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Identifying source
Identifying the source of a product or service for the consuming public is
the primary objective of trademark law. As such, the Trademark Act grants
exclusive rights only to those trademarks enabling a consumer to
discriminate between different brands of goods and services. The consumer
need not be able to discern the precise manufacturer or service provider
by company name. It is enough that the consumer can determine that the
maker of this brand is different than the maker of another. For example,
nothing in the trademark "Kix" for breakfast cereal tells the
consumer that it is manufactured by General Mills. To determine company
information, a consumer would have to look elsewhere on the cereal box.
What is important is that when the consumer sees a corn-based, puffed
cereal with the name "Kix" on it, the consumer instantly knows
it is manufactured by an entity different from a similar corn-based,
puffed cereal that does not have the word "Kix."
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Immoral marks (scandalous marks)
Marks consisting of immoral or scandalous matter cannot be
federally registered. Courts have defined scandalous marks to include
marks giving offense to the conscience or moral feelings; exciting
reprobation, calling out condemnation for a substantial composite of the
general public. In re McGinty, 660 F.2d 481 (1981). A fairly
recent example of a mark denied registration on the basis of being immoral
is the mark DICK HEAD'S accompanied by the logo depicting male genitalia,
for restaurant and bar services. In re Wilcher Corp. 40 USPQ2d
1929 (1996).
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Importation restrictions
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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Incontestability status
A benefit granted to owners of federal trademark
registrations, allowing them to prohibit challenges pertaining to the
owner's exclusive rights in a mark. Incontestability can help prevent
attacks on the basis that the mark is confusingly
similar to another mark, that it is functional,
or that it lacks secondary
meaning. Incontestability status does not mean a
mark is attack-proof. However, the most expensive challenges to defend
against are virtually eliminated when you have an incontestable mark.
Incontestable marks are still subject to challenges that (1) the mark is generic,
(2) the mark was obtained through fraud
in registration, (3) the owner has abandoned
of the mark, (4) the mark misrepresents
the source of goods or services, or it is scandalous
in nature, (5) defendant's use is a fair
use of the mark, (6) defendant's adoption and
use of the mark was prior to plaintiff's registration, (7) defendant's
registration of the mark was prior to plaintiff's registration, or (8) the
mark is used to violate anti-trust laws.
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Ingredients, protection
of
As long as an ingredient in a product is also used as a trademark,
it is worthy of trademark protection. An example would be where a cat
litter product contains the substance, "GREENGUARD," and a
manufacturer or cat litters features the word "GREENGUARD" on
its label as a way of distinguishing the product from others.
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In gross assignment
Assignment of a mark without the necessary transfer of goodwill
associated with the mark. Such assignments are invalid, and can 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,
but must instead start over with the priority date being the assignee's
own first use date.
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Infringement
Infringement is the use of a trademark in a way that is confusingly
similar to another company's trademark, without
that company's prior permission. While consumer confusion is the
touchstone to an infringement lawsuit, actual confusion of a consumer it
is not required in order for infringement to exist. All that matters is
that an appreciable number of consumers are likely to be confused about
the source of the underlying goods or services. Click here for more
information on the factors that a court will look at to determine likelihood
of confusion
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Inherent distinctiveness
A mark can be inherently distinctive,
or it can acquire distinctiveness over time. Marks that are inherently
distinctive are those that have the ability upon being used the very first
time to communicate to the consumer that the mark is identifying the
source of the product as opposed to describing the product itself. The
more a mark includes words or symbols related to the good or service, the
more likely a consumer will be confused and think that the mark is
actually identifying or describing the product itself. Examples of
inherently distinctive marks are: DOMINO for sugar, WRANGLER for jeans,
BRIM for Coffee, and BLISTEX for lip balm. Each of these trademarks are,
in greater or lesser degrees, different enough from the product for which
they are used that they serve to identify source rather than describe any
qualities of the product. As such, they are inherently distinctive. Fanciful,
Arbitrary
and Suggestive
marks are all inherently distinctive, while descriptive
and generic
marks are not inherently distinctive.
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Initial interest confusion
Where actual trademark confusion is not likely because one party uses
disclaimers or other information making clear that the mark in question is
not related to the senior user's mark. An example is where a domain
name that is the same as someone's trademark lures people into the
competitor's site, but once on the site the browser sees clearly that the
site is not the same party, and there is no actual confusion after that
point. If the site which lured the browser with a deceptive
trademark sells competing products, then the site is problematic for the
senior trademark user, and may be actionable.
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Injunctive relief
A court order that prohibits a party from doing something or
demanding that the party undo some wrong or injury. In trademark
infringement or dilution cases, an injunction can include the ordering of
corrective advertising, demanding the use of disclaimers of association
with the trademark owner, product recall, or prohibiting future use of a
mark. Since injunctive relief is an equitable remedy, the court will weigh
the harm to defendant if the injunction is imposed against the harm to
plaintiff if no injunction is ordered.
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Injury to reputation
Injury to reputation occurs when a trademark
representing one level of quality is infringed or diluted by a mark that
represents a lower level of quality, and the infringement harms the
goodwill generated by the original user of the mark. Demonstrating injury
to reputation may be extremely difficult, and the plaintiff may have no
choice but to rely on market survey data.
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Intellectual property
The term used to identify a form of property rights granted to intangible
creations of the mind. There are distinct varieties of intellectual
property, including trademarks, copyrights,
patents,
trade secrets, and publicity rights. Each state protects intellectual
property in its own way, if at all. However trademarks, copyrights, and
patents all receive federal protection, in addition to whatever state
protection is available, if any.
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Intentional infringement
Trademark infringement
that occurs because the defendant hopes to "cash in" on
plaintiff's goodwill generated by the mark. Proving intentional
infringement can be quite difficult, just as in proving any state of mind.
However, courts can consider circumstantial evidence such as the alleged
infringer's choice of a trademark in light of the effectiveness of
plaintiff's mark. Award of monetary relief by a court is generally
reserved for cases of intentional infringement. Reliance upon legal advice
will typically not be sufficient in and of itself to disprove intentional
infringement.
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Intent of the defendant
The mental state of the defendant at the time of adopting a mark
is very significant in many aspects of trademark lawsuits. Bad faith on
the part of defendant 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. 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, and thereby offer a defense of fair
use. 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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Intent to Use (ITU)
application
An application for a federal registration made to the United States Patent
and Trademark Office for a trademark that is not yet being used. ITU
applications secure trademark rights prior to actually using the mark. It
allows companies the opportunity to see if the USPTO will register the
mark without having to invest in the marketing and promotion of the mark
in the event the mark is rejected. It also secures an early priority
date (normally a priority date is not set until actual
use).
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Inter partes proceedings
These are proceedings before the Trademark
Trial and Appeal Board (TTAB) at the U.S.
Patent and Trademark Office (USPTO). Conflicts over whether a
trademark can be registered are heard in front of the TTAB (or possibly in
court too). These proceedings consist of: (1) cancellation
of marks registered on the Principal
or Supplemental
Registers; (2) opposition
to applications for registration on the Principal Register; (3) Concurrent
use proceedings; or (4) interferences
declared by the Commissioner of the USPTO.
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INTA (International Trademark
Association)
Formerly called the United States Trademark Association, this
organization lobbies for legislation favorable to trademark owners, and
provides a resource for trademark policy development and legal education.
The INTA may be reached at:
1133 Avenue of the Americas
New York, NY 10036
(212) 768-9887
http://www.inta.org
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Interference proceedings 18.35
This proceeding before the Trademark
Trial and Appeal Board is near-obsolete,
and reserved for those cases showing extraordinary circumstances. An
interference proceeding is declared by the Commissioner
of Patents and Trademarks upon petition. At issue in these proceedings is priority
of use. Generally speaking, the interference proceeding will not be
granted unless the issue of priority which is at stake could not be
addressed most efficiently in an opposition
or cancellation
proceeding.
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International class
An international class is a number associated with a category of goods or
services into which a trademark may be assigned for the purposes of a
trademark registration. Each application for registration must list one or
more international classes (at $325 per class). The classes are based upon
the type of good or service the mark identifies. There are hundreds of
items that are specifically designated as belonging to one class or
another. To view a listing of international classes, click
here.
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Interstate
commerce requirement
Interstate commerce of a mark occurs when the trademark applicant or owner
uses the mark on goods or in connection with the sale of goods or services
that are sold or otherwise transported across state lines. The kind of use
required to create or maintain a trademark under the Trademark Act must be
a "bona fide use of a mark in the ordinary course of trade and not
made merely to reserve a right in a mark." 15 U.S.C. §1127. Using a
mark in interstate commerce is required whether applying for a trademark
under an actual use application, filing a statement of use under an
intent-to-use application, or filing a renewal application.
Typically, the trademark applicant engages
in interstate commerce by using the mark on goods that are sold and
transported across state lines, or by selling or advertising to sell
services to customers from other states or countries.
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International
Trademark Association (INTA)
See
INTA
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International Trade
Commission (ITC)
The ITC can help stop the importation of counterfeit goods by
issuing a temporary or permanent exclusion orders. The ITC has its own
rules of practice and discovery, and the Commission participates as a
party and conducts its own discovery. The ITC can grant temporary relief
such as injunctions and restraining orders that can be granted under the
Federal Rules of Civil Procedure. The ITC's decision may be vetoed by the
President of the United States within sixty days, or appealed to the Court
of Appeals for the Federal Circuit.
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International
Treaties
There are several treaties that govern trademark rights with respect to
other nations, including: the Benelux system of registration, Paris
Convention treaty, Trademark Registration Treaty, Madrid agreement, Madrid
protocol, and the European Community Trade Mark (CTM). With the exception
of the Madrid agreement, these treaties do not attempt to harmonize the
trademark laws of the member countries, but instead provide centralized
trademark registration filing systems. Click
here for more on treaties.
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Internet,
trademark issues posed by
Conflicts over domain names have received the most attention in
the trademark legal press. However, such disputes have only affected a
small number of trademark owners. Where the Internet has its greatest
impact on trademark owners or prospective owners is in searching for prior
rights in a mark and policing existing marks. Other areas of trademark law
of interest to businesses is whether or not a link to another company's
site infringes or dilutes that site's trademark. This latter area overlaps
significantly with copyright and unfair competition laws, since linking
and framing only implicate trademark infringement or dilution laws in
narrow circumstances. Finally, the use of another company's trademarks in
meta tags arguably infringes or dilutes that company's trademarks. While
there are certainly other trademark issues raised by the Internet, they
have not been as widely talked about.
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Internic (Network
Solutions)
The company commissioned by the United States government to administer the
assignment of domain names for the following top level domains: .EDU,
.COM, .NET, .ORG, and .GOV. Network Solutions' domain name dispute policy has
received wide-spread criticism for its bias toward trademark owners. If
you want to determine whether a your trademark is being used as a domain
name, visit http://www.networksolutions.net.
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Intra-State commerce
Commercial trade that takes place entirely within one state, as opposed to
interstate
commerce which takes place across state and/or national boundaries.
Interstate commerce is a prerequisite to federal trademark registration,
however marks that are used in intra-state commerce may be registered in
the state of trade.
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Invalid assignment
Any assignment of a trademark is invalid if the assignment of the
mark is made without assignment of the goodwill associated with the mark.
If a mark is invalidly assigned, the usual result is that the company that
purchased the mark, the assignee,
is deprived of the benefit of the early priority
date of the assignor,
and must instead start all over with a new priority date beginning when
the assignee begins using the mark in commerce.
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ITC (International Trade Commission)
The ITC can help stop the importation of counterfeit goods by
issuing a temporary or permanent exclusion orders. The ITC has its own
rules of practice and discovery, and the Commission participates as a
party and conducts its own discovery. The ITC can grant temporary relief
such as injunctions and restraining orders that can be granted under the
Federal Rules of Civil Procedure. The ITC's decision may be vetoed by the
President of the United States within sixty days, or appealed to the Court
of Appeals for the Federal Circuit. |
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J
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Judicial estoppel
A legal doctrine whereby a party is bound by prior judicial
declarations which cannot be contradicted in subsequent proceedings
involving the same issues and parties. Where a party's pleadings,
statements or contentions taken under oath adopt a particular position in
one proceeding, that party is estopped from adopting an inconsistent
position in a later proceeding.
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Junior user
The second or subsequent user of a mark who may or may not have rights in
the mark depending whether the mark is being used in the same territory as
the senior (first) user. The senior user of a mark has rights superior to
all others, and can generally exclude others from using their mark.
However, a junior user may still have rights in the mark if the junior
user is using the mark in a different territory than the senior user, or
the junior user registers the mark federally prior to the senior user. If
the junior user registers first, then the junior user obtains nationwide
priority, and can exclude all uses of the mark except the senior user's
use of the mark in the senior user's own territory.
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Jurisdiction
Jurisdiction is the power of a court to inquire into facts, apply
the law, make decisions, and declare a judgment. This power is typically
determined by the locale of the events leading to a lawsuit, but may also
be determined based on other factors, with primary attention always paid
to fairness to the party being haled to court. One of the first defenses a
trademark defendant may utilize is the lack of jurisdiction by the court
demanding the defendant's attention. If defendant succeeds in a motion to
dismiss based on lack of proper jurisdiction, the plaintiff can generally
bring the same lawsuit to a different court and start all over. |
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Laches, defense of
A defense based upon plaintiff's inexcusable delay in asserting or
attempting to enforce trademark rights. This doctrine is based on the
theory that equity rewards the vigilant and not those who slumber on their
rights.
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Labels, trademark
protection of
Labels on goods can be protected under trademark law if the
features on the label for which trademark protection is claimed identifies
source for consumers, and if such features are not functional.
Product labels fall into a rapidly expanding area of trademark protection
for trade dress.
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Lanham Act
Otherwise known as the Trademark Act of 1946, this statute
provides protection against trademark infringement, trademark dilution,
and false designation, description or representation. The act also governs
procedures for federal trademark registration. The Act is contained in
Title 15 of the United States code, sections 1051-1127.
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Legal strength of a trademark
Strength of a mark can be measured on two different levels; marketing
strength and legal strength. Words that describe very closely the
underlying good or service they represent have strong marketing potential,
since such marks immediately communicate to customers what the product
actually is or does. An example is "Quick Fix Radiator Mix."
This tells the customer immediately that it is a substance that fixes
radiators quickly. The problem with using descriptive
marks such as these is that they are weak from a legal perspective.
The legal strength of a mark is generally measured by its distinctiveness,
not its descriptiveness. In fact, distinctiveness and descriptiveness are
almost two ends on the same spectrum. Generally speaking, the more
distinctive the mark, the stronger is the legal protection available for
that mark, but the less ability the mark has to communicate with the
consumer. Distinctive marks are those that are coined
or fanciful (made up), or suggestive
(suggesting qualities of the underlying products, without plainly
describing them).
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Letters, trademark
protection of
Alphabetic and Alphanumeric characters can be protected under
trademark law, and indeed comprise the most common form of trademark,
otherwise known as textual or lingual marks. Such marks receive their
broadest protection if they are used as trademarks in block-letter format,
i.e. without specialized fonts, coloring or other stylized features.
Alternatively, if lingual marks are used with stylized features, but
registered as block letters alone, or used in a variety of different
stylized formats, then protection can more reasonably extend to all
similar configurations of letters.
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License
An agreement between a trademark owner and one or more other parties that
allows the other parties to make limited, specified use of the trademark
in question. Licensing of trademarks can result in the loss of the
trademark unless the license arrangement provides for a certain degree of
control over the licensed use.
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Licensee
The party to whom a trademark owner grants a license to use a
trademark.
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Licensor
The trademark owner who is licensing a trademark to the trademark
licensee(s).
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Likelihood
of Confusion Test
An analysis of whether confusion is caused when the mark in question is
used to identify the same or closely related goods or services as an
existing mark. If the relevant consuming public will be confused or
mistaken about the source of product or service sold using the mark in
question, then likelihood of confusion exists, and that mark can be
excluded from being used by the prior mark owner. The likelihood of
confusion test is one of several examinations conducted by the U.S. Patent
and Trademark Office in determining whether to approve an applicant’s
trademark application. The test is also used in trademark infringement
lawsuits to determine whether or not the defendant is liable for
infringement.
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Lingual Marks
These are trademarks
in the form of either words or phrases, and are the most widely used kinds
of marks. Depending on the meaning of the word or phrase, these marks have
more or less legal
strength.
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Litigation
A lawsuit. In order to litigate a trademark conflict, there must
be a legal cause
of action such as infringement
or dilution.
Trademark litigation often occurs on a very fast schedule since the
plaintiff usually requests the court to grant a temporary
injunction to stop the alleged trademark
infringer from using the mark until the whole dispute can be resolved
through a longer process. If a court grants the injunction, the defendant
typically settles quickly and changes marks because the incentive for
litigating a mark that cannot be used (at least in the short term) is
obviously prohibitive since goodwill
will have to be generated under a new name.
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Lost profits, as a measure
of damages
The plaintiff's lost profits may be awarded as damages in a trademark
lawsuit, but monetary
relief is generally reserved for cases of intentional
infringement. To receive plaintiff's lost sales
as damages, the plaintiff must show that if it were not for the
defendant's infringing activities the plaintiff would have had a certain
number of sales that were not in fact had. Proving this is often difficult
since there may be a number of reasons besides defendant's infringing use
of the mark that could account for plaintiff's lost sales. As such, a market
survey may be necessary to prove such
damages. |
