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Office Action
A written communication sent by the Examining Attorney from the U.S.
Patent and Trademark Office, requesting a response from the applicant
regarding some matter pertinent to a pending application for trademark
registration.
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Official Gazette
The short name for The Official Gazette of the United
States Patent and Trademark Office. It is weekly publication
containing information about all pending trademarks, changes to existing
marks, and trademark renewals.
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Opposition
Proceeding
An adversarial proceeding between an applicant and opposer, which takes
place under the auspices of the U.S. Patent and Trademark Office (USPTO)
and attempts to resolve whether registration of an
applicant’s pending trademark registration would infringe and damage the
opposer’s existing mark. Any person who believes they will be
damaged by the registration of a mark on the Principal
Register may file an opposition with the USPTO within thirty (30) days
of the mark's publication in the Official
Gazette. Typically, oppositions are 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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Ordinary designs,
distinctiveness of
Designs that are ordinary or commonplace such as simple lines or
geometric figures are not inherently
distinctive, but may become distinctive
though use. Marks that are not distinctive cannot be registered on the Principal
Register until they acquire secondary
meaning.
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Ownership,
acquisition of
In the United States, ownership rights in a trademark are generally
acquired by being the first to use a mark in trade as a source
discriminator. In most other countries,
ownership is acquired by being the first to file for a trademark
registration. Of course, one may also acquire ownership in a trademark by
purchasing both the mark and all the goodwill associated with the mark
(see assignment
of a mark).
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Ownership, proof of 15.2
A certificate of federal
registration provides prima
facie evidence of ownership of a mark.
For marks which are not yet federally registered, prove of ownership may
be demonstrated by producing evidence of use of the mark in commerce prior
to another party's use of the mark. For marks affixed to goods, such proof
may include a bill of sale for goods bearing the mark. For services, proof
may include brochures or other advertising showing the mark.
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Ornamentation
This refers to an attribute of a product which may not be
protected under trademark law. Under the aesthetic functionality doctrine,
those design attributes of a product that are mere ornamentation, i.e.
aesthetically pleasing and help improve the salability of a product, but
do not primarily assist the consumer in distinguishing the goods from a
competitor’s goods, cannot receive trademark protection. |
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Packaging, trademark
protection of W10,14
Protection is available for
packaging as long as the elements claimed for trademark protection meet
the requirements
of a trademark. The
elements that are protected may include the shape and color or overall
coordination of these elements. However, only those elements that were
designed specifically to promote the product are protected; not the
functional features of packaging that have a utilitarian purpose.
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Parallel Imports
(Gray-Market Goods)
Goods that are not authorized for importation into the United States.
These goods were legitimately sold outside the United States with the
approval of the manufacturer, but were not supposed to be resold back into
the United States. The importers of Gray Market Goods are attempting to
benefit from the higher prices such goods command within the United States
as compared to the country into which they were originally sold.
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Paris Convention
The International Convention for the Protection of Industrial Property.
This treaty was originally signed in 1883 and grants, among other things,
trademark rights based upon national
treatment to all nationals whose countries signed
onto the convention. A trademark registration in one's home country sets
the priority
date for registrations made in all other member
countries. Click
here to see a list of members to the Paris Convention.
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Patent and Trademark
Office
Otherwise known as the United States Patent and Trademark Office,
or USPTO, this is the administrative body in the United States that
oversees the registration and cancellation of trademarks on the Principal
and Supplemental
Register, as well as patents. Only attorneys can represent other
parties before the USPTO, although individuals can represent their own
companies. For trademark law, there is no special certification or license
required for attorneys to practice before the USPTO. Trademark
applications and all other correspondence should be addressed to "The
Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington,
Virginia 22202-3513." Initial trademark applications should be
directed to "Box NEW APP / FEE," while amendments to allege use
should be directed to "Attn. AAU," and statements alleging use
or requests for an extension of time to file a statement of use should be
directed to "Box ITU / FEE."
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Patent 1.6-8
The exclusive right to use or sell
an invention. The government, under the auspices of the U.S. Patent and
Trademark Office, grants such rights only to new, useful and non-obvious
ideas for machines, processes or certain designs. Drafting patent
applications is an art that some say takes years to develop well.
Depending on how the application is drafted a patent can offer very weak
and narrow protection, or rather robust and strong protection. Although
Pliam Law Firm does not practice in the area of patent law, we do strongly
recommend the investment in a good patent attorney, and will gladly make
recommendations on where to find a good patent attorney.
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Patent
attorney
It is not necessary to have a patent attorney doing trademark related
work. A patent attorney is typically an attorney with an engineering or
other scientific degree, and who is specially licensed to handle patent
matters before the U.S. Patent and Trademark Office (USPTO). Except
insofar as the USPTO governs trademark registrations, patents and
trademark have virtually nothing in common, and thus there is no need to
have a patent attorney for trademark work.
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Personal names, trademark
protection of
Traditionally, courts have been reluctant
proscribe the use of one's own name in business even when another business
exists by the same name. As such, courts would try to craft injunctions
to be as narrow as possible to permit use of a personal name. More
recently, courts have become increasingly insensitive to any prohibition
on using one's own name, where such use creates a likelihood of confusion
for consumers. Thus, trademarks consisting of a person's own last name (surname)
are generally protected under trademark law once the mark has acquired secondary
meaning. First names may not
need to acquire secondary meaning, however they receive very weak
protection generally.
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Petitioner
The party to a cancellation
proceeding who seeks to cancel the Federal
registration of a trademark held by the registrant
in such an action.
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Physical features,
protection of
Shapes or physical features of products or their containers may
receive trademark protection if those features are distinctive and
non-functional.
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Plaintiff
The party who brings a lawsuit. In a trademark suit, the
plaintiff may be claiming trademark infringement and/or dilution, or may
simply be requesting in a declaratory judgment action for the court to
make a determination of which party has prior rights in a mark, or whether
there even exists a valid conflict between two marks. Standing to sue in a
trademark lawsuit exists once someone claims infringement and threatens to
take some action either through the courts or the appropriate
administrative body. If this happens, the party accused of infringing a
trademark can become the plaintiff in a declaratory judgment action and
thereby can often receive the advantage of a more convenient forum.
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Plaintiff's lost profits
as damages 16.13
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.
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Policing a trademark
All trademark owners have a duty, if they want to preserve their trademark
rights, to police and enforce those rights. Failure to do so may lead to
dilution and ultimately abandonment of their trademark rights.
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Prejudgment interest 16.14,
9.21
Interest awarded to a plaintiff in
some jurisdictions for trademark infringement. Such interest may be
calculated beginning from the date that infringement first began or the
first date that plaintiff made a demand for settlement. When the ultimate
damage award is large and the case protracted, prejudgment interest is not
to be considered lightly.
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Preliminary
injunction (temporary injunction)
An order from a court to prohibit or
enforce certain conduct on a temporary basis until the court can make a
determination based on all the facts and law of the case. The most common
example of an injunction in trademark law is a court order to stop using a
particular trademark. 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. The
court will also require a bond to compensate the defendant in the event
the injunction was wrongly ordered.
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Presidents’ names,
trademark protection for
The Lanham Act specifically prohibits use of a President’s name as a
trademark, if the President is alive, and has not given express written
consent. If the President is deceased, but the President’s spouse is
still alive, written consent must be obtained from the spouse before the
President’s name may be used.
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Prima facie evidence
"Prima facie" is Latin for at first sight, or first appearance.
Prima facie evidence is evidence that is sufficient on its face, and if
not rebutted or contradicted will remain so.
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Primarily geographically
descriptive 2.20
A term used in the manner of a trademark
that conveys to the consumer a geographical connotation primarily or
immediately. If the consumer is likely to believe that the underlying
goods or services in fact come from that location, and that location is in
fact the geographic origin of the underlying goods or services, then the
mark is primarily geographically descriptive, and can be registered on the
Supplemental
Register, or on the Principal
Register if the mark owner can demonstrate secondary
meaning. However, if the geographic term is not
in fact the origin of the underlying goods or services, and the owner of
the mark intended to deceive consumers with regard to geographic origin
mark, or if the mark falsely induces purchasing decisions, then the mark
may be geographically deceptive, and cannot be protected. 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. While proving intent with direct
evidence is virtually impossible, courts may infer from the circumstances
whether or not a person had bad intent. For this reason, it is probably a
good idea to stay away from terms that falsely suggest qualities of a
geographic region such as SWISS for watches not made in Switzerland, and
WISCONSIN for Cheese not made in that state. 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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Principal Register
This is the primary registry of trademarks
maintained by the U.S. Patent and Trademark
Office (USPTO). In order to qualify for registration on the Principal
Register, a trademark must be distinctive and currently in use. Trademarks
that qualify for Principal Register registration receive the all the benefits
of registration, whereas those registered
on the Supplemental
Register do not.3
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Priority date
The date that determines who will prevail in a
trademark infringement lawsuit. In the United States, the priority date is
generally the date a trademark was first used. In most other countries,
the priority date is based on whoever is first to file for a trademark
registration.
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Prior registration
A trademark registration that was filed before another. In most countries
other than the United States, the first to register a trademark as the
right to exclude others from using that mark in a similar manner. While
the United States generally grants priority based on use rather than
registration, even in the United States rights outside of one's area of
use are granted on the basis of who is first to register (nationwide
priority).
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Prior rights
Trademark rights owned by one party for a given mark prior, and which were
established prior to the time a second party gains trademark rights in
that same or a similar mark. In the U.S. the party who is the first to use
a mark in commerce has the prior right to the mark, and as such can
exclude all subsequent uses of the mark in the same geographic
territory. However, in most other countries in the world, trademark
rights are prioritized based on the first party to register a mark.
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Prior use
Use of a trademark that occurs before a confusingly
similar use of that same mark. Such use by the second user infringes
the first user's trademark if the use by both parties is in the same geographic
territory. In the United States, the first person to use a mark has
prior rights, and may exclude all subsequent users of the mark in that
territory.
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Product design
Product design consists of the variety of elements
which constitute the configuration of the product. Product configurations
are protected as long as they are distinctive,
and operate like a trademark.
However, only those elements that were designed specifically to promote
the product are protected; not the functional
features of trade dress that have a utilitarian
purpose.
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Protectability of a mark
A mark is capable of being registered by the U.S. Patent and Trademark
Office (USPTO)
and protected in the courts as long as the mark (1) is not being used by
someone else; (2) is not forbidden;
(3) is distinctive;
and (4) is being used
in commerce to allow consumers to identify one brand, and distinguish
it from others. If a mark is not distinctive, it may still be registered
on the Supplemental
Register, but it will not receive protection in the courts, nor will
it receive the many benefits of a being on the Principal
Register.
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Protest letter
A letter written to the U.S. Patent and Trademark Office (USPTO)
in order to protest the registration of a mark.
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Proof of Damages
Proving damages is a necessary prerequisite of being awarded damages, yet
doing so can be exceedingly difficult. If damages are awarded, they are
typically measured by either the plaintiff's
lost profits, or defendant's
profits. In the case of plaintiff's lost profits, proof issues are
particularly tricky since many factors may result in a decline in
plaintiff's profits at any given time. A market
survey may be useful here to demonstrate loss of reputation which can
serve as circumstantial evidence of lost profits. When the award sought is
defendant's profits, all that plaintiff must prove is the amount of
defendant's gross sales. Then the burden shifts to the defendant to prove
reasonable deductions from those sales.
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Publication of trademark
(Publication period)
Once a mark has been approved by the Trademark Examining
Attorney, the mark is published in the Official
Gazette for 3 months. The purpose of
publication is to notify existing mark owners of potentially infringing
marks, and give them an opportunity to respond with a protest
letter.
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Punitive damages 16.15
Punitive damages are those that a
court can award as a punishment for wrongdoing aside from any actual
damages suffered by the plaintiff from any such wrongdoing. Punitive
damages are specifically prohibited under the Lanham
Act. However, a court may award treble
damages, prejudgment
interest and costs in cases in which the
court deems such an award as just, and as long as the award is not made
for punitive reasons. Courts can also award reasonable attorneys' fees in
exceptional cases such as egregious intentional
infringement.
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Purchaser
In trademark law, the person who
ultimately buys a good or service associated with the use of a particular
mark. Although consumer
confusion is the test of whether or not a
trademark has been infringed, such confusion need not 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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Q
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Quality assurance, in licensing
Quality assurance is a vital part of trademark licensing, because where
there is unfettered use of a mark by another party, a trademark will lose
its ability to identify a single source. If such uncontrolled use
continues it may lead to the inadvertent abandonment
of the licensor/owner's trademark rights. Assuring quality may require
provisions drafted into the license for adequate restrictions on use, and
supervision of the quality of the underlying goods and the use of the mark
itself.
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Quality of
defendant's goods
One of the purposes of trademark law is to permit competition on the basis
of quality. Since a positive experience with a certain brand of product is
likely to yield repeat business for that company's brand, the consumer can
send a message about quality satisfaction to companies based on repeat
sales of the lack thereof. When a company infringes another company's
mark, that deprives the trademark owner of consumer feedback on the
quality issue. Furthermore, if the defendant's goods are of a lesser
quality, that results in harm to the plaintiff's reputation. Such harm, if
it can be quantified, is compensable as a measure of damages in cases in
which a court decides to award monetary relief. |
