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A
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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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.
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Andean Pact
A treaty between Bolivia, Colombia, Ecuador, Peru, and Venezuela that
includes an understanding on trademarks.
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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.
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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.
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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.
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Assignee
The party to whom a trademark is being transferred in an assignment.
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Assignment of
trademark
An assignment is the legal transfer of ownership of any
property such as a trademark or copyright from one owner to another. The transferee or
"assignee" is the person who acquires ownership, and the
transferor or "assignor" is the person who transfers
ownership rights.
Great care should be
taken when drafting an assignment document and implementing its
transfer. To be valid, a trademark assignment must include
the transfer of 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 trade mark. More recently,
however, some
courts have taken a more liberal view of assignments, and do not
require the transfer of such tangible assets. Nonetheless, 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).
You will also want
include in the transfer document the assignment of the right to sue for
past infringements. Also consider including a statement about the
geographical region for which rights are assigned, the physical transfer
of materials establishing the trademark right, and the reasonable
cooperation of the assignor, if needed to prove establishment of the
trademark.
When a registered trademark is assigned, it is a good idea
to record
the assignment immediately with the U.S. Patent and Trademark
Office, although such recordation is not mandatory.
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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.
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Assignor
The party who is selling or otherwise transferring ownership of a
trademark.
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Assumed name
Also known as a "trade name,"
"corporate name," or
"business name," an assumed name is the name
under which a company conducts its business. Whereas an assumed name
identifies the business itself, trademarks identify the goods or services
sold by the business. Also, while a corporate name specifically
identifies the name of a corporation, a business name, trade name or
assumed name can refer to entities that are not corporations. Assumed
names frequently receive protection as trademarks, because they often meet
the trademark law requirements of use
in commerce, distinctiveness,
and unobjectionable content.
However, unlike a trademark, assumed names can obtain protection under the
Trademark Act and common law of unfair
competition, even if they are not used in direct connection with the
sale of goods or services. A
frequent misunderstanding occurs when registering or reserving
assumed names with the appropriate state
governmental agency, e.g. the Secretary of State. In so doing,
businesses
are often led to believe they have acquired trademark protection. This is not
so. States require the registration of assumed names when doing business under a name other than a
legal name, in order
that the true identity of a company/person
can be found. A state will register or reserve an assumed name
as long as it is not identical (or near-identical) to a name already
registered. By contrast, a trademark that is far less similar to an
existing trademark than "near-identical" can infringe a prior
mark.
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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.
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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
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B
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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.
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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).
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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.
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Benelux
Convention
A treaty governing the trademark laws of Belgium,
the Netherlands, and Luxembourg. The Benelux Convention was signed 1962,
and was followed by a common registration system, the Uniform Benelux Law
on Marks, for trademark registration in any of the three countries.
Click here to visit the Benelux
Trademarks Office.
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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 Trademark
Office issues a Notice
of Allowance.
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Book titles, protection
of
Book titles are generally not protected under trademark law
unless they are part of a series. However, even if the book title doesn't
belong to a series, it may theoretically receive trademark
protection as long as the title qualifies as a
trademark and
has acquired secondary meaning.
Even if the book title belongs to a series, secondary meaning is required
if the series title itself is descriptive of the general contents of the
series.
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Brand name
The popular vernacular for a lingual
trademark. Since a trademark may also
be a sound, a color or product packaging, etc, even though a brand name is always a
trademark, a trademark is not always a brand name,
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Business
Name
Also known as a "trade name,"
"assumed name," or
"corporate name," a business name is the name
under which a company conducts its business. Whereas a business name
identifies the business itself, trademarks identify the goods or services
sold by the business. Also, while a corporate name specifically
identifies the name of a corporation, a business name, trade name or
assumed name can refer to entities that are not corporations.
Business names
frequently receive protection as trademarks, because they often meet the
trademark law requirements of use
in commerce, distinctiveness,
and unobjectionable content.
However, unlike a trademark, business names can obtain protection under
the Trademark Act and common law of unfair
competition, even if they are not used in direct connection with the
sale of goods or services. A
frequent misunderstanding occurs when registering or reserving
business names with the appropriate state
governmental agency, e.g. the Secretary of State. In so doing,
businesses
are often led to believe they have acquired trademark protection. This is not
so. States require the registration of business names when doing business under a name other than a
legal name, in order
that the true identity of a company/person
can be found. A state will register or reserve a business name
as long as it is not identical (or near-identical) to a name already
registered. By contrast, a trademark that is far less similar to an
existing trademark than "near-identical" can infringe a prior
mark. |
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