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Question: Do I have to register my brand name to get trademark rights?
Answer: Not in the United States. Here, you do not need to register a mark to establish rights to it, though registration provides important advantages. Registering a mark means that the registrant is presumed to be the owner of the mark for goods and services specified in the application. This makes proving your rights easier in court. However, US federal law also provides rights to unregistered (?common law?) marks if they are actually used in commerce. In addition, each state provides local protection for both registered and unregistered marks under regulations governing unfair competition. Most other countries require prior registration to protect a mark. If you register a trademark with the PTO, you have rights to the mark only in the United States and its territories. If you want protection in other countries, you must register the mark in each country in which you want to protect it. However, you can file a single trademark application that covers all the European countries. Contact an attorney for help on rights and procedures in other countries.
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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?
Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same. Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion. You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection. A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection. A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection. A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection. Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection). If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit. There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.
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Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?
Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA. ACPA applies to people who:
(1) have a bad faith intent to profit from a domain name; and
(2) register, use or traffic in a domain name;
(3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered. ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name. Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services. See the module on ACPA to find out more about bad faith and legitimate defenses.
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Question: What are the benefits of federal trademark registration?
Answer: Federal registration of a trademark has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Registration Provides the Following:
1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
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Question: What about common words that are used for many purposes?
Answer: Common words and alphabetical letters can be protectable trademarks if they are used in arbitrary or unusual ways. One cannot trademark DIESEL to sell that generic type of fuel, otherwise no other diesel fuel dealer could use the word to identify the product. However, one could trademark DIESEL as a brand of ice cream. The owner of the ice cream mark can't use its rights to prevent fuel dealers from using the word on their station pumps nor can it prevent anyone else from using the word for non-trademark purposes, such as a website listing diesel fuel dealers. In general, the more a mark describes the good or service that it labels, the less strong the trademark protection it gets and the more freedom others have to use the same word for other purposes. See also this question on the strength of trademarks.
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Question: What do these registration numbers mean? or Why don?t I have any registration numbers in my C&D?
Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement.
If your opponent has registered its mark on the Patent & Trademark Office?s register, then you know that litigation about the mark could occur in federal court. If your opponent has not included any registration numbers, you still could be sued in federal court, but your opponent might simply be relying on state law (or just trying to scare you). If the C&D does not reveal any registration numbers, you should ask if the marks are registered. If the opponent has included registration numbers, look them up on the Patent & Trademark Office's Trademark Electronic Search System (TESS). You can check the status of a trademark by entering the registration number into TESS's search engine. If your opponent's trademark is labeled "LIVE," then it is likely to be protected by federal law; if TESS labels the mark "ABANDONED," then you have reason to believe that federal law will not protect it (although even abandoned marks can garner protection in some instances). Pending trademark applications are also marked "LIVE", but they do not get a "Reg. Number" unless/until the registration issues. A Community Trade Mark (CTM) offers regional trademark protection throughout the European Union. The CTM database of registered marks is OAMI-Online.
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Question: What are the limits on dilution?
Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark. A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games. Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer. The following uses of a famous mark are specifically permitted under the Act: 1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary. In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient. Many states also have antidilution laws protecting mark owners.
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Question: What is "goodwill"?
Answer: Goodwill is a business or trademark owner's image, relationship with customers and suppliers, good reputation, and expectation of repeat patronage. It is the value a trademark owner builds in a brand.
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Question: Where can I find federal trademark law?
Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered. Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.
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Question: Where can I find state trademark law?
Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and remedies. If marks are used in interstate commerce, then federal law will also apply.
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Question: What defenses are there to trademark infringement or dilution?
Answer:
Defendants in a trademark infringement or dilution claim can assert
basically two types of affirmative defense: fair use or parody.
Fair use occurs when a descriptive mark is used in
good faith for its primary, rather than secondary (trademark),
meaning, and no consumer confusion is likely to result. So, for
example, a cereal manufacturer may be able to describe its cereal as
consisting of "all bran," without infringing upon Kelloggs' rights in
the mark "All Bran." Such a use is purely descriptive, and does not
invoke the secondary meaning of the mark. Similarly, in one case, a
court held that the defendant's use of "fish fry" to describe a batter
coating for fish was fair use and did not infringe upon the plaintiff's
mark "Fish-Fri." Zatarain's, Inc. v. Oak
Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are
privileged because they use the terms only in their purely descriptive
sense.
Some courts have recognized a somewhat different, but closely-related,
fair-use defense, called nominative use. Nominative use occurs when use
of a term is necessary for purposes of identifying another producer's
product, not the user's own product. For example, in a recent case, the
newspaper USA Today ran a telephone poll, asking its readers to vote for
their favorite member of the music group New Kids on the Block. The New
Kids on the Block sued USA Today for trademark infringement. The court
held that the use of the trademark "New Kids on the Block" was a
privileged nominative use because: (1) the group was not readily
identifiable without using the mark; (2) USA Today used only so much of
the mark as reasonably necessary to identify it; and (3) there was no
suggestion of endorsement or sponsorship by the group. The basic idea
is that use of a trademark is sometimes necessary to identify and talk
about another party's products and services. When the above conditions
are met, such a use will be privileged. New Kids on the Block v. News America
Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
Finally, certain parodies of or using trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that
artistic and editorial parodies of trademarks serve a valuable critical
function, and that this critical function is entitled to some degree of
First Amendment protection. The courts have adopted different ways of
incorporating such First Amendment interests into the analysis. For
example, some courts have applied the general "likelihood of confusion"
analysis, using the First Amendment as a factor in the analysis. Other
courts have expressly balanced First Amendment considerations against
the degree of likely confusion. Still other courts have held that the
First Amendment effectively trumps trademark law, under certain
circumstances. In general, however, the courts appear to be more
sympathetic to the extent that parodies are less commercial, and less
sympathetic to the extent that parodies involve commercial use of the
mark.
So, for example, a risqu? parody of an L.L. Bean magazine advertisement (L.L. Beam's "Back to School Sex Catalog") was found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811
F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like
character named "Spa'am" in a Muppet movie was found not to violate
Hormel's rights in the trademark "Spam." Hormel Foods Corp. v. Jim Henson Prods., 73
F.3d 497 (2d Cir. 1996). On the other hand, "Gucchie Goo" diaper
bags were found not to be protected under the parody defense, Gucci Shops, Inc. v. R.H. Macy & Co., 446 F.
Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo
"Enjoy Cocaine" were found to violate the rights of Coca-Cola in the
slogan "Enjoy Coca-Cola", Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). In short -- although the courts recognize a parody defense, the precise contours of that defense are difficult to outline with any precision.
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Question: What facts should a C&D include?
Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following information:
(1) the trademark that is allegedly being infringed;
(2) the trademark, domain name or other use that is allegedly doing the infringing;
(3) the products and services on which your opponent uses the allegedly infringed mark;
(4) the date your opponent commenced such use; and
(5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office.
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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?
Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.
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