Name reservation « Trademark Law Litigation

March 3, 2009

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Filed under: Trademark Glossary — Tags: ICANN, Internic, Naked assignment, Naked license, Name reservation, Nameholder corporation, nationwide priority, Natural expansion, Network Solutions, Non-exclusive license, Nonfinal order, Nonpurchaser confusion, Notice of Allowance, Notice of publication, Notice of trademark rights, Numbers, Official Gazette, SM, TM, TM symbol, trademark protection — admin @ 5:05 pm

Naked assignment :

Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and may 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.

Naked license :

Licensing of a trademark without the necessary controls over the use of the mark. Such licenses may result in the inadvertent abandonment of the trademark.

Nameholder corporation :

A corporation created in order to reserve the name as a corporate name for the owners of that corporation. Corporate names can serve as trademarks only if they are used as such. Otherwise, they receive no protection, unless otherwise dictated by state law.

Name reservation :

Registering the name of a business with the state in order to reserve that name for the business owner. Most states will reserve a name that is not an exact duplicate of an existing name, with no attention given to confusingly similar names that may infringe existing trademarks. For this reason, it is not sufficient to search a state’s database of existing business names to determine whether or not there is preexisting trademark rights.

Nationwide Priority :

Nationwide Priority is an exception to the common law rule that the first person to use a mark in a territory has priority in that territory. A federal trademark registration allows whoever is first to register a mark to have priority in any territory in which the mark is not already being used. Without federal registration, or nationwide priority, a trademark owner can be the first to use a mark in one area of the country, but a junior user is free to use the original owner’s mark in a different area of the country. What’s more, the junior user can stop the original owner from expanding his/her business into any area where the junior user is using the mark. If the original user owned a federal trademark registration, he/she could stop the junior user.

Failing to register the mark means the junior user can do so, and then be the beneficiary of nationwide priority, allowing him/her to keep the original owner from expanding anywhere in the nation, except the small area in which the original owner is using the mark, or in some cases, within the oringinal owner’s zone of natural expansion.

Once a company has nationwide priority via a federal registration, they can use the mark without restriction anywhere in which any prior user is not already using the mark. However, the registered owner cannot sue to prevent prior users of the mark from expanding into new regions, until the registered owner of the mark can show actual use or in some cases an imminent intention of using the mark in that region. For example, if BeeBop establishes rights to a mark in territory XYZ, and then DooDah registers the mark federally, DooDah can claim priority over all regions in the country except XYZ. While BeeBop can still expand into regions in which DooDah is not using the mark, BeeBop can be forced to discontinue use in the new region the moment DooDah can demonstrate a presence of the mark in that region or an intent to imminently enter that region. Until DooDah can demonstrate such a presence or imminent intention, the federal registration cannot be used to enjoin BeeBop from using the mark in that territory.

Natural expansion :

A doctrine whereby rights in a trademark are granted based on expected use rather than actual use. Expanded rights under this doctrine are granted only when a company is already using the trademark in one area, and can demonstrate that it planed to expand to the claimed area. This doctrine is ineffective if there is a pre-existing federal registration held by another party in the claimed area.

Network Solutions (Internic):

The company administering all of the domain names having top level domains; .COM, EDU, .NET, or .ORG. Internic requires all of its registrants to agree to a domain dispute policy for trademark disputes that may result in cancellation of a domain name, and indemnification of Internic in the event they are sued. Internic does not check for pre-existing trademark conflicts prior to registering domain names. As a result of this and other policies inconsistent with trademark law, Internic has been the target of litigation, despite its best efforts to stay out of the middle trademark disputes over domain names. They can be found at www.internic.net.

Non-exclusive license :

A form of trademark license which grants the person licensed (i.e. licensee) something other than an exclusive entitlement to the mark. The effect is that multiple parties can use the same trademark at the same time for the same thing, and in the same geographic region. If the license agreement granting a nonexclusive license is not carefully worded, the owner of the trademark my inadvertently loose all rights to that mark.

Nonfinal order :

An order from the court that does not dispose of a particular case or legal issue. Nonfinal orders are not appealable until after a final order is made in a case. An example of nonfinal orders include those determining whether or not certain evidence should be admitted in court, or of which jury instructions should be read.

Nonpurchaser confusion :

In trademark law, consumer confusion is the test of whether or not a trademark has been infringed. However, such confusion need not be actual, nor does it need to 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.

Notice :
Notice of trademark rights is given by use of the symbols, TM, SM or ®, or by phrases such as “XYZ Company is the registered owner of the trademark ABC,” or “Reg. U.S. Pat. Off.” The symbols “TM” and “SM” are used for trademarks and service marks respectively, and provide notice that a company considers its use of a mark to be protected by trademark laws, even though the mark is not federally registered. Use of the “®” symbol gives notice specifically of the existence of a federal trademark registration.Failure to provide notice of federal registration can result in the court denying certain monetary awards, unless the plaintiff can prove the defendant actually knew the mark was registered.

Notice of Allowance :

That notice given by the U.S. Patent and Trademark Office to the trademark applicant informing the applicant that their Intent-to-Use application has been approved pending the filing and acceptance of a Statement of Use within six months of the issuance of the Notice of Allowance. If it is not possible for the applicant to begin use of the mark and file the Statement of Use within the six month period, the applicant can apply for an extension.

Notice of publication :

A notice sent to the applicant of a pending trademark registration that their trademark has been approved by the Trademark Examiners and will be published in the Official Gazette for publication.

Numbers, trademark protection of :

As long as numbers are used in the manner of a trademark, they are a trademark.

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Filed under: Trademark Glossary — Tags: Name reservation, primary registry, Principal, Principal Register, R symbol, Reasonable reliance on licensee, Recording a trademark, Recording assignments, Recording registration with U.S. Customs, Register, Registration, Rejection by the Trademark Examiner, Remedies for infringement, Reserving a name, Reverse confusion, Reverse Domain Name Hijacking, Right of priority, Supplemental Register — admin @ 4:08 pm

â symbol (encircled R) :

The encircled-R, or “®,” is a symbol that designates a specific trade or service mark as a federally registered trademark under the Trademark Act. In order to use this symbol a mark must be currently registered on either the Principle or Supplemental Registers maintained by the U.S. Patent and Trademark Office (USPTO). Willful use of the encircled-R on a non-registered mark may jeopardize future registerability status with the USPTO, and may be evidence of bad intent, which is frowned upon by the courts.

Recording assignments :

Recording of an assignment with the U.S. Patent and Trademark Office (USPTO) is not mandatory, but is generally a good idea, so as not to invite the argument that inadvertent abandonment occurred, and to provide accurate notice enabling courts to award treble damages and costs. Only assignments of registered marks can recorded. The assignor or assignee may submit the recordation, which should include the USPTO cover sheet, assignment document, and the $100 fee.

Recording registration with U.S. Customs :

Recording a trademark allows U.S. Customs to interdict the importation of counterfeit goods, goods with infringing marks, and gray-market goods. The government fee for recordation is $190, and the process involves providing the appropriate information on corporate stationary to: Intellectual Property Rights Branch, U.S. Customs Service, 1301 Constitution Avenue, N.W., Franklin Court, Washington, D.C. 20229. For more information on how to record, see the INTA publication entitled, Practitioner’s Guide to the Recordation of Trademarks with Customs in the U.S. and the E.E.C., edited by June Gardner Kolbert and David Allen Latham. You may order this publication directly from the INTA at http://www.inta.org/publindx.htm#country2ed

Register, (Principal) :

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.

Register, (Supplemental) :

The Supplemental Register is a secondary list of registered marks maintained by the USPTO. Marks on the Supplemental Register do not qualify for registration on the Principal Register, and as such, these marks do not receive the many benefits of registration available on the Principle Register. However, registration on the Supplemental Register allows the mark owner to use the ® symbol next to their mark, and also provides notice to potential users of the mark that it is already being used. Typically, Supplemental Register marks are those that are registered in foreign countries but not yet used in the United States, and those that are not descriptive. Once a mark becomes distinctive through extensive use, or has been on the Supplemental Register for five years, the mark owner may petition to have it removed to the Principal Register.

Registration :

A registration is a grant of rights by the government in a given trademark. Registrations are granted by the Federal government, as well as most state governments. An application for registration requires providing data in the following categories: dates of use, description of goods or services, designation of class, drawing of mark, identification of applicant, specimens, and verification and execution.

Rejection by the Trademark Examiner :

An initial refusal to register a mark made by the U.S. Patent and Trademark Office (USPTO) Examining Attorney. Marks may be rejected for several reasons, including that the mark is likely to cause confusion with other marks, is not distinctive, is generic or forbidden, or for inadequacies of the application itself such as a description of goods that is too vague, or specimens that don’t demonstrate use for the claimed goods or services. If the mark is rejected, the Examining Attorney will send an office action to the trademark owner or their attorney. The owner or attorney then have the opportunity to respond within six months, or the application is automatically canceled.

Remedies for infringement :

Depending on one’s perspective, a remedy may either be the penalty applied when found liable for infringement or dilution of a trademark, or the relief that the trademark owner may obtain under such circumstances. Remedies available include: injunctive relief to stop use of the mark, monetary relief, a bar on importation, cancellation of trademark registration, criminal indictment, a declaratory judgment, or other equitable relief as the court may see fit.

Reserving a name (Name reservation) :

Registering the name of a business with the state in order to reserve that name for the business owner. Most states will reserve a name that is not an exact duplicate of an existing name, with no attention given to confusingly similar names. For this reason, it is not sufficient to search a state’s database of existing business names to determine whether or not there is a preexisting trademark right.

Response :

A reply from a trademark applicant to the U.S. Patent and Trademark Office (USPTO) after the USPTO has sent the applicant an initial refusal of registration (office action). A response is due after six months of receiving the office action, or else the application will be deemed abandoned.

Reverse confusion :

Unlike typical consumer confusion in which the second (junior) user of a mark “cashes in” on the goodwill generated by the first (senior) user of that same mark, reverse confusion occurs when the second user becomes better known than the first user. Thus, the first user looses the opportunity to control its own reputation and goodwill. Consumers may even disrespect the first user assuming the second user is the original, while the first user is merely a copycat. The first user is virtually always the prevailing party in any trademark litigation.

Reverse Domain Name Hijacking

This occurs when corporations intimidate people or companies out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement, dilution, or unfair competition in any manner. Some trademark legal scholars have speculated that this reverse domain hijacking may be met with cancellation of the company’s mark under the doctrine of trademark misuse.

Right of priority :

The right to exclude all other confusingly similar uses of a mark based on having been the first to use that mark.

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