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GATT (General Agreement on Tariffs and Trade)
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.
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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.
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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.
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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.
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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.
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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 (1) primarily
geographically descriptive; (2) geographically deceptively
misdescriptive; or (3) 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.
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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.
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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.
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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.
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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.
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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."
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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.
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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: (1) Likelihood of confusion with petitioner's previously used or
registered mark, (2) Fraud, (3) Descriptiveness, (4) Genericness, (5)
Abandonment, (6) 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.
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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.
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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.
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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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