Utilitarian functionality « Trademark Law Litigation

March 3, 2009

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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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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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