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Basic Trademark FAQs What is a Trademark? What is a Service
mark? Trademark law is primarily concerned with the prevention of confusion as to the origin or sponsorship of goods or services. A trademark owner may prevent others from using the same of similar trademarks in a manner that creates a likelihood of confusion, mistake or deception. Additionally, owners of “famous” trademarks may also protect their trademarks against certain activities by others that dilute or tarnish the distinctiveness of the trademark. It is important to note that a trademark
does not confer a monopoly on use of the mark. For example, a vendors
may use marks to sell the genuinely marked goods. Also, multiple
parties may use the same mark in cases where the goods of the parties
are not so similar as to cause confusion among consumers. Additionally,
Moreover, in “common law” trademark cases (where the trademark is
not a federally registered U.S. trademark) protections may be limited
geographically. Moreover certain activities may be permitted under
fair use defense. What is a Collective mark? What is
a Certification Mark? A certification mark is a device such as
a word, phrase, symbol, logo, or any combination, used or intended
to be used, in commerce, to certify geographic origin, material,
mode of manufacture, or quality of someone's goods or services,
or that the work or labor on the goods or services was performed
by members of a union or other organization. Collective marks are
owned by the entity certifying the product or service. The certifying
body licenses use of the mark to qualified businesses or entities. What Sort of Mark Will Qualify for
Trademark Protection and/or Registration? The more distinctive a mark is, the more likely that it will qualify for trademark registration and the greater protection it will receive. A distinctive mark is often referred to as a strong mark. Trademarks can be generally classified into one of five categories of distinctiveness. In order from most distinctive to least distinctive (strongest):
A fanciful mark is a mark that is invented and has no meaning other than to act as a mark or brand to identify and distinguish the goods or service on which it is used. An example of a fanciful mark is the word “EXXON” used to identify petroleum products and services. Fanciful marks receive the strongest protection. An arbitrary mark is a mark that has a common meaning but is used in an arbitrary or unfamiliar way that bears no relation to the goods or services on which the mark is used. An example of an arbitrary mark is “Apple” used to identify and distinguish computer goods. Arbitrary marks typically receive strong protection. A suggestive mark is a mark that is suggestive of the quality, characteristics, or use of the product or service on which the mark is used, but which falls short of being merely descriptive. “Suggestive” marks typically receive weak protection. The difference between a “suggestive” mark, which qualifies for protection, and a “descriptive” mark, which may not qualify for protection, is sometimes unclear. Generally, a term is “suggestive” if it requires imagination, thought, and perception to reach a conclusion as to the nature of the goods or services. In contrast, a term is “descriptive” if it allows one to reach an immediate conclusion as to the nature of the goods or services without such thought or imagination. An example of a suggestive mark is the word “Microsoft”, used to identify software products, which suggests microcomputers and software A descriptive mark is a device that describes the goods and services on which it is used. A descriptive mark does not obtain any trademark protection unless it acquires, through usage, a “secondary meaning” (i.e. a meaning apart from its common description). A term or device acquires “secondary meaning” if the term or device signifies to the public that the product or service comes from a single producer or source. Secondary meaning is usually acquired through long-term use, and effective promotion or advertising. Courts usually look at several factors in determining whether a descriptive mark has acquired secondary meaning, including the length and manner of use, the amount and manner of advertising, volumes of sales, and consumer testimonies and surveys demonstrating that the public has come to recognize the descriptive mark as a brand. An example of a merely descriptive, unprotectable term is “Fast Internet” for high-speed internet access service. An example of a descriptive term that has acquired secondary meaning and trademark protection is “International Business Machines” to describe computer and business machine products and services. Descriptive marks incorporating a surname or a geographic designation, such as “Smith's Cars” or “Italian Shoes” are also treated as merely descriptive and receive no trademark protection, unless they have acquired a “secondary meaning”. Two famous marks that are primarily surnames but which have become famous trademarks are “MacDonald’s” for restaurant services, and “Ford” for automobiles. A generic term is the common descriptive name for a product or service. Unlike descriptive marks, generic terms can never acquire “secondary meaning” and can never receive trademark protection. The reason for not permitting trademark protection for generic terms is that granting protection would effectively grant the trademark owner a monopoly, by barring competitors from using the common (generic) name needed to describe their products or services. For example, the term “Car” alone could never be used as a mark used for sales of automobiles. A term that was once fanciful or arbitrary
may become generic and lose trademark protection if the public commonly
misuses the mark to refer to a product or service. Examples of former
trademarks that became generic terms and lost their trademark protection
are Aspirin, Cellophane, and Shredded Wheat. Current trademarks
that are threatened with becoming generic are Kleenex and Xerox. Federal Registration Requirements
Federal law also prohibits the registration of the following types of marks:
What Sorts of Devices Can Serve as
a Trademark?
Common Law Trademark Protection
Common law trademark rights are limited in
several aspects. First, common law trademark rights are limited
to the geographic area in which they are used. For example, a common
law trademark owner who uses the mark exclusively in New York cannot
claim protection for mark outside of New York, meaning that another
manufacturer or seller could use the exact same mark outside of
New York. Federal Trademark Registration &
Protection Unlike common law trademark protection, federal registration provides trademark protection throughout the United States, regardless of where the mark is actually used geographically, and allows the trademark owner to bring suit in a federal court. Federal registration also provides the registrant with additional remedies such as blocking importation of infringing goods. In certain cases, federal registration allows the registrant to recover additional damages including lost profits, statutory damages, and attorney’s fees. Federal registration also provides evidence of trademark ownership and may also help prevent or deter infringement. Searching for registered and pending federal trademarks is easy – one can perform a free federal trademark search online at the USPTO website in a matter of minutes. The facility of federal trademark searches reduces the likelihood that another party interested in developing a trademark will unknowingly adopt the same or confusingly similar mark. In contrast, common law trademarks, which do not require registration and which are limited to specific geographies, are much harder to discover. Also, federally registered trademarks may bear the United States trademark registration symbol “® “ which provides notice and may deter potential infringers. Also, a mark that has been federally registered for five years acquires “incontestable” status, meaning that in prevents other parties from attacking the registrant’s right to use and to exclude other from using the mark on the basis that the mark is descriptive or there is prior use mark by another. Although federal registration is not valid
outside the United States, it may also be used as a basis for obtaining
trademark registration in foreign countries. State Trademark Registration &
Protection What do the ®, TM, SM Symbols Mean?
The TM (trademark) symbol and SM (service
mark) symbols are not governed by federal law and may be used on
marks that have not been registered with the USPTO. However, state
or local laws may govern the TM and SM symbols, so any party desiring
to use these symbols should check their state and local law before
using the symbols. The TM and SM symbols signify that a party claims
rights in the mark. How Do I Conduct Trademark Search? Searches should be as broad as possible and include searches for common law protected marks, state trademark registrations, and federal trademark registrations. Searches should not be limited to only federal registrations since common law marks and state marks may bar registration, or even give rise to cancellation, opposition or infringement action. Additionally, searches should be made for abandoned, expired or pending registrations, since such marks, although not registered, may still be in use and carry common law trademark protections. The USPTO maintains a database of registered, pending, abandoned, and expired federal trademarks. Federal trademark searches may be conducted online at http://www.uspto.gov, or by using CD Rom systems at Patent and Trademark Depository Libraries located in each state. Both of these services are free. Many states maintain online databases or offer services to facilitate state trademark searches. Searching for common law marks is more difficult. Since common law marks do not depend on registration but rather on actual use, there is no single complete database or depository of common law marks that one can search. Rather one must rely on variety of resources to search for common law marks. A good place to start searching are business directories and/or databases, phonebooks and phone databases, and periodicals in the areas in which you plan to use the mark. Also, some state websites offer a business name search services. You should also check to see if your mark is being used on the Internet. You should check Internet domain name registries services to check to see if someone is has already registered the same or a similar Internet domain name. There are also several helpful online business search services. Another option is to hire a professional
trademark search service that will search for common law marks through
a variety of means and resources. As you would expect, some professional
search services are more thorough than others – however, no professional
search service can guarantee a complete and perfect search. How Do I Apply For a Federal Trademark? The Supplemental Register is for marks that are primarily descriptive in nature and which have not acquired secondary meaning. The advantage of having a mark in the Supplemental Register is that it allows the mark's owner to use the ®. Also a descriptive mark that has been on the Supplemental Register for five years can be used to prove that the mark has acquired secondary meaning. It may also help registration in foreign countries. Registration on the Principal Register offers all the benefits of federal trademark protection. There are three types of applications for the Principal Register. The first type of application is a "use" application for applicants who are already using the mark in commerce. The second is an "intent to use" application for applicants who have a bona fide intent to use the mark in commerce. If an applicant files an intent to use application, then the applicant must show proof of use before the mark is registered. If the applicant uses the mark prior to the publication of the mark, then a Amendment Allege Use must be filed with the USPTO. The applicant must also provide a specimen or sample of how the mark is being used in commerce (e.g. label, brochure, etc). If the USPTO approves the amendment and specimen then the application will be treated as though the mark was used in commerce when the application was filed. If the trademark is published prior to actual
use and there is no opposition to the mark, than the USPTO will
issue a Notice of Allowance. The applicant then has six months from
the date of the Notice to use the mark in commerce and file a Statement
of Use with the USPTO. The applicant must also provide a specimen
or sample of how the mark is being used in commerce. After the USPTO
approves the Statement of Use and specimen the mark will be registered. The Application An applicant must provide their name, citizenship (if the applicant is an individual), state of incorporation (if the applicant is a corporation), address, the exact form of the mark, a description of the goods or service which the mark will be used on, and the international classification of the goods or service. The international classification system divides all goods and service into 42 categories - the applicant must chose the category(s) that apply. Additionally, the applicant must provide a drawing of the mark and three actual specimens on the how the mark is being used (an intent to use application does not require specimens). Finally, the applicant must pay a fee. After an application has been filed the trademark examiner will review the application and mark and determine whether or not the mark should be registered. If the examiner determines there is a problem, he or she will notify the applicant or appointed attorney. The applicant or attorney has six months to respond, otherwise the application will be considered abandoned. If the mark is approved by the examiner, the examiner will publish the mark in the USPTO's weekly Official Gazette. If no party files an "opposition" action against the mark within 30 days of the marks publication, the the USPTO will register the mark. A federal trademark owner must file an affidavit
between the fifth and sixth year of registration certifying that
the mark is being used. Moreover, a federally registered trademark
must be renewed every ten years. Opposition and Cancellations What is Trademark Infringement? The plaintiff in an infringement case has the burden of proving that: 1) he/she has a protectable trademark and 2) that the defendant is using the same of a confusingly similar mark in way that creates a likelihood of confusion, mistake or deception with consumers as to source or sponsorship. Confusion exists when consumers believe that the defendants goods or services are the same as the plaintiff’s goods, or that the defendant is somehow sponsored, associated or affiliated with the plaintiff. The following factors have been used by the courts to help determine whether a “likelihood of confusion exists”. The degree of similarity between the two marks (including visual and phonetic similarities and similarities in meaning). Simply put, marks that look the same or sound the same are more likely to create confusion. The strength of the owner’s mark (i.e. how distinctive the mark is). Fanciful and arbitrary marks receive greater protection than suggestive or descriptive marks. The similarity of the goods and services . If both marks are used to sell similar products or services, the greater the likelihood of confusion. Whether the goods and services marketed and sold in the same channels of commerce, are sold in close physical proximity to one another, and are advertised in the same media. If goods are sold in the same stores, on the same store shelves, or purchased by same class od consumers, the greater the likelihood of confusion. Evidence of actual confusion of consumers (such as testimonials, consumer surveys, etc.) The defendant’s intent in selecting the mark. A defendant who uses the mark with an intent to confuse, damage a competitor, or profit from the goodwill established by the mark, suggests a greater likelihood of confusion. Consumer sophistication or the degree of care likely to be used by consumers. If the class of consumers shopping for the product or service in question are more discerning about their purchases, then their there is less a likelihood of confusion. The likelihood of expansion of the product
line. There is a less likelihood of confusion if the mark encompasses
a large line of products. Various courts will balance various factors
listed above to make a determination of whether a defendant's mark
is likely to create confusion among consumers. What is Trademark Dilution? In a dilution action, the plaintiff/trademark owner only need show that the mark is famous. There is no need to show that there is confusion or even that the the defendant is competing against the trademark owner. The courts look at several factors to determine whether a mark is "famous" including: how long and how extensively the mark has been used and advertised, the geographic area in which the mark was used, how distinctive the mark is, the degree to which consumers recognize the mark, and whether the mark has been federally registered. In dilution actions, the the trademark owner can typically stop the defendant from using the mark. Additionally, the trademark owner may be entitled to monetary and statutory damages, if he or she can show that defendant willfully sought to "trade on the owner's reputation or to cause dilution of the mark." Some types of use are considered fair use
and are not subject to dilution claims. For example, use of the
mark for comparative advertising or for news or commentary may be
considered fair use. Trademark & Unfair Competition Issues on the Internet The rapid growth of the Internet has resulted in a multitude of trademark infringement litigation, many involving domain name disputes. Domains There several classes of domain names, each with there own unique suffix. For example the most popular types of domains are called top-level domains - these domains include the suffix ".com" (for commercial), ".net" (for Internet), and ".org" (for organization). Other domains classes include ".info" (for information), ".biz." (for business) and ."us" (for the United States), ".edu" (for education), and ".gov" (for government). It is possible to register the same name on more than one domain class. However, some domains have specific registration requirements. For example, ".gov" domain names are reserved for government entities and ".edu" are reserved for educational institutions. An individual, business, or website host
acquires a domain name by registering and paying a small fee to
a domain registry. There are numerous domain registries. The Internet
Corporation for the Assignment of Names and Numbers (ICANN)
accredits and oversees these registries.
Domain Name Disputes & Cybersquatting Domain disputes typically arise when a person acquires or uses a domain name that consists of or incorporates the identical or confusingly similar trademark of another. Cybersquatting is the practice of acquiring a domain name consisting or incorporating the trademark of another for the purpose of selling that domain to the trademark owner or person who may have a rightful property interest in the name. Businesses and individuals sometimes acquire countless domains incorporating famous marks and brands for the purpose of selling the domain back to the "rightful owner" for large sums of money. In some cases cybersquatter may register and use a domain name incorporating a competitor's identical or confusingly similar trade name or brand for the purpose of unfairly competing against them. Moreover, by registering and using a domain that incorporates the name, brand, or mark of a competitor, the wrongful registrant/user may be able to "pass off" his own goods and services as those of his competitor and take advantage of the goodwill associated with the name, brand, or mark. Consumers may assume that the wrongful registrant's website is somehow affiliated with or sponsored by the mark's rightful owner. Additionally, many consumers may be diverted to the wrongful registrant's website decreasing the traffic and effectiveness of the mark owner's own website and online business.In some cases a cybersquatter may simply "sit" on the name, depriving the trademark's owner use of the domain. Often a cybersquatter will simply "sit" on a name for the purpose of pressuring the trademark owner to pay the cybersquatter money to relinquish the domain name to the trademark holder. Examples of cybersquatting and online trademark infringement would be registration and/or use of identical or confusingly similar marks across one or more types of domains (e.g. .com, .net, .biz, .org). A confusingly similar mark can include a variation of the mark or even a misspelling of the mark. For example, in one case, "Yahooo.com", "Yahhoo.com", "Atlantayahoo.com", "Bostonyahoo.com" and "Youhoo.com" were found to infringe on Yahoo! Inc's mark. In some cases trademark infringement may
be less obvious. Many webpages on the World Wide Web contain hidden
words and phrases in the webpage's underlying code called "meta
tags". Many Internet users use search engines to look for websites
concerning a particular topic, product, or service. When an Internet
user conduct a search on certain search engines, the search engine
looks for matches between the search term entered and and the meta
tags of millions of webpages on the Internet. If there is a match,
the website will be listed in the search results, allowing the search
engine user to click on the listing to visit the website. Some individuals
insert meta tags consisting of or incorporating the marks of others
for the purpose diverting customers using search engines to their
own websites. Litigation& the Cybersquatting
Protection Act In addition to trademark and unfair competition claims, a person may be able to bring a legal claim under the Anti-Cybersquatting Protection Act. The act allows the owner of a mark to sue a person that registers, traffics, or uses a domain name that is identical or confusingly similar to the mark, with the bad faith intent to profit from that mark. It is important to note that there are many
cases where use of another's mark is permissible. For example, an
online vendor selling a genuine brand name product or service on
their website may use that brand name to describe those bona fide
products or services, so long as the website does not create confusion
or deception as to the ownership or sponsorship of the website.
Also, there are instances where use of another person's trademark
online may constitute fair use and not be actionable. For example,
a website that incorporates a famous mark for purposes of legitimate,
non commercial use, such as for news or criticism, may be permissible
so long as it does not create consumer confusion or deception. Domain Dispute Arbitration The registrant/defendant may prove a legitimate interest in the mark may be showing that the mark is being or will be used for the bona fide offering of goods or services. The registrant/defendant may also show a legitimate interest in the mark by showing that he/she is making fair use of the domain without the intent of commercial gain, misleadingly diverting consumers, or tarnishing the trademark. A trademark owner may prove bad faith by showing that: 1) the domain name registrant registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner, 2) the domain name registrant registered the name primarily to disrupt the business of a competitor, 3) the domain name registrant is using the domain to confuse and mislead consumer to his own site for commercial gain, and 4) the domain name registrant has a history registering the marks of others in order to prevent use of the marks by the trademark owner. A trademark owner that prevails in the arbitration
has the option of either canceling the domain registration or having
the domain transferred to his or her control. Unlike trademark or
unfair competition legal claims, UDRP arbitration does not allow
monetary damages. Linking and Framing Contributory Trademark Infringement For example, a business posts a paid advertisement
on an Internet search engine that is confusing similar to another
business' mark. The trademark owner notifies the search engine of
the infringing ad and the search engine does nothing. In this case
the trademark owner would have a potential claim against the search
engine for contributory infringement.
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Trademark Law & IP Litigation 
Technology Litigation is a legal newsletter. Intellectual property and technology lawyers litigate various intellectual property, technology, and media related matters including technology, licensing, trade secrets, hardware and software systems, infringement, common development, circumvention, new media, Internet, misappropriation, false advertising, domain name, class action, copyright, trademark, patent, unfair competition, and entertainment lawsuits and disputes. We practice law in federal courts across the United States, before the World Intellectual Property Organization in Geneva, Switzerland, and in jurisdictions or states where licensed to practice. |
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