” in at least as large of letters as the mark METAMUCIL, to place a ® next to the term METAMUCIL, and to state that METAMUCIL was made by G.D. Searle and that Searle did not make or license REGACILIUM. G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837, 839 (3rd Cir. 1983). Similarly, SECOND CHANCE perfume was allowed to state in its materials that it was equivalent to CHANEL No. 5 perfume. Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th Cir. 1968).

Concurrent use :

Use by two or more persons of the same mark in connection with the same or similar products or services, usually limited by geographic boundaries.

Concurrent use proceeding :

An administrative process governed by the Trademark Trial and Appeal Board in which the Board reviews an application for a concurrent use registration, and sends notice to the party identified in the application that their the rights in their mark may be limited as set forth in the application. The non-applicant party has forty days to answer, otherwise the limitations specified in the concurrent use application will be entered as a judgment.

Concurrent use registration :

A federal registration which delineates certain limitations on the use of a mark due to the concurrent use of a similar mark. Generally speaking, the first of two companies to use a mark is entitled to nationwide registration rights, except for the specific geographic area in which the second company is using the mark, even if the first user has not used the mark nationwide. If the second user is the first to register, then the second user is the one that receives nationwide registration subject to the first user’s geographic region. Concurrent users may agree to leave open certain regions permanently or else long enough for one or the other to begin actual use in that region.

Conflicts between trademarks :

Conflicts between trademarks can occur due to two marks being similar to each other in such a way that consumers are likely to be confused as to which is which. The result of a conflict can lead to one side abandoning their rights rather than fight, or may lead to negotiation, arbitration, mediation, or a lawsuit. There are several different theories of law (causes of action) that relate to trademarks.

Confusion (Confusingly similar) :

This is the legal standard that defines whether or not trademark infringement has occurred, or whether or not a trademark registration can be issued. Click here for more information on what constitutes confusingly similar.

Constructive notice :

Constructive notice is a legal fiction. In the context of proving good faith as a defense in a trademark infringement lawsuit, constructive notice replaces the requirement that the defendant have actual knowledge of plaintiff’s prior use of a mark. Thus, instead of having actual knowledge, bad faith is said to exist.

Constructive use :

Where use of a trademark is deemed to have occurred even without actual use, pursuant to a statute. The legal effect is the same as if there were actual use.

Copyrights :
Ownership rights in expressive works (not ideas), granting the owner exclusive control over distribution, display, copying, performance, and adaptation of those works. The Copyright Office is the umbrella of the Library of Congress that governs the registration of copyrighted works.

Corporate name :

Also known as a trade name or trade name, it is the name under which a company conducts its business. Whereas a corporate name identifies the business itself, trademarks identify goods or services. A corporate name can also serve as a trademark if it meets the requirements of a trademark. If so, the corporate name also merits protection under state and federal trademark and dilution laws. However, a corporate 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.

Correcting mistakes in a registration (Amendments) :

The USPTO permits trademark owners to modify certain information on an existing trademark registration for a filing fee of $100.

Costs, as a measure of damages for infringement :

Court costs can be recovered by the prevailing party as a matter of course, unless the court directs otherwise. This includes filing fees, court reporter fees if necessary to use transcripts in the case, printing and witness fees, and compensation for court-appointed experts. What constitutes a prevailing party is not always obvious. The plaintiff need not win on all claims to recover costs as the prevailing party. Sometimes the defendant may recover costs, as for instance if the case is dismissed with prejudice. Some statutes provide specifically for award of attorneys’ fees as costs, such as in the Racketeer Influenced and Corrupt Organizations Act. 18 U.S.C. §1926(c).

Costs, for trademark legal services :

Costs will obviously vary based on what services you need.

Counterfeit Goods:

Goods bearing a trademark that is either identical with, or substantially indistinguishable from, a federally registered mark. While infringement of a trademark requires confusing similarity between marks, regardless of the intent of the infringer, counterfeiting can only occur when the perpetrator knowingly used the counterfeit mark with an intent to traffic in the goods bearing such mark. Trafficking in counterfeit marks may be a criminal offense, and can lead to treble damages when pursued in a civil court. The U.S. Customs Bureau and the International Trade Commission can help trademark owners stop the importation of counterfeit goods into the United States.

CTM (European Community TradeMark)

An international treaty providing for “one-stop” trademark registration for all European Union country members. As of yet, trademarks continue to be governed by each individual European country’s laws, and there is no harmonization of laws.

Customs Bureau, role in trademarks :

U.S. Customs officials can demand disclosure of the identity of any trademark on imported goods, and under certain circumstances, seize goods bearing infringing marks. Congress has authorized Customs Bureau involvement in preventing the importation of counterfeit goods, gray-market goods and goods bearing infringing trademarks. Such goods can be seized at the border. However, what happens to them after seizure depends on which category they fit into. Counterfeit goods will be destroyed or given to charity after removal of the trademark. Infringing marks will be sent back to the place of origin, or enter the U.S. after removal of the mark. Or, upon consent of the U.S. trademark owner, counterfeit goods or goods bearing infringing marks may enter the U.S. In order for the Customs Bureau to take action at the border, the U.S. trademark owner will have to record with Customs their federally registered mark (or trade name if used for six months). Additionally, trademark owners typically have to alert Customs of specific counterfeit or infringing activity, just as a practical matter, since Customs has far too many trademarks to effectively monitor without such assistance. For more information, visit the US Customs site at http://www.customs.ustreas.gov/imp-exp2/ipr/iprbroch.htm

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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.

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Tarnishment in dilution law :

Under the laws of trademark dilution, a trademark may become tarnished when it is “linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context.”

The problem with this occurring is that the public may begin to associate the original mark with the degraded quality or prestige depicted by the imitation. There need be no confusion as to source in order for a potential lawsuit to arise out of tarnishment of another company’s mark.

An example of tarnishment case successfully sued upon in Georgia was the parody of the Pillsbury Doughboy. The defendant had parodied this famous mark by depicting a Pillsbury Doughboy and Doughgirl in lewd positions. Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981).

Telephone numbers, protection of :

As long as a telephone number meets the requirements of a trademark, namely that consumers can rely upon it to distinguish the trademark owner’s goods or services from those of competitors, then it can receive all the protections provided by trademark and dilution law. Typically, protection for phone numbers is sought for those numbers that are converted to a meaningful word, such as in the case of “Dial L-A-W-Y-E-R-S” in which a court enjoined another company’s use of the same phrase outside of the region in which the phone number was originally secured. See Murrin v. Midco Communications Inc., 726 F. Supp. 1195 (Minn. 1989).

Temporary injunction :

An order from a court to prohibit or enforce certain conduct on a temporary basis until the court can make a determination based on all the facts and law of the case. The most common example of an injunction in trademark law is a court order to stop using a particular trademark. 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. The court will also require a bond to compensate the defendant in the event the injunction was wrongly ordered.

Text Marks (lingual marks) :

These are trademarks in the form of either words or phrases, and are the most widely used kinds of marks. Depending on the meaning of the word or phrase, these marks have more or less legal strength.

TM symbol :

The TM symbol used next to a trademark provides notice to the world that a company claims trademark rights in that mark.

Companies can use the TM symbol on any mark which serves to identify that company’s goods, and the SM symbol on any mark which serves to identify that company’s services.

There is no need to have a federal or state registration prior to using the TM or SM symbols. However, use of the © symbol requires a federal registration.

Token Use :

Token use term refers to use of a mark in order to secure rights in it. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark become associated with the source of the goods.

If a mark becomes challenged on the grounds of abandonment, the mark owner will need to prove use in commerce, and token uses will not suffice. Such token uses were more common prior to the 1988 revision of the Trademark Act in which the Intent to Use procedure eliminated the need to secure an early priority date in a mark without actually using it. However, token uses still continue in an effort by some to avoid the result of abandonment.

Top level domain name :

A top level domain (TLD) is that portion of a domain name that comes after the second level domain, such as com, org, net, info, biz, uk, ca, de, etc. For example, in A-Law.Org, A-Law’s URL, http://www.a-law.org, “a-law.org” is the domain name, “a-law” is the second level domain, and “org” is the top level domain.

The US Patent and Trademark Office (USPTO) has published a memorandum stating that it is unnecessary to include the top level domain when seeking federal registration of domain names. However, at least one trademark legal scholar has suggested that for maximum protection, a company may wish to do so anyway, since the USPTO has been known to be wrong before, and a court has not yet heard this issue. If you search for “.com” in any federal trademark database, it is clear that not everyone is relying upon the advice of the USPTO (after all, it is not their job to advise on any matter other than the requirements of registration). However, if you apply for a trademark using your domain name with the top level domain as part of the trademark, your registration may only provide protection for infringement of the entire domain, and not merely for infringement of the second level domain. Thus, if you intend to register the “.com” portion of a domain, it is advisable that you also file a separate application for the second level domain alone.

Trade dress (Product design) :

Trade dress consists of the variety of elements in which a product is packaged or a service is presented. The elements that are protected may include the shape, color or overall packaging of goods, the displays attending goods, and even the decor or environment in which a service is provided. However, only those elements that were designed specifically to promote the product are protected; not the functional features of trade dress that have a utilitarian purpose.

Trade name :

Also known as an assumed name or corporate name, it is the name under which a company conducts its business. Whereas a trade name identifies the business itself, trademarks identify goods or services.

A trade name can also serve as a trademark if it meets the requirements of a trademark. If so, the trade name also merits protection under state and federal trademark and dilution laws. However, a trade 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.

Trademark :

A trademark can be a word, name, symbol, device or any combination thereof which is used to identify and distinguish the goods or services of one company from goods or services of another. In order to qualify as a trademark, the mark must be used in federally regulated commerce, and the mark must be distinctive. In a nutshell, the distinctiveness requirement means that a mark cannot describe the underlying product, or if it does describe the product, the mark must have been used extensively enough in commerce to acquire a certain level of market recognition (i.e. secondary meaning). Moreover, some marks will not be protected as trademarks, even if they are well recognized by consumers as trademarks (forbidden marks).

Trademark Act (Lanham Act) :

The Trademark Act of 1946 is a federal statute governing registration and maintenance of trademarks and provides a cause of action for dilution and unfair competition. 15 U.S.C. §§ 1051 et seq.

Trademark Causes of Action

Trademark Misuse :

A theoretical basis for canceling a trademark. Although purely speculative at this point, some legal scholars have suggested that a trademark registrant should lose their rights if they engage in abusive tactics that violate the boundaries of fair competition. (Citation). Such a doctrine has been applied in the area of patents and copyrights, and is proposed by some in the trademark area. Specifically, it has been suggested that a trademark registrant who submits their registration to Internic in order to implement Internic’s domain name dispute policy has misused their trademark registration and should have the registration canceled, if there exists no plausible argument for trademark infringement.

Trademark Trial and Appeal Board (TTAB)

The administrative hearing board operating under the auspices of the U.S. Patent and Trademark Office.

The TTAB hears matters concerning federal registration of a mark and the cancellation of federal registrations. Trademark attorneys do not need any special license or certification to practice in front of the TTAB as they do when practicing patent law before the USPTO.

Trafficking :

To transport, transfer, or otherwise dispose of, to another, as consideration for anything of value, or make or obtain control of with intent so to transport, transfer, or dispose of. Trafficking in products with counterfeit marks is a crime under 18 U.S.C. § 2320.

Transferee :

The party who acquires rights in an assignment or transfer of trademark rights.

Transfer of ownership (assignment) :

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 transferee or “assignee” is the person who acquires ownership, and transferor or “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.

Transferor :
The party who conveys rights to the transferee in the transfer or assignment of trademarks.

Treaties :

Agreements with other nations. There are several treaties that govern trademark rights, 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.

Treble damages :

Treble damages means three times the amount of provable, actual damages. The Trademark Act authorizes courts to exercise their own discretion in awarding up to three times the amount of actual damages for any willful violations of the Act. However, any increases over provable, actual damages have to be for the purpose of compensation, and not designed as a penalty.

TRIPs Agreement :

Otherwise known as the Trade-Related aspects of Intellectual Property, TRIPs is a new agreement within the GATT that addresses intellectual property concerns. TRIPs marks the first serious involvement of the GATT into intellectual property issues. Because of TRIPs, the Lanham Act. 2(a) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Types of marks :

The words “trademark” or “mark” are used in a general manner to denote any kind of mark such as a certification mark, collective mark, service mark or trademark.

Typically, “service mark” is used in association with the sale of services, while “trademark” is used in association with the sale of goods. Certification marks are used to identify a certain level of quality or that specific standards have been met, and Collective marks are used to identify associations of companies or organizations. Any such mark can consist of a symbol, smell, sound, phrase, packaging as long as it is used to identify the thing it is supposed to distinguish.

Typewritten drawing :

A drawing required of most lingual (text) marks in which the mark is depicted on the drawing page in all uppercase, typewritten letters. If the applicant is claiming stylized text, a more graphic drawing of the mark is required.

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