1. What different marks are available?
Available marks include Trademarks, Service Marks, Collective Marks, and Certification Marks.
A trademark is a word, symbol, or device, or a combination of words, symbols, and devices, used by a seller to identify and distinguish their goods from the goods of others. The purpose of a Trademark is to identify the origin or ownership of the article or goods to which the trademark is affixed. Trademark examples include COKE, PEPSI, FORD and CHEVY.
A service mark is a device used to identify and distinguish one person's services from others’ services. A service mark is similar to a Trademark except that it applies to services rather than goods. Service Mark examples include MCDONALDS and 7-11.
A collective mark can be used to indicate membership in a group. Examples include the mark of an association such as the Elks or a trade union like the UAW. There are two types of collective marks: collective trademarks or collective service marks; and collective membership marks.
A certification mark indicates that the marked goods or services meet the standards of another. The purpose of a certification mark is to indicate that goods possess certain characteristics or meet certain standards - not to indicate the origin of the goods. There are three types of certification marks certifying that (1) the goods originate in a specific geographic region, (2) the goods meet certain standards in relation to quality, materials or mode of manufacturing, and (3) the work or labor on the product was performed by a union member or member of another organization. Examples include the UNION LABEL on clothing and the UL for Underwriters Laboratories on electrical equipment.
2. What laws protect my trademark?
A person may obtain Trademark protection under the federal common law, (Title 15, chapter 22 of the United States Code - referred to as the Lanham Act), at the state level, or a combination of the aforementioned. Although protection is available under several options, each should be studied before deciding which is best for protecting your Trademark.
3. Why should I federally register my trademark?
Trademark rights depend upon use and not registration, however, there are several advantages to obtaining federal registration. Federal registration provides the owner with certain procedural and substantive benefits. First, registration provides “prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.” - 15 U.S.C. §1057(b). Second, it provides prima facie evidence of continued use since the filing date of the application. Also, after five years of continuous use combined with the filing of an affidavit, the mark can become incontestible (precluding cancellation of the registration based on prior use or descriptiveness.
3.1 Is my mark still protected without registration?
Federal common law rights attach upon use of the Trademark in interstate commerce if the trademark is distinctive and has created a secondary meaning. A common law action for infringement is available under section 43(a) of the Lanham Act.
4. Can a business register a trademark at the state level?
Yes, most states have a state registry for Trademarks. However, the protection provided by state registration may be limited to the state where the mark is registered.
5. What are the common features of the federal and state schemes?
Both federal and state law require that a merchant actually affix the desired mark to its products and use the mark by selling the goods, before any rights can be derived. Both schemes also forbid firms from using certain types of words and symbols as marks. Furthermore, both schemes define trademark infringement as any use of another firm's marks which gives rise to a likelihood of confusion.
Protection under state registration is generally limited to the state of registration. State registration may be preferable to those operating a business within a single state. Federal registration applies to all states. State registration should be considered if the owner is making purely intrastate use. But if federal registration can be secured, then there is usually no advantage to seeking state registration.
6. What are the differences between the common law and federal registration?
Under the common law it is impossible to reserve a trademark in advance of use, however, reservation prior to use is possible under the intent-to-use provisions of the Lanham Act. Under the common law, filing is not necessary to obtain common law trademark rights, but under the Lanham Act no rights attach until an application for registration is filed and acted upon. Moreover, before federal registration issues the proposed mark will be scrutinized to determine if it is appropriate. No such pre-screening of marks takes place under the common law. Also, once a federal registration issues, it provides presumptive nation-wide rights. Common law rights, on the other hand are limited to the area in which the mark is actually being used. In sum, although the common law provides a minimum level of protection, it should not be treated as a valid alternative to federal registration.
7. Which trademarks receive the most protection?
Trademarks that are considered to be arbitrary or fanciful are considered to be the strongest marks. Marks that are considered to be suggestive, descriptive, or that have acquired a secondary meaning are less protectable and may be unregistrable.
Fanciful marks are made up marks with no dictionary definition. Kodak for film and Exxon for gasoline are fanciful because they are made up words. This is considered by some to be the strongest of Trademarks. This mark is inherently distinctive and does not require secondary meaning.
An arbitrary mark involves a common word applied in an uncommon way. Ivory for soap and Camel for cigarettes are arbitrary because they have no relationship to and do not describe the product.
7.1 How does a mark acquire secondary meaning?
“Marks that are not inherently distinctive are protected at common law and are eligible for federal registration only if they have acquired secondary meaning. Secondary meaning is present if consumers recognize the mark as an indication of origin. Secondary meaning can be proven by consumer surveys showing that most buyers recognize the mark in question as a brand name. Other evidence concerning the length and manner of use, the volume of sales (market success) and aggregate advertising expenditures is also useful.” In re Owens-Corning Fiberglass Corp., 221 U.S.P.Q. 1195 (T.T.A.B. 1984).
8. Which trademarks and service marks receive the least protection?
Marks considered to be suggestive, generic, or descriptive generally are not granted trademark protection.
A mark is suggestive if it provides some hint about the nature or attributes of the product it identifies, but interpreting it requires a degree of imagination on the part of the consumer. Coppertone for sun tan oil and Roach Motel for insect traps are suggestive marks.
Marks that merely describe the product to which they are affixed are not automatically protected. Examples include MERIT cigarettes and BEST mayonnaise. These marks are not automatically protected because (1) if a descriptive word has not become distinctive, then it is unlikely that use will lead to consumer confusion and (2) competing merchants may need to describe their products in the same words. As a result, the common law permits descriptive words to be protected, and the Lanham Act allows them to be registered, if they have achieved secondary meaning.
Generic names are the basic names by which categories of products are known. A generic term can never achieve secondary meaning and consequently can never be used as a trademark. Marks currently receiving trademark protection may become generic if the owner does not strictly control the usage of the mark. If the mark becomes the generic name for the goods or services, section 1064 of the Lanham Act provides for cancellation of the registration. Section 1064(3) states that the primary significance of the registered mark to the relevant public shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
9. What marks are not protected under federal law?
Marks not likely to receive protection under federal law include the following: descriptive marks, primarily geographically descriptive marks, generic marks, marks that are primarily merely a surname, immoral marks, deceptive marks, scandalous marks, national insignia, marks likely to cause confusion with previously registered marks or trade names.
9.1 Can a personal name be registered as a trademark?
In general, a personal name does not qualify for Trademark protection unless it has achieved secondary meaning because it would be undesirable to allow the first Smith to prevent all others of the same name from using their name to identify their goods or services. As a result, the common law courts refuse to protect a surname as a trademark unless there is proof that it has achieved secondary meaning. The Lanham Act follows the same approach, providing that a mark that is primarily merely a surname will not be registered unless it has become distinctive.
“The question of whether a mark is primarily merely a surname depends on the mark's primary significance to the purchasing public. If the term is not perceived by the public as primarily merely a surname, the term is distinctive without establishing secondary meaning. Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pats. 1955).
9.2 Can a geographic name be registered as a trademark?
Normally, a term that is primarily geographically descriptive, does not qualify for trademark protection unless secondary meaning is shown. If a merchant applies a mark that describes where a product comes from, it is geographically descriptive. Furthermore, if a merchant applies a mark that is a plausible place of origin for the type of product involved, but is actually not the product’s origin, it is primarily geographically deceptively misdescriptive and will not receive trademark protection even with a showing of secondary meaning.
10. What is the fair use defense?
The fair use defense provides a defense against a Trademark infringement action where the defendant’s use is used solely to describe his own goods. The key to the fair use defense is that the term is being used in some capacity other than a mark.
11. Do letters and numbers qualify for protection?
Letters and numbers can qualify for protection. However, if they are descriptive, proof of secondary meaning is required. When they have no descriptive meaning, they can serve as a strong trademark.
12. Can a slogan be registered as a trademark?
In general, most slogans are protected like a single word that functions as a Trademark. However, the slogan must be used in connection with the products at the point of sale. Examples of trademark protected slogans include “JUST DO IT” for Nike products and “THE REAL THING” for Coke products.
13. Do designs or graphics qualify for trademark protection?
In general, designs that identify and distinguish one merchant's products from another merchant's qualify for trademark protection. However, designs don't qualify if they are merely ornamental or if they are merely background material that merges with the word trademark and doesn't create a separate commercial impression or the design consists of ordinary geometric shapes. An example of a design that has trademark protection is the NIKE swoosh.
14. Can colors qualify for trademark protection?
Colors can qualify for Trademark protection if they are non-functional and there is a showing of secondary meaning.
15. Are scents registrable as trademarks?
Scents that have acquired secondary meaning may be registered as long as the scent is not “an inherent attribute or natural part of the product,” however the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial. Scents or fragrances of products that are noted for those features are not protectable.
16. Are shapes registrable as trademarks?
Product and container shapes can receive trademark protection as trade dress. However, they must have acquired secondary meaning and they must not be functional.
17. What is trade dress?
The trade dress of a product consists of its overall appearance in the marketplace, including container shape, labeling, colors, printing styles and the like. Not only do conventional packaged consumer goods have a trade dress, but entire commercial enterprises can have a trade dress that includes architectural features, color schemes and decor. Trade dress generally encompasses product packaging/labeling and product design.
18. What is a trademark search?
A trademark search is a review of national and international databases to determine if the proposed mark is already in use. A properly conducted trademark search will help you determine the full extent of the use of the mark prior to filing. If you find that your mark has already been registered, then you will be unable to register your mark for similar goods or services. Further, a search of only registered marks will fail to disclose trademarks receiving protection under the federal common law.
18.1 Why should I conduct a trademark search?
Conducting a trademark search helps identify potential conflicts with other marks by identifying the full extent of the use of your mark prior to filing. This helps avoid unknowing infringement of another's mark. It is important to remember that even if you unknowingly infringe upon another's mark, you may still be responsible for infringement. For example, if the mark you wish to use is already federally registered then you will not be able to register the mark for the same type of goods or services. If the mark is being used in interstate commerce than someone already has a common law claim to the mark and this could limit your rights to the extent which they have already used the mark. A proper trademark search will prevent you from wasting time and money attempting to register a mark that someone had already registered.
18.2 Who can conduct a trademark search?
Anyone can conduct a Trademark search except for United States Patent and Trademark Office employees. Professional search firms are available through the yellow pages under the headings “Trademark Search Services” or “Patent and Trademark Search Services.”
18.3 What can be searched?
A search can include but is not limited to the following: the U.S. federal Trademark register, the U.S. pending Trademark applications, trade name listings, market directories, state registrations, domain names, online databases, industry publications and reported decisions.
18.4 If I conduct my own search, what are some of the available resources?
Although it is advisable to have a professional conduct your trademark search, if you choose to conduct your own, there are several resource available to you. X-Search, the USPTO's computerized searching system, allows marks from registered, pending and abandoned application to be searched. This database is accessible at the Trademark Search Library in Arlington, VA. http://tess.uspto.gov
19. How do I obtain trademark rights?
In order to obtain Trademark rights under either the common law or a federal use application, the mark must be affixed to the goods or services and used in interstate commerce.
In the case of service marks, the mark must be displayed in the sale or advertising of those services.
For the purposes of determining if common law trade mark rights have accrued and for determining if a final federal registration will issue, a merchant must make genuine commercial sales of the goods with the trademark attached. However, a merchant can file an application for federal protection in advance of use, though it will not be granted until the requisite use is made. If federal trademark rights are at issue, the mark must eventually be used in connection with sales in interstate commerce - because Congress relied on its Commerce Clause power to regulate trademarks.
For the purpose of establishing a right to register under the Lanham Act, a minimal number of sales will suffice to satisfy the use requirement, provided they are bona fide transactions and the seller has an intention to continue using the mark. Thus, even mere “token use” is adequate to create a right to apply for registration - though registration will not be granted until the requisite use is made.
19.1. What is meant by constructive use?
The filing of any application including an intent-to-use application constitutes constructive use as long as the application matures to a registration. Constructive use helps establish a filing date. If a firm files an intent-to-use application for Trademark registration under the Lanham Act, a second firm may begin to use the mark after the application is filed but before the applicant begins its own use. To clarify this situation, the Act provides that contingent on eventual registration, the filing of the application constitutes constructive use of the mark.
20. How do I apply for federal trademark registration?
In order to obtain federal registration, a U.S. applicant may file an application for federal registration with the United States Patent and Trademark Office based upon either a good faith intent to use or actual use of the mark for goods transported or services rendered in commerce.
21. Do I need an attorney in order to apply for registration?
No, you are not required to use an attorney when filing a trademark application. However, it is advisable to obtain these services in order to successfully prosecute the application.
22. What is the difference between the principal register and the supplemental register?
The Principal Register is for marks that either do not require a showing of secondary meaning (these marks include arbitrary, fanciful and suggestive marks) or descriptive marks that have acquired secondary meaning. The Supplemental Register is for descriptive terms that may become Trademarks through the acquisition of secondary meaning. Once these marks acquire secondary meaning, they are transferred to the Supplemental Register. An applicant may not seek registration on both registers in the same application.
23 What different types of applications are available?
The typical application is the use based application. However, a mark can be reserved for future use by filing an intent to use application.
23.1. What is a use-based application?
A use based application is used for obtaining registration on either the Principal or the Supplemental Register. The use based application is accompanied by a fee, the application itself, a verified statement and a number of specimens. The application identifies the applicant's domicile and citizenship, the date of the applicant's first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark
23.2. What is an intent-to-use application?
If you want to begin the federal registration process prior to using the mark, you may do so by filing an “intent-to-use” application with the USPTO. This application must allege a bona fide intention to use the mark. This application will be reviewed similarly to an application based on use with the exception that, if no problems are found, the applicant will receive a notice of allowance. The applicant then has 6 months to submit a verified statement that he or she has begun to use the mark, or apply for a 6 month extension. The “intent to use” application only applies to the Principal Register.
24. How much does federal trademark registration cost?
The federal government's filing fee for a single federal trademark application is currently $375.00 per each class. Goods and services that fall into more than one class require a separate filing fee for each class. A listing of current fees can be accessed at the United States Patent and Trademark Office website (http://www.uspto.gov) or in 37 CFR 2.6(a)(1).
25. Who can apply for trademark registration?
The owner of the mark can apply for trademark registration. Joint applicants, joint ventures, partnership and corporations are acceptable applicants.
26. What should be included in a federal trademark application?
A federal Trademark application should include the following: the identity of the applicant; a description of the goods or services by their common commercial name; a designation of the class or classes that identify the goods or services; identify the dates of use; a specimen; a drawing of the mark; a signed declaration or affidavit.
26.1. What is meant by a specimen?
Trademark specimens include samples of materials bearing the mark appearing on or in connection with the applicant's goods. Service Mark specimens show the applicant's mark displayed in connection with the promotion or sale of services.
26.2. What qualifies as a drawing of the mark?
A drawing shows the elements of the mark seeking registration. The two types of drawings include “typed drawings” and “ink drawings.” Typed drawings are used if the drawing consists of letters, numbers, common forms of punctuation, or any combination. An ink or special form drawing is required if the mark is a two or three-dimensional design; or color; or words, letters, or numbers in a particular style of lettering; or unusual forms of punctuation.
27. What happens when my trademark application reaches the USPTO?
When your application is filed with the prescribed fee it is assigned to an examiner. If the examiner determines that the mark qualifies for federal registration, the mark is published in the Official Gazette of the Patent and Trademark Office to determine whether a third party wants to challenge the issuance of the mark. However, if the examiner determines that the mark is not entitled to registration, the applicant is given six months to either reply or amend his application. At this point, re-examination takes place. This cycle continues until either the application is granted, the examiner issues a final rejection or the applicant fails to respond within the six month period.
27.1. What happens in the initial examination?
During the initial examination, the application is examined for problems in the application itself or in the substance of the application. If the examiner finds a defect in the application, he will issue an office action describing what the problem is and occasionally, how the problem can be overcome.
27.2. What is an office action?
“If an examining attorney determines that a mark is not entitled to registration, or that amendment is required, the examining attorney will notify the applicant in a written Office action, or by a telephone conversation that is normally followed by a written action. This constitutes the examining attorney's official action.” - T.M.E.P. §705
28. What could be the basis of a rejection from the USPTO?
Rejections can be based either on the form of the application or the nature of the mark. Rejections based on form include: the description of goods is indefinite, the goods are not included in the class identified in the application, the drawing does not conform with the mark on the specimen, the identification of the applicant is incomplete, and the bona fide intent to use statement from an intent to use application is omitted. Rejections based on the nature of the mark include: primarily merely a surname, generic, merely descriptive, likely to cause confusion with a previously registered mark, and immoral, deceptive or scandalous marks.
29. When is a response to letters or actions from the examiner required?
The applicant has a period of six moths from the date of the Office Action to respond. If the applicant fails to respond within the six month period, the application will become abandoned.
30. What can I do if my application becomes abandoned?
If your application becomes abandoned, you can file a petition to revive the application as long as the delay is unintentional.
31. What is a final action?
When the examiner determines that further argument will not be useful, the examiner will issue a final action. A final action on cannot be issued in the first office action. When a final action is issued, the applicant can comply with the examiner's request, file an appeal with the Trademark Trial and Appeal Board or abandon the application.
32. Can a final action/rejection be reviewed?
Yes, in some cases it can be reviewed. After a final rejection, the applicant can comply with the examiner's request, abandon the application or take up an appeal before the Trademark Trial and Appeal Board. Appealable issues include those based on substance and not procedure. Procedural issues should be taken up with the Director through a petition.
33. What happens if a third party objects to my federal registration or application?
Inter partes disputes (between two parties) that arise over the right to register a Trademark are usually waged before the Trademark Trial and Appeal Board in the USPTO. These disputes consist of opposition proceedings, concurrent use proceedings, cancellation proceedings and interference proceedings.
33.1. What is an opposition proceeding?
If any party feels that it will be injured by the applicant's registration, it may file an opposition after learning of the pending application in the Official Gazette. The opposition must specify the reasons why the applicant is not entitled to federal registration. The merits of the opposition will be determined in an inter partes (two party) hearing before the Trademark Trials and Appeals Board with appellate review by the Federal Circuit. The opposition must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board.
33.2. What is a concurrent use proceeding?
An applicant for registration does not have to claim an exclusive right in the mark. The applicant can claim a right that is concurrent with another user's right. This may occur where the two users have obtained common law protection in different parts of the country. Concurrent registration is authorized if it appears that confusion, mistake, or deception is not likely to result from the continued use by more than one person.
33.3. What is a cancellation proceeding?
After federal registration has been granted, any party who believes that it is being or will be damaged by continued registration of the mark can file a petition to have the registration canceled. During the first five years after registration, any grounds that would have initially barred registration may be asserted as a basis for cancellation. After five years, the grounds for cancellation are reduced.
33.4. What is an interference proceeding?
An interference proceeding is generally used when there is a conflict involving priority of use. The interference is declared by the Commissioner of Patents and Trademarks. These proceedings are rarely done.
34. How do I maintain my federal trademark registration?
In general, each registration lasts for a period of 10 years. During this 10 year period, continued use of your Trademark is required. However, evidence of continued use only has to be supplied twice, once during the fifth year after registration issues and every ten years after the registration issues. Both can be accomplished with a section 8 affidavit of use. Maintenance also requires taking certain steps to prevent your mark from becoming a generic term. You should take advantage of state and federal antidilution statutes to maintain your mark. After 5 years, it is advisable to file a section 15 affidavit of incontestability.
35. What is a Section 8 Affidavit?
The section 8 affidavit is filed during the fifth year after issuance of federal registration under either the Principal or Supplemental Registers. The section 8 affidavit must include a statement of use in commerce of some of the goods described in the registration and the submission of specimens showing evidence of the use. Failure to file the section 8 affidavit between the fifth and sixth year will result in the automatic cancellation of your registration. Also, there is a six month grace period for filing the section 8 affidavit.
36. What are the requirements for federal trademark registration renewal?
For applications that were pending on and registered after November 16, 1989 registration must be renewed every ten years after the date of registration. The renewal application includes: an identification of the registration, a recitation of ownership, a Section 8 Affidavit, a specimen showing current use in commerce for each class, and the required fee.
37. How can I prevent my trademark from becoming a generic term?
One of the main goals in using your Trademark is to prevent it from becoming generic. When your trademark becomes generic your registration will probably be cancelled. However, there are several steps that you can take to maintain the status of your Trademark. First, you should set the Trademark apart from the surrounding text. There are several ways to accomplish this including: the use of large type, quotation marks or the word “brand” following the mark. Second, the use of the symbols TM, SM or ® indicates that the mark has been claimed as a trademark or service mark. Third, the use of a generic term with the mark could help to teach the consumer that the mark is not a generic term. Finally, a trademark should not be used in the plural or the possessive.
38. What happens if my trademark is not properly used?
A minimal amount of improper use will probably not lead to the loss of the marks exclusivity. However, if improper use is widespread, the mark may lose its exclusive association and become free for all to use.
39. What is trademark dilution?
The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act to include a cause of action for dilution. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. As a result, a dilution cause of action is available when the famous mark is used on different goods. All that is required is that use of a “famous” mark by a third party causes the dilution of the “distinctive quality” of the mark. Many states also have antidilution statutes. The remedy for dilution is usually an injunction. However, in extreme cases involving “willful intent,” attorney fees and monetary damages may be available.
40. What is a Section 15 Affidavit of Incontestability?
Five years after a mark has been registered, the registrant may apply to have the mark declared “incontestible” by filing a section 15 affidavit. Possession of an incontestible mark is conclusive evidence of the registrant's exclusive right to use that mark on the type of goods in question, subject only to certain defenses that are listed in section 33(b) of the Lanham Act. Thus, incontestability has two practical implications. First, it immunizes the registrant from certain claims that the mark is invalid when a third party seeks to have the mark canceled. Second, when the holder of federal registration files suit for infringement, incontestability will also preclude the infringing defendant from asserting defects in the mark as defenses. The most important challenges to the mark cut off by incontestability are (1) that the registrant is not the senior user of the mark and (2) that the mark itself is merely descriptive and lacks secondary meaning.
41. Can I amend my federal trademark registration?
Yes, you can amend your registered Trademark by filing an amended application along with the proper fees. However, amendment is not permitted if the character of the mark is materially altered.
41.1. How can a mistake in the registration be corrected?
If the mistake was made by the USPTO, a new certificate of registration will be issued free of charge. If you made the mistake, correcting the mistake requires the proper fee and a showing that the mistake was made unintentionally.
42. Can I obtain international protection for my trademark?
Yes, international trademark protection is available under two schemes. First, an individual trademark application can be filed in each individual country where trademark protection is desired. Second, as of November 2, 2003 an applicant may file under the Madrid Protocol is possible.
42.1. What is the Madrid Protocol?
The Madrid Protocol provides a Trademark owner with the opportunity to protect his mark in several member countries by filing one application with a single office, in one language with one currency. Filing under Madrid has the same effect as filing an application for registration of the mark in each individual country designated by the applicant. There are 57 member countries. The Madrid Protocol Implementation Act was enacted on November 2, 2002 and became effective on November 2, 2003.
42.2. Who can file under the Madrid Protocol?
In order to file an application under the Madrid Protocol, the person filing the application must be a national, be domiciled in, or have a real and effective business or commercial establishment in one of the member countries to the agreement.
43. When are trademark rights enforceable?
Trademark rights are usually enforceable when someone infringes on your trademark.
43.1. When does trademark infringement occur?
Generally, a mark is infringed when another party uses the mark in such a capacity as to cause confusion as to the source of the goods or services. Multiple parties can use the same mark where there is no likelihood of confusion involving the source of the goods. Statutory infringement is available under sections 32 & 43(a) of the Lanham Act. Both Sections apply the “likelihood of confusion” test to determine whether trademark infringement has occurred.
43.2. What is the “likelihood of confusion” standard?
This test is the central part of a trademark infringement inquiry.
Some relevant factors under the likelihood of confusion standard include:
(1) the Strength of the Mark - The more distinctive the mark, the more likely it will be protected. A strong mark is inherently distinctive, i.e arbitrary and fanciful. Descriptive marks need a showing of secondary meaning; the protection afforded then would be commensurate with the degree of consumer association. Suggestive marks are weaker and will receive less protection.
(2) the Proximity of the Goods - The more similar the parties respective goods or services, the less similar the marks need to be.
(3) the Similarity of the Marks themselves under the sight, sound and meaning test. Under the Sound prong, marks consisting of words that sound alike when pronounced will be deemed capable of causing confusion even if they are not identical. The court may count syllables, look at where the accents fall, and conduct other grammatical tests. Under the sight prong, if the overall visual impression created by the two marks is similar, they will be deemed capable of creating confusion, and thus infringing. Under the meaning prong if two marks convey the same idea or meaning to consumers, they will be held to infringe even if they do not sound alike.
(4) Consumer Sophistication - Certain product categories involve more knowledgeable consumers than others. Where it can be assumed that the consumers will devote time and care to selecting the goods, a highly similar mark will be required. Where an ordinary consumer is concerned, a lesser degree of similarity will be required.
(5) Defendant's Intent - Intent is not required for infringement. However, if the defendant intended to confuse customers, it may give rise to an inference that he succeeded. If the intent was to parody a mark, this is OK, as the benefit comes from the humorous association and not consumer confusion.
(6) Consumer Surveys & Actual Confusion - Surveys demonstrating that there is a potential for confusion are accepting by courts; likewise, proof of actual confusion is also accepted - the more the better. See AMF v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
43.3. What remedies are available for an infringement cause of action?
The types of relief available include injunctive relief, monetary relief, cancellation of trademark registration, barring of importation from abroad, and possible criminal penalties. The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark was federally registered, attorneys fees may be available to a successful plaintiff. Monetary damages are also available under the Lanham Act but are rarely awarded.
43.4. What type of injunction may be granted?
This is usually the traditional relief in a Trademark infringement action. A court may grant injunctive relief in several forms including: prohibition of the infringers infringing use, a recall of any infringing items or a disclaimer of association with the plaintiff in order to minimize confusion.
43.5. What type of monetary relief may be granted?
Courts award monetary relief much less frequently than injunctive relief. Monetary relief may include profits, damages and costs. In especially egregious cases, the Lanham Act provides for treble damages or a tripling of the actual damages.
44. Can I assign my trademark rights to a third party?
Yes, the owner of a valid Trademark or a Trademark application can transfer the ownership of that mark to a third party. The assignee (purchase of the rights) succeeds to all of the rights of the assignor (seller of the Trademark rights.) The owner of the mark can also transfer partial ownership in the mark.
44.1. Can I assign just a portion of my trademark rights?
Partial assignments are allowed. A person who jointly owns a mark may transfer his ownership of the mark to another person. Also, a party who is the sole owner of a mark may transfer a portion of his or her interest in the mark to another party.
- 44.2. What different methods can I use to assign my rights?
The two assignment methods are a written contract or an oral contract. Although there are two options, a written contract is preferable.
44.3. What is included in a valid assignment?
A valid assignment is executed in writing and includes a transfer of the goodwill of the business. An assignment without goodwill is invalid.
44.4. How do I transfer goodwill?
Reciting the transfer of goodwill in the assignment document is generally sufficient, however, sometimes more is required. In general if the assignee has obtained what is necessary to continue the assignor's business, than a valid transfer of goodwill has occurred. The transfer of tangible assets and the substantial similarity of the assignee's and assignor's goods are both evidence of a valid transfer of goodwill.
44.5. What are the consequences of an invalid assignment?
If the assignment is invalid, the assignee cannot rely on the assignor's rights. This is referred to as a naked assignment.
44.6. Should I record my assignment with the USPTO?
Although recording with the USPTO is not required, it is highly recommended. The advantages involved in recording include: the recorded assignment is valid against a subsequent purchaser and the assignee can take all necessary action to maintain the registration.
45. Can I license my trademark rights?
Yes, as the licensor (the owner of the mark) you can permit the licensee to use the mark under certain specified conditions. These specified conditions are usually stated either in an oral contract or a written contract. In order to maintain your Trademark it is important to maintain some control over the nature and quality of goods or services sold under the Trademark. Failure to do so could result in the abandonment of your Trademark.
45.1. How can I protect my trademark when it has been licensed to a third party?
Your Trademark can be protected by a written contract, an oral contract or in some cases no contract. Written contracts are usually the best because their existence is easiest to prove in court.
45.2. How would I use a written contract?
The written contract or Trademark Licensing Agreement can contain provisions which give the licensor control over the licensees use of the Trademark. Typical provisions include: a right to inspect the licensee's premises, approval of licensees packaging, advertising and manner of trademark use, licensees provision of samples to the licensor, and the licensees agreement to quality standard established by the licensor.
45.3. Can I control third party use without a contract?
Yes, the test courts will follow is whether quality control was actually exercised. However, a written contract is usually preferable.
45.4. What are the consequences of failing to control third party use?
Failure to control the use of your mark by a licensee could result in abandonment of the mark.
46. What is the difference between the TM, SM, and ® symbols?
The TM symbol is used by parties claiming rights to particular trademarks. The trademark symbol may be used next to their marks at any time - even prior to filing a trademark application. The SM symbol may be used by a party claiming such right to a service mark. The party may similarly use either the TM or the SM symbol. Registration is not necessary to use these particular symbols. The ® symbol indicates that the trademark is a valid U.S. federally registered trademark. In general, it is not permissible to use the ® symbol in the U.S. unless you have a valid U.S. federally registered trademark. In addition, merely filing a trademark application is not enough, one must wait until the trademark successfully completes the entire registration process before using the ® symbol.
