Official Gazette « Trademark Law Litigation

March 3, 2009

B

Filed under: Trademark Glossary — Tags: Bad faith, bad intent, Balance of Harms, Barring importation of goods, Benelux Registration system, Blackout period, Book titles, Brand name, Official Gazette, protection, USPTO — admin @ 6:51 pm

Bad faith (bad intent) :

A mental state characterized by an intent to deceive consumers by using a competitor’s trademark or one that is confusingly similar to it. Bad faith 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 on the part of the defendant. Evidence of bad faith has been found to exist where the defendant failed to conduct a trademark search prior to adopting a mark. Interestingly, bad faith is not always found where the plaintiff’s mark came up in defendant’s trademark search. That is because the defendant may have had a good faith belief that the mark was already diluted from extensive use by others, or that the products or services sold by plaintiff were sufficiently different that those defendant planned to sell.

Balance of Harms :

Prior to ordering injunctive relief, which is an equitable remedy, the court must weigh the harm to defendant if the injunction is imposed, against the harm to plaintiff if no injunction is ordered. There have been cases where the court finds likely consumer confusion (the requirement of a finding of trademark infringement), yet refuses to enjoin the defendant from using the mark on the basis that defendant made a substantial good-faith investment in a mark, and the harm to defendant in loosing that investment outweighed the harm to plaintiff. See e.g. Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44 (2d Cir. 1978).

Barring importation of goods :

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.

Benelux Registration system :

A treaty governing trademark registrations for the countries of Belgium, the Netherlands, and Luxembourg.

Blackout period :

The period in which an Intent to Use trademark applicant is prohibited from filing an Amendment to Allege Use, or a Statement of Use. This period begins once the mark is published in the Official Gazette, and continues until the USPTO issues a Notice of Allowance.

Book titles, protection of :

Book titles are generally not protected under trademark law unless they are part of a series. However, even if the title is not of a book belonging to a series, it may theoretically receive trademark protection as long as the title is used in the manner of a trademark and has acquired secondary meaning. Secondary meaning is also required if the title of the series itself is descriptive of the general contents of the series.

Brand name :

The popular vernacular for a lingual trademark, typically used in conjunction with goods. Thus, even though a brand name is always a trademark, a trademark is not always a brand name, since a trademark may be a sound, a color or product packaging, etc.

Comments (0)

N

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.

Comments (0)

O

Filed under: Trademark Glossary — Tags: acquisition, assignment of a mark, certificate, distinctiveness, Office Action, Official Gazette, Opposition Proceeding, Ordinary designs, Ornamentation, Ownership, proof, The Official Gazette of the United States Patent and Trademark Office, trademark protection, USPTO — admin @ 4:57 pm

Office Action :

A written communication sent by the Examining Attorney from the U.S. Patent and Trademark Office, requesting a response from the applicant regarding some matter pertinent to a pending application for trademark registration.

Official Gazette :

The short name for The Official Gazette of the United States Patent and Trademark Office. It is weekly publication containing information about all pending trademarks, changes to existing marks, and trademark renewals.

Opposition Proceeding :

An adversarial proceeding between an applicant and opposer, which takes place under the auspices of the U.S. Patent and Trademark Office (USPTO) and attempts to resolve whether registration of an applicant’s pending trademark registration would infringe and damage the opposer’s existing mark. Any person who believes they will be damaged by the registration of a mark on the Principal Register may file an opposition with the USPTO within thirty (30) days of the mark’s publication in the Official Gazette. Typically, oppositions are 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.

Ordinary designs, distinctiveness of :

Designs that are ordinary or commonplace such as simple lines or geometric figures are not inherently distinctive, but may become distinctive though use. Marks that are not distinctive cannot be registered on the Principle Register until they acquire secondary meaning.

Ownership, acquisition of :

In the United States, ownership rights in a trademark are generally acquired by being the first to use a mark in trade as a source discriminator. In most other countries, ownership is acquired by being the first to file for a trademark registration. Of course, one may also acquire ownership in a trademark by purchasing both the mark and all the goodwill associated with the mark (see assignment of a mark).

Ownership, proof of :

A certificate of federal registration provides prima facie evidence of ownership of a mark. For marks which are not yet federally registered, prove of ownership may be demonstrated by producing evidence of use of the mark in commerce prior to another party’s use of the mark. For marks affixed to goods, such proof may include a bill of sale for goods bearing the mark. For services, proof may include brochures or other advertising showing the mark.

Ornamentation :

This refers to an attribute of a product which may not be protected under trademark law. Under the aesthetic functionality doctrine, those design attributes of a product that are mere ornamentation, i.e. aesthetically pleasing and help improve the salability of a product, but do not primarily assist the consumer in distinguishing the goods from a competitor’s goods, cannot receive trademark protection.

Comments (0)