Trademark Glossary « Trademark Law Litigation

March 3, 2009

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Abandonment of a mark :

Abandonment occurs when the trademark owner stops using the mark with no intention to resume using it. Use of a mark in this context means the bona fide use of the mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. Nonuse for three consecutive years is prima facie evidence of abandonment. Furthermore, failure to police and enforce a mark can lead to abandonment if the trademark owner is deemed to have impliedly consented to confusingly similar uses of the mark. If abandonment occurs, all rights in the mark cease.

Acquiescence :
The failure to take action against infringing parties, or otherwise indicating, implicitly or explicitly, that nothing will be done about the infringing action. Acquiescing can lead to abandonment of trademark rights.

Action (or 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.

Actual confusion :

This occurs when an actual consumer is in fact confused as to the source of goods based on confusingly similar uses of a trademark. Actual confusion is not required to prove infringement of a mark, although it is highly probative as evidence that the mark is likely to cause confusion.

Advertising, comparative :

The use of a competitor’s trademarks in advertising. Such use is permitted in the context of comparing a company’s own products or services with those of their competitor, as long as the ad creates no confusion as to source or dilution of the competitor’s marks.

Advertising injury :

This is a category of harm sometimes caused by trademark infringement. The significance is that some insurance policies cover litigation of a trademark dispute to the extent that the dispute falls within an advertising injury.

Aesthetic functionality :

A widely-criticized facet of the functionality doctrine which deems as functional, and thus not trademarkable, any product design feature which is an important ingredient in the commercial success of the product. Thus, if a floral pattern on china makes the china more commercially desirable, such pattern would be deemed non-trademarkable. More recently, courts have recognized that a design feature may be commercially successful and still operate as a product identifier worthy of trademark protection, and thus have not been eager to invoke the doctrine of Aesthetic functionality as a defense to trademark infringement.

Affirmative defenses :

These are defenses to a complaint for trademark infringement that must be pled in the defendant’s answer, or else they are waived. Examples include Fraud, Unclean hands, Misuse, First Amendment, Acquiescence, Fair use, Genericness, Abandonment, Laches, and Estoppel.

Affixation Requirement :

One of the elements that must be present in order to demonstrate that a mark is used in commerce, which is the fundamental requirement for the acquisition of rights in a mark. For a trademark to be “affixed” to goods, the mark should ideally be either placed on the goods themselves, or on their containers or attached tags or labels. The affixation requirement for goods may also be satisfied if the mark is prominently featured on a conspicuous display associated with the goods. If none of the above are practicable, the mark may be used on documents associated with the sale of the goods as a last resort. For services, a trademark is “affixed” if it is used in the sale or advertising of the services, as long as it is used in direct and explicit reference to the services provided.

Alternative dispute resolution (ADR) :

A formalized mechanism by which legal disputes can be settled outside of formal litigation. ADR may consist of mediation, arbitration or binding arbitration. In typical cases, ADR is a lot quicker and less costly than full-blown litigation. However, that may not always be true in trademark litigation where the plaintiff oftentimes succeeds in petitioning the court for emergency intervention and a speedier court docket. Moreover, because ADR eliminates many of the formalities offered by courts as required under constitutional principles of due process, it is not uncommon for participants of ADR to feel as though they were not sufficiently heard. Whether or not ADR is desirable for a particular situation is highly case dependent, and both parties need to agree to be participants.

Amendment to Allege Use :

A special filing sometimes used for Intent to Use registrations in which the applicant amends the application to allege that the mark has in fact been used in commerce. The Amendment to Allege Use may be filed with the U.S. Patent and Trademark Office (USPTO) any time after filing the Intent to Use application, but before the USPTO sends a Notice of Publication stating that the Trademark Examiners have approved the mark and will publish it in the Official Gazette. Once publication occurs, the applicant must wait until after a Notice of Allowance issues from the USPTO before submitting a Statement of Use. A Statement of Use serves essentially the same purpose as the Amendment to Allege Use, except that the former cannot be filed before the Notice of Allowance, and must be filed within six months thereof. The USPTO requires an additional filing fee of $100 to submit either an Amendment to Allege Use or a Statement of Use.

Anti-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.

Arbitrary marks :

These are names that exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used. The pairing of the mark with the particular category of goods or services should appear to be random. Examples include APPLE for computer, BEEFEATER for gin, COMET for kitchen cleaner, and JAGUAR for a car. Whether a word is arbitrary or not has everything to do with the context in which it is used. Obviously, the term “apple” used to sell a rounded edible pome fruit of a tree is a generic term, and not trademarkable. Similarly, use of the phrase “Comet Watch” for a newsletter describing the activities of celetial bodies with long tails pointing away from the sun would not be considered arbitrary, but rather descriptive or suggestive.

Arbitration :

A form of alternative dispute resolution in which an authorized individual sits as the arbiter of a legal dispute in lieu of a formal judicial proceeding. Arbitration may be binding or non-binding, depending on the agreement of the parties. Even if arbitration is binding, appeals to a district court can still be made in some cases. Very often, arbitration tends to be less formal, less expensive and faster. However, courts in a trademark infringement or dilution case can often hear a motion for temporary injunction very quickly as well, if all the requirements for a temporary injunction are met.

Assignee :

The party to whom a trademark is being transferred in an assignment.

Assignment of trademark :

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 “assignee” is the person who acquires ownership, and “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.

Assignment, in gross
Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and 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.

Assignor :

The party who is selling or otherwise transferring ownership of a trademark.

Assumed name :

Also known as a trade name or corporate name, it is the name under which a company conducts its business. Whereas an assumed name identifies the business itself, trademarks identify goods or services. An assumed can also be a trademark if it meets the requirements of a trademark. If so, the assumed name also merits protection under state and federal trademark and dilution laws. However, an assumed 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.

Attorney-client privilege :

The legal protecting arising out of the communication of a client with his or her attorney. This privilege cannot be waived except by the client. Thus, the attorney is legally obliged to keep secret any information told to him or her by the client, unless the client waives that right, or else in certain limited and rare circumstances.

Attorneys’ fees :

In most cases, the losing party to litigation under the Trademark Act does not have to pay the legal fees of the prevailing party. However, the Lanham Act governing trademark infringements allows for the payment of attorneys’ fees in exceptional cases, such as those involving egregious, bad faith and willful infringement by the defendant. Lawsuits brought only under the common law normally do not award attorneys fees even when there is such bad conduct on the part of defendant.
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Availability opinion (Clearance opinion) :

The legal opinion provided by an attorney to a trademark owner or prospective trademark owner that identifies the legal risks associated with using a particular trademark. Such risks might include, for example, the possibility of infringing or diluting an existing mark and hence being sued, and the likelihood that an application for trademark registration will be rejected. The legal opinion of an attorney can serve not only as immediate advice on the risks in adopting a given mark, but if the opinion is written, which most are, you may be able to deter companies appearing in the opinion from suing for infringement by showing them that at least one attorney has already decided the marks are not confusingly similar. It is important to note, however, that while attorneys are trained to be objective, the inherent subjectivity of trademark law suggests that a second legal opinion is a very good idea if there is any question about the availability of a mark or about conflicts between marks.

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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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Cancellation of trademark (cancellation proceeding) :

A federal trademark registration may be canceled by a court in a civil action, or by the U.S. Patent and Trademark Office in a cancellation proceeding. The grounds for cancellation of a mark include; the mark is likely to cause confusion with a prior mark, it is descriptive of the underlying goods or services, or that the mark is generic.

Causes of Action for Trademarks :

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.

Cease and desist letter :

A letter sent by a trademark owner demanding that another company immediately halt using its trademark. These letters are typically accompanied with a threat of a lawsuit if the alleged infringer does not immediately halt use. Before sending such a letter, it is vital that the initiator be 100% certain their rights in the mark are prior to the alleged infringer’s rights. Otherwise, it may be the initiator who must cease use.

Certification mark :

A symbol used to identify goods or services that meet certain criteria such as quality ratings or content levels. Typically, a system of rating is established by an independent organization, and the symbol is then licensed to approved manufacturers or service providers. Examples include: the Good Housekeeping Seal of Approval, the , and the Real symbol used on dairy products.

Class, international :

A designation required on all federal trademark applications that identifies the kinds of goods or services for which a particular mark will be used. This information is available for those searching for prior uses of a mark prior to adopting it. A good search strategy is to broaden the scope of the search for those classes in which the proposed mark may potentially belong. The $245 application fee for a federal registration includes registration for only one international class. Additional classes can be added at a cost of $245 per class.

Clearance Opinion (Availability Opinion) :

Coined terms (Fanciful terms) :

These are terms that are invented for the sole purpose of serving as trademarks. Examples include CANNON for photographic equipment, UNIX for a computer operating system, LOTTO for shoes, and TOSHIBA 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.

Collective mark :

A symbol used by members of a group to identify their association with the group, such as a union, co-op and trade or professional associations.

Colors, protection of :

Colors, whether one or a combination of them, can be protected under trademark law if the colors otherwise meet the definition of a trademark. In a 1995 case, Qualitex v. Co. v. Jacobson Prods. Co., 514 U.S. 159, the Supreme court rejected earlier lower court decisions that had refused to protect colors as trademarks. Those earlier decisions claimed that businesses would soon deplete the limited supply of colors available, and unfairly prevent others from entering the marketplace, thus creating an undesirable monopoly. The Court in Qualitex pointed out that there are innumerable shades of colors available, thereby rejecting the depletion of colors theory.

Combined application :

An application for trademark registration containing multiple international classes. Each class costs $245 to register, although all the classes can be applied for on one application.

Commissioner :

The Commissioner of Patents and Trademarks in the United States Patent and Trademark Office. At the time of this writing, that position is held by Bruce Lehman.

Common law :

Law originating from court decisions and refined through prior court precedents, as distinguished from law created by the legislative branch of government such as statutes. Common law is also referred to as court-made law.

Comparative advertising :

Comparative advertising is the use of another company’s trademark in order to compare that company’s products with its own. Whether or not comparative advertising qualifies as trademark infringement or dilution is governed by those bodies of law. If, for instance, an ad does not carefully delineate the competitor’s mark from its own, and thereby creates a likelihood of consumer confusion, then the use of the mark is infringing. But, where there is no consumer confusion, or dilution, direct claims about another company’s product are allowed (if the claims are true, of course). For example, Hudson Pharmaceutical Co. was allowed to copy certain elements from the package and label of METAMUCIL, and to state that its own product, REGACILIUM, was equivalent to METAMUCIL. However, Hudson was required to print the word “equivalent” in at least as large of letters as the mark METAMUCIL, to place a ® next to the term METAMUCIL, and to state that METAMUCIL was made by G.D. Searle and that Searle did not make or license REGACILIUM. G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837, 839 (3rd Cir. 1983). Similarly, SECOND CHANCE perfume was allowed to state in its materials that it was equivalent to CHANEL No. 5 perfume. Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th Cir. 1968).

Concurrent use :

Use by two or more persons of the same mark in connection with the same or similar products or services, usually limited by geographic boundaries.

Concurrent use proceeding :

An administrative process governed by the Trademark Trial and Appeal Board in which the Board reviews an application for a concurrent use registration, and sends notice to the party identified in the application that their the rights in their mark may be limited as set forth in the application. The non-applicant party has forty days to answer, otherwise the limitations specified in the concurrent use application will be entered as a judgment.

Concurrent use registration :

A federal registration which delineates certain limitations on the use of a mark due to the concurrent use of a similar mark. Generally speaking, the first of two companies to use a mark is entitled to nationwide registration rights, except for the specific geographic area in which the second company is using the mark, even if the first user has not used the mark nationwide. If the second user is the first to register, then the second user is the one that receives nationwide registration subject to the first user’s geographic region. Concurrent users may agree to leave open certain regions permanently or else long enough for one or the other to begin actual use in that region.

Conflicts between trademarks :

Conflicts between trademarks can occur due to two marks being similar to each other in such a way that consumers are likely to be confused as to which is which. The result of a conflict can lead to one side abandoning their rights rather than fight, or may lead to negotiation, arbitration, mediation, or a lawsuit. There are several different theories of law (causes of action) that relate to trademarks.

Confusion (Confusingly similar) :

This is the legal standard that defines whether or not trademark infringement has occurred, or whether or not a trademark registration can be issued. Click here for more information on what constitutes confusingly similar.

Constructive notice :

Constructive notice is a legal fiction. In the context of proving good faith as a defense in a trademark infringement lawsuit, constructive notice replaces the requirement that the defendant have actual knowledge of plaintiff’s prior use of a mark. Thus, instead of having actual knowledge, bad faith is said to exist.

Constructive use :

Where use of a trademark is deemed to have occurred even without actual use, pursuant to a statute. The legal effect is the same as if there were actual use.

Copyrights :
Ownership rights in expressive works (not ideas), granting the owner exclusive control over distribution, display, copying, performance, and adaptation of those works. The Copyright Office is the umbrella of the Library of Congress that governs the registration of copyrighted works.

Corporate name :

Also known as a trade name or trade name, it is the name under which a company conducts its business. Whereas a corporate name identifies the business itself, trademarks identify goods or services. A corporate name can also serve as a trademark if it meets the requirements of a trademark. If so, the corporate name also merits protection under state and federal trademark and dilution laws. However, a corporate 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.

Correcting mistakes in a registration (Amendments) :

The USPTO permits trademark owners to modify certain information on an existing trademark registration for a filing fee of $100.

Costs, as a measure of damages for infringement :

Court costs can be recovered by the prevailing party as a matter of course, unless the court directs otherwise. This includes filing fees, court reporter fees if necessary to use transcripts in the case, printing and witness fees, and compensation for court-appointed experts. What constitutes a prevailing party is not always obvious. The plaintiff need not win on all claims to recover costs as the prevailing party. Sometimes the defendant may recover costs, as for instance if the case is dismissed with prejudice. Some statutes provide specifically for award of attorneys’ fees as costs, such as in the Racketeer Influenced and Corrupt Organizations Act. 18 U.S.C. §1926(c).

Costs, for trademark legal services :

Costs will obviously vary based on what services you need.

Counterfeit Goods:

Goods bearing a trademark that is either identical with, or substantially indistinguishable from, a federally registered mark. While infringement of a trademark requires confusing similarity between marks, regardless of the intent of the infringer, counterfeiting can only occur when the perpetrator knowingly used the counterfeit mark with an intent to traffic in the goods bearing such mark. Trafficking in counterfeit marks may be a criminal offense, and can lead to treble damages when pursued in a civil court. The U.S. Customs Bureau and the International Trade Commission can help trademark owners stop the importation of counterfeit goods into the United States.

CTM (European Community TradeMark)

An international treaty providing for “one-stop” trademark registration for all European Union country members. As of yet, trademarks continue to be governed by each individual European country’s laws, and there is no harmonization of laws.

Customs Bureau, role in trademarks :

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. For more information, visit the US Customs site at http://www.customs.ustreas.gov/imp-exp2/ipr/iprbroch.htm

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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 :

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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Equitable defenses :

Historically, an equitable defense was one that was only available in the courts of equity, and not the courts of law. Since the focus in the courts of equity was predominately to enforce principals of fairness, it is not surprising that an equitable defense in the modern trademark law context is one that courts tend to invoke out of a sense of justice and fairness when the plaintiff’s conduct was somehow lacking. In trademark law, equitable defenses include laches, unclean hands, and acquiescence.

Equitable relief :

Historically, equitable relief was only granted in courts of equity as opposed to courts of law. Courts of equity tended to resolve matters on principles of fairness and justice, sort of as a last resort when no other relief was available. Thus, in the modern trademark law context, equitable relief is typified by extraordinary measures that are available because no other remedy is capable of realizing justice. Examples include injunctions (temporary and permanent) and estoppel.

Estoppel :

Estoppel is a legal term of art for “stopping” certain outcomes requested by a party to a lawsuit. In trademark litigation, the plaintiff is said to be estopped from claiming infringement if plaintiff’s actions, or lack thereof, indicated approval of defendant’s use of the trademark (acquiescence). Also, Estoppel applies to stop the plaintiff from claiming trademark infringement where the plaintiff delayed for an unreasonably long period of time before beginning enforcement against defendant (laches).

Evaluation of Search Results :

Anyone who has performed a trademark search or, better yet, purchased one from a professional search firm will want to have those results reviewed by an attorney to determine whether or not the proposed mark is available for use and registration. This is one area where failing to obtain legal counsel can be costly, since the determination of whether or not a mark is available for use often requires legal research into the very complex area of law that requires an analysis of “confusingly similar” as it is applied to a given mark.

Examination, of trademark application :

All applications for trademark registration in the United States must undergo a very extensive examination process, which is conducted by Trademark Examiners at the U.S. Patent and Trademark Office. The Examiner conducts a limited search of existing trademarks and pending registrations to see if the mark conflicts with any prior rights. If so, the application is rejected. The Examiner also reviews the mark for its adequacy for registration as a trademark. This includes whether or not the mark is distinctive, and whether or not it is forbidden. If the mark is not distinctive, or if it is a forbidden mark, the Examiner will reject the application. (Note: marks rejected for lack of distinctiveness can be registered on the Supplemental Register after a separate filing). Additionally, the Examiner may reject the application for any number of formalities that have not been met, such as inadequate specimens, or a description of goods or services that is too vague. There is an extensive manual that the Trademark Examiners follow when processing applications, called the Trademark Manual of Examining Procedure that can be helpful if you have specific questions about how to treat a certain registration issue.

Examiner’s amendment :

An amendment made by an Examining Attorney to the applicant’s federal trademark application.

Examining Attorney :

The attorney from the U.S. Patent and Trademark Office who examines the applications for federal trademark registration and determines whether the application should be approved for publication or rejected.

Exceptional cases :

This term refers to the kind of case in which the court may award attorneys’ fees for trademark infringement under the Lanham Act. Generally, that kind of case involves deliberate infringement or fraud on the part of the defendant, or for the plaintiff; a lawsuit brought in bad faith or without an investigation of the merits of plaintiff’s claim.

Exclusion orders from the International Trade Commission (ITC)

The International Trade Commission can help protect against unfair competition from abroad by issuing an exclusion order. An exclusion order is an order issued by the ITC that bars the importation of goods from a particular source, or even the entire class of goods if there are problems enforcing the bar on a particular party. The ITC proceeding can be initiated by submitting a complaint directly to the ITC.

Exclusive license :

An agreement between a trademark owner and one other party that permits the other party to make certain use of the trademark, with the understanding that the trademark owner will not permit other such uses. Licensing of trademarks can result in the loss of the trademark unless the license contains careful controls over the licensed use.

Exclusive licensee :

The party to whom a trademark owner grants an exclusive license to use a trademark.

Exclusive licensor :

The trademark owner who is licensing its trademark for exclusive use by one other company.

Exclusive ownership :

Ownership in a mark which is free of any claim of right by any other party.

Exclusive rights :

Rights granted to an owner of a trade or service mark which permit the owner to use a mark, and to exclude all others from using the same or a similar mark in a similar manner. For example, Hormel, the owner of the trademark SPAM, can stop any other company from using the word SPAM on meat products. Also, since the mark SPAM is a famous mark, Hormel could theoretically stop the use of SPAM in the many degrading contexts in which it currently is being used based on dilution law. However, as a practical matter, stopping such use may not be feasible, given the widespread use of the word on the Internet, not to mention the public relations problems Hormel would face if it tried to do so.

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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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General Agreement on Tariffs and Trade (GATT) :

The GATT was originally created in 1946 to work out international agreements on world merchandise trade. Since then there have been several “rounds” of the GATT. While serious trademark discussions occurred in the Tokyo Round of the 70’s and again in the ’80s, it wasn’t until the Geneva Round in which TRIPs (Trade Related aspects of Intellectual Property) marked a true involvement of GATT into the area of intellectual property. The WTO (World Trade Organization) and the TRIPs Council monitor the implementation of TRIPs and its enforcement mechanisms. One of the specific changes to U.S. law arising out of GATT are the 1995 amendments to Lanham Act. Specifically section 2(a) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Generic marks :

These are words or symbols that describe the product or service itself as a category, rather than distinguish between competing versions of the product or service. For example, “shredded wheat” is a generic term that refers to the category of breakfast cereals that are composed of layers of crunchy wheat strips molded together into a pillow-type shape. This cereal may be manufactured by Kellogg’s, Post or others., and each manufacturer is free to use the term “shredded wheat” to advertise their version of the cereal. To prevent them from using “shredded wheat” would mean they could not equally compete with regard to this product. Thus, generic words are not protected as trademarks precisely because to do so would be akin to granting a monopoly in the product itself, not in a word or symbol.

Genericness as a defense :

Defendants can succeed with a genericness defense when the mark which has allegedly been infringed is a mark that describes the entire category or genus of product that the mark is supposed to distinguish, and thus cannot receive protection under the law. Generic marks are either generic from the outset, or become generic after they become part of the common descriptive name of a category or genus of products. Thus a mark that has been registered can loose its registration through a cancellation proceeding or by order of the court where the term has been shown to have become generic through use.

Genericide :

This occurs when a trademark starts out as distinctive or descriptive, but then though use becomes generic. This occurs when the mark becomes part of the common descriptive name of a category or genus of products. Genericide is more likely to happen to marks that are used improperly as nouns instead of adjectives, whether such usage is by the trademark owner or by others.

Geographically remote area :

An area in which a mark has no presence either through actual use, advertising or general reputation. As a general rule, a trademark owner has no rights in geographically remote areas, unless the mark is federally registered in which case the mark has nationwide priority, even if there is no presence in the mark for a given region. For unregistered marks, the doctrine of natural expansion provides another exception to the requirement that a trademark be used in a area in order for rights in it to exist.

Geographical terms, trademark protection of :

Geographical terms are those that convey to consumers a geographical connotation primarily or immediately , where such consumers are likely to believe that the underlying goods or services in fact come from that location. Such terms fall into three categories:

Primarily geographically descriptive;
Geographically deceptively misdescriptive; or
Geographically deceptive.

The first two are capable of protection if the owner can demonstrate they have acquired distinction through secondary meaning, while the latter of these, geographically deceptive marks are never capable of receiving protection. If the geographic mark is accurate, it is geographically descriptive. If not, then the mark is either geographically deceptively misdescriptive or geographically deceptive, depending on which test a court applies, and the facts of the situation.

A minority of courts look at the intent of the mark owner, while most courts look at whether or not consumers are likely to materially rely upon the misdescription. Thus a mark will be geographically deceptive if either the owner intended to to deceive the public about the origin of the product, or if consumers are likely to rely upon the misdescription in making their purchasing decisions. Finally, after the U.S. implementation of TRIPs, the Lanham Act. 2(a) has been amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Geographical territory :

The geographical territory is the territory in which one uses a mark. Use in a territory generally determines the extent of trademark rights granted to the user. The first to use a mark in one region has exclusive rights in the mark for that region, and a junior user of a mark in that region can be forced to cease using the mark there. However, the senior user cannot stop the junior user from using the mark in a different territory as long as the junior user is the first to use the mark in that particular territory. Two notable exceptions to this rule are nationwide priority which is only available to federally registered marks, and the doctrine of natural expansion, which is available to any mark owner.

Good faith defense :

When a defendant claims that use of plaintiff’s mark is defensible as a fair use, one deciding factor is whether or not the defendant was exercising good faith. Good faith means that the defendant did not use the mark in order to “cash in” on the plaintiffs hard work in generating goodwill with consumers. If it appears that defendant was justifiably using the mark in order to describe the underlying goods or services, then the defendant will likely be found to have had good faith in using the mark. Furthermore, since the plaintiff in a trademark lawsuit is often seeking injunctive relief, which is an equitable remedy requiring the balancing of harms, whether or not the defendant exercised good faith or bad faith can have a considerable impact on the court’s decision.

Goodwill :

An intangible reward for businesses once they generate “name recognition” and establish public confidence in their goods or services. When this happens, consumers want to return to that business for repeat purchases. Thus, as goodwill increases, so does demand, and the business can then raise its prices in accordance. Without trademarks, most businesses would be unable to establish goodwill because their customers would have no way of recognizing their products or services. Erosion of goodwill occurs when consumer confusion exists as to a product’s source. Thus, protection of goodwill is one of the primary purposes of trademark law, and is highly guarded.

Goodwill, assignment without :

Assignment or transfer of a trademark must occur in conjunction with the transfer of goodwill represented by that mark, or else the assignment is invalid. Furthermore, if assignment occurs without goodwill, the trademark is effectively abandoned Typically, it is the assignee’s rights in the mark that are abandoned, but sometimes it is the assignor that abandons its rights. The result of such an abandonment on the assignee is that the assignee cannot benefit from the early first use date of the assignor, and must instead go by the assignee’s date of first use in order to establish priority.

Grammatical rules when using marks :

Failure to use the proper grammatical rules when using a trademark may result in the mark becoming generic, and thereby loosing all its protection. Specifically, it is very important to always use the mark as if it were an adjective, and never use it as a noun. For example, do not allow marketing material to read, “Aurora is the best cat litter on the market.” Instead say, “Aurora brand cat litter is the best on the market,” or even “Aurora cat litter is the best….” This may seem a ridiculous distinction to some. However, the consequences for dismissing this advice are great. If your mark is challenged on the basis that it is generic, you will have a much harder time arguing that it is not generic when you have treated your mark as if it were a class of goods, rather than a single brand in a class of goods.”

Gray-market goods (Parallel Imports) :

These are goods that are manufactured abroad for sale in foreign countries and properly marked with trademarks registered in the United States. Later these goods are purchased and imported into the United States to compete with the United States trademark owner’s or licensee’s own products. There is considerable incentive to sell gray-market goods in the United States if the prices on goods sold abroad are substantially lower than those sold in the United States. The interesting dilemma created by gray-market goods is that there is ostensibly no trademark infringement since the mark does in fact represent the true source of the goods to which the mark is affixed. For this reason, Congress passed 19 U.S.C. § 1526 to address the problem by stopping such imports at the border, with a couple exceptions. If the foreign manufacturer who affixes the mark to the goods is a related company (i.e. subsidiary or brother -sister company) to the United States trademark owner, then 19 U.S.C. § 1526 will not prohibit the importation. The statute will also not prohibit the importation of goods that are purchased by an individual in a foreign country and brought into the United States for personal use and not for resale.

Grounds for cancellation :

Cancellation of a trademark registration can occur within the first five years of registration for any reason that the mark could have been precluded from registration in the first place. Specifically, that includes:

Likelihood of confusion with petitioner’s previously used or registered mark,
Fraud,
Descriptiveness,
Genericness,
Abandonment,
Misdescriptiveness and deceptiveness.

However, fair use, trademark misuse, unfair competition, or violation of anti-trust laws are generally not considered valid grounds for cancellation.
Five years after registration, and if incontestability status has been successfully obtained, the mark can no longer be canceled on the basis that the mark lacks distinctiveness or creates a likelihood of confusion with a prior-registered mark. However, the mark can still be canceled on the basis of:

(1) Genericness,

(2) Abandonment,

(3) Fraud,

(4) The mark is forbidden,

(5) The mark is an improperly used collective or certification mark,

(6) The mark disparages or falsely suggests a connection with persons, institutions, beliefs, or national symbols, or

(7) The mark is used to misrepresent the source of goods.

Since these latter two grounds (6 & 7) appear akin to likelihood of confusion, which is supposed to be ruled out as a ground for cancellation after the five year period, they have been the subject of criticism. In any event, if you are claiming cancellation on the basis of 6 or 7, you will inevitably need to prove something more than likelihood of confusion to succeed.

Grounds for dilution lawsuits :

In order to have a claim for federal trademark dilution, the mark in question must be famous, and use of the mark must either blur the mark’s product identification; or tarnish the affirmative associations conveyed by the mark. State dilution laws may have slightly different grounds, such a mark which is distinctive or well known, rather than one that is famous. Likelihood of confusion is not a required element of a federal dilution lawsuit.

Grounds for infringement lawsuits :

Grounds for trademark infringement lawsuits exist when there is use of another company’s trademark that is likely to cause an appreciable number of consumers to be confused about the source of the underlying goods or services. Such use must occur in the same geographic territory as the allegedly infringed mark being used. Click here for more information on confusingly similar marks.

Grounds for opposition :
The grounds for opposition can be as broad as “any person who believes that [they] would be damaged by the registration of a mark.” Despite this broad language, it is also true that the opposer must have a personal interest in the outcome beyond that of the general public, and generally involved with the goods or services that may be described by the alleged mark. Oppositions are most commonly filed when a mark is (1) likely to confuse consumers with respect to an existing mark, (2) descriptive, (3) generic, (4) misdescriptive, (5) deceptive, or (6) registered under fraud.

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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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J

Filed under: Trademark Glossary — Tags: Judicial estoppel, Junior user, jurisdiction, lawsuit, nationwide priority — admin @ 5:36 pm

Judicial estoppel ;

A legal doctrine whereby a party is bound by prior judicial declarations which cannot be contradicted in subsequent proceedings involving the same issues and parties. Where a party’s pleadings, statements or contentions taken under oath adopt a particular position in one proceeding, that party is estopped from adopting an inconsistent position in a later proceeding.

Junior user :

The second or subsequent user of a mark who may or may not have rights in the mark depending whether the mark is being used in the same territory as the senior (first) user. The senior user of a mark has rights superior to all others, and can generally exclude others from using their mark. However, a junior user may still have rights in the mark if the junior user is using the mark in a different territory than the senior user, or the junior user registers the mark federally prior to the senior user. If the junior user registers first, then the junior user obtains nationwide priority, and can exclude all uses of the mark except the senior user’s use of the mark in the senior user’s own territory.

Jurisdiction :

Jurisdiction is the power of a court to inquire into facts, apply the law, make decisions, and declare a judgment. This power is typically determined by the locale of the events leading to a lawsuit, but may also be determined based on other factors, with primary attention always paid to fairness to the party being haled to court. One of the first defenses a trademark defendant may utilize is the lack of jurisdiction by the court demanding the defendant’s attention. If defendant succeeds in a motion to dismiss based on lack of proper jurisdiction, the plaintiff can generally bring the same lawsuit to a different court and start all over.

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K

Filed under: Trademark Glossary — Tags: abilities, job qualifications, Kind codes, Knowledge, KSA, Patent, skills, WIPO Standards — admin @ 5:34 pm

Kind codes :

WIPO Standard ST. 16 codes (kind codes) include a letter, and in many cases a number, used to distinguish the kind of patent document (e.g., publication of an application for a utility patent (patent application publication), patent, plant patent application publication, plant patent, or design patent) and the level of publication (e.g., first publication, second publication, or corrected publication).

KSA :

Knowledge, skills and abilities (job qualifications)

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