Equitable defenses :
Historically, an equitable defense was one that was only available in the courts of equity, and not the courts of law. Since the focus in the courts of equity was predominately to enforce principals of fairness, it is not surprising that an equitable defense in the modern trademark law context is one that courts tend to invoke out of a sense of justice and fairness when the plaintiff’s conduct was somehow lacking. In trademark law, equitable defenses include laches, unclean hands, and acquiescence.
Equitable relief :
Historically, equitable relief was only granted in courts of equity as opposed to courts of law. Courts of equity tended to resolve matters on principles of fairness and justice, sort of as a last resort when no other relief was available. Thus, in the modern trademark law context, equitable relief is typified by extraordinary measures that are available because no other remedy is capable of realizing justice. Examples include injunctions (temporary and permanent) and estoppel.
Estoppel :
Estoppel is a legal term of art for “stopping” certain outcomes requested by a party to a lawsuit. In trademark litigation, the plaintiff is said to be estopped from claiming infringement if plaintiff’s actions, or lack thereof, indicated approval of defendant’s use of the trademark (acquiescence). Also, Estoppel applies to stop the plaintiff from claiming trademark infringement where the plaintiff delayed for an unreasonably long period of time before beginning enforcement against defendant (laches).
Evaluation of Search Results :
Anyone who has performed a trademark search or, better yet, purchased one from a professional search firm will want to have those results reviewed by an attorney to determine whether or not the proposed mark is available for use and registration. This is one area where failing to obtain legal counsel can be costly, since the determination of whether or not a mark is available for use often requires legal research into the very complex area of law that requires an analysis of “confusingly similar” as it is applied to a given mark.
Examination, of trademark application :
All applications for trademark registration in the United States must undergo a very extensive examination process, which is conducted by Trademark Examiners at the U.S. Patent and Trademark Office. The Examiner conducts a limited search of existing trademarks and pending registrations to see if the mark conflicts with any prior rights. If so, the application is rejected. The Examiner also reviews the mark for its adequacy for registration as a trademark. This includes whether or not the mark is distinctive, and whether or not it is forbidden. If the mark is not distinctive, or if it is a forbidden mark, the Examiner will reject the application. (Note: marks rejected for lack of distinctiveness can be registered on the Supplemental Register after a separate filing). Additionally, the Examiner may reject the application for any number of formalities that have not been met, such as inadequate specimens, or a description of goods or services that is too vague. There is an extensive manual that the Trademark Examiners follow when processing applications, called the Trademark Manual of Examining Procedure that can be helpful if you have specific questions about how to treat a certain registration issue.
Examiner’s amendment :
An amendment made by an Examining Attorney to the applicant’s federal trademark application.
Examining Attorney :
The attorney from the U.S. Patent and Trademark Office who examines the applications for federal trademark registration and determines whether the application should be approved for publication or rejected.
Exceptional cases :
This term refers to the kind of case in which the court may award attorneys’ fees for trademark infringement under the Lanham Act. Generally, that kind of case involves deliberate infringement or fraud on the part of the defendant, or for the plaintiff; a lawsuit brought in bad faith or without an investigation of the merits of plaintiff’s claim.
Exclusion orders from the International Trade Commission (ITC)
The International Trade Commission can help protect against unfair competition from abroad by issuing an exclusion order. An exclusion order is an order issued by the ITC that bars the importation of goods from a particular source, or even the entire class of goods if there are problems enforcing the bar on a particular party. The ITC proceeding can be initiated by submitting a complaint directly to the ITC.
Exclusive license :
An agreement between a trademark owner and one other party that permits the other party to make certain use of the trademark, with the understanding that the trademark owner will not permit other such uses. Licensing of trademarks can result in the loss of the trademark unless the license contains careful controls over the licensed use.
Exclusive licensee :
The party to whom a trademark owner grants an exclusive license to use a trademark.
Exclusive licensor :
The trademark owner who is licensing its trademark for exclusive use by one other company.
Exclusive ownership :
Ownership in a mark which is free of any claim of right by any other party.
Exclusive rights :
Rights granted to an owner of a trade or service mark which permit the owner to use a mark, and to exclude all others from using the same or a similar mark in a similar manner. For example, Hormel, the owner of the trademark SPAM, can stop any other company from using the word SPAM on meat products. Also, since the mark SPAM is a famous mark, Hormel could theoretically stop the use of SPAM in the many degrading contexts in which it currently is being used based on dilution law. However, as a practical matter, stopping such use may not be feasible, given the widespread use of the word on the Internet, not to mention the public relations problems Hormel would face if it tried to do so.
