What is a Trademark?

A trademark is any brand name, logo, slogan, or other item that relates to the source of goods and services and the quality of those goods and services.

Trademark law is a form of consumer protection.

One company puts its mark on its goods or services in order to show its quality of its goods or services and in order to show the source of those goods or services.

Trademark law

What is a Fanciful Trademark?

A fanciful is the strongest trademark. The mark has no relation to the product. “Kodak” is the best example because the word was created for use as a trademark.

What is an Arbitrary Trademark?

An arbitrary trademark is a mark that is a word (or phrase) that already exists, so it is chosen for no particular reason. Think of “McDonald’s” in fast food or “Target” in retail stores.

What is a Suggestive Trademark?

A suggestive trademark suggests a quality of the product. Think of “Burger King” in this category. The mark makes you think of those burgers as being the king – or the best – in the burger industry.

Branding and Trademark

What is a Descriptive Trademark?

A descriptive mark describes the product. This is a weak trademark that requires “secondary meaning” in order to gain trademark protection. Usually, it must be proven that the public can identify the product comes from one producer.

What is an Example of a Descriptive Trademark?

A descriptive trademark is a mark that describes the product.  For example, FOOD PSYCH describes the topics involved in a podcast featuring lectures and classes on health and nutrition.  FOOD describes the nutrition.  PSYCH describes the health aspect of the mark.

How can Someone Register a Descriptive Trademark?

This requires showing the US Patent and Trademark Office that the mark has “secondary meaning” in order to gain trademark protection.

In the FOOD PSYCH example, the applicant showed that there were over 500,000 downloads of the podcast, showing that consumers related FOOD PSYCH to the applicant’s trademark, and not for the goods/services that the trademark represents.

What is a Generic Trademark?

Generic “marks” are common, every-day terms. These terms include apple, computer, mouse, desk, chair, pencil.

Trademarks, however, can become generic.

Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) “The crux of this controversy, however, lies not in the use of the word to these buyers, but to the general consuming public, composed of all sorts of buyers from those somewhat acquainted with pharmaceutical terms to those who knew nothing of them.”

Would Xerox now be considered a generic trademark (or Band-Aid)?

Probably not.  Do you remember the ad campaign that said “You can’t xerox a xerox on a xerox”? 

Many trademark experts believe that Xerox probably came to the edge of genericization, but was able to retrieve its trademark rights by reminding people how to properly use its trademark in a highly popular advertising campaign. (I.e. not as a verb.)

Examples of generic terms include “Ale House” for an establishment that sells food and beer, see Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140–41 (4th Cir.2000), “Cellular Sales” for the sale of cellular telephones, see Cellular Sales, Inc. v. Mackay, 942 F.2d 483, 486 (8th Cir.1991), “Light Beer” for beer that is light in body and taste, see Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 80 (7th Cir.1977), “Screenwipe” for a cloth used for cleaning computer and television screens, see In re Gould Paper Corp., 834 F.2d 1017, 1018–19 (Fed.Cir.1987), and “The Arabic Channel” for an Arabic language television channel. See GMT Prods., 816 F.Supp. at 207; see also 2 McCarthy § 12:18.

Generic terms are never accorded trademark status, because to do so would grant a first-user a monopoly over common descriptive words that merely identify goods and services, depriving competitors of the opportunity to refer to their own goods and services as what they are. See PaperCutter, Inc. v. Fay’s Drug Co., 900 F.2d 558, 562 (2d Cir.1990) (“[C]onventional wisdom holds that generic terms … are so useful to businesses selling the same product that no amount of money poured into promoting customers’ association of generic terms with a particular source can justify ‘depriving competing manufacturers of the product of the right to call an article by its name.’ ”) (quoting Abercrombie & Fitch, 537 F.2d at 9); CES Publ’g Corp. v. St. Regis Publ’ns, 531 F.2d 11, 13 (2d Cir.1975). “This rule [also] protects the interest of the consuming public in understanding the nature of goods offered for sale….” Otokoyama Co. Ltd. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir.1999).

How does a Trademark Become Generic?

A trademark is so famous that it just becomes a part of the lexicon.  The trademark may turn into a verb.  Do you remember the ad campaign that said “You can’t xerox a xerox on a xerox”?  This campaign was created in order to save a trademark from becoming generic. 

Procedurally, the trademark owner would file a lawsuit claiming that a defendant infringed the trademark by using it in an advertisement or in another improper use.  During the lawsuit, the defendant claims that the use is not infringement because the term is generic and would have to show that the mark has become generic.

The test for genericness is based upon “the primary significance of the [ ] mark to the relevant public.” Trademark Clarification Act of 1984, Pub.L. No. 98–620 (codified at 15 U.S.C. § 1064). The “primary significance test” asks whether the consuming public understands and commonly uses the term to denote a particular source or origin of a product, even if that source is unknown (in which case the mark is descriptive), as opposed to the nature or class of the product (in which case the mark is generic). See Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 113, 59 S.Ct. 109, 83 L.Ed. 73 (1938) (under the “primary significance test,” a plaintiff seeking to establish a valid trademark “must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.”); Genesee Brewing, 124 F.3d at 144; Horizon Mills, 161 F.Supp.2d at 212–13.

A mark’s common usage and understanding by the relevant public may be discerned from “any competent source,” In re Merrill Lynch, 828 F.2d 1567, 1570 (Fed.Cir.1987), including consumer surveys, testimony of consumers or trade professionals, dictionary definitions, uncontested usage of the mark by competitors to describe their products, generic usage in newspaper and magazine articles, and generic usage by the proponent of the trademark. See id.; Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 810–11 (2d Cir.1999); Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101 (2d Cir.1989); Brandwynne, 74 F.Supp.2d at 381–82. No single factor is dispositive. See Horizon Mills, 161 F.Supp.2d at 214 (citing Murphy Door Bed, 874 F.2d at 101).

Why do I need to Register a Trademark?

A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered.

For example, without the registration, a plaintiff is unable to claim trademark infringement under the Lanham Act. Therefore, the ability to enforce in Federal Courts is paramount to the trademark registration.

Also, a common-law (unregistered) trademark is not vetted or reviewed and there could be geographic or goods/services issues.

What Trademarks can Someone Register?

Any “trademark by which the goods of the applicant may be distinguished from the goods of others” may be registered. 15 U.S.C. §1052.

In other words, if your trademark or your goods or services are different from others in the register at the United States Patent and Trademark Office, your trademark can be registered.

A pair of glasses rests on a trademark application

When you Register a Trademark for your Business Name, are all Associated Logos Automatically Included? Or Do you Have to Register Logos Separately?

If you are filing a plain-text trademark application in the United States Patent and Trademark Office, you should understand that the only protection is for the text of the trademark. Designs and logos are not protected under a plain-text filing. However, with a plain-text filing, the trademark owner can take the text and design it in any way the trademark owner wants.

Can Trademark Law Protect Quotes, Taglines, Catchphrases, Marketing Phrases, and Business Slogans?

That is the traditional purview of trademark law. But trademark law has even protected the shape of products, colors, and sometimes sounds. All quotes, tag lines, catchphrases, marketing phrases, and business slogans, shapes, colors, and sounds must be related to products, goods, or the marketing of services.

If a business owner had a company name for a few years and hadn’t registered it as a trademark, can someone else register the name for their claim or use? What can the owner do if this occurs?

Trademark registration is a first-to-register system. In other words, a trademark owner must register first in order to assert federally protected trademark rights. If a trademark owner is second to file with the USPTO, but has been using a similar trademark for longer than a junior trademark owner, then the senior owner may be able to file to cancel another mark in the Trademark Trial and Appeal Board.

Going to the USPTO and filing your trademark as early as possible is always the best remedy for this problem. An illustration of branding, vision, mission and values

What are Common Law Rights? What Protections do They Offer?

Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product’s source.

The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law.

Common law trademark rights are limited to the geographic area in which the mark is used. Thus, if a coffee blend is sold under the name BIG BANG in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement.

However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company’s common law rights to the mark would prevent them from entering the California market.

Once a Trademark is Approved, does That Mean you can use the Letters “TM” in all Logos/Branding? What are the Guidelines?

The TM symbol is meant to provide notice to the public that a trademark owner claims a trademark right in the term or design. To clarify, this right can be associated with a trademark claim under a common law right, a state registration, or a federal registration. Therefore, you are not required to have completed a state or federal filing to use the TM symbol.

A trademark that is federally registered is often identified with the “R” (within a circle) symbol, or registered mark: ®. The R-in-a-circle symbol can only be used in connection with an active federally registered trademark.

What is a Trademark License Agreement?

A trademark license agreement is the legal document (contract) that governs the relationship between the party producing/selling products that bear the trademark owner’s trademarks/logos (licensee) and the party that owns the trademark (licensor). A trademark license must be in place before any licensed products are manufactured; sold or marketed.

What is a Trademark Licensee?

A licensee is a person or an organization that has been granted the legal right by a trademark owner (who is called a licensor), under a trademark license agreement, to use the trademark owner’s trademarks.

Why Should a Trademark Owner Care who Uses the Trademark Owner’s Trademarks?

The trademark owner must control and monitor the use of its trademarks or risk losing the right to use them as unique identifiers of Northern Arizona University. the trademark owner has a compelling interest in controlling the use of its trademarks for other reasons as well. These include, but are not limited to:

1) Protecting the trademark owner’s name and ensuring that its use, across all units of the trademark owner, is compatible with the trademark owner’s goodwill and reputation;

2) Ensuring that any products or services bearing the trademark owner’s trademarks are of high quality and are used tastefully and only in connection with products and services with which the trademark owner has chosen to be identified;

3) Preventing misleading or inaccurate portrayals of the trademark owner’s relationship to others or to activities, and preventing others from taking advantage of the goodwill the owner has developed and which is symbolized by its trademarks;

4) Ensuring products and services bearing the trademark owner’s trademarks protect the integrity and reputation of the institution, maintain and build upon the goodwill of the owner, and promote support for and increase awareness of the owner, its mission and goals.

What Provisions Should be Included in a Trademark License?

Your trademark license agreement should be written, include negotiated terms and provisions, and be signed by all parties. To be valid, your agreement must address and include each of the following provisions:

1) Parties: identification of the licensor and licensee (full, legal names);
2) Identification of the trademark: the trademark(s) covered by the agreement;
3) Approved uses: the specific products or services for which it can be used;
4) Geography: the geographic area(s) where the licensee can offer, use, and distribute related products or services;
5) Quality control: quality standards the licensee must adhere to when using the trademark(s), which are in place so the licensee does not damage the licensor’s reputation

What are Additional Provisions for Trademark License Agreements?

Trademark license agreements often include additional requirements. These include the following:

1) Approval of promotional materials: some licensors demand the right to approve any marketing or promotional materials using or related to the licensed trademark.
2) Exclusivity: an exclusive agreement means the licensee is the only business allowed to use the mark in the covered geographical area. A nonexclusive trademark license agreement is one where the licensor reserves the right to enter into similar engagements with other companies who will also have similar rights in the same geographic area.
3) Duration: the agreement should also address how long the licensee may use it, including whether and how they can renew it.
4) Compensation: payment under trademark license agreements is typically structured as lump-sum fees or ongoing royalty payments. The contract should specify the amount of the one-time payment or calculations for royalty payments and when the licensee must pay the licensor.
5) Consequences for breach of agreement: these documents should also address what happens when one of the parties breaches their duties.

How are Royalties Calculated?

The way a royalty is calculated depends on the license agreement relating to the intangible in question. Usually, it is calculated as a royalty percentage – a portion of the gross or net revenue gained through the exploitation of the licensor’s trademark. It can also be expressed as a fixed value. In this case, a sum will be decided on at the start of the agreement and will not change throughout the term of the licensing contract. There are benefits to both methods, with the selected royalty one depending on the organization in question and the preferences of the individual licensor.

What is a Royalty Percentage?

Agreeing on a royalty percentage is the most common approach when it comes to contracts and license agreements between the licensee and licensor. This method tends to be more financially convenient for the licensee as the amount they pay reflects their current business situation. For example, if the licensed trademark is not yet particularly profitable, then the licensee will only have a small royalty payment to organize. Once the trademark starts to generate increased revenue, the royalty payment will increase proportionally, so the licensee is in a position to pay it. A royalty percentage is also generally more lucrative for the licensor, as it means that they get a greater return on investment in the long term as the licensee’s business grows.

What is a Fixed-Value Royalty Payment?

A fixed-value royalty stays the same for the duration of the license contract, regardless of whether the revenue generated by the trademark increases or decreases. A fixed value royalty fee means that, if the trademark performs well and achieves quick and substantial rates of growth and profit, the licensee’s royalty payment will seem relatively low in the long term. However, if the organization’s profits relating to the trademark do not increase significantly, the fixed value may not be advantageous. While the licensor’s return will not increase, a fixed value royalty does ensure a set amount of trademark-related income, which can be considered financially beneficial.

What Happens if the Licensor goes Bankrupt?

Chapter 11 of the Bankruptcy Code allows financially troubled companies to seek protection from their creditors, reorganize their debts, and then, hopefully, to continue their business. Among other things, the Bankruptcy Code allows the bankruptcy trustee to “reject” any of the debtor’s “executory contracts” (those are contracts for which “performance remains due to some extent on both sides”). See 11 U.S.C. § 365.  The Bankruptcy Code specifically defines a “rejection” of a contract to be a breach of the contract, not an invalidation. In other words, the contract continues, only now just on the side of the non-bankrupt party. The rights and obligations of the other party under the contract continue, the other party becomes an unsecured creditor, and the debtor or bankruptcy estate may be liable to the other party for any damages caused by the breach, assuming there are any funds to pay them.
 
The licensor can not rescind in bankruptcy the trademark license it had previously granted. Specifically, the Supreme Court has held that rejection of a contract—any contract—in bankruptcy operates not as a rescission, but as a breach.  Because “breach” is not a “specialized bankruptcy term,” the traditional rule is that the injured party retains the rights it has received under the agreement.
 
This means that a licensee can continue to use the trademark under the terms of the license agreement, even if the licensor may have some issues in governing quality control because of cash flow issues in bankruptcy.

What are some Terms to Govern Licensor Bankruptcy?

One set of terms that should be incorporated deal with ensuring that the trademark rights are maintained:

1) If the licensor becomes financially insolvent (or the trustee rejects the license), then the licensor should be required to provide a written commitment, within a given period of time (e.g., 60 days), to either continue maintaining quality control (including with other licensees, if any), or agree to assign the trademark (and any registrations) to the licensee.

2) With respect to renewal of registrations, a license might provide that if the licensor cannot commit to doing so, the licensor would appoint the licensee as its agent to file renewals with the Trademark Office and fees incurred deducted from any royalties due.

What are Some Terms to Govern Licensee Bankruptcy?

What if the licensee seeks bankruptcy protection, and then the trustee rejects the contract?

The key part of the Bankruptcy Code is that a rejection is merely a breach, not a rescission, of the contract, and hence the contract and contractual rights remain.

The licensee could continue using the trademark and avoid either cooperating in quality control efforts or paying royalties. This would create an untenable situation where not only is the licensed trademark in jeopardy (from lack of quality control and loss of federal registration), but the licensee may avoid paying royalties.

This situation can also be dealt with by terms in the license:
If the licensee becomes financial insolvent (or the trustee rejects the license), then either the licensor has the option to terminate the license, or the licensee must provide a written commitment within a given period of time (e.g., 60 days) to continue to cooperate in quality control and pay royalties. The failure by the licensee to provide the written commitment (or the failure by the licensee to actually follow through with the quality-control and payment-of-royalties commitments) would be a breach that would terminate the license.

What is the jurisdiction of the U.S. Patent & Trademark Office?

The U.S. Patent & Trademark Office may only decide issues of registratbility.  In other words, it only has the last word as to whether a trademark owner’s mark should be registered on the Federal Register.  The U.S. Patent & Trademark Office has no jurisdiction over common law use.  If you wish to bring an opposition or cancellation proceeding in the Trademark Trial and Appeal Board (the TTAB is the federal administrative court of the USPTO) and that proceeding ultimately settles, be sure to write in issues of use into the settlement agreement.  If your concern is solely over use of the mark, you’ll need to institute a proceeding in the Federal courts, as the USPTO does not decide issues of use.

What is the Difference between the TTAB and Federal District Court?

Proceedings before the TTAB are usually more narrow and streamlined.  This is due, in large part, on the limited jurisdiction of the Board to issues of registrability only.

What is a Trademark Opposition or Cancellation Proceeding?

A trademark opposition is where a third-party objects to the registration of your mark prior to registration.  This is a type of litigation before the Trademark Trial and Appeal Board at the USPTO and follows the Federal Rules of Civil Procedure.  Although the majority of these proceedings settle, it is important to understand that this is an adversarial proceeding that governs the registration of the applicant’s mark. 

Similarly, a cancellation proceeding is a very similar proceeding brought against a trademark that has already registered.  Grounds in both proceedings might be likelihood of confusion, abandonment (in cancellation proceedings) or other substantive grounds.  If you are served with such a petition, it is strongly recommended you do not represent yourself, but that you seek trademark counsel to represent you.

What are the differences between Trademark Opposition and Cancellation Proceedings?

Trademark oppositions and cancellations are adversarial proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO to defeat the registration of a mark. Oppositions challenge pending trademark applications while cancellations contest trademark registrations.  These adversarial TTAB proceedings are basically lawsuits focused on whether a particular trademark should be registered. All arguments, pieces of evidence, and testimonies are submitted on paper for the TTAB to consider, though the parties have the option of requesting an oral hearing at the conclusion of the submission of their legal briefs.

TTAB Trademark Cancellation

Each type of proceeding includes its own standards. A registered trademark carries certain legal presumptions that are not yet associated with a pending application. For example, a registered trademark is presumed valid and protectable, meaning that the owner has the exclusive right to use the trademark nationwide in connection with the goods and services covered in the registration.

A registration also carries the legal presumption that ownership of the mark belongs to the registrant. In seeking to cancel a trademark registration, the petitioner must overcome such legal presumptions that do not attach to an unregistered mark or a pending application.

TTAB Trademark Opposition

Just as there may be advantages for a plaintiff in an opposition or cancellation proceeding, there may also be advantages for the defendant in each type of action. In an opposition involving a pending application, for example, the applicant may have opportunities to remedy certain defects which would not be available to a registrant in a cancellation.

In a TTAB trademark opposition, the defendant may have certain options that would facilitate an early settlement with the opposer. For example, an applicant can amend the identification of goods/services by deleting certain products or including exclusionary language.

What are First Steps for TTAB Defendants?

If you’re an applicant or registrant on the receiving end of a TTAB complaint, the first date to calendar is the deadline for filing an answer or filing a motion to dismiss in lieu of an answer. If you care about your trademark, you should lawyer up promptly and make sure not to blow this deadline. Shortly after the answer is due, the parties will need to conduct a mandatory discovery conference which will discuss a number of topics, including settlement. If you can at least cover these first two deadlines, you’ll be in good shape to figure out your strategy for the proceeding, including the possibility of an early settlement which will obviously keep down legal costs.

Since these proceedings can become quite expensive in a short amount of time, a TTAB defendant may be tempted to simply forfeit the case without putting up a fight. It would be prudent, however, to consider how a decision in the TTAB proceeding may come back later to bite you (legalese: any potential legal preclusive effects or estoppel of such a surrender).

How does a Party in the TTAB Submit Evidence?

In the TTAB, Notices of Reliance and Testimony declarations are the most-used vehicles for admission of evidence.  Direct evidence can be either through trial testimony deposition (in part of your case-in-chief) or by declaration.  Self-authenticating evidence, generally in the form of internet print-outs, trademark registrations, and other publicly available materials, can be admitted through Notice of Reliance.  Declarations also give the opposing party the option to either cross-examine the declarant, or attack the testimony in the form of your client’s own rebuttal affidavit.

What is Trademark Infringement?

Trademark infringement occurs when a person or company uses a trademark without authorization from the owner of the trademark in a way that will be likely to confuse or deceive the public about the source of the services and/or goods.

Is it trademark infringement if someone else is using my company’s name but for a different business?

Not necessarily. Since trademark infringement law seeks to prevent customer confusion, if a certain company name is the same or similar but is being used in two unrelated businesses or locations, it may not create customer confusion as to the source of the goods and/or services.

How must a Plaintiff be Using a Trademark?

Before running to court, remember that you, as the potential plaintiff, must be actually using your trademark in order to prevent others from using it. A business that claims to own a trademark cannot stop others from using the same or a similar trademark unless it is actively using the trademark itself.

In trademark law, “using” a trademark means putting it to work in the marketplace to identify goods or services. This does not necessarily mean that the product or service actually has to be sold, as long as it is legitimately offered to the public under the trademark in question. Remember, trademarks are designed to help the marketplace and consumers more than the “owner” of the trademark. An unused trademark will receive minimal protection from the courts.

What Happens if Someone else uses my Trademark?

If another company is in a different type of business than you, you may or may not have legal grounds to stop the other company from using your mark. As the owner of a trademark, you can stop someone else from using your mark when it’s being used on competing goods or services, and when consumers would be confused by their use of the trademark.

If you believe someone is infringing on your mark, an attorney will first send a cease and desist letter on your behalf, demanding the other user to stop using your mark. If that’s unsuccessful, you can file a lawsuit (most likely in federal court) to stop the use. In many cases, you can also sue for money damages from the user. In fact, legal recourse is the biggest advantage of registering your trademark.

What is an Example of when a Similar mark Wouldn’t be Confusing for Customers?

While performing a routine Internet search for his company, Bob finds out that there is another company using his name in a different line of business. Bob’s business builds business communications networks for its customers in Oregon and he has named his business Bob Builds IT. While searching the Internet for his business, he ran across Bob Builds It, a small business that does carpentry in Ohio. Bob now wants to know whether a violation of trademark law.

In this hypothetical, it’s extremely unlikely that anyone would be confused by a carpenter when buying a computer and vice versa. Also, given the geographic separation, confusion is even less likely. Accordingly, these businesses seem to be coexisting well, with little or no overlap between their customers, and there is likely no trademark infringement.

Other examples are:

Informational Uses of a Trademark

Informational (or “editorial”) uses of a trademark do not require permission from its owner. These are uses that inform, educate, or express opinions protected under the First Amendment of the United States Constitution—freedom of speech and of the press.

For example, permission is not required to use the Chevrolet logo in an article describing Chevrolet trucks, even if the article is critical of the company. You could (obviously) use the word mark “Chevrolet” as well as the famous golden “plus sign” logo mark. This would be true whether you were publishing a news article or an article in an academic journal.

Similarly, if you were making a documentary film on the history of American trucks, you would not need permission to include the Chevrolet logo. However, the use of the logo must have some relevance to the work. For example, it would not be wise to publish an article critical of overseas auto manufacturing practices and include the Chevrolet logo unless Chevrolet was, in fact, mentioned in the article.

Finally, you are also permitted to use trademarks for purposes of parody or commentary. For example, if you were writing a skit about how young people are always on their phones, you could glue the Samsung logo onto the actors’ prop phones without fearing a claim of trademark infringement.

Trademarks for Comparison

Under trademark law (specifically, 15 U.S.C. § 1115(b)(4)), you are generally permitted to use a trademark as a means for comparison. For example, you could create a newspaper advertisement that incorporates your mark and your competitors’ marks in order to describe a difference between the companies.

Imagine that you make a type of coffee that you believe to be tastier and less expensive than any other company’s product. You could include on your advertisement the logo of Starbucks along with the price of its comparable drink from another coffee company.

Two important caveats apply here, however. First, you may not alter your competitors’ trademarks in a way that is derogatory or misleading. (For example, you cannot dress up as Ronald McDonald and make him look unattractive!) These activities could subject you to a claim of trademark disparagement.

Second, any comparative information that you use must be accurate. While subjective statements (which coffee tastes better, which product is easier to use, and so forth) are difficult to judge for accuracy, factual information is not.

So if you say, for instance, that Starbucks charges $3.50 for a 12-ounce black coffee, 20% more than competitors, that fact needs to be demonstrably true. If you say that Apple uses deadly chemicals in its iPhones that could leak into users’ hands, that also would need to be true.

In other words, any lies associated with your use of a competitor’s trademark could subject you up to a claim of trademark infringement or disparagement. Assuming that your statements about a competitor are true, however, trademark law does provide some degree of leeway to use registered marks, even without permission.

What is Likelihood of Confusion?

One of the primary factors the USPTO considers in determining whether to allow a mark for registration is whether there exists a likelihood of confusion between the proposed trademark and a registered or pending trademark for the goods or services covered in the application. The USPTO considers: (1) how similar the marks are, and (2) the commercial relationship between the goods and/or services identified by the marks. The marks do not have to be identical to be confusing.

There could be similarities in appearance, sound, meaning or commercial impression to support a finding of likelihood of confusion.

What Is Trademark Dilution?

Trademark “dilution” refers to the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception. Unauthorized use of a registered trademark in a manner that damages or devalues the quality, prestige or stature of the brand may result in a suit for trademark dilution.

What is a Famous Mark?

The term “famous” is not defined in any of the federal trademark statutes but courts do consider a number of different criteria in making their determination. Courts will examine the duration and extent of the mark, the advertising, geographic use, the degree of distinctiveness, how recognized the mark is among the general public, use of the mark by third parties, and whether the mark is registered. Still, with all these criteria, courts may not agree and thus there could be inconsistent decisions.

What is Section 43(a) of the Lanham Act?

The Lanham Act is the basic federal trademark and unfair competition law. Section 43(a) (15 U.S.C. 1125(a)) is intended to protect consumers and competitors against false advertising and false designations of origin.

The law allows for suit against someone who makes false claims about its own or a competitor’s products.

Sec. 1125. False designations of origin, false descriptions, and dilution forbidden (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which– (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

What are Defenses to Trademark Infringement?

Affirmative Defenses

Parody

In trademark cases, courts have upheld First Amendment rights permitting certain parodies of trademarks which aren’t overtly tied to commercial use. Some courts have applied the standard for likelihood of confusion, and others have expressly held the First Amendment trumps trademark law, at least in some cases. Though parody is a defense to infringement, there are provisions for disparagement in federal trademark law and potential causes of action for slander if the use of another’s trademark is excessively disparaging or harmful.

Fair Use – The “fair use” defense has evolved into two different types of fair use:

  • Descriptive fair use – The classic fair use defense concerns the good faith use of a mark for is primary (descriptive) meaning, rather than its secondary meaning (which is when consumers associate a particular term or mark with a particular product provider or brand). This usually happens when marks also have descriptive attributes. The company which makes Sweet Tarts candy, for example, was unsuccessful in an infringement action against another company which used “sweet-tart” when advertising its juice, which arguably had a sweet and tart taste. You can use another’s trademark for your own goods or services if it is descriptive fair use.
  • Nominative fair use – Another form of the fair use defense is called nominative use. Nominative use is when another’s trademark is used for the purpose of the mark owner’s product, not the user’s own product. It’s best illustrated in comparative advertising and the media. Coca-Cola may compare it’s product to Pepsi, and a local news station can report on things like an event being held at a Starbucks. When defendants prove their use of a trademark was in reference to the mark owner’s products or services, it becomes the plaintiff’s burden to prove any likelihood of confusion. Courts may also apply a likelihood-of-confusion test specific to nominative fair use, which asks: (1) Is the product / service readily identifiable with trademark use? (2) Was the mark used more than reasonably needed to identify the owner? and (3) Did the use of another’s trademark falsely suggest the user is endorsed or sponsored by the trademark owner?

Other Trademark Infringement Defenses

In addition to affirmative defenses, there are also other ways to defend against claims of trademark infringement, including equitable doctrine defenses and challenges involving certain aspects of trademark law. These include:

  • Doctrine of Laches – Requires a plaintiff to bring a timely claim for preliminary injunction when they knew or should have known of infringement.
  • Estoppel – Also known as acquiescence, estoppel involves a plaintiff implicitly or explicitly permitting use of its mark.
  • “Unclean Hands” – The doctrine of “unclean hands” may relate to a plaintiff’s illegal or egregious conduct, such as extreme and oppressive demands or false statements that marks are registered when they are not.
  • Contesting registration – Newly registered trademarks, typically those registered for 5 or less years, can potentially allow defendants in claims to content the owner’s right to exclusive use of the mark in its infancy.

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