Trademark Law Litigation

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

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.