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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.
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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.
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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.
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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.
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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. Click
here for a list of all international classes.
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Clearance
Opinion (Availability 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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Coined
terms (Fanciful terms)
These are terms that are invented for the sole purpose of serving
as trademarks. Examples include KODAK for photographic equipment, UNIX for
a computer operating system, REEBOK for shoes, and XEROX 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.
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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.
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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.
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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.
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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.
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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.
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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).
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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.
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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.
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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.
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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
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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.
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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
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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.
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Copyrights,
generally
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.
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Corporate name
Also known as a "trade name,"
"assumed name," or
"business name," a corporate name is the name
under which a company conducts its business. Whereas a corporate
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. Corporate
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, corporate 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
corporate 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 corporate 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 corporate 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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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.
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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).
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Costs, for trademark legal
services
Costs will obviously vary based on what services you need. To get
a sense of what fees and costs are required in the average situation,
visit Pliam
Law Firm's competitive fee and service schedule.
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Counterfeit
Goods
Goods bearing a counterfeit trademark. A counterfeit
trademark is defined as a spurious mark which is 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 and knowledge that the trademark was a
counterfeit.
Intentional
trafficking in counterfeit goods is 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.
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CTM (European Community Trade-Mark)
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.
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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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Cybersquatting
The act of registering another company's trademark
as your own domain name, presumably with the intent to sell the domain
name to the trademark owner at a substantial profit.
Other terms have been
applied to the same behavior, such as cyberpirating and domain name
hijacking.
President Clinton signed
a bill on November 29, 1999 that amends the Trademark
Act, and provides for a cause of action against cybersquatters as well
as reverse domain name hijackers.
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