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Madrid Agreement
The Madrid Agreement Concerning the International Registration of
Marks is an international treaty originally signed on April 14, 1891.The
Madrid Agreement is
designed to simplify the filing of trademarks and service marks in
different countries. The treaty provides for the international
registration of an approved trademark by a single filing in one
language, under one procedure, with the payment of one fee.
Nationals of
member countries must first register their trademark in the country of
origin prior to international registration. For this reason, the treaty
tends to favor countries having the least rigorous application
procedures, and consequently the United States and Canada, having more
elaborate trademark registration procedures, have declined to become
signatories.
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Madrid Protocol
Members of the Madrid Agreement are not necessarily the same as members
to the Madrid Protocol. The Madrid Protocol was enacted after the
Madrid Agreement.
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Mark
Any symbol qualifying as a trademark, service mark, certification mark, or collective mark.
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Market survey
Research conducted by an independent firm and used to support arguments
before the US Patent and Trademark Office or civil courts when trying to
prove various aspects of trademark viability. For example, a survey may
be useful to prove that a mark has acquired secondary meaning, is not
generic, is not functional, is legally strong, or is not likely to
confuse consumers with regard to an existing trademark. Surveys can also
be used to prove plaintiff's lost profits, which is evidence that is
notoriously difficult to obtain without a survey. According to Phyllis
J. Welter, an expert on trademark surveys, the discussion of surveys in
trademark litigation has grown from roughly 5.6% in the 1950's to over
12% in the 1980's. Ms. Welter's book, Trademark Surveys,
published in 1998 by West Group, is an excellent source of information
on how to utilize surveys in trademark litigation.
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MERCOSUR
An international treaty dealing covering trademarks. Member
countries include Argentina, Paraguay, Uruguay and Brazil.
Mercosur is also known as the Southern Common Market.
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Measure of damages 6.12
Both the Lanham
Act and the common
law provide for two standard methods of
calculating damages, if indeed damages are awarded at all. These are typically
the plaintiff's lost profits or defendant's
profits gained as a result of defendant's
infringing activity. Additionally, damages have been based on a
reasonable royalty or a the cost of corrective advertising. Finally, the
court may award treble
damages and prejudgment
interest to the plaintiff where the court deems such damages as equitable
and not punitive.
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Misdescriptive
marks (deceptively misdescriptive)
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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Misspelled
words as marks
Often business owners choose misspelled words that are phonetically
similar to the correctly spelled word, in hopes of adding
distinctiveness, or even perhaps as a marketing ploy. However, trademark
law deems words that are misspelled, but otherwise descriptive of a
product to be the same as the non-misspelled descriptive term for that
product. For instance, "KWIK SNAQ" as a trademark for a
convenience food item would be treated as a descriptive term in the same
way as if the item were instead named "QUICK SNACK."
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Misuse of trademark
11.49
An affirmative defense to trademark infringement. Misuse occurs when the
trademark owner uses the mark in violation of the law, such as canceling
a trademark license on the basis of illegal discrimination. Some legal
scholars have also suggested that the misuse of a trademark should
result in cancellation of a trademark registration where the trademark
holder uses the registration to invoke Internic's domain dispute policy
when there is no valid argument for actual trademark infringement by the
domain name owner. However, the US Patent and Trademark Office has never
canceled a mark yet based on trademark use. Nonetheless, cancellation of
patents and copyrights have occurred based on misuse, and it may be a
matter of time before a similar precedent is set in trademark law.
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Monetary relief
Monetary relief is but one form of protection available to trademark
owners under the Lanham Act. Monetary relief may include provable
damages, attorneys fees, corrective advertising costs, lost profits
(either defendants’ or plaintiffs’), prejudgment interest, punitive
damages, reasonable royalty or treble damages. Monetary awards
are not required when infringement has occurred. The court has wide
discretion under "principles of equity" to grant or deny such
relief, and frequently requires a finding of intentional
infringement before making such a reward.
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Monopoly
A privilege vested in one or more parties consisting of the
exclusive right to carry on a particular business or trade. In the case
of trademark law, a monopoly specifically references the exclusive right
to use a word, symbol, sound or trade dress, etc. in association with a
particular kind of good or service.
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Multiple-class
application
An application for Federal trademark registration in which the applicant
seeks registration for more than one international class. The registrant
must pay an additional registration fee ($245) for each class applied
for.
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Music, trademark protection
of
Trademark protection exists for
any sounds or musical compositions to the extent that such music meets
the requirements
of a trademark. A famous example is the
melody to "Sweat Georgia Brown" for the Harlem Globetrotters
International.
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Musical notation,
trademark protection of
Musical notes appearing with or without a staff
are protected as long as they function as proper trademarks.
As such, there is arguably no independent trademark protection against
the printing of musical notes as a symbol identifying the specific song
communicated by those notes, because they describe the music itself.
Moreover, such notation would arguably be functional for the creation of
that particular music. However, musical notation as a symbol for
anything other than the song itself could operate as a trademark. |
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N
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Naked assignment 20.5
Assignment of a mark without the necessary transfer of goodwill
associated with the mark. Such assignments are invalid, and may 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.
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Naked license 19.2
Licensing of a trademark without the necessary controls
over the use of the mark. Such licenses may result in the inadvertent abandonment
of the trademark.
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Nameholder corporation
A corporation created in order to reserve the name as a corporate name
for the owners of that corporation. Corporate names can serve as
trademarks only if they are used as such. Otherwise, they receive no
protection, unless otherwise dictated by state law.
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Name reservation
Registering the name of a business with the state in
order to reserve that name for the business owner. Most states will
reserve a name that is not an exact duplicate of an existing name, with
no attention given to confusingly similar names that may infringe
existing trademarks. For this reason, it is not sufficient to search a
state’s database of existing business names to determine whether or
not there is preexisting trademark rights.
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National Treatment
One approach for determining how citizens of a treaty nation should be
treated by the government of another member nation.
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Nationwide Priority
Nationwide Priority is an exception to the common law rule that the
first person to use a mark in a territory has priority in that
territory. A federal trademark registration allows whoever is first to
register a mark to have priority in any territory in which the mark is
not already being used. Without federal
registration, or nationwide priority, a trademark owner can be the first
to use a mark in one area of the country, but a junior user is free to
use the original owner's mark in a different area of the country. What's
more, the junior user can stop the original owner from expanding his/her
business into any area where the junior user is using the mark. If the
original user owned a federal trademark registration, he/she could stop
the junior user. Failing to register the mark means the junior user can
do so, and then be the beneficiary of nationwide priority, allowing
him/her to keep the original owner from expanding anywhere in the
nation, except the small area in which the original owner is using the
mark, or in some cases, within the oringinal owner's zone
of natural expansion.
Once a company has nationwide priority via a
federal registration, they can use the mark without restriction anywhere
in which any prior user is not already using the mark. However, the
registered owner cannot sue to prevent prior users of the mark from
expanding into new regions, until the registered owner of the mark can
show actual use or in some cases an imminent intention of using the mark
in that region. For example, if BeeBop establishes rights to a
mark in territory XYZ, and then DooDah registers the mark federally,
DooDah can claim priority over all regions in the country except XYZ.
While BeeBop can still expand into regions in which DooDah is not using
the mark, BeeBop can be forced to discontinue use in the new region the
moment DooDah can demonstrate a presence of the mark in that region or
an intent to imminently enter that region. Until DooDah can demonstrate
such a presence or imminent intention, the federal registration cannot
be used to enjoin BeeBop from using the mark in that territory.
How the Internet may affect nationwide priority
Historically, nationwide priority is listed by trademark attorneys
as one of the most important reasons to register a trademark. However,
there is an open question raised by the operation of a business over the
Internet and whether or not trademarks used on a site are automatically
given nationwide priority without a federal registration. Arguably, an
Internet site containing a company's trademark is an advertisement
available in any state in the country. Trademarks used in advertising
are capable of establishing priority under the common law, provided the
advertisement creates an association in the mind of the consuming public
between the mark and the goods or services. Therefore, one might think
that nationwide priority is automatically established by maintaining a
web site. However, until the law of the Internet is more evolved, there
is no certainty that this will be the case. For example, there is reason
to believe this will not be the case for companies that are geared
toward a local audience only. In this instance, it should perhaps be
irrelevant that the site can be accessed nationwide, as long as the
market niche remains local. In fact, the courts may ultimately require
actual sales in a state or region before granting a business priority in
that area. Given these uncertainties, nationwide priority probably
remains one of the greatest advantages to registration in this author's
opinion.
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Natural expansion
A doctrine whereby rights in a trademark are granted
based on expected use rather than actual use. Expanded rights under this
doctrine are granted only when a company is already using the trademark
in one area, and can demonstrate that it planed to expand to the claimed
area. This doctrine is ineffective if there is a pre-existing federal
registration held by another party in the claimed area.
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Network
Solutions (Internic)
The company administering all of the domain names having top level
domains; .COM, EDU, .NET, or .ORG. Internic requires all of its
registrants to agree to a domain dispute policy for trademark disputes
that may result in cancellation of a domain name, and indemnification of
Internic in the event they are sued. Internic does not check for
pre-existing trademark conflicts prior to registering domain names. As a
result of this and other policies inconsistent with trademark law,
Internic has been the target of litigation, despite its best efforts to
stay out of the middle trademark disputes over domain names. They can be
found at www.internic.net.
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Non-exclusive license
A form of trademark license which grants the person
licensed (i.e. licensee) something other than an exclusive entitlement
to the mark. The effect is that multiple parties can use the same
trademark at the same time for the same thing, and in the same
geographic region. If the license agreement granting a nonexclusive
license is not carefully worded, the owner of the trademark my
inadvertently loose all rights to that mark.
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Nonfinal order 17.3
An order from the court that does
not dispose of a particular case or legal issue. Nonfinal orders are not
appealable until after a final order is made in a case. An example of
nonfinal orders include those determining whether or not certain
evidence should be admitted in court, or of which jury instructions
should be read.
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Nonpurchaser confusion 1.13
In trademark law, consumer
confusion is the test of whether or not a trademark has been infringed.
However, such confusion need not be actual, nor does it need to be
confusion of purchasers. Likely confusion of nonpurchasers qualifies as
infringement as well. An example of nonpurchaser confusion is where a
product bearing the infringing mark is likely to be seen by
nonpurchasers, such as when it is engraved on the good itself. The
actual purchaser may not be confused by the engraving if the packaging
or store display may contain disclaimers.
Nonetheless, if the nonpurchaser who has not had the benefit of seeing
the disclaimer is likely to be confused, there trademark infringement
exists.
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Notice
Notice of trademark rights is
given by use of the symbols, TM, SM or ®, or by phrases such as
"XYZ Company is the registered owner of the trademark ABC," or
"Reg. U.S. Pat. Off." The symbols "TM" and
"SM" are used for trademarks and service marks respectively,
and provide notice that a company considers its use of a mark to be
protected by trademark laws, even though the mark is not federally
registered. Use of the "®" symbol gives notice specifically
of the existence of a federal trademark registration.Failure to provide
notice of federal registration can result in the court denying certain
monetary awards, unless the plaintiff can prove the defendant actually
knew the mark was registered.
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Notice of Allowance
That notice given by the U.S. Patent and Trademark Office
to the trademark applicant informing the applicant that their Intent-to-Use
application has been approved pending the filing and acceptance of a Statement
of Use within six months of the issuance of
the Notice of Allowance. If it is not possible for the applicant to
begin use of the mark and file the Statement of Use within the six month
period, the applicant can apply for an extension.
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Notice of
publication
A notice sent to the applicant of a pending trademark registration that
their trademark has been approved by the Trademark Examiners and will be
published in the Official Gazette for publication.
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Numbers, trademark
protection of
As long as numbers are used in the
manner
of a trademark, they are a trademark. |
