FAQ: Questions and Answers

[back to notice text] Question: What exactly are the rights a trademark owner has? Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration. There are two trademark rights: the right to use (or authorize use) and the right to register. The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods. The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement). Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets. Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product. [back to notice text] Question: What can be protected as a trademark? Answer: You can protect names (such as company names, product names) domain names if they label a product or service images symbols logos slogans or phrases colors product design product packaging (known as trade dress) [back to notice text] 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. [back to notice text] Question: How can I find out if someone has a valid trademark? Answer: It isn't easy. In the United States, a trademark owner isn't required to register the mark anywhere, so there is no single central list of them all. Unlike most other nations, registration here is optional. Many owners do register their marks with the government, however, to better notify the world of their claims. Each state has its own trademark registry for goods and services sold locally. For companies that sell in more than one state, there is a US federal registry that is accessible online through TESS. TESS is searchable by key word as well as by registration number. Because registration is not required, however, a word might still be a protected mark even if it doesn't appear in any of these locations. When a company is selecting a new brand, its trademark attorney will usually conduct a "trademark availability" search which will look in many different locations to try and ferret out competing uses of the desired name. Business directories, Internet search engines, telephone directories are other searched sources. Multi-national vendors will search trademark registries in foreign nations as well. Even the most exhaustive search will not be conclusive, however, but it will usually indicate that if there is any other commercial use, it is probably limited to a very local area. It is OK to use the same mark as another company, so long as the new use isn't likely to confuse consumers. [back to notice text] Question: Where can I find federal trademark registrations? Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks. This database may not be complete. One should check the News page to see how current the information actually is. Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered (common law marks) and foreign marks as well. A mark does not have to be registered to be valid. [back to notice text] 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. [back to notice text] Question: What are "common law" rights in a trademark? Answer: Common law rights are those that are recognized by courts as a matter of traditional equitable principles and fairness, even when there is no statute or other law that has been enacted by the legislative branch of government to cover the situation. It also arises from the leeway that judges have in interpretating the language of the written laws when the meaning is not clear. Common law is often known as "judge-made" law. Common law is learned by reading the actual decisions made by courts. [back to notice text] Question: Do I have trademark rights in my domain name? Answer: You may actually have trademark rights superior to those of your accuser. You may have such trademark rights because (a) you have a registered trademark; (b) you have a pending "intent to use" trademark application, of which the filing date predates the use of the mark by your accuser; (c) you have a pending "use based" trademark application and your date of first use predates the first use of the mark by your accuser; or (d) you have ?common law? rights to the trademark. In the U.S., the person who establishes priority in a mark gains the ultimate right to use it. According to the Lanham Act, determining who owns a mark involves establishing who first used it to identify his/her goods. That means, in the United States, you do not need to register a mark to establish rights to it. However, registering a mark means that the registrant is presumed to be the owner of the mark for the goods and services specified in the application. [back to notice text] Question: Isn't the domain name registration process "first come first served"? Answer: In .com, .org and .net, which are "open" to any kind of registrant, the policy is first-come, first-served, as long as you have registered and used the domain name in good faith or have legitimate interests in the domain name. However, you have no right to violate trademark law, or ignore your Registration Agreement, or engage in cybersquatting just because you registered the name first. Furthermore, in the newer domains such as .biz and .name, there are additional registration requirements that must be met because some of these domains are restricted. Trademark owners may also have advance registration rights. Check individual registry requirements. See list of generic top-level domain registries at http://www.internic.net/faqs/new-tlds.html. [back to notice text] Question: What are the limits of trademark rights? Answer: There are many limits, including: Fair Use There are two situations where the doctrine of fair use prevents infringement: The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold. Nominative fair use This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant?s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements: his/her product or service cannot be readily identified without pointing to the registrant?s mark he/she only uses as much of the mark as is necessary to identify the goods or services he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant Parody Use Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody. Non-commercial Use If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially. Product Comparison and News Reporting Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt. Geographic Limitations A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy?s Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy?s Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused. Non-competing or Non-confusing Use Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark. [back to notice text] Question: How do I prove that I have trademark rights in my domain name? Answer: Under (a), (b), and (c) above, if you have registered the trademark or have filed an application for the trademark that predates your accuser's use, your priority will be easy to prove. Under (d), above, to prove that you have "common law" rights in the trademark, you will need to prove when you first started to use the trademark. The following evidence can help you establish this: 1. Advertising predating your accuser's use of the mark. i. Copies of advertisements showing your use of the ii. Public relation materials showing your use of the iii.Search on Internet for review of articles mentioning your use of the mark for your product or services iv. Advertising bills specifically mentioning ads for the product or services. 2. Any receipts or other documents showing sales of the product 3. Any articles that contain a review of your product or services. 4. Any listing in trade brochures indicating use of the mark at a trade show. 5.Any other documents which show when you started making the product or offering the services. All of these will need to be dated, or you will need some way of proving that they pre-date your accusers use of the mark. [back to notice text] Question: What implication does alleged confusion have on claims of trademark infringement? Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include: proof of actual confusion strength of the established mark proximity of the goods in the marketplace similarity of the marks? sound appearance and meaning how the goods are marketed type of product and how discerning the customer is intent behind selecting the mark likelihood of expansion in the market of the goods [back to notice text] 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. [back to notice text] Question: What does it mean to take all reasonable steps to protect a trademark? Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services. If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial. If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement. Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark distinctive. [back to notice text] 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. [back to notice text] Question: Is a cease-and-desist letter confidential? Answer: There is ordinarily no expectation of privacy or confidentiality in a letter sent to an adversary. Unless you have made a specific promise of confidentiality beforehand, such as in a protective agreement or NDA, a letter demanding confidentiality doesn't bind you.

Topic maintained by Berkman Center for Internet & Society