Trademark Law Litigation

March 3, 2009

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Fair Use :

Fair use of a mark is use in a way that is descriptive of one’s products, use that is other than as a trademark, and use that is undertaken in good faith (i.e. not to cash in on the goodwill of the trademark owner.) Fair use is generally treated as an absolute defense to a claim of trademark infringement. However, some courts have said that when there is a likelihood of confusion, then there can be no fair use defense. 

 
Famous mark :

A mark that commands a wide degree of familiarity such that it receives special protection under the Federal Trademark Dilution Act. The Act specifies that when determining whether or not a mark is famous, the following factors should be considered: (1) the degree of inherent or acquired distinctiveness in the mark; (2) the duration and extent of use of the mark in connection with the goods or services on which the mark is used; (3) the duration and extent of advertising and publicity of the mark; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the mark is used; (6) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought; (7) the nature and extent of use of the same or similar marks by third parties; and (8) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the Principal Register. (15 U.S.C. Section 1125(c)(1)(a-h)).

 
Fanciful terms (coined terms) :

These are terms that are invented for the sole purpose of serving as trademarks. Examples include FUJI for photographic equipment, WINDOWS for a computer operating system, NIKE for shoes, and MITAC for photocopying equipment. Coined marks receive the highest level of protection, because a coined word has no known meaning and therefore has no possible association with the good or service for which it is used. As a result, infringers of these marks are hard pressed to provide any plausible explanation for their use the mark, leaving the impression that the real reason was in fact a blatant attempt to trade off the goodwill generated by the owner of the trademark.
 
Federal versus state trademarks :

State trademarks are typically used exclusively in intrastate commerce, while a federal mark must be used in interstate commerce in order to be registered. However, there is no requirement that state marks be used only in one state. Thus, there can be, and usually is, concurrent protection for a mark based on state and federal law. Registration for state trademarks is available in most states, and protects trademark rights in that state only. The advantage to a state registration is that it is cheaper and faster than a federal registration. However, federal registration provides many more benefits, such as providing nationwide priority, which grants rights in a mark even in states in which the mark owner has not used the mark. Those performing a full U.S. trademark search prior to adopting a mark, as they should, will have notice of state registrations as well as federal registrations. Thus, even a state registration can go a long way toward deterring future conflicting uses of a mark. 

 
Filing date, obtaining:

The filing date is the date in which an application for federal trademark registration is accepted into the U.S. Patent and Trademark Office (USPTO). The filing date can be especially significant for intent-to-use applications since that date becomes the priority date once the Statement of Use is accepted by the USPTO. In order to obtain a filing date, a trademark application must include: the name of the applicant, the name and address where communications can be directed, the drawing page, an identification of goods and services, a claim of bona fide intent to use the mark in commerce, or a date of first use together with at least one specimen of the mark as used, a verification signed by the applicant, and the filing fee for at least one class of goods or services.
 
First Amendment :

There is a constant tension between the First Amendment rights of free speech and the grant of exclusive rights to use words and other symbols as trademarks. Trademark rights are therefore curbed to the extent possible to promote free speech and free competition in the marketplace. For this reason, raising the First Amendment as a defense to a trademark infringement claim is often worthwhile. Where the First Amendment defense most frequently arises is in the context of parodies involving trademarks. 

 
First use date :

The date a mark was first used anywhere. In the United States, the first person to use a mark has priority, and can exclude all subsequent users of identical or confusingly similar marks. For this reason, it is important to document the date of first use of a mark. This may be done by taking a dated photograph of the goods bearing the mark or keeping the original advertising if it shows the date that the ad ran. It is also a good idea to keep records of the first sale of goods or services made using the mark. This may include a bill of sale or invoice. If a dated photograph or advertisement is not available, another method of documenting first use is to notarize a statement on the back of a photo or ad such as “This photo was taken on 12/31/98,” or “This ad was placed on 12/31/98.” While this provides perhaps less convincing evidence than a dated photo or ad, it is far better than a photo or ad with no date.

 
Forbidden marks :

These are marks that cannot receive protection through the courts nor registration with the U.S. Patent and Trademark Office. They include (1) generic marks; (2) immoral, disparaging or scandalous marks; (3) marks which are primarily functional; (4) marks consisting of a living person’s name, portrait or signature, unless written permission has been granted; (5) deceptive marks, and (6) marks consisting of a deceased President’s name, unless that President’s spouse has granted written permission or is no longer alive. 

 
Foreign applicants, requirements of ;

If a mark has already been registered in a foreign country (or an application has been filed in a foreign country), then use in the United States is not a requirement of registration on the Supplemental Register, as long as the U.S. application for registration is filed within six months of the foreign filing. However, use of the mark in the United States is required in order to receive the benefits of registration on the Principal Register. Foreign applicants who rely on their foreign application as a basis for registration on the Supplemental Register do not need specimens, nor do they need to provide the dates of first use nor specify the manner of affixing the mark to the goods. However, such applicants must specify their priority date in the heading of the application. Also, all foreign applicants must provide the name of a domestic representative on whom notices of process can be served regarding the application.
 
Foreign equivalents, doctrine of :

This refers to the requirement under trademark law that foreign terms be first translated into their English equivalents prior to analyzing the suitability of the foreign term for trademark protection.

 
Foreign terms, trademark protection of :

When analyzing the trademark potential of a foreign term, that term must first be translated into English. If the word as translated is generic, then the foreign term is not protectable under trademark law.

 
Fraud :

Fraud occurs when the mark owner knowingly made a false representation to the U.S. Patent and Trademark Office (USPTO) regarding a material fact, or else willfully withheld material information, and the USPTO would not have issued the registration but for its reliance on the false representation. Fraud in procuring or maintaining a trademark registration is a defense to trademark infringement, and can lead to the cancellation of the mark’s federal registration (the mark owner retains common law rights). Additionally, under Lanham Act §38 a civil court may award damages to any person who has been damaged by the mark owner’s fraud. 

 
Functionality doctrine (utilitarian functionality) :
According to this doctrine, the functional features of a trademark, or those features having primarily a utilitarian purpose, are not granted protection. Where product elements such as shape, color or design are necessary to improve the saleability of a product, or because the product requires the trademarked element to function optimally, then that feature is not protected by trademark law.

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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:

  1. Primarily geographically descriptive;
  2. Geographically deceptively misdescriptive; or
  3. 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:

  1. Likelihood of confusion with petitioner’s previously used or registered mark,
  2. Fraud,
  3. Descriptiveness,
  4. Genericness,
  5. Abandonment,
  6. 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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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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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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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.

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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 :

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.

 
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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Scope of search in trademark law :

The scope of the search, including the territory in which you conduct the search and the industries within which you search, is dependent upon:

  1. Where you intend to use the mark;
  2. Which industry you are selling your goods or services;
  3. How much money you are willing to spend in a search, and
  4. Your tolerance of the unknown.

Generally speaking, a good search will include identical marks in all industries, and confusingly similar marks within your own industry or industries. To the extent that you have enough money, and you don’t tolerate risk well, you should pay for a professional search firm to conduct a nationwide search of all existing and pending state and federal government registrations, and perhaps even Secretary of State filings, which are not part of most firms’ “full search” requests. If you have even a remote interest in expanding internationally, then you should also conduct a similar search in any country or continent in which you think you may expand. However, if you are low on funds, and highly risk tolerant, then you must at a minimum still search the Internet, the yellow pages, and any industry journals in all the regions of the country you plan to conduct business, since recent court decisions indicate that failure to conduct a reasonable search may be treated as willful infringement. Furthermore, even if you don’t plan to immediately operate in an adjacent territory, you should still conduct a search there because businesses with plans for expansion will have rights prior to yours in some cases.

 
Search :

An investigation conducted in order to determine the availability of a proposed mark, to identify potential challengers to a mark already in use, or to discover potential infringers of a mark in use.

 
Secondary meaning :

An awareness on the part of the relevant consuming public that a mark identifies a particular good or service, and is not limited to its common, or primary, meaning. Secondary meaning is generally acquired only after exposure to the term as a brand identifier after extensive advertising. Descriptive marks and surnames must acquire secondary meaning in order to become registered or to be protected as a trademark.

 
Second level domain name :

The second level domain is the portion of a domain name that is made up by the domain name owner. For example, in the following URL: http://www.legal-directory.biz “legal directory” is the second level domain, while “biz” is the top level domain.

 
Section 2(f) claim :

A claim made to the U.S. Patent and Trademark Office (USPTO) that the mark being applied for has distinctiveness by virtue of long and continuous use and/or because of widespread use and promotion, i.e. that the mark has acquired secondary meaning.

 
Section 8 affidavit (affidavit of use)

A required filing with the U.S. Patent and Trademark Office (USPTO) stating that the mark is question is has been in continuous use for five years since the registration was issued. Failure to file this affidavit between the fifth and sixth years after registration will result in an automatic cancellation of the trademark registration. The Affidavit of Use is filed in conjunction with the Section 15 Affidavit to request incontestability status.

 
Section 15 affidavit (incontestability affidavit) :

Section 15 allows for the incontestability of a mark following five years of continuous use of the mark after registration. Incontestability status is not automatic, but occurs upon a filing with with the U.S. Patent and Trademark Office (USPTO), a filing made in conjunction with the required Affidavit of Use which is required between the fifth and sixth years after registration. Future renewals do not require additional filings of the Section 15 Affidavit.

 
Seizure of counterfeit goods :

The U.S. Customs Service is authorized to seize counterfeit goods. However, the owner of the trademark must first record a valid U.S. trademark registration with Customs. For marks which are so recorded, U.S. Customs is authorized to seize the counterfeit goods, and provide notice to the trademark owner of the counterfeits. Destruction after seizure is mandatory unless the trademark owner consents to give the goods to charity after removing the counterfeit marks from the goods.

Service mark :

The same thing as a trademark except that the term pertains only to words, symbols, phrases etc., used in commerce to identify and distinguish services as opposed to identifying goods.

NOTE: The term “trademark” is frequently used interchangeably to mean a mark for either goods alone or both goods and services.

 
Settlement :
Agreement reached between litigating or potentially litigating parties to a dispute. Common examples in trademark cases include gradual name change, licensing, limitations on use, or a monetary payment.

 
Shapes, (trademark protection of) :

Product shapes are capable of trademark protection under the rapidly expanding doctrine of trade dress as long as the shape meets the requirements of a trademark and is not a functional feature of the underlying product. Examples include the famous Coca-Cola bottle, and the round Honeywell thermostat.
 
Similarity of marks :

Similar marks cannot co-exist as trademarks if they are similar in such a way that is likely to cause consumers to be confused as to the source of the products using such marks. 
 
Slogans, (trademark protection of) :

Slogans are capable of trademark protection as long as they meet the requirements of a trademark. However, since slogans frequently are used as marketing instruments to describe the underlying product or service, they are almost always descriptive, and lack inherent distinctiveness. Once they are used extensively enough in the market place to acquire secondary meaning, they may be registered.

 
Smells, (trademark protection of) :
Trademark protection exists for smells to the extent that they meet the requirements of a trademark.

 
Sounds, (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 are the three notes heard along with the NBC peacock.

 
Source :

The manufacturer or service provider who provides a good or service. The function of trademarks is to allow consumers to identify the source of products or services so they can avoid the brands dislike and buy the ones they like. It is not necessary that the hypothetical consumer knows the actual name of the manufacturer or service provider. All that is necessary is that the consumer can discriminate between brands.

 
Source discriminator :

Another name for a trademark that reflects the primary function and requirement of a trademark; namely, to identify the source of goods or services to consumers in order that they can discriminate between one brands when making purchasing decisions.

 
Specimen :

Items that serve as evidence for actual use of a mark. The U.S. Patent and Trademark Office requires of all trademark applicants to submit three specimens of the trademark as it is used in commerce. For Intent to Use applications, the specimens are not required until filing an Amendment to Allege Use or Statement of Use. All three specimens may be the same, but they can also be different.

For multi-class applications, you must submit separate sets of three specimens for each class, however they may be the same as those submitted for the other classes as long as the specimens reflect use in each class.

Acceptable specimens for services include items such as advertisements, brochures, billboards, direct mail pieces or menus. Letterhead and Business cards can be used as specimens for services, but only if they reflect what service the business provides, otherwise the name on the card or stationary is merely being used as a trade name, and not a trademark. For example, a business card for QUIN ‘S GARAGE that has the tag line, “We’re ‘Quin’ for a reason,” would be unacceptable. However the same card with the tag line, “Fixing all American Autos & Trucks,” is perfectly acceptable because it describes the service provided. Similarly, letterhead must either in a tag line or in the text of the letter itself describe the services offered. Unacceptable specimens for services include price lists and packaging lists.

Businesses selling goods cannot rely on letterhead or business cards, but must instead submit a specimen that shows the mark affixed to the goods themselves, such as can be seen in a photograph, as long as the photo can clearly show the mark itself. Unacceptable specimens for goods include: price lists, catalogs, trade directories, publicity releases, invoices, internal memos or other company documents, instruction sheets, letterhead, business cards, bags or boxes to temporarily carry or ship merchandise, such as a grocery bag, or any other item that does not directly show the mark affixed to the goods. For example, while a photograph of a company label stuck onto the goods is acceptable, that same label if sent as the specimen itself would be unacceptable. Photocopies are permitted as long as they meet all the other requirements.

 
Standing :

The legal term for the right to bring a claim before a judicial or regulatory body. The person bringing the claim must have “a personal interest in the outcome beyond that of the general public.”

 
Standing, (requirement in an cancellation action) :

To file for the cancellation of another party’s mark, the petitioner must believe he or she is damaged by the existence of the registration sought to be canceled. Typically standing in a cancellation action will exist there is a likelihood of confusion with petitioner’s mark or when the petitioner’s application was rejected on the basis of the challenged mark’s prior right.

 
Standing, requirement in an opposition proceeding :

Oppositions may be filed by “any person who believes that he would be damaged by the registration of a mark.” This rule together with the general law of “standing,” means that the opposer should have some commercial involvement with the goods or services that are being described by the mark in question.

 
State versus federal trademark :

State trademarks are typically used exclusively in intra-state commerce, while a federal mark must be used in interstate commerce in order to be registered. However, there is no requirement that state marks be used only in one state. Thus, there can be, and usually is, concurrent protection for a mark based on state and federal law.

State and federal trademarks are always common law marks, because no matter where a mark is used, it is protected under the common law as of the moment of first use. However, registration of trademarks by the state or federal government provide additional protection beyond what is offered under common law.

The benefits of registering a mark federally are far greater than those offered under state registrations. However, the process for registering a mark federally is more extensive, rigorous and time-consuming than it is for state registrations.

Statement of Use :

An additional filing required of Intent to Use applicants which essentially verifies that their mark is now being used. Specifically, the Statement of Use must include a verified statement that the applicant is the owner of the mark, that the mark is in use in commerce, that the mark is used on or in connection with the goods or services included on the Notice of Allowance, and a listing of the dates of first use, and first use in commerce, and the manner or mode in which the mark is used. Three specimens must accompany the Statement of Use.

Strength of mark :

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 Fans Mix.” This tells the customer immediately that it is a substance that fixes fans 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).

 
Subjectivity in trademark law :

Trademark law is likely to be one of the most subjective areas of the law. The reason for this is that language and communication, which are at the heart of trademarks, depend completely on one’s cultural experiences, whether those experiences are shaped by ethnicity, economic class or even the passage of time. For instance, cases decided one way today might have been decided differently 50 years ago, simply because the connotation of words and symbols change through time. Because of the inherent subjectivity in trademark law, it is not unusual for a Examining Attorney with the U.S. Patent and Trademark Office, or a federal court judge to have differing views on the legal attributes of a mark. Likewise, a legal opinion given by an attorney regarding the availability of a mark may not agree with the opinion arrived at by another attorney or judge looking at the same material, yet all may have legitimate opinions. For this reason, it may be a good idea to avoid marks that an attorney say are even potentially troublesome, since another attorney may conclude the mark is too risky to even consider.

This aspect of trademark law is probably less understood than it should be, and business owners who are not risk tolerant may be well advised to routinely seek second opinions whenever the availability of marks is the least bit questionable.

Suggestive terms :

Suggestive trademarks suggest rather than describe qualities of the underlying good or service. “Suggestive” and “descriptive” are not mutually exclusive, since there must be some description in almost any suggestion. However, by going beyond “mere description” the law elevates a suggestive term into the valuable category of “inherently distinctive.” Courts have clarified this fine distinction by stating a mark is suggestive if it requires imagination, thought and perception to determine the nature of goods or services in question. Examples of suggestive marks include:  KENWOOD for stereo loudspeakers, HABITAT for home furnishings, UPS  for bus transportation services, and ILDATEKS for cotton-tipped swabs.

 
Supplemental Register :

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.

 
Surnames, (trademark protection of)

Trademarks consisting of a person’s own last name are generally not protected under trademark law unless the mark has acquired secondary meaning. In some instances, a name may not require secondary meaning in order to receive protection. That occurs when the surname also describes some other thing, such as BIRD, KING, or FLOWERS. Courts have taken two different approaches in analyzing whether or not a surname has a meaning different enough from a last name so as not to require secondary meaning. One view requires secondary meaning when the mark’s primary meaning is as a surname, while the other view requires secondary meaning when the mark’s only likely impact is as a surname.

If the name does not describe some other thing, it can still receive protection without secondary meaning if the mark is not perceived as a surname, even if the only true meaning of the word is in fact as a surname. However, even if a surname is rare in the public at large, but the relevant consuming public primarily conceives of the name as a surname, it cannot be protected without secondary meaning. Furthermore, when a surname is used in conjunction with arbitrary or fanciful components, then the mark can be registered and protected under trademark law without proof of secondary meaning. However, such protection will be weak with respect to the surname component alone.

 
Surveys :

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.

 
Symbols, (protection of)
Trademarks can be any symbol as long as the symbol meets the requirements of trademarks. Logos are symbols that are not lingual marks, and they must be registered as design trademarks. However, any word is also a symbol, and can be registered as a lingual mark or a design mark if the trademark incorporates a design or logo in addition to the lingual components.

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