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Trademark (uploaded image General uploaded image (TM:…

- - - - allows consumers to distinguish business’s products and services from those of its competitors by identifying with single source
        
        serves consumer protection
        
        serves property protection
  - - - certain limitations
      - to use TM in connection with products or services covered by TM
    - - assures TM owner only he receives benefits of investing in brand
  - - - price
      - value
      - status
      - quality
- - - - Protected Subject Matter
        
        Trademark
        
        always includes
        
        Words
        
        Phrases
        
        Symbols
        
        Designs
        
        under certain circumstances includes
        
        Sounds
        
        Example: three note chime NBC Broadcasting Service
        
        Smells
        
        Colors
        
        Example: Color Brown by UPS
        
        Example: Color Pink by Owen Corning for Building Insulation
        
        Shapes
        
        Service Mark
        
        Similar to TM
        
        Identifies services rather than goods
        
        Certification Marks
        
        Collective Marks
        
        Website domain name can function as TM if used to identify goods or services and not simply a website address
        
        trade name does not function as a TM when it is used only to identify the company or business and not particular product or service
        
        may receive TM protection if it is used to identify source or origin of product or service
        
        Trade dress refers to look and feel of
        
        Product
        
        Service
        
        Product Packaging
        
        Labeling
        
        Overall appearance or impression created by the design and appearance elements
        
        Trade dress includes
        
        color schemes
        
        textures
        
        sizes
        
        designs
        
        shapes
        
        placements of words
        
        graphic decorations
        
        To be protected as a TM or service mark, trade dress must be
        
        distinctive
        
        proof necessary to demonstrate distinctiveness of trade dress differs based on whether protection is being sought for
        
        Packaging or Labeling
        
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        Product Design
        
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        non-functional
        
        Courts have found trade dress protection for
        
        book and magazine covers
        
        appearance of a lamp
        
        shape of a soft-drink bottle
        
        a restaurant’s décor, menu, and style
      - Eligibility for TM registration under Lanham Act
        
        Certain types not registrable
        
        Confusingly similar TM
        
        Under Lanham Act, TM cannot be registered if it is confusingly similar to another mark
        
        TM does not have to be identical to prior TM to be found confusingly similar
        
        Instead it must only be sufficiently similar that it is likely to cause confusion as to
        
        Source
        
        Sponsorship
        
        Origin
        
        Affiliation of goods or services
        
        TM infringement occurs when TM used by different entities are so similar that consumers mistakenly believe that the goods and services of one entity are provided, sponsored or affiliated with another entity
        
        Descriptive and deceptively misdescriptive terms
        
        A term is deceptive if it meets all of the following
        
        It improperly describes a character, function, quality or feature of a product or service AND
        
        Consumers are likely to be misled or deceived into relying on the mischaracterization AND
        
        This reliance is likely to affect consumers’ purchase decisions
        
        Functional Matter
        
        Immoral, scandalous, and disparaging matter
        
        Government Insignia
        
        Not all words, symbols, logos, and devices can be registered as TM
        
        Materials in other categories can be registered if certain criteria is met
        
        Names, Portraits, and Signatures
        
        Descriptive Terms
        
        Terms that are primarily geographically descriptive
        
        Terms that are primarily merely Surnames
      - Allows TM owners to enforce their TM rights through statutory causes of action for TM infringement and similar unfair competition claims, including
        
        some federal causes of action apply only to registered TM, others to both registered and unregistered
        
        Counterfeiting of a registered TM
        
        TM Dilution
        
        False advertising
        
        Passing off
        
        Infringement of a registered TM
    - - Use in Commerce
        
        TM rights are obtained by being first to use the TM in commerce for the relevant goods or services
        
        Under Lanham Act, use in commerce means
        
        Bona fide use of a mark
        
        In the ordinary course of trade
        
        Does not include use merely to reserve a right in a TM
        
        TM is deemed to be used in commerce when
        
        Goods are sold or transported in commerce and the TM is displayed
        
        On the goods or their containers
        
        In association with the goods or on tags or labels affixed to the goods or
        
        If the nature of the goods makes placement impracticable, on documents associated with the goods
        
        Services are rendered in commerce and the TM is used or displayed on materials to advertise or sell services
        
        For federal TM protection, the goods or services must be provided, advertised or sold either
        
        In interstate commerce
        
        In commerce between the US and foreign country
      - Distinctiveness
        
        To be protectable as a TM, term must be distinctive, which means it identifies a good or service as originating from a single source
        
        It is evaluated along a continuum ranging from highly distinctive marks to terms that cannot be protected because they are generic for the category or type of goods or services
        
        Fanciful
        
        Fanciful marks are terms that are coined to use as trademarks and have no previous common dictionary meaning
        
        Example: KODAK for cameras and photographic products
        
        Example: EXXON for oil and gas
        
        Fanciful marks receive the broadest TM protection and generally are considered the strongest marks
        
        a coined term is capable of creating a strong association with the product as it has no other meaning
        
        coined term is more likely, and generally easier to prove, that a second user of a coined term is trading on the goodwill of the owner’s mark
        
        Arbitrary
        
        Arbitrary marks may have common meanings, but they do not suggest or describe the goods or services for which they are used
        
        Example: APPLE for Computers
        
        Example: OMEGA for Watches
        
        Suggestive
        
        Suggestive marks suggest a quality or characteristic of a good or service but they do not directly describe it
        
        Thought, imagination and perception are required to connect the good or service to the TM
        
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        Descriptive
        
        Descriptive terms can be protected as TM only after they acquire distinctiveness, or secondary meaning, through use in commerce
        
        A TM is descriptive if it describes a good or service or one or more of its features, such as its
        
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        Descriptive terms are not inherently distinctive and are not initially entitled to TM protection because they do not immediately identify source of a product or service
        
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        Generic
        
        Generic terms are never entitled to TM protection
        
        Generic term defines or is the dictionary term for a product or service
        
        Generic term cannot function as TM because it cannot designate a particular source
        
        Certain terms by their nature are generic
        
        Some TM become generic because consumers use the TM to describe an entire class of products or services
        
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        Fanciful, arbitrary, and suggestive marks, which are considered inherently distinctive, can immediately identify the source of a specific product or service
        
        Inherently distinctive TM can be registered on the USPTO’s Principal Register without showing that they are recognized as identifying the source of a good or service
      - No Likelihood of Confusion
        
        Likelihood of confusion exists if marks used by two unrelated parties are so similar that consumers are likely to believe the products or services have a single source
        
        Similarity of the TM
        
        Commercial relationship between the goods and services
        
        Finding of likelihood of confusion does not require conflicting TM, or the goods and services on which they are used, to be identical
        
        Rather, standard is whether they are confusingly similar and the goods or services are related
        
        Factors that may affect whether likelihood of confusion exists include
        
        Strength of the senior TM
        
        Similarity between TM
        
        Similarity between goods or services
        
        Marketing channels for the goods
        
        Number and nature of similar marks registered for similar goods
        
        Evidence of actual confusion
        
        The intent of second user
        
        The sophistication of consumer
        
        Each of 12 regional US circuit courts of appeals and the US Court of Appeals for the Federal Circuit applies its own multi-factor test for determining whether likelihood of confusion exists
    - - administers Lanham Act
      - regulates registration of TM on federal TM register
    - - TM Rules of Practice
      - TM Manual of Examining Procedure
      - Trial Manual and Appeal Board Manual of Procedure
    - - Geographic Scope
      - Broader Scope for Famous TM
        
        Famous TM enjoy broader scope of protection, including under federal Trademark Dilution Revision Act of 2006 (TDRA) and state TM dilution statues
        
        dilution occurs, when unauthorized use of TM impairs its distinctive quality by
        
        blurring, where TM is weakened by being identified with dissimilar goods
        
        Tarnishment, where mark is damaged through its association with inferior unseemly goods or services
        
        unlike TM infringement, typically TM dilution does not require a showing of likelihood of confusion
      - Goods and Services
      - TM protection extends to scope of use, which is defined both geographically and by goods or services for which mark is used
  - - - State common law rights arise from using TM in commerce in state
      - Rights typically extend only to territory where TM used
    - - Unfair Competition
      - TM Dilution
      - Passing Off
    - - Advantages
        
        may be useful to a purely local business
        
        provide constructive notice of registrant’s claims of ownership in state
        
        appear in TM search reports, puts third parties on notice of claimed rights
  - - - TM rights belong to first party to register TM
      - TM does not have to be used before it can be registered
      - Registration, not use, is generally required to have any rights in the mark
- - - - Application meets formal examination requirements (for example, that it includes the elements listed in Application Elements)
      - TM is eligible for registration in accordance with Lanham Act and USPTO’s regulations (for example, distinctiveness)
      - TM is likely to cause confusion with any other previously applied for or registered TM (see no likelihood of confusion)
  - - - Notice of Publication
    - - Office actions can include objections owing to
        
        A defect in the formal application requirements. For example, the required identification of goods or services is unacceptable
        
        Ineligibility for registration
        
        Descriptiveness
        
        A likelihood of confusion with a previously registered or applied-for TM
  - - - Any interested party can file an opposition the TM’s registration on the Principal Register within 30 days after the date of publication
        
        USPTO will extend time period to oppose a TM registration on the Principal Register once for an additional 30 days if an interested party files an extension request with the TTAB within the initial 30-day period
        
        USPTO will grant additional or longer extensions for good cause, but the time for filing an opposition cannot be extended beyond 180 days from date of publication
      - Opposition is proceeding in which interested party seeks to prevent registration of another party’s TM
      - Most oppositions are filed by an owner of a prior TM claiming the applied-for TM is likely to cause confusion with the prior TM
        
        Other claims can be raised in opposition (for example, proposed TM is scandalous or immoral)
        
        If opposition is filed, TM registration applicant
        
        is provided with copy of the “notice of opposition."
        
        Has 30 days to file an answer. If answer is not filed, the application has been deemed abandoned
      - Opposition procedure is similar to litigation in civil court, but TTAB has specific rules governing conduct of opposition
        
        TTAB usually does not conduct oral hearings
        -> Most matters are resolved by written records
        
        Adverse TTAB decisions may be appealed to the US Court of Appeals for the Federal Circuit or to a federal district court
        
        Most oppositions are settled by agreement of the parties. Parties typically enter into agreement regarding use of their respective TM
        
        For example, one party may agree to limit use and registration of TM to a specific form (for example, in combination with a logo), or to specific goods and services
      - If parties settle, opposition can be dismissed and, depending on terms of the settlement, the mark at issue may be registered
- - - - Amendment to Allege Use
        
        If applicant begins using TM in commerce before it is approved for publication, applicant can amend the ITU application to a use-based application
        
        Done by filing an Amendment to Allege Use, which must include
        
        Verified statement, which may be done by declaration, that the applicant believes it is the owners of the TM and the TM is in use in commerce (specifying the date of the first use and first use in commerce)
        
        Identification of the goods and services specified in the application on which the mark is used
        
        A specimen of the mark as used for each class of goods and services covered by the amendment
        
        Fee based on the number of classes covered by the amendment
      - Lanham Act permits the filing of an intent-to-use trademark application for a mark that is not yet being used if applicant has a bona fide intent to use it for the goods or services listed in the application
        
        Benefits
        
        If TM becomes registered, the filing date of the application is deemed to be the date of first use, providing a priority date that is earlier than the first actual use
        
        The owner can determine whether TM is registrable and address any obstacles to registration before making substantial investments in the TM
    - - Advantages
        
        Prima facie evidence of validity and the registrant’s ownership of the TM
        
        Constructive nationwide use of TM
        
        Federal court subject matter jurisdiction over infringement and other TM claims without a showing of diversity or minimum amount in controversy
        
        Statutory remedies for federal trademark infringement claims, including, under certain circumstances
        
        Treble damages; and
        
        Recovery of attorneys’ fees and costs
        
        Constructive notice of ownership, which eliminates the defenses of good faith use and innocent adoption
        
        The right to use ® and other notices of federal registration
        
        After five years the registration may subject to limited exceptions, become incontestable and be deemed conclusive evidence of the owner’s exclusive rights to use the TM
        
        A registration may be recorded with US Customs to stop the importation of infringing, counterfeit, and gray market goods
        
        A registration may provide a basis for registering the TM in foreign countries
    - - Advantages
        
        Federal court subject matter jurisdiction over infringement and related unfair competition claims
        
        Registration may be cited by TM examiners against later applications to register similar marks
        
        Inclusion in TM search results, which may deter third parties from adopting similar marks
        
        Right to use ® and other notices of federal registration
      - Some terms that do not qualify for registration on the Principal Register may be eligible for registration on the Supplemental Register
      - To be included on Supplemental Register, TM must be
        
        Capable of distinguishing the applicant’s goods or services
        
        Unregistrable on the Principal Register
        
        Not otherwise unregistrable
        
        Either
        
        Lawfully used in commerce; OR
        
        Registered in a foreign country where TM owner has an office
      - Registration on the Supplemental Register is most common for TM that are merely descriptive where applicant cannot yet demonstrate secondary meaning
      - Supplemental registration does NOT provide
        
        TM rights beyond common law rights
        
        Other advantages provided by registration on the Principal Register
- - - - Cancellation proceeding is similar to opposition, except it is brought against registered TM, not application for registration
        
        As with oppositions, any entity that believes it is or will be damaged by registration can file a petition to cancel
    - - TM owner abandoned registered TM
        
        TM can be deemed abandoned if the owner
        
        Discontinues use with intent not to resume use;
        
        Fails to exercise quality control over licensees; OR
        
        Fails to assert rights against infringers
      - Registered TM has become generic
      - TM owner committed fraud on the USPTO
  - - - Declarations of Continued Use (along with require specimens) or Excusable Nonuse
      - Renewal Applications
      - Failure to make these filings results in the loss or limitation of the benefits of registration
        
        Example: USPTO cancels a registration that is not renewed.
    - - Incontestability status offers many advantages, including that third parties can no longer challenge ownership of TM
        
        Incontestability status offers several advantages, including that third parties can no longer challenge
        
        The registrant's ownership of TM
        
        TM on the basis that it is merely descriptive of the goods or services or was improperly registered
- - - - Knock-out search aims to identify TM that are 1.) visually, 2.) conceptually, and 3.) phonetically similar to the proposed TM and cover the same or similar goods or services
      - Scope of knock-out searches is limited, can help brand owner
        
        avoid expense of a full search, for example, if a clearly blocking TM is uncovered
        
        choose from a selection of alternative TM, especially if there are budget issues
      - Scope of knock-out search is typically limited to information that is free and easy to access online, including
        
        online searches of the USPTO database of federal TM registrations and applications using USPTO’s TM Electronic Search System (TESS)
        
        Basic internet searches for direct hits
        
        WHOIS domain name registry searches for specific domain names
    - - Full searches are necessary to conduct a more thorough risk assessment of existing registrations, applications for registration, and common law uses of similar TM
      - They involve a more thorough search of federal applications and registrations, and cover a wide range of publicly available information including databases of state TM registrations maintained by state TM offices and common law uses, including searches of
        
        The internet
        
        Business/trade name directories
        
        Databases of periodicals
        
        Domain name registries
        
        Dictionaries
    - - Federal TM register administered by USPTO
      - State TM registers
      - Various other publicly available publications and databases relating to relevant products and services
      - Internet
  - - - Meets the criteria for federal registration
      - Is likely to cause confusion about source, sponsorship, or affiliation with a previously used or registered TM
    - - TM that share a prefix or suffix with the proposed TM may present a likelihood of confusion, especially if
        
        Goods or services are similar or related; OR
        
        Senior owner has several TM with that prefix or suffix
      - Abandoned, canceled, or expired applications or registrations may still indicate obstacles because:
        
        The mark may still be in actual use despite the lack of a valid federal TM registration, OR
        
        If the abandonment, cancellation, or expiration resulted from a USPTO rejection or adversarial action by another party, the proposed TM may face a similar objection
      - Identical TM for different goods should still be considered carefully. If registered TM is well known, it could be an obstacle to use and registration of the proposed TM
    - - A TM is in use
      - The owner of TM has defended its rights against TM similar to the proposed TM
- - - - ITU (Intent-to-Use)
        
        registration is not granted and no rights attach to TM until the applicant begins using it on the products or services specified in the application
      - Use in commerce