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U
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Unfair
Competition
This is a legal cause of action based in the common
law, and which provides the backdrop to and progenitor of trademark
law. Unfair competition encompasses not only trademark infringement,
but all kinds of other unfair business practices such as false
advertising, misappropriation, and trade name
infringement.
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United States Customs
Service
The U.S. Customs Service provides services to
trademark owners by enforcing rights at the border. Customs officials can demand disclosure of the identity of any
trademark on imported goods, and under certain circumstances, seize goods
bearing infringing marks. Congress has authorized Customs
involvement in preventing the importation of counterfeit
goods, gray-market
goods and goods bearing infringing
trademarks. Such goods can be seized at the border. However, what
happens to them after seizure depends on which category they fit into.
Counterfeit goods can be destroyed or given to charity after removal of
the trademark. Infringing marks will be sent back to the place of origin,
or can enter the U.S. after removal of the mark. Or, upon consent of the U.S.
trademark owner, either counterfeit goods or goods bearing infringing marks may
enter the U.S.
In order for the Customs Bureau to take action at the
border, the U.S. trademark owner will have to record with Customs their
federally registered mark (or trade name if used for six months).
Additionally, trademark owners typically have to alert Customs of specific
counterfeiting or infringing activity. This is purely a practical matter, since
Customs has far too many trademarks to effectively monitor without such
assistance.
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U. S. Patent
and Trademark Office (USPTO)
The USPTO (a/k/a Trademark Office) is the federal agency presiding over the registration and maintenance of
patents and federal trademarks. While attorneys must be licensed to practice patent law before the USPTO, no such requirement
exists for the practicing trademark law before this body.
The USPTO now accepts
applications for trademark registration over the Internet through it's
online TEAS system. CAVEAT: Be sure you understand the finer
points to preparing an application before you attempt this on your own.
The Trademark Office is getting better about assisting non-lawyers through
the process of registration. However, you must never forget that the
Trademark Office has a competing interest at odds with the Trademark
Owner's interests. Specifically, the USPTO has an interest in
narrowly and concisely defining the boundaries of your trademark
rights. Meanwhile, the Trademark Owner has an interest in
maintaining as broad of rights as possible. This tension arises
throughout the registration process, from choosing specimens
and selecting the wording for your description
of goods, to responding to Office
Actions.
Correspondence
can be addressed to "The
Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington,
Virginia 22202" Actual Use applications should additionally be
directed to "Box NEW APP / FEE," while Intent to Use
applications should be
directed to "Box ITU / FEE." Statements alleging use
or requests for an extension of time to file a statement of use
should be directed to "Attn. AAU.
The
USPTO can be reached by phone at 1-800-786-9199. Or, visit the USPTO web site at http://www.uspto.gov .
Here are some site highlights.
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Use as
establishing priority 4.5,
4.11
In the United States, the first to use a mark establishes a prior
right in the mark, and can exclude all subsequent users of confusingly
similar marks. This is in contrast to most other countries, which grant
priority based on the first to register a mark. The different systems
present complications for those
starting their businesses in the U.S. and expanding later into other
countries. Sometimes the first to use in the U.S. is thwarted by another
company in a different country who had the foresight to register the mark
in the foreign country first. When this happens, the U.S. trademark owner may have to pay a
licensing fee just to use its U.S. mark in another country. Worse yet, the
U.S. trademark owner may be entirely prevented from using the mark in that
country.
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Use in commerce
The "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.
For
federal registration purposes, using a mark in "interstate commerce"
is required. Whereas "use in commerce" refers
merely to commercial use in trade, "interstate commerce" occurs only when the
commercial use in trade affects, either directly or indirectly, commerce
that occurs across state lines. See the interstate
commerce glossary entry for more information about the requirements of
interstate commerce.
Interstate
commerce is
required whether applying for a trademark under an actual use application,
filing an Intent
to Use application, or filing a renewal
application. With an Intent to Use application, however, you don't have to
demonstrate actual use until sometime within six months after publication
(or later if you file an extension).
State
and common law marks are protected even when there is no interstate
commerce.
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Use, proper
4.12
Proper
use of a trademark is necessary to maintain its protectable
interest. Marks that are improperly used are subject to claims of genericide
and other attacks.
To use a mark properly, the trademark owner
should: (1) always use the mark as an adjective of the underlying product
rather than as a noun, as in "people prefer CLUB HOUSE brand
steaks" rather than "people prefer CLUB HOUSE;" (2)
Italicize, underline, capitalize or boldface the mark when it appears in
text, in order to set it out from the generic word for the product (3) affix
the mark to the goods or services; (3) provide proper notice
of trademark rights.
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Use requirement
In order to qualify for protection, a trademark must be used
in commerce. For the purposes of federal registration, use in commerce
alone is insufficient, and use in interstate
commerce is required.
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Utilitarian
functionality
According to this doctrine, the functional features of a
trademark, or those features having primarily a utilitarian purpose, are
not granted trademark protection. Where the product requires the trademarked element
in order to function optimally, then
that element may not be protected by trademark law.
Some courts have
even barred trademark protection where product features such as shape, color or
design increase the aesthetically pleasing nature of the product such that
they improve the product's saleability. In recent years, however,
the courts have moved away this rigid application of aesthetic
functionality. Instead of barring features that serve as an
"important ingredient" in the saleability of a product, courts
have instead adopted a test inquiring whether the allegedly functional
design is "necessary to effective competition." If so,
then that element is deemed functional, and thus not protectable as a
trademark.
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V
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Validity of
trademark 15.3
The validity of a trademark is
judged primarily by its ability to identify for consumers the source of a
good or service and distinguish that source from other brands. However,
there are some instances where a mark serves this function perfectly well,
but is still invalid as a trademark. This occurs when the mark itself is forbidden.
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Verification
An affidavit required on many submissions to Trademark
Office in which the affiant declares the truth and accuracy of statements
made therein. In certain instances, a declaration
can be used instead of a verification.
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W
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Warehousing of
trademarks
Warehousing is the practice
of making periodic, "token use" of a mark over time, with no present intent to commercially exploit the
mark. Prior
to the 1988 revision of the Trademark Act in which Intent to Use
applications became available, warehousing was used to secure early
priority rights in a mark without actually using the mark. Currently,
warehousing is still used to circumvent the law of trademark abandonment
which states that a mark is abandoned, and thus no longer protectable,
when the owner discontinues its use with no intent to resume use in the
reasonably foreseeable future. Technically, "token use" is
insufficient use to establish trademark rights, however, circumvention of
the actual use requirement can be hard to detect.
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Willful infringement
Willful infringement occurs when the user of a mark knows or should have
known that the mark was already being used by another. While a willful
infringement defendant is liable for monetary
damages, an innocent infringer can only be forced to stop
using the mark.
Willful infringement is presumed (though can be
rebutted) when the mark that is infringed is federally registered.
Furthermore, recent court decisions suggest that the user of a mark may be
deemed to be a willful infringer if they fail to conduct a reasonable search
of existing similar trademarks prior to adopting a mark.
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Words, trademark protection
of
Words are the most common type of trademark,
called lingual marks, and receive protection as
long as they meet the requirements
of a trademark. Depending on the meaning of the word or phrase, these
marks have more or less legal
strength.
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X-Z
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Zone of natural
expansion
This doctrine can be used to
extend a trademark's prior rights into
a new geographical area, or into a new product line. The doctrine
applies when a company is
already using their trademark in one area, and the newly expanded-into
area is a "natural" extension of the prior use. In other
words, consumers must be likely to believe that use of the mark in the new
area is by the same source using that mark in the old area.
Some
courts additionally require a showing that the prior user planned to expand its operations and use of the mark into
the newly claimed area prior to the opposing party arriving in that area.
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