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Encircled-R (The â
symbol)
The encircled-R, or "®," is a symbol that designates a
specific trade or service mark as a federally registered trademark under
the Trademark Act. In order to use this symbol a mark must be currently
registered on either the Principal or Supplemental Registers maintained by
the U.S. Patent and Trademark Office (USPTO). Willful use of the
encircled-R on a non-registered mark may jeopardize future registerability
status with the USPTO, and may be evidence of bad intent, which is frowned
upon by the courts.
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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.
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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.
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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).
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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.
Pliam Law Group, P.A.
provides legal opinions at a reasonable fee. For more
information, click here.
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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. Bitlaw
has reproduced the manual with a keyword index and hyperlinks: http://www.bitlaw.com/source/tmep/wordindex.html.
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Examiner's amendment
An amendment made by an Examining Attorney to the applicant's federal
trademark application.
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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.
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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.
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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.
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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.
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Exclusive licensee
The party to whom a trademark owner grants an exclusive license to use a
trademark.
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Exclusive licensor
The trademark owner who is licensing its trademark for exclusive use by
one other company.
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Exclusive ownership
Ownership in a mark which is free of any claim of right by any other
party.
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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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F
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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.
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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)).
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Fanciful terms (coined 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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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.
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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.
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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.
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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 showing the purchase of advertisement or a
mailing.
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Forbidden marks (Objectionable
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.
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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.
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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.
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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.
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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.
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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. |
