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The Committee on Trademarks and Unfair Competition
Table of Contents
I. Trademark Rights
I. TRADEMARK RIGHTS
A. What is a Trademark?
1. What is capable of trademark registration?
The most common and straightforward protection extends to words. For example, PALMOLIVE is a famous trademark. Because the statute talks about a "combination" of any of the elements, a series of words turned into a slogan (e.g., SOFTENS HANDS WHILE YOU DO DISHES) can also be protected as a trademark. Of course, the slogan must function as a trademark, which usually means that it must be on the goods themselves rather than just in advertising.
Even a single letter or a group of letters (or numbers) that do not make up a word can be protected as a trademark. For example, V-8 has been protected on vegetable juice and "S" has been protected alone for Singer sewing machines. Phone numbers have been protected as trademarks-in one case, a retail mattress dealer with a 628-8736 phone number and the slogan "DIAL-A-MATTRESS and drop the last 'S' for savings" was able to obtain an injunction against the use of the slogan and telephone number 1-800-MATTRESS.
The key is that the words, letters, numbers or slogans should not be descriptive of the products or services but should serve as an identifier of the source of the products or services.
2. Can symbols or designs function as a trademark?
3. Can trade dress (that is, the design, appearance and/or shape
of a product or its packaging) function as a trademark?
Similarly, distinctive elements that are used to identify the source of a service may be protected as trade dress: An example of service mark trade dress might be the distinctive decor of a restaurant chain. (see I.E.1 for more on service marks)
4. Can colors function as a trademark?
5. Can one's name function as a trademark?
6. Can non-visual marks such as sounds and smells function as a trademark?
7. Are all trademarks equal in strength?
8. What is the difference between inherently distinctive
and non-distinctive marks?
9. Can a mark "acquire distinctiveness"?
Nevertheless, it is often possible for such designations to acquire distinctiveness and become source indicators through efforts such as extensive use of the mark in commerce, or widespread advertising and promotion. Thus, while the wording EVEREADY at one time may have been perceived as a laudatory description of the readiness of batteries, this wording is now readily recognized by consumers as a trademark.
B. What is Secondary Meaning?
Under the doctrine of fair use, even where a word or phrase has acquired secondary meaning, it can retain its original primary meaning in English, if any. Such marks can still be used freely when they are used in their original sense and not in a misleading fashion. Such use is called "fair use."
E. Are There Different Kinds of Marks?
1. What is the difference between a trademark and a service mark?
2. What is a certification mark?
3. What is a collective mark?
F. Trademark Rights at Federal, State, Common Law
2. Can trademark rights be enforced if the mark has not been registered?
What are the benefits of having a Federal registration? There are two types of federal registrations in the United States: Principal Register registrations and registrations on the Supplemental Register. (See Questions II.B.2 and II.B.3 below). Both Principal and Supplemental Registrations confer upon the registrant valuable procedural and remedial benefits. Among these benefits are:
The filing of state trademark or service mark registration is a relatively simple and inexpensive matter. Moreover, a state trademark registration can often be obtained even in the case of a relatively non-distinctive mark. Although state registrations give minimal protection, the comparative ease and availability they afford gives rise to a preference of overall efficiency and economy. In addition state trademark registrations are appropriate for marks that are only used within a given state, because use in interstate commerce is a prerequisite of federal registration. However, as a result of today's Internet revolution, interstate commerce may be practically automatic for companies that advertise their goods and services on the Internet.
G. What do trademark, copyright, and patent protect?
II. FILING AND REGISTRATION PROCESS
2. How is a trademark availability search performed?
3. What is a trademark search report and how do you evaluate it?
A more comprehensive search, usually conducted by an independent search firm, will attempt to locate marks that, while not identical to the proposed mark, may be considered confusingly similar to the proposed mark. For example, a comprehensive search will attempt to locate marks that are synonyms for the terms in the proposed mark, or alternate spellings of the mark. A comprehensive search will also attempt to locate marks in related fields. For example, the proposed mark my be the name for a record label that might be blocked by the name of a band or a music publishing company using the same or a similar name. The use of the mark as name for a record label might not, however, be blocked by the use of the same name for an automobile parts distributor or a furniture manufacturer. See Question IV.B below on likelihood of confusion. A comprehensive search would also include a wider variety of sources than the preliminary search described above. Trademark search firms maintain and have access to databases that may reveal unregistered marks that exist at common law. Such databases include periodicals, trade directories, company name registration databases and other sources.
B. Issues for Federal Registration/Prosecution
2. What is the Principal Register?
3. What is the Supplemental Register?
4. What are the statutory grounds for the rejection of a trademark
1. Do trademark registrations need to be renewed?
Yes. Trademark registrations that issued or were renewed on or after November 16, 1989 must be renewed every ten years. The renewal application is due on the tenth anniversary of registration. The initial renewal period for registrations that issued before November 16, 1989 is twenty years, with subsequent renewals due every ten years.
2. Are there any other filings that need to be made after registrations?
3. What is a Declaration of Incontestability and when may it be filed?
2. What are the ™ and SM symbols and how may they be used?
B. Maintenance of Trademark Rights
Under the Lanham Act, a mark will be deemed abandoned when the trademark owner has discontinued use of the mark in connection with the particular good or service and has no intent to resume use within the reasonably foreseeable future. In general, nonuse for three consecutive years creates a presumption of abandonment. A trivial or token interim use will not be sufficient to avoid a finding of abandonment. Even longer periods of nonuse will not create a presumption of abandonment under some circumstances. One is when the goodwill in the mark continues after the nonuse (i.e., where the public still associates the mark with the owner and its product or service). Another is when there is an explanation for the nonuse (i.e., the owner is in the process of re-positioning the product or its market). Finally, abandonment will also not be presumed if nonuse is caused by factors beyond the owner's control (i.e., war, labor strike, import problems, or some natural catastrophe). If a mark truly has been abandoned through nonuse, a subsequent resumption of use will not revive it. In such a case, the trademark owner must start to build trademark rights anew.
2. What if a mark has not been used in a few years or has been used
3. What happens to a mark when the public adopts it as a generic
name for a product or service?
To avoid this result, trademark owners should be careful to use the mark as a brand name rather than descriptively. A trademark can be lost if it becomes generic (i.e., when it is used to describe a product or service rather than to identify its source and quality). A trademark owner may avoid widespread generic use by: 1) using it as an adjective as opposed to a noun (i.e., "KLEENEX tissue" not "a kleenex"); 2) capitalizing the trademark or otherwise setting it apart from surrounding text; or 3) using it in conjunction with the term "brand" (i.e., "SCOTCH brand tape"). All of these measures will have the effect of preserving the trademark's value as a "brand name" and will discourage its use as a generic term.
4. What is a trademark or service mark owner's responsibility when
licensing a mark for use by third parties?
Quality control by the licensor can take various forms. The following are forms of general standard provisions that impose some responsibility on the owner to maintain quality control: (1) the owner shall have the right to control the quality of the licensee's products; (2) written specific guidelines or standards must be followed by the licensee; (3) the owner shall have the right to inspect the licensee's premises and production processes; (4) the licensee shall provide product samples to the licensor according to a specific schedule; and (5) the owner shall have the right to disapprove packaging and advertising by the licensee.
5. What are some of a trademark or service mark owner's other responsibilities
to preserve its rights in its mark?
C. What if a mark is materially altered?
IV. CONFLICTS WITH THIRD PARTIES
2. Can a member of the public or a competitor challenge a trademark
registration after it has issued?
See Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert denied, 368 U.S. 820 (1961).The court will balance these factors, and a trademark plaintiff need not prevail on each of them to succeed on its claim. For example, actual confusion is not required. Malicious intent is not required-a defendant who acts in complete good faith may still be prevented from using its own mark. Generally, and as one might expect, courts use common sense in balancing the relevant factors.
2. What is the difference between trademark infringement and unfair
New York, like many states, has a body of legislation aimed at "deceptive business practices." Often, causes of action for unfair competition under state common law are accompanied by such claims. See N.Y.B.C.L. Sec. 349 (which precedent has construed as being applicable to competitors, so long as there is an element of injury to the public at large). This "amorphous" cause of action may be used for claims sounding in false designation of origin, false advertising, etc. and has a six-year statue of limitations compared with the three-year period available for claims for common law unfair competition.
3. What is trademark dilution?
a) What is dilution by blurring?
b) What is dilution by tarnishment?
c) What are the statutory defenses to a federal dilution claim?
4. What is counterfeiting?
V. TRADEMARKS AND THE INTERNET
The foregoing is not necessarily true outside of the United States. Trademark rights are territorial, and the trademark laws of foreign countries vary widely. In fact, a number of countries will accord trademark protection only to a mark that has been registered in their country. Therefore, if the domain name owner seriously intends to effectively deter or prosecute infringers abroad, foreign trademark registrations may have to be sought.
B. May Registration of a Domain Name Subject the
Domain Name Registrant to Liability for Trademark Infringement?
Like any other user of a mark, a domain name registrant should consider having a thorough clearance of the domain name performed before embarking upon an extensive marketing campaign using the name or other activity that might subject the domain registrant to liabiltiy. Due to the international nature of the internet, the domain name registrant may be well advised to consider performing availability searches in foreign countries where the website is expected to be frequently accessed.
C. What is Cybersquatting?
1. Is there a law that regulates cybersquatting?
2. What are some of the benefits conferred by this Act?
• Beyond the damages which are conventionally available in a trademark
infringement action, the Act gives trademark owners the opportunity to
elect to recover statutory damages between $1000 and $100,000 per domain
D. Can Trademark Owners Complain to the Domain Name
Registrar if they Believe a Domain Name was Improperly Registered?
A. Government Resources and Information
B. International Trademark Association
The Committee on Trademarks and Unfair Competition