Lanham Act « Trademark Law Litigation

March 3, 2009

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General Agreement on Tariffs and Trade (GATT) :

The GATT was originally created in 1946 to work out international agreements on world merchandise trade. Since then there have been several “rounds” of the GATT. While serious trademark discussions occurred in the Tokyo Round of the 70’s and again in the ’80s, it wasn’t until the Geneva Round in which TRIPs (Trade Related aspects of Intellectual Property) marked a true involvement of GATT into the area of intellectual property. The WTO (World Trade Organization) and the TRIPs Council monitor the implementation of TRIPs and its enforcement mechanisms. One of the specific changes to U.S. law arising out of GATT are the 1995 amendments to Lanham Act. Specifically section 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.

Generic marks :

These are words or symbols that describe the product or service itself as a category, rather than distinguish between competing versions of the product or service. For example, “shredded wheat” is a generic term that refers to the category of breakfast cereals that are composed of layers of crunchy wheat strips molded together into a pillow-type shape. This cereal may be manufactured by Kellogg’s, Post or others., and each manufacturer is free to use the term “shredded wheat” to advertise their version of the cereal. To prevent them from using “shredded wheat” would mean they could not equally compete with regard to this product. Thus, generic words are not protected as trademarks precisely because to do so would be akin to granting a monopoly in the product itself, not in a word or symbol.

Genericness as a defense :

Defendants can succeed with a genericness defense when the mark which has allegedly been infringed is a mark that describes the entire category or genus of product that the mark is supposed to distinguish, and thus cannot receive protection under the law. Generic marks are either generic from the outset, or become generic after they become part of the common descriptive name of a category or genus of products. Thus a mark that has been registered can loose its registration through a cancellation proceeding or by order of the court where the term has been shown to have become generic through use.

Genericide :

This occurs when a trademark starts out as distinctive or descriptive, but then though use becomes generic. This occurs when the mark becomes part of the common descriptive name of a category or genus of products. Genericide is more likely to happen to marks that are used improperly as nouns instead of adjectives, whether such usage is by the trademark owner or by others.

Geographically remote area :

An area in which a mark has no presence either through actual use, advertising or general reputation. As a general rule, a trademark owner has no rights in geographically remote areas, unless the mark is federally registered in which case the mark has nationwide priority, even if there is no presence in the mark for a given region. For unregistered marks, the doctrine of natural expansion provides another exception to the requirement that a trademark be used in a area in order for rights in it to exist.

Geographical terms, trademark protection of :

Geographical terms are those that convey to consumers a geographical connotation primarily or immediately , where such consumers are likely to believe that the underlying goods or services in fact come from that location. Such terms fall into three categories:

Primarily geographically descriptive;
Geographically deceptively misdescriptive; or
Geographically deceptive.

The first two are capable of protection if the owner can demonstrate they have acquired distinction through secondary meaning, while the latter of these, geographically deceptive marks are never capable of receiving protection. If the geographic mark is accurate, it is geographically descriptive. If not, then the mark is either geographically deceptively misdescriptive or geographically deceptive, depending on which test a court applies, and the facts of the situation.

A minority of courts look at the intent of the mark owner, while most courts look at whether or not consumers are likely to materially rely upon the misdescription. Thus a mark will be geographically deceptive if either the owner intended to to deceive the public about the origin of the product, or if consumers are likely to rely upon the misdescription in making their purchasing decisions. Finally, after the U.S. implementation of TRIPs, the Lanham Act. 2(a) has been amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Geographical territory :

The geographical territory is the territory in which one uses a mark. Use in a territory generally determines the extent of trademark rights granted to the user. The first to use a mark in one region has exclusive rights in the mark for that region, and a junior user of a mark in that region can be forced to cease using the mark there. However, the senior user cannot stop the junior user from using the mark in a different territory as long as the junior user is the first to use the mark in that particular territory. Two notable exceptions to this rule are nationwide priority which is only available to federally registered marks, and the doctrine of natural expansion, which is available to any mark owner.

Good faith defense :

When a defendant claims that use of plaintiff’s mark is defensible as a fair use, one deciding factor is whether or not the defendant was exercising good faith. Good faith means that the defendant did not use the mark in order to “cash in” on the plaintiffs hard work in generating goodwill with consumers. 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. 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.

Goodwill :

An intangible reward for businesses once they generate “name recognition” and establish public confidence in their goods or services. When this happens, consumers want to return to that business for repeat purchases. Thus, as goodwill increases, so does demand, and the business can then raise its prices in accordance. Without trademarks, most businesses would be unable to establish goodwill because their customers would have no way of recognizing their products or services. Erosion of goodwill occurs when consumer confusion exists as to a product’s source. Thus, protection of goodwill is one of the primary purposes of trademark law, and is highly guarded.

Goodwill, assignment without :

Assignment or transfer of a trademark must occur in conjunction with the transfer of goodwill represented by that mark, or else the assignment is invalid. Furthermore, if assignment occurs without goodwill, the trademark is effectively abandoned Typically, it is the assignee’s rights in the mark that are abandoned, but sometimes it is the assignor that abandons its rights. The result of such an abandonment on the assignee is that the assignee cannot benefit from the early first use date of the assignor, and must instead go by the assignee’s date of first use in order to establish priority.

Grammatical rules when using marks :

Failure to use the proper grammatical rules when using a trademark may result in the mark becoming generic, and thereby loosing all its protection. Specifically, it is very important to always use the mark as if it were an adjective, and never use it as a noun. For example, do not allow marketing material to read, “Aurora is the best cat litter on the market.” Instead say, “Aurora brand cat litter is the best on the market,” or even “Aurora cat litter is the best….” This may seem a ridiculous distinction to some. However, the consequences for dismissing this advice are great. If your mark is challenged on the basis that it is generic, you will have a much harder time arguing that it is not generic when you have treated your mark as if it were a class of goods, rather than a single brand in a class of goods.”

Gray-market goods (Parallel Imports) :

These are goods that are manufactured abroad for sale in foreign countries and properly marked with trademarks registered in the United States. Later these goods are purchased and imported into the United States to compete with the United States trademark owner’s or licensee’s own products. There is considerable incentive to sell gray-market goods in the United States if the prices on goods sold abroad are substantially lower than those sold in the United States. The interesting dilemma created by gray-market goods is that there is ostensibly no trademark infringement since the mark does in fact represent the true source of the goods to which the mark is affixed. For this reason, Congress passed 19 U.S.C. § 1526 to address the problem by stopping such imports at the border, with a couple exceptions. If the foreign manufacturer who affixes the mark to the goods is a related company (i.e. subsidiary or brother -sister company) to the United States trademark owner, then 19 U.S.C. § 1526 will not prohibit the importation. The statute will also not prohibit the importation of goods that are purchased by an individual in a foreign country and brought into the United States for personal use and not for resale.

Grounds for cancellation :

Cancellation of a trademark registration can occur within the first five years of registration for any reason that the mark could have been precluded from registration in the first place. Specifically, that includes:

Likelihood of confusion with petitioner’s previously used or registered mark,
Fraud,
Descriptiveness,
Genericness,
Abandonment,
Misdescriptiveness and deceptiveness.

However, fair use, trademark misuse, unfair competition, or violation of anti-trust laws are generally not considered valid grounds for cancellation.
Five years after registration, and if incontestability status has been successfully obtained, the mark can no longer be canceled on the basis that the mark lacks distinctiveness or creates a likelihood of confusion with a prior-registered mark. However, the mark can still be canceled on the basis of:

(1) Genericness,

(2) Abandonment,

(3) Fraud,

(4) The mark is forbidden,

(5) The mark is an improperly used collective or certification mark,

(6) The mark disparages or falsely suggests a connection with persons, institutions, beliefs, or national symbols, or

(7) The mark is used to misrepresent the source of goods.

Since these latter two grounds (6 & 7) appear akin to likelihood of confusion, which is supposed to be ruled out as a ground for cancellation after the five year period, they have been the subject of criticism. In any event, if you are claiming cancellation on the basis of 6 or 7, you will inevitably need to prove something more than likelihood of confusion to succeed.

Grounds for dilution lawsuits :

In order to have a claim for federal trademark dilution, the mark in question must be famous, and use of the mark must either blur the mark’s product identification; or tarnish the affirmative associations conveyed by the mark. State dilution laws may have slightly different grounds, such a mark which is distinctive or well known, rather than one that is famous. Likelihood of confusion is not a required element of a federal dilution lawsuit.

Grounds for infringement lawsuits :

Grounds for trademark infringement lawsuits exist when there is use of another company’s trademark that is likely to cause an appreciable number of consumers to be confused about the source of the underlying goods or services. Such use must occur in the same geographic territory as the allegedly infringed mark being used. Click here for more information on confusingly similar marks.

Grounds for opposition :
The grounds for opposition can be as broad as “any person who believes that [they] would be damaged by the registration of a mark.” Despite this broad language, it is also true that the opposer must have a personal interest in the outcome beyond that of the general public, and generally involved with the goods or services that may be described by the alleged mark. Oppositions are most commonly filed when a mark is (1) likely to confuse consumers with respect to an existing mark, (2) descriptive, (3) generic, (4) misdescriptive, (5) deceptive, or (6) registered under fraud.

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Filed under: Trademark Glossary — Tags: agreement, defense, dilution, infringement, Labels, Laches, Lanham Act, lawsuit, legal, Legal strength of a trademark, Letters, License, Licensee, Licensor, Likelihood of Confusion Test, lingual marks, Litigation, Lost profits, Measure of damages, Plaintiff, Trademark Act, Trademark litigation, trademark owner, trademark protection — admin @ 5:31 pm

Laches, defense of :

A defense based upon plaintiff’s inexcusable delay in asserting or attempting to enforce trademark rights. This doctrine is based on the theory that equity rewards the vigilant and not those who slumber on their rights.

Labels, trademark protection of :

Labels on goods can be protected under trademark law if the features on the label for which trademark protection is claimed identifies source for consumers, and if such features are not functional. Product labels fall into a rapidly expanding area of trademark protection for trade dress.

Lanham Act :

Otherwise known as the Trademark Act of 1946, this statute provides protection against trademark infringement, trademark dilution, and false designation, description or representation. The act also governs procedures for federal trademark registration. The Act is contained in Title 15 of the United States code, sections 1051-1127.

Legal strength of a trademark :

Strength of a mark can be measured on two different levels; marketing strength and legal strength. Words that describe very closely the underlying good or service they represent have strong marketing potential, since such marks immediately communicate to customers what the product actually is or does. An example is “Quick Fix Radio Mix.” This tells the customer immediately that it is a substance that fixes radios quickly. The problem with using descriptive marks such as these is that they are weak from a legal perspective. The legal strength of a mark is generally measured by its distinctiveness, not its descriptiveness. In fact, distinctiveness and descriptiveness are almost two ends on the same spectrum. Generally speaking, the more distinctive the mark, the stronger is the legal protection available for that mark, but the less ability the mark has to communicate with the consumer. Distinctive marks are those that are coined or fanciful (made up), or suggestive (suggesting qualities of the underlying products, without plainly describing them).

Letters, trademark protection of :

Alphabetic and Alphanumeric characters can be protected under trademark law, and indeed comprise the most common form of trademark, otherwise known as textual or lingual marks. Such marks receive their broadest protection if they are used as trademarks in block-letter format, i.e. without specialized fonts, coloring or other stylized features. Alternatively, if lingual marks are used with stylized features, but registered as block letters alone, or used in a variety of different stylized formats, then protection can more reasonably extend to all similar configurations of letters.

License :

An agreement between a trademark owner and one or more other parties that allows the other parties to make limited, specified use of the trademark in question. Licensing of trademarks can result in the loss of the trademark unless the license arrangement provides for a certain degree of control over the licensed use.

Licensee :

The party to whom a trademark owner grants a license to use a trademark.

Licensor :

The trademark owner who is licensing a trademark to the trademark licensee(s).

Likelihood of Confusion Test :

An analysis of whether confusion is caused when the mark in question is used to identify the same or closely related goods or services as an existing mark. If the relevant consuming public will be confused or mistaken about the source of product or service sold using the mark in question, then likelihood of confusion exists, and that mark can be excluded from being used by the prior mark owner. The likelihood of confusion test is one of several examinations conducted by the U.S. Patent and Trademark Office in determining whether to approve an applicant’s trademark application. The test is also used in trademark infringement lawsuits to determine whether or not the defendant is liable for infringement.

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.

Litigation :
A lawsuit. In order to litigate a trademark conflict, there must be a legal cause of action such as infringement or dilution. Trademark litigation often occurs on a very fast schedule since the plaintiff usually requests the court to grant a temporary injunction to stop the alleged trademark infringer from using the mark until the whole dispute can be resolved through a longer process. If a court grants the injunction, the defendant typically settles quickly and changes marks because the incentive for litigating a mark that cannot be used (at least in the short term) is obviously prohibitive since goodwill will have to be generated under a new name.

Lost profits, as a measure of damages :

The plaintiff’s lost profits may be awarded as damages in a trademark lawsuit, but monetary relief is generally reserved for cases of intentional infringement. To receive plaintiff’s lost sales as damages, the plaintiff must show that if it were not for the defendant’s infringing activities the plaintiff would have had a certain number of sales that were not in fact had. Proving this is often difficult since there may be a number of reasons besides defendant’s infringing use of the mark that could account for plaintiff’s lost sales. As such, a market survey may be necessary to prove such damages.

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Madrid Agreement :

The Madrid Agreement Concerning the International Registration of Marks is an international treaty signed originally in 1891. It is designed to simplify the filing of trademarks and service marks in different countries. The treaty provides for the international registration of an approved trademark by a single filing in one language, under one procedure, with the payment of one fee. Nationals of member countries must first register their trademark in the country of origin prior to international registration. For this reason, the treaty tends to favor countries having the least rigorous application procedures, and consequently the United States and Canada, having more elaborate trademark registration procedures, have declined to become signatories.

Mark :
Any trademark, service mark, certification mark, or collective mark.

Market survey :

Research conducted by an independent firm and used to support arguments before the US Patent and Trademark Office or civil courts when trying to prove various aspects of trademark viability. For example, a survey may be useful to prove that a mark has acquired secondary meaning, is not generic, is not functional, is legally strong, or is not likely to confuse consumers with regard to an existing trademark. Surveys can also be used to prove plaintiff’s lost profits, which is evidence that is notoriously difficult to obtain without a survey. According to Phyllis J. Welter, an expert on trademark surveys, the discussion of surveys in trademark litigation has grown from roughly 5.6% in the 1950’s to over 12% in the 1980’s. Ms. Welter’s book, Trademark Surveys, published in 1998 by West Group, is an excellent source of information on how to utilize surveys in trademark litigation.

Measure of damages :

Both the Lanham Act and the common law provide for two standard methods of calculating damages, if indeed damages are awarded at all. These are typically the plaintiff’s lost profits or defendant’s profits gained as a result of defendant’s infringing activity. Additionally, damages have been based on a reasonable royalty or a the cost of corrective advertising. Finally, the court may award treble damages and prejudgment interest to the plaintiff where the court deems such damages as equitable and not punitive.

Misdescriptive marks (deceptively misdescriptive) :

Deceptively misdescriptive marks are those that incorrectly describe features of the underlying services or goods to which the mark is affixed. Like deceptive marks, deceptively misdescriptive marks tend to mislead consumers as to the underlying product. However, deceptively misdescriptive marks do not meet the requirements of a deceptive mark (i.e. bad intent or reliance by purchasers upon the misdescription). As such, deceptively misdescriptive marks can be registered on the Principal Register once they acquire secondary meaning.

Misspelled words as marks :

Often business owners choose misspelled words that are phonetically similar to the correctly spelled word, in hopes of adding distinctiveness, or even perhaps as a marketing ploy. However, trademark law deems words that are misspelled, but otherwise descriptive of a product to be the same as the non-misspelled descriptive term for that product. For instance, “KUIK LOVEE” as a trademark for a convenience food item would be treated as a descriptive term in the same way as if the item were instead named “QUICK LOVE.”

Misuse of trademark :

An affirmative defense to trademark infringement. Misuse occurs when the trademark owner uses the mark in violation of the law, such as canceling a trademark license on the basis of illegal discrimination. Some legal scholars have also suggested that the misuse of a trademark should result in cancellation of a trademark registration where the trademark holder uses the registration to invoke Internic’s domain dispute policy when there is no valid argument for actual trademark infringement by the domain name owner. However, the US Patent and Trademark Office has never canceled a mark yet based on trademark use. Nonetheless, cancellation of patents and copyrights have occurred based on misuse, and it may be a matter of time before a similar precedent is set in trademark law.

Monetary relief :

Monetary relief is but one form of protection available to trademark owners under the Lanham Act. Monetary relief may include provable damages, attorneys fees, corrective advertising costs, lost profits (either defendants’ or plaintiffs’), prejudgment interest, punitive damages, reasonable royalty or treble damages. Monetary awards are not required when infringement has occurred. The court has wide discretion under “principles of equity” to grant or deny such relief, and frequently requires a finding of intentional infringement before making such a reward.

Monopoly :

A privilege vested in one or more parties consisting of the exclusive right to carry on a particular business or trade. In the case of trademark law, a monopoly specifically references the exclusive right to use a word, symbol, sound or trade dress, etc. in association with a particular kind of good or service.

Multiple-class application :
An application for Federal trademark registration in which the applicant seeks registration for more than one international class. The registrant must pay an additional registration fee ($245) for each class applied for.

Music, trademark protection of :

Trademark protection exists for any sounds or musical compositions to the extent that such music meets the requirements of a trademark. A famous example is the melody to “Sweat Georgia Brown” for the Harlem Globetrotters International.

Musical notation, trademark protection of :

Musical notes appearing with or without a staff are protected as long as they function as proper trademarks. As such, there is arguably no independent trademark protection against the printing of musical notes as a symbol identifying the specific song communicated by those notes, because they describe the music itself. Moreover, such notation would arguably be functional for the creation of that particular music. However, musical notation as a symbol for anything other than the song itself could operate as a trademark.

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Packaging, trademark protection of :

Protection is available for packaging as long as the elements claimed for trademark protection meet the requirements of a trademark. The elements that are protected may include the shape and color or overall coordination of these elements. However, only those elements that were designed specifically to promote the product are protected; not the functional features of packaging that have a utilitarian purpose.

Parallel Imports (Gray Market Goods) :

Goods that are not authorized for importation into the United States. These goods were legitimately sold outside the United States with the approval of the manufacturer, but were not supposed to be resold back into the United States. The importers of Gray Market Goods are attempting to benefit from the higher prices such goods command within the United States as compared to the country into which they were originally sold.

Paris Convention :

The International Convention for the Protection of Industrial Property. This treaty was originally signed in 1883 and grants, among other things, trademark rights based upon national treatment to all nationals whose countries signed onto the convention. A trademark registration in one’s home country sets the priority date for registrations made in all other member countries.

Patent and Trademark Office :

Otherwise known as the United States Patent and Trademark Office, or USPTO, this is the administrative body in the United States that oversees the registration and cancellation of trademarks on the Principal and Supplemental Register, as well as patents. Only attorneys can represent other parties before the USPTO, although individuals can represent their own companies. For trademark law, there is no special certification or license required for attorneys to practice before the USPTO. Trademark applications and all other correspondence should be addressed to “The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513.” Initial trademark applications should be directed to “Box NEW APP / FEE,” while amendments to allege use should be directed to “Attn. AAU,” and statements alleging use or requests for an extension of time to file a statement of use should be directed to “Box ITU / FEE.”

Patent :

The exclusive right to use or sell an invention. The government, under the auspices of the U.S. Patent and Trademark Office, grants such rights only to new, useful and non-obvious ideas for machines, processes or certain designs. Drafting patent applications is an art that some say takes years to develop well. Depending on how the application is drafted a patent can offer very weak and narrow protection, or rather robust and strong protection. Although Pliam Law Group, PA does not practice in the area of patent law, we do strongly recommend the investment in a good patent attorney, and will gladly make recommendations on where to find a good patent attorney.
(More information at : http://www.epatent.biz )

Patent attorney :

It is not necessary to have a patent attorney doing trademark related work. A patent attorney is typically an attorney with an engineering or other scientific degree, and who is specially licensed to handle patent matters before the U.S. Patent and Trademark Office (USPTO). Except insofar as the USPTO governs trademark registrations, patents and trademark have virtually nothing in common, and thus there is no need to have a patent attorney for trademark work.

Personal names, trademark protection of :

Traditionally, courts have been reluctant proscribe the use of one’s own name in business even when another business exists by the same name. As such, courts would try to craft injunctions to be as narrow as possible to permit use of a personal name. More recently, courts have become increasingly insensitive to any prohibition on using one’s own name, where such use creates a likelihood of confusion for consumers. Thus, trademarks consisting of a person’s own last name (surname) are generally protected under trademark law once the mark has acquired secondary meaning. First names may not need to acquire secondary meaning, however they receive very weak protection generally.

Petitioner :

The party to a cancellation proceeding who seeks to cancel the Federal registration of a trademark held by the registrant in such an action.

Physical features, protection of :

Shapes or physical features of products or their containers may receive trademark protection if those features are distinctive and non-functional.

Plaintiff :

The party who brings a lawsuit. In a trademark suit, the plaintiff may be claiming trademark infringement and/or dilution, or may simply be requesting in a declaratory judgment action for the court to make a determination of which party has prior rights in a mark, or whether there even exists a valid conflict between two marks. Standing to sue in a trademark lawsuit exists once someone claims infringement and threatens to take some action either through the courts or the appropriate administrative body. If this happens, the party accused of infringing a trademark can become the plaintiff in a declaratory judgment action and thereby can often receive the advantage of a more convenient forum.

Plaintiff’s lost profits as damages :

Prejudgment interest :

Interest awarded to a plaintiff in some jurisdictions for trademark infringement. Such interest may be calculated beginning from the date that infringement first began or the first date that plaintiff made a demand for settlement. When the ultimate damage award is large and the case protracted, prejudgment interest is not to be considered lightly.

Preliminary injunction (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.

Presidents’ names, trademark protection for :

The Lanham Act specifically prohibits use of a President’s name as a trademark, if the President is alive, and has not given express written consent. If the President is deceased, but the President’s spouse is still alive, written consent must be obtained from the spouse before the President’s name may be used.

Prima facie evidence :

“Prima facie” is Latin for at first sight, or first appearance. Prima facie evidence is evidence that is sufficient on its face, and if not rebutted or contradicted will remain so.

Primarily geographically descriptive :

A term used in the manner of a trademark that conveys to the consumer a geographical connotation primarily or immediately. If the consumer is likely to believe that the underlying goods or services in fact come from that location, and that location is in fact the geographic origin of the underlying goods or services, then the mark is primarily geographically descriptive, and can be registered on the Supplemental Register, or on the Principal Register if the mark owner can demonstrate secondary meaning.

However, if the geographic term is not in fact the origin of the underlying goods or services, and the owner of the mark intended to deceive consumers with regard to geographic origin mark, or if the mark falsely induces purchasing decisions, then the mark may be geographically deceptive, and cannot be protected. A minority of courts look at the intent of the mark owner, while most courts look at whether or not consumers are likely to materially rely upon the misdescription. While proving intent with direct evidence is virtually impossible, courts may infer from the circumstances whether or not a person had bad intent. For this reason, it is probably a good idea to stay away from terms that falsely suggest qualities of a geographic region such as SWISS for watches not made in Switzerland, and WISCONSIN for Cheese not made in that state. Finally, after the U.S. implementation of TRIPs, the Lanham Act. 2(a) has been amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Principal Register

This is the primary registry of trademarks maintained by the U.S. Patent and Trademark Office (USPTO). In order to qualify for registration on the Principal Register, a trademark must be distinctive and currently in use. Trademarks that qualify for Principal Register registration receive the all the benefits of registration, whereas those registered on the Supplemental Register do not.

Priority date :

The date that determines who will prevail in a trademark infringement lawsuit. In the United States, the priority date is generally the date a trademark was first used. In most other countries, the priority date is based on whoever is first to file for a trademark registration.

Prior registration :

A trademark registration that was filed before another. In most countries other than the United States, the first to register a trademark as the right to exclude others from using that mark in a similar manner. While the United States generally grants priority based on use rather than registration, even in the United States rights outside of one’s area of use are granted on the basis of who is first to register (nationwide priority).

Prior rights :

Trademark rights owned by one party for a given mark prior, and which were established prior to the time a second party gains trademark rights in that same or a similar mark. In the U.S. the party who is the first to use a mark in commerce has the prior right to the mark, and as such can exclude all subsequent uses of the mark in the same geographic territory. However, in most other countries in the world, trademark rights are prioritized based on the first party to register a mark.

Prior use :

Use of a trademark that occurs before a confusingly similar use of that same mark. Such use by the second user infringes the first user’s trademark if the use by both parties is in the same geographic territory. In the United States, the first person to use a mark has prior rights, and may exclude all subsequent users of the mark in that territory.

Product design :

Product design consists of the variety of elements which constitute the configuration of the product. Product configurations are protected as long as they are distinctive, and operate like a trademark. 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.

Protectability of a mark :

A mark is capable of being registered by the U.S. Patent and Trademark Office (USPTO) and protected in the courts as long as the mark (1) is not being used by someone else; (2) is not forbidden; (3) is distinctive; and (4) is being used in commerce to allow consumers to identify one brand, and distinguish it from others. If a mark is not distinctive, it may still be registered on the Supplemental Register, but it will not receive protection in the courts, nor will it receive the many benefits of a being on the Principal Register.

Protest letter :
A letter written to the U.S. Patent and Trademark Office (USPTO) in order to protest the registration of a mark.

Proof of Damages :

Proving damages is a necessary prerequisite of being awarded damages, yet doing so can be exceedingly difficult. If damages are awarded, they are typically measured by either the plaintiff’s lost profits, or defendant’s profits. In the case of plaintiff’s lost profits, proof issues are particularly tricky since many factors may result in a decline in plaintiff’s profits at any given time. A market survey may be useful here to demonstrate loss of reputation which can serve as circumstantial evidence of lost profits. When the award sought is defendant’s profits, all that plaintiff must prove is the amount of defendant’s gross sales. Then the burden shifts to the defendant to prove reasonable deductions from those sales.

Publication of trademark (Publication period) :

Once a mark has been approved by the Trademark Examining Attorney, the mark is published in the Official Gazette for 3 months. The purpose of publication is to notify existing mark owners of potentially infringing marks, and give them an opportunity to respond with a protest letter.

Punitive damages :

Punitive damages are those that a court can award as a punishment for wrongdoing aside from any actual damages suffered by the plaintiff from any such wrongdoing. Punitive damages are specifically prohibited under the Lanham Act. However, a court may award treble damages, prejudgment interest and costs in cases in which the court deems such an award as just, and as long as the award is not made for punitive reasons. Courts can also award reasonable attorneys’ fees in exceptional cases such as egregious intentional infringement.

Purchaser :

In trademark law, the person who ultimately buys a good or service associated with the use of a particular mark. Although consumer confusion is the test of whether or not a trademark has been infringed, such confusion need not be confusion of purchasers. Likely confusion of nonpurchasers qualifies as infringement as well. An example of nonpurchaser confusion is where a product bearing the infringing mark is likely to be seen by nonpurchasers, such as when it is engraved on the good itself. The actual purchaser may not be confused by the engraving if the packaging or store display may contain disclaimers. Nonetheless, if the nonpurchaser who has not had the benefit of seeing the disclaimer is likely to be confused, there trademark infringement exists.

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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 :

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

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.

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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