USPTO « Trademark Law Litigation

March 3, 2009

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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.

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Damages :

A monetary amount awarded to the plaintiff by the court in order to compensate the plaintiff for actual injury sustained by the actions of the defendant. In trademark cases, the basis of damages is typically the plaintiff’s lost profits or defendant’s profits as a result of the infringing activity, and may include prejudgment interest. Additionally, damages have been based on a reasonable royalty or a the cost of corrective advertising. Finally, the court may award treble damages to the plaintiff where the court deems such damages as equitable and not punitive.

Database, trademark :

Many businesses now provide over the Internet databases of existing and pending trademarks, which the user can search, usually for a very reasonable fee. The services vary in their timeliness and whether or not state trademark registrations are available. The only free database is maintained by the U.S. Patent and Trademark Office (USPTO) itself, and can be accessed on the Internet at http://www.USPTO.GOV/tmdb/index.html. While this site provides a decent replacement to the CASSIS databases located in specific depository libraries around the country, it can be anywhere from several days to a couple months old. Furthermore, it does not include common law marks nor state registrations. As such, it should be used only as a means of eliminating potential marks prior to investing any money on a more comprehensive search.

Date of first use :

The date a mark was first used anywhere. In the United States, the first to use a mark generally has priority, and can exclude all subsequent users of identical or confusingly similar marks.

Date of first use in commerce :

To secure a date of first use in commerce the mark owner must use the mark in trade in a manner that allows consumers to rely on it to identify and discriminate between the user’s goods or services from those of competitors’. Furthermore, since the authority for the Trademark Act is based on the interstate commerce clause, the user must also demonstrate use in interstate commerce in order to obtain a federal registration. The interstate commerce requirement is met so long as use of the mark in trade includes activity that either crosses state lines or affects interstate commerce directly or indirectly such as by selling products or services to interstate travelers.

Dates, priority :

A priority date is the date used to determine which of two opposing parties in a trademark dispute should prevail. Generally speaking, the one with the earliest priority date wins. The United States is one of few countries in the world that deems the date a mark was first used to be the priority date. Most other countries set the priority date as the date a mark was first registered. One exception to the U.S. system of setting priority dates is for the Intent to Use application, in which the priority date is becomes the date the application was filed rather than the date the mark is first used.

Deceptive marks :

These are marks that cannot be registered as trademarks because they mischaracterize or mislead consumers as to the underlying product. The usual test for determining whether or not a mark is deceptive is: (1) the mark misdescribes the character, quality, function, composition or use of the underlying product; (2) purchasers are likely to believe that the misdescription actually describes the goods; and (3) purchasers are likely to rely upon the misdescription in making their purchasing decision. Some courts have simply looked for an intent do deceive, instead of apply this test. In any event, if the mark is misleading, but does not qualify for being a deceptive mark because, perhaps, the mark’s owner had no bad intent, or because there is not likely to be any reliance by purchasers on the misleading description, then the mark is a deceptively misdescriptive mark.

Deceptively misdescriptive marks :

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.

De facto secondary meaning

De facto secondary meaning exists where an interest in the public good overrides the protection of a mark that otherwise serves to identify source for consumers and has acquired secondary meaning. De facto secondary meaning exists when a mark is generic or functional. These types of marks can never be granted exclusive rights, even if the mark owner has done everything possible to preserve rights in the mark through proper usage, policing or a heavy advertising campaign resulting in secondary meaning. There is a strong public interest in allowing competitors to all use words that inform the public about the nature of their goods, but doing so is nearly impossible if exclusive rights are granted in the words necessary to describe a product. For this reason, the doctrine of de facto secondary meaning precludes the granting of monopoly powers available under trademark law.

Defendant’s profits as damages :

Where the plaintiff cannot show harm from lost profits, some courts may still award any of defendant’s profits in order to avoid unjust enrichment of the defendant, but such an award is reserved for when the defendant intentionally infringed plaintiff’s mark. If awarded, defendant’s profits are calculated by plaintiff proving defendant’s gross sales, and then defendant proving any deductions based on overhead, operating expenses, materials or labor. Documentary evidence is typically required for defendant to prove any deductions.

Defenses to dilution :

The following provide a bar or defense to a claim of trademark dilution: (1) the mark used is a federally registered trademark (only bars claims of dilution brought under state or common law; not those under the federal law); (2) use of a famous mark by another person in comparative advertising to identify the competing goods or services; (3) noncommercial use of a mark; and (4) all forms of news reporting and news commentary. In addition to these defenses, which are all specifically identified in the Dilution Act, many of the same defenses for trademark infringement are also likely to apply. However, since the Federal Trademark Dilution Act is relatively new (1996), it is uncertain how the courts will interpret the applicability of these defenses.

Defenses to infringement :

A claim of trademark infringement can be responded to by either attacking plaintiff’s own trademark rights or else denying the existence of trademark infringement or dilution. The defendant may be able to argue the following defenses: (1) plaintiff abandoned the mark; (2) plaintiff engaged in fraud when registering or maintaining registration of the mark; (3) the mark is generic (4) plaintiff engaged in trademark misuse by using exclusive rights in the mark to violate the law; (5) plaintiff delayed unreasonably before asserting or enforcing rights against defendant (laches) and therefore should be stopped form claiming infringement (estoppel); (6) the mark is functional; (7) plaintiff’s explicit or implicit conduct reasonably offered assurances to defendant that plaintiff would permit defendant’s use of the mark (acquiescence); (8) defendant is not using the mark as a trademark, but merely to describe defendant’s own products (fair use); (9) defendant is not using the mark in a manner that is likely to cause confusion; (10) the First Amendment protects free expression, including certain uses of trademarks such as parody.

Depository libraries :
These are selected public libraries that house the CASSIS database containing all existing and pending federal trademarks maintained by the U.S. Patent and Trademark Office (USPTO). Beware that the these databases may be up to three months old before receiving updates from the USPTO. While they are usually free, there can sometimes be lines to get onto a host computer in the library. Alternatively, the USPTO now has available a searchable database over the Internet (still not timely updated). You can check their database at http://www.USPTO.GOV/tmdb/index.html.

Description of goods or services :

A description of goods or services is required in all applications for federal trademark registration. Descriptions should be limited to those goods and products which are currently being sold under the proposed mark (or will be sold, if an Intent to Use application is filed). According to the United States Patent and Trademark Office (USPTO), the description should be concise, not vague or overly broad, and should consist of the common commercial description of the goods or services. At the same time, broader descriptions have the potential, if not rejected by the USPTO Examiner, of ultimately providing broader protection. Thus, there is always a tension between drafting a description that is narrow enough to pass the examination, yet broad enough to offer protection out to the boundaries of the goods or services being registered.

Descriptive marks :

Trademarks that describe the ingredients, qualities, features, purpose or characteristics of a product or service. These marks are not inherently distinctive, and thus do not receive trademark protection unless they acquire distinctiveness through secondary meaning. Even if they qualify for trademark protection, descriptive marks are the weakest marks possible, and do not receive as broad of legal protection as suggestive, arbitrary and fanciful marks. Examples of descriptive marks include: BEEF & BREW for a restaurant, LASERGAGE for a laser measurement device, PIZZAZZ for pizza, and WORLD BOOK for encyclopedias. In contrast to suggestive marks, a mark that is merely descriptive immediately conveys knowledge of ingredients, qualities, or characteristics with no imaginative leap required. If a composite mark is not 100% descriptive, then the mark as a whole is not “merely descriptive.”

Designs, protection of :

Drawings or designs may be protected as a trademark as long as the drawing or design is used as a trademark. Generally speaking, if the design is an accurate or realistic portrayal of the goods or services that the mark serves to identify, then the mark is descriptive, and receives no protection unless the owner can demonstrate secondary meaning. However if the picture deviates from the underlying goods or services, then the design will be viewed as distinctive, and can receive protection. Common components such as basic geometric figures, stripes or even flowers may be seen as lacking distinctiveness unless the owner can demonstrate secondary meaning.

Dilution Statutes :

State and federal statutes that allow the owner of a famous trademark to prevent uses of its mark by other companies in such a way as to tarnish or blur the distinctiveness of the mark. Unlike lawsuits under a traditional trademark infringement lawsuit, the plaintiff in a dilution suit need not prove that there is a likelihood of confusion between the famous mark and the challenged mark.

Disclaimer, in a trademark registration :

A statement that the trademark applicant or owner does not claim exclusive rights in an unprotectable component of a federally registered mark.

Disclaimer, in conjunction with use of another person’s mark :

A statement by the user of another company’s trademark that the user is not affiliated with the trademark owner. Such a statement will not automatically relieve the user’s liability for trademark infringement. However, if the disclaimer is found by a court to be effective in eliminating consumer confusion as to the affiliation between the two companies. Thus, if the disclaimer is likely to be seen by those who see the trademark, then there is a good chance the disclaimer is effective in eliminating consumer confusion.

Distinctiveness :

The ability of a mark to allow the relevant consuming public to discriminate the source of a product or service. Distinctiveness is a prerequisite to trademark registration on the Principal Register. Fanciful, arbitrary, and suggestive marks are inherently distinctive, while descriptive marks are not distinctive unless used extensively enough to develop a certain level of market awareness, called secondary meaning.

Distinctiveness requirement :

The requirement by the U.S. Patent and Trademark Office that all marks listed on the Principal Register must be distinctive. Marks that are not distinctive may still be federally registered, but are only listed on the Supplemental Register, and do not have many of the benefits of registration on the Principal Register. Courts also require that a mark be distinctive in order for it to have any protection under the common law.

Documenting First Use :

Because trademark rights in the United States on a first to use basis, it is important to document the first date you use 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 the ad ran. You should also keep records of the first sale of goods or services made using the mark. This may include a bill of sale or invoice. If you do not have a dated photograph or advertisement, you might want 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.

Domain name
A component of an Internet address (URL) which is comprised of a top-level domain such as .com or .net and a second level domain, which is the part the domain name owner gets to make up. For more information visit:

http://www.dtip.net and http://www.domainsbuyerguide.com

Domain name hijacking :

A hijacker in this context is one who purchases one or many domain names, and attempts to sell them later on to the highest bidder — often a corporation owning a famous trademark that is identical to the second level domain being sold. This disparaging term is generally reserved for those individuals who purchased the name with no business purpose in mind other than to sell it to the trademark owner or keep it from the hijacker’s competitor. There are of course examples of legitimate businesses fighting over a single domain name as well. In the case of hijackers, the new Federal Trademark Dilution Act has been very effective in helping corporations with famous marks retain domain names consisting of their famous marks. However, there are also a few examples of corporations bullying people out of their domain names under the guise of trademark ownership, even though the particular use of a domain name does not constitute trademark infringement or dilution, or unfair competition in any manner. These latter kinds of cases are referred to as reverse domain name hijacking cases, and some have speculated that this conduct by companies may be met with cancellation of their mark under the doctrine of trademark misuse.

Domain dispute policy :

This refers to a policy developed by Internic (the body that registers most domain names in the U.S.) that can be invoked when two parties have a dispute over rights in a domain name. Typically, these disputes involves at least one party who claims the domain name infringes or dilutes their trademark rights. The policy has been revised a couple times in an effort to reduce the amount of litigation and hassles Internic has had to contend with. Currently the policy can be read at http://www.internic.net/domain-info/internic-domain-6.html The predominant feature of the policy (ver. 3) are that anyone who has a trademark registration issued by any country may ultimately stop the domain name owner who is using the registered trademark as a domain name. The policy has been severely criticized on the basis that it fails to accommodate the fact that trademark law permits use of the same mark for unrelated products or services. Internic’s policy has also been criticized because it unfairly favors owners of registered trademarks, even though trademark rights in this country are not granted by registration, but by use. Registrations are only effective under the dispute policy if they were obtained prior to the acquisition of the domain name. For this reason, trademark registration is more important than ever, if you plan to do business on the Internet.
Another important trademark registration consideration prompted by Internic’s current dispute policy is whether or not to register design features of marks. Internic’s policy currently excludes from its protection any trademarks incorporating a design. It appears from the plain language of the policy that Internic intended to exclude from protection all lingual marks that are portrayed with special typefaces or colors, as opposed to excluding only those marks that are registered specifically as design marks, which happen to have words in them as well. Thus, if you want to protect design features of a mark, be sure to register a text-only mark without claiming protection for typeface or color, etc., in addition to a registration with the design features.
Domestic representative :

A resident of the United States to whom service of process may be sent regarding the trademark. Foreign applicants for trademark registration are required to have a Domestic Representative unless they are also represented by an attorney in the United States.

Drawings, protection of :

Drawing page of trademark application :

All applications for trademark are required to be accompanied by a separate drawing page, even if the mark being registered is strictly text. In the case of lingual or text marks, you need only type the mark IN ALL CAPS. The trademark office has an elaborate set of very rigid regulations for submitting the drawing page, including codes for coloring, and a size limitation of 4″ x 4″.

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Filed under: Trademark Glossary — Tags: coined terms, Fair Use, Famous mark, Fanciful terms, Federal versus state trademarks, Filing date, First Amendment, First use date, Forbidden marks, Foreign applicants, Foreign equivalents, Foreign terms, Fraud, Functionality doctrine, obtaining, requirements, trademark protection, USPTO, Utilitarian functionality — admin @ 6:13 pm

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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Identifying source :

Identifying the source of a product or service for the consuming public is the primary objective of trademark law. As such, the Trademark Act grants exclusive rights only to those trademarks enabling a consumer to discriminate between different brands of goods and services. The consumer need not be able to discern the precise manufacturer or service provider by company name. It is enough that the consumer can determine that the maker of this brand is different than the maker of another. For example, nothing in the trademark “Kix” for breakfast cereal tells the consumer that it is manufactured by General Mills. To determine company information, a consumer would have to look elsewhere on the cereal box. What is important is that when the consumer sees a corn-based, puffed cereal with the name “Kix” on it, the consumer instantly knows it is manufactured by an entity different from a similar corn-based, puffed cereal that does not have the word “Kix.”

Immoral marks (scandalous marks) :

Marks consisting of immoral or scandalous matter cannot be federally registered. Courts have defined scandalous marks to include marks giving offense to the conscience or moral feelings; exciting reprobation, calling out condemnation for a substantial composite of the general public. In re McGinty, 660 F.2d 481 (1981). A fairly recent example of a mark denied registration on the basis of being immoral is the mark DICK HEAD’S accompanied by the logo depicting male genitalia, for restaurant and bar services. In re Wilcher Corp. 40 USPQ2d 1929 (1996).

Importation restrictions :

Ingredients, protection of :

As long as an ingredient in a product is also used as a trademark, it is worthy of trademark protection. An example would be where a cat litter product contains the substance, “REDGUARD,” and a manufacturer or cat litters features the word “REDGUARD” on its label as a way of distinguishing the product from others.

In gross assignment :

Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and can 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, but must instead start over with the priority date being the assignee’s own first use date.

Incontestability status :

A benefit granted to owners of federal trademark registrations, allowing them to prohibit challenges pertaining to the owner’s exclusive rights in a mark. Incontestability can help prevent attacks on the basis that the mark is confusingly similar to another mark, that it is functional, or that it lacks secondary meaning. Incontestability status does not mean a mark is attack-proof. However, the most expensive challenges to defend against are virtually eliminated when you have an incontestable mark. Incontestable marks are still subject to challenges that (1) the mark is generic, (2) the mark was obtained through fraud in registration, (3) the owner has abandoned of the mark, (4) the mark misrepresents the source of goods or services, or it is scandalous in nature, (5) defendant’s use is a fair use of the mark, (6) defendant’s adoption and use of the mark was prior to plaintiff’s registration, (7) defendant’s registration of the mark was prior to plaintiff’s registration, or (8) the mark is used to violate anti-trust laws.

Infringement :

Infringement is the use of a trademark in a way that is confusingly similar to another company’s trademark, without that company’s prior permission. While consumer confusion is the touchstone to an infringement lawsuit, actual confusion of a consumer it is not required in order for infringement to exist. All that matters is that an appreciable number of consumers are likely to be confused about the source of the underlying goods or services. Click here for more information on the factors that a court will look at to determine likelihood of confusion

Inherent distinctiveness :

A mark can be inherently distinctive, or it can acquire distinctiveness over time. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself. The more a mark includes words or symbols related to the good or service, the more likely a consumer will be confused and think that the mark is actually identifying or describing the product itself. Examples of inherently distinctive marks are: SUSUGAR for sugar, MAVIJEAS for jeans, STARBUCKS for Coffee, and AVON for lip balm. Each of these trademarks are, in greater or lesser degrees, different enough from the product for which they are used that they serve to identify source rather than describe any qualities of the product. As such, they are inherently distinctive. Fanciful, Arbitrary and Suggestive marks are all inherently distinctive, while descriptive and generic marks are not inherently distinctive.

Injunctive relief :

A court order that prohibits a party from doing something or demanding that the party undo some wrong or injury. In trademark infringement or dilution cases, an injunction can include the ordering of corrective advertising, demanding the use of disclaimers of association with the trademark owner, product recall, or prohibiting future use of a mark. 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.

Injury to reputation :

Injury to reputation occurs when a trademark representing one level of quality is infringed or diluted by a mark that represents a lower level of quality, and the infringement harms the goodwill generated by the original user of the mark. Demonstrating injury to reputation may be extremely difficult, and the plaintiff may have no choice but to rely on market survey data.

Intellectual property :

The term used to identify a form of property rights granted to intangible creations of the mind. There are distinct varieties of intellectual property, including trademarks, copyrights, patents, trade secrets, and publicity rights. Each state protects intellectual property in its own way, if at all. However trademarks, copyrights, and patents all receive federal protection, in addition to whatever state protection is available, if any.

Intentional infringement :

Trademark infringement that occurs because the defendant hopes to “cash in” on plaintiff’s goodwill generated by the mark. Proving intentional infringement can be quite difficult, just as in proving any state of mind. However, courts can consider circumstantial evidence such as the alleged infringer’s choice of a trademark in light of the effectiveness of plaintiff’s mark. Award of monetary relief by a court is generally reserved for cases of intentional infringement. Reliance upon legal advice will typically not be sufficient in and of itself to disprove intentional infringement.

Intent of the defendant :

The mental state of the defendant at the time of adopting a mark is very significant in many aspects of trademark lawsuits. Bad faith on the part of defendant 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. 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, and thereby offer a defense of fair use. 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.

Intent to Use (ITU) application :

An application for a federal registration made to the United States Patent and Trademark Office for a trademark that is not yet being used. ITU applications secure trademark rights prior to actually using the mark. It allows companies the opportunity to see if the USPTO will register the mark without having to invest in the marketing and promotion of the mark in the event the mark is rejected. It also secures an early priority date (normally a priority date is not set until actual use).

Inter partes proceedings :

These are proceedings before the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO). Conflicts over whether a trademark can be registered are heard in front of the TTAB (or possibly in court too). These proceedings consist of: (1) cancellation of marks registered on the Principal or Supplemental Registers; (2) opposition to applications for registration on the Principal Register; (3) Concurrent use proceedings; or (4) interferences declared by the Commissioner of the USPTO.

Interference proceedings :

This proceeding before the Trademark Trial and Appeal Board is near-obsolete, and reserved for those cases showing extraordinary circumstances. An interference proceeding is declared by the Commissioner of Patents and Trademarks upon petition. At issue in these proceedings is priority of use. Generally speaking, the interference proceeding will not be granted unless the issue of priority which is at stake could not be addressed most efficiently in an opposition or cancellation proceeding.

International class :

An international class is a number associated with a category of goods or services into which a trademark may be assigned for the purposes of a trademark registration. Each application for registration must list one or more international classes (at $245 per class). The classes are based upon the type of good or service the mark identifies. Bitlaw has an excellent hypertext listing of the Acceptable Description of Goods and Services Manual which lists all the possible international classes. http://www.bitlaw.com/source/goodscls

Interstate commerce requirement :

Interstate commerce of a mark occurs when the trademark applicant or owner uses the mark on goods or in connection with the sale of goods or services that are sold or otherwise transported across state lines. The kind of use required to create or maintain a trademark under the Trademark Act must be a “bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark.” 15 U.S.C. §1127. Using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing a statement of use under an intent-to-use application, or filing a renewal application.

INTA (International Trademark Association) :

Formerly called the United States Trademark Association, this organization lobbies for legislation favorable to trademark owners, and provides a resource for trademark policy development and legal education. The INTA may be reached at:
1133 Avenue of the Americas
New York, NY 10036
(212) 768-9887
http://www.inta.org

International Trade Commission (ITC) :
The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC’s decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.

International Treaties :

There are several treaties that govern trademark rights with respect to other nations, 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.

Internet, trademark issues posed by :

Conflicts over domain names have received the most attention in the trademark legal press. However, such disputes have only affected a small number of trademark owners. Where the Internet has its greatest impact on trademark owners or prospective owners is in searching for prior rights in a mark and policing existing marks. Other areas of trademark law of interest to businesses is whether or not a link to another company’s site infringes or dilutes that site’s trademark. This latter area overlaps significantly with copyright and unfair competition laws, since linking and framing only implicate trademark infringement or dilution laws in narrow circumstances. Finally, the use of another company’s trademarks in meta tags arguably infringes or dilutes that company’s trademarks. While there are certainly other trademark issues raised by the Internet, they have not been as widely talked about.
For an elaboration of these topics, see Trademarks on the Internet

Intra-State commerce :

Commercial trade that takes place entirely within one state, as opposed to interstate commerce which takes place across state and/or national boundaries. Interstate commerce is a prerequisite to federal trademark registration, however marks that are used in intra-state commerce may be registered in the state of trade.

Invalid assignment :

Any assignment of a trademark is invalid if the assignment of the mark is made without assignment of the goodwill associated with the mark. If a mark is invalidly assigned, the usual result is that the company that purchased the mark, the assignee, is deprived of the benefit of the early priority date of the assignor, and must instead start all over with a new priority date beginning when the assignee begins using the mark in commerce.

ITC (International Trade Commission) :

The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC’s decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.

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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.

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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:

Where you intend to use the mark;
Which industry you are selling your goods or services;
How much money you are willing to spend in a search, and
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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Tarnishment in dilution law :

Under the laws of trademark dilution, a trademark may become tarnished when it is “linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context.”

The problem with this occurring is that the public may begin to associate the original mark with the degraded quality or prestige depicted by the imitation. There need be no confusion as to source in order for a potential lawsuit to arise out of tarnishment of another company’s mark.

An example of tarnishment case successfully sued upon in Georgia was the parody of the Pillsbury Doughboy. The defendant had parodied this famous mark by depicting a Pillsbury Doughboy and Doughgirl in lewd positions. Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981).

Telephone numbers, protection of :

As long as a telephone number meets the requirements of a trademark, namely that consumers can rely upon it to distinguish the trademark owner’s goods or services from those of competitors, then it can receive all the protections provided by trademark and dilution law. Typically, protection for phone numbers is sought for those numbers that are converted to a meaningful word, such as in the case of “Dial L-A-W-Y-E-R-S” in which a court enjoined another company’s use of the same phrase outside of the region in which the phone number was originally secured. See Murrin v. Midco Communications Inc., 726 F. Supp. 1195 (Minn. 1989).

Temporary injunction :

Text Marks (lingual marks) :

These are trademarks in the form of either words or phrases, and are the most widely used kinds of marks. Depending on the meaning of the word or phrase, these marks have more or less legal strength.

TM symbol :

The TM symbol used next to a trademark provides notice to the world that a company claims trademark rights in that mark.

Companies can use the TM symbol on any mark which serves to identify that company’s goods, and the SM symbol on any mark which serves to identify that company’s services.

There is no need to have a federal or state registration prior to using the TM or SM symbols. However, use of the © symbol requires a federal registration.

Token Use :

Token use term refers to use of a mark in order to secure rights in it. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark become associated with the source of the goods.

If a mark becomes challenged on the grounds of abandonment, the mark owner will need to prove use in commerce, and token uses will not suffice. Such token uses were more common prior to the 1988 revision of the Trademark Act in which the Intent to Use procedure eliminated the need to secure an early priority date in a mark without actually using it. However, token uses still continue in an effort by some to avoid the result of abandonment.

Top level domain name :

A top level domain (TLD) is that portion of a domain name that comes after the second level domain, such as com, org, net, info, biz, uk, ca, de, etc. For example, in A-Law.Org, A-Law’s URL, http://www.a-law.org, “a-law.org” is the domain name, “a-law” is the second level domain, and “org” is the top level domain.

The US Patent and Trademark Office (USPTO) has published a memorandum stating that it is unnecessary to include the top level domain when seeking federal registration of domain names. However, at least one trademark legal scholar has suggested that for maximum protection, a company may wish to do so anyway, since the USPTO has been known to be wrong before, and a court has not yet heard this issue. If you search for “.com” in any federal trademark database, it is clear that not everyone is relying upon the advice of the USPTO (after all, it is not their job to advise on any matter other than the requirements of registration). However, if you apply for a trademark using your domain name with the top level domain as part of the trademark, your registration may only provide protection for infringement of the entire domain, and not merely for infringement of the second level domain. Thus, if you intend to register the “.com” portion of a domain, it is advisable that you also file a separate application for the second level domain alone.

Trade dress (Product design) :

Trade dress consists of the variety of elements in which a product is packaged or a service is presented. The elements that are protected may include the shape, color or overall packaging of goods, the displays attending goods, and even the decor or environment in which a service is provided. However, only those elements that were designed specifically to promote the product are protected; not the functional features of trade dress that have a utilitarian purpose.

Trade name :

Also known as an assumed name or corporate name, it is the name under which a company conducts its business. Whereas a trade name identifies the business itself, trademarks identify goods or services.

A trade name can also serve as a trademark if it meets the requirements of a trademark. If so, the trade name also merits protection under state and federal trademark and dilution laws. However, a trade name has no exclusive trademark rights unless it is used as a trademark. This is so, even if the name is registered with the appropriate state body regulating business names, usually the Secretary of State.

Trademark :

A trademark can be a word, name, symbol, device or any combination thereof which is used to identify and distinguish the goods or services of one company from goods or services of another. In order to qualify as a trademark, the mark must be used in federally regulated commerce, and the mark must be distinctive. In a nutshell, the distinctiveness requirement means that a mark cannot describe the underlying product, or if it does describe the product, the mark must have been used extensively enough in commerce to acquire a certain level of market recognition (i.e. secondary meaning). Moreover, some marks will not be protected as trademarks, even if they are well recognized by consumers as trademarks (forbidden marks).

Trademark Act (Lanham Act) :

The Trademark Act of 1946 is a federal statute governing registration and maintenance of trademarks and provides a cause of action for dilution and unfair competition. 15 U.S.C. §§ 1051 et seq.

Trademark Causes of Action

When there is a conflict between marks, there are several types of lawsuits which could be brought including: Trademark infringement in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; False designation or description in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); Trademark dilution in violation of section 43(c) of the Lanham Act, 15 U.S.C. §1125(c); Violation of state trademark infringement statutes; Common law trademark infringement; Violation of state unfair competition and deceptive practices statutes; Common law unfair competition; and Common law or state statutory violations of the right of publicity.

Trademark Misuse :

A theoretical basis for canceling a trademark. Although purely speculative at this point, some legal scholars have suggested that a trademark registrant should lose their rights if they engage in abusive tactics that violate the boundaries of fair competition. (Citation). Such a doctrine has been applied in the area of patents and copyrights, and is proposed by some in the trademark area. Specifically, it has been suggested that a trademark registrant who submits their registration to Internic in order to implement Internic’s domain name dispute policy has misused their trademark registration and should have the registration canceled, if there exists no plausible argument for trademark infringement.

Trademark Trial and Appeal Board (TTAB)

The administrative hearing board operating under the auspices of the U.S. Patent and Trademark Office.

The TTAB hears matters concerning federal registration of a mark and the cancellation of federal registrations. Trademark attorneys do not need any special license or certification to practice in front of the TTAB as they do when practicing patent law before the USPTO.

Trafficking :

To transport, transfer, or otherwise dispose of, to another, as consideration for anything of value, or make or obtain control of with intent so to transport, transfer, or dispose of. Trafficking in products with counterfeit marks is a crime under 18 U.S.C. § 2320.

Transferee :

The party who acquires rights in an assignment or transfer of trademark rights.

Transfer of ownership (assignment) :

An assignment is the legal transfer of ownership of any property such as a trademark or copyright from the owner to another party, who then becomes the new owner. The transferee or “assignee” is the person who acquires ownership, and transferor or “assignor” is the person who transfers ownership rights. To be effective, a trademark assignment must include the transfer of the goodwill accrued in the assigned mark beyond mere assignment of the mark itself.

Traditionally, courts have required the transfer of tangible assets along with the mark such as plant inventory, or product formula or know-how. However, more recently some courts have taken a more liberal view of assignments and do not require the transfer of such tangible assets. However, the assignee must continue to sell goods or services of the same quality and nature as the assignor to ensure that goodwill has indeed passed with the mark. See PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969). When a registered trademark is assigned, it is a good idea to record the assignment with the U.S. Patent and Trademark Office.

Transferor :
The party who conveys rights to the transferee in the transfer or assignment of trademarks.

Treaties :

Agreements with other nations. There are several treaties that govern trademark rights, including: the Benelux system of registration, Paris Convention treaty, Trademark Registration Treaty, Madrid agreement, Madrid protocol, and the European Community Trade Mark (CTM). With the exception of the Madrid agreement, these treaties do not attempt to harmonize the trademark laws of the member countries, but instead provide centralized trademark registration filing systems.

Treble damages :

Treble damages means three times the amount of provable, actual damages. The Trademark Act authorizes courts to exercise their own discretion in awarding up to three times the amount of actual damages for any willful violations of the Act. However, any increases over provable, actual damages have to be for the purpose of compensation, and not designed as a penalty.

TRIPs Agreement :

Otherwise known as the Trade-Related aspects of Intellectual Property, TRIPs is a new agreement within the GATT that addresses intellectual property concerns. TRIPs marks the first serious involvement of the GATT into intellectual property issues. Because of TRIPs, the Lanham Act. 2(a) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Types of marks :

The words “trademark” or “mark” are used in a general manner to denote any kind of mark such as a certification mark, collective mark, service mark or trademark.

Typically, “service mark” is used in association with the sale of services, while “trademark” is used in association with the sale of goods. Certification marks are used to identify a certain level of quality or that specific standards have been met, and Collective marks are used to identify associations of companies or organizations. Any such mark can consist of a symbol, smell, sound, phrase, packaging as long as it is used to identify the thing it is supposed to distinguish.

Typewritten drawing :

A drawing required of most lingual (text) marks in which the mark is depicted on the drawing page in all uppercase, typewritten letters. If the applicant is claiming stylized text, a more graphic drawing of the mark is required.

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Filed under: Trademark Glossary — Tags: properly, United States Customs Bureau, United States Patent and Trademark Office, Use, Use as establishing priority, Use in commerce, Use requirement, USPTO, Utilitarian functionality — admin @ 3:13 pm

United States Customs Bureau :

U.S. Customs officials can demand disclosure of the identity of any trademark on imported goods, and under certain circumstances, seize goods bearing infringing marks.

Congress has authorized Customs Bureau involvement in preventing the importation of counterfeit goods, gray-market goods and goods bearing infringing trademarks. Such goods can be seized at the border. However, what happens to them after seizure depends on which category they fit into.

Counterfeit goods will be destroyed or given to charity after removal of the trademark. Infringing marks will be sent back to the place of origin, or enter the U.S. after removal of the mark. Or, upon consent of the U.S. trademark owner, counterfeit goods or goods bearing infringing marks may enter the U.S. In order for the Customs Bureau to take action at the border, the U.S. trademark owner will have to record with Customs their federally registered mark (or trade name if used for six months).

Additionally, trademark owners typically have to alert Customs of specific counterfeit or infringing activity, just as a practical matter, since Customs has far too many trademarks to effectively monitor without such assistance.

United States Patent and Trademark Office (USPTO) :

The federal agency presiding over the registration and maintenance of patents and federal trademarks. While attorneys must have an additional license to practice patent law before the USPTO, no such requirement exists for the practice of trademark law before this body. 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.” On the Internet, you can find the USPTO at http://www.uspto.gov .

Use as establishing priority :

In the United States, the first to use a mark generally has priority, and can exclude all subsequent users of identical or confusingly similar marks. This is in contrast to most other countries which grant priority based on the first to register a mark.

The implications for those starting their businesses in the U.S. and expanding later into other countries. Sometimes the first to use in the U.S. is thwarted by another company in a different country who had the foresight to register the mark first. When this happens, the U.S. trademark owner may have to pay a licensing fee just to use its U.S. mark in another country. Worse yet, the U.S. trademark owner may be entirely prevented from using the mark in that country.

Use in commerce :

The “bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark.” 15 U.S.C. §1127. For federal registration purposes, using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing an Intent to Use application, or filing a renewal application. Whereas use in commerce refers merely commercial use in trade, Interstate commerce occurs only when the commercial use in trade affects either directly or indirectly commerce that occurs across state lines.

Typically, the trademark applicant engages in interstate commerce by using the mark on goods that are sold and transported across state lines, or by selling or advertising to sell services to customers from other states or countries.

Use, (proper) :

To use a mark properly, the trademark owner should:

Always use the mark as an adjective of the underlying product rather than as a noun, as in “people prefer BUDWISER brand beers” rather than “people prefer BUDWISER;”
Italicize, underline, capitalize or boldface the mark when it appears in text, in order to set it out from the generic word for the product ;
Affix the mark to the goods or services;
Provide proper notice of trademark rights.

Use requirement :

In order to qualify for protection a trademark must be used in commerce. For the purposes of federal registration, use in commerce alone is insufficient, and use in interstate commerce is required.

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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