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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.
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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.
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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.
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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.
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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.
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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.
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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.
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Declaration
The Trademark Office requires on certain documents, such as an application
for registration, a declaration by the trademark owner that all the
information in the document is true. Specifically, 37 CFR 2.22 states the
requirement:
Section 2.20 Declarations in lieu of oaths.
The applicant or member of the firm or an officer of the corporation
or association making application for registration or filing a document
in the Patent and Trademark Office relating to a mark may, in lieu of
the oath, affidavit, verification, or sworn statement required from him,
in those instances prescribed in the individual rules, file a
declaration that all statements made of his own knowledge are true and
that all statements made on information and belief are believed to be
true, if, and only if, the declarant is, on the same paper, warned that
willful false statements and the like are punishable by fine or
imprisonment, or both (18 U.S.C. 1001), and may jeopardize the validity
of the application or document or any registration resulting therefrom.
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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.
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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.
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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.
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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.
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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.
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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.
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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."
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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.
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Dilution
Dilution has two different meanings in trademark
law. One refers to illegally using someone else's famous mark, as
described below under 'Dilution Statutes.'
The other use of 'dilution' is less common. It refers to the degree
to which a mark is, or has become, weakened. This occurs from
overuse of a mark. Generally speaking, common words such as
"tech" or "pro" are seriously diluted because they are
used by multiple companies, even within the same industry. When the
first company used "tech" or "pro," the word most
likely received very strong protection. But, as more companies
adopted these words for their marks, they lost a good share of their legal
strength.
Finding out that a mark is diluted can be a mixed
blessing for the trademark owner. On the one hand, the owner
will be able to join the multitude of others using similar marks.
However, when that owner wants to stop another from using a highly similar
mark, doing so may be difficult or even impossible.
Even a mark that is highly distinctive,
that would normally receive strong protection, may receive little or no
protection because of dilution. Since a trademark
owner generally wants to preserve the strength of their mark, and their
ability to exclude others from using a similar mark, the owner must police
and enforce encroaching uses of their mark, or else face that the mark may
become diluted, possibly even abandoned.
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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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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.
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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.
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Dispute Policy (See Domain Dispute Policy)
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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.
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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.
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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.
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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. In Pliam Law Firm's URL, http://www.pliam.com,
"pliam" is the secondary level domain, and ".com" is
the top level domain. Together, "Pliam" and ".com"
make up the entire domain name. Domain names are protectable as trademarks
if they are used in the web site other than as part of the Internet
address alone. For instance, Marklaw.com is a domain name because it is
used in the URL, but also a trademark because it is used as a masthead to
identify the service of providing trademark information. If Marklaw were
not used on the page itself, but merely as a URL, then it is unlikely that
it serves as a trademark. However, theoretically speaking, if the relevant
consuming public understands a domain name to represent a particular
Internet service, then it arguably is a trademark. Courts have yet to work
out the fine lines in this area of law pertaining to the Internet.
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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.
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Domain dispute policy
This refers to a policy developed by Network Solutions (the first
registrar to register 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 with
which Network Solutions has had to contend. 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. Network Solutions' 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
Network Solutions' current dispute policy is whether or not to register design
features of marks. Network Solutions' policy currently excludes from its
protection any trademarks incorporating a design. It appears from the
plain language of the policy that Network Solutions' 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.
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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.
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Drawings, 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.
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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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