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TRADEMARK LAW

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TRADEMARK LAW Powered By Docstoc
					   “Any word, name, symbol, or device, or any
    combination thereof used by a person to identify
    and distinguish his or her goods from those
    manufactured or sold by others.” 15 U.S.C.
    §1127
     Identifies a brand of product or service.

   Since businesses often invest substantial
    amounts of time & money building brand
    recognition, important to protect trademark
    rights.
   Names - most commonly used

     Coca-Cola

     Starbucks

     Nike

     The Beatles
   Slogans

         “Absolutely positively overnight”

         "Tastes Great, Less Filling”

         "Good to the Last Drop”

         "Breakfast of Champions”

         "Where's the Beef?"
What Can Be Used as a Trademark?

        Slogans: “Just Do It”
   Logos
   Band Logo Examples
   Record Label Logo Examples
   Other Identifiers:

          Sound

          Color: Rarely, but possible if not necessary for
           particular product
   Color as a Trademark
   Consumers tend to buy well known brands & recognize
    brands by their trademarks.

     Prevent consumers from being misled or confused by use of similar
      names & other identifiers
     Consumers may rely on source as an indication of quality.


   Prevent businesses from stealing goodwill others have
    generated by creatively & consistently identifying &
    marketing their products.

     Encourages investment in quality & service by protecting investment
      in creating favorable reputation
   Both federal & state law since federal & state
    governments have authority to regulate commerce.

   Federal Trademark Law

     Congress first enacted trademark statute in late 19th century
     The Lanham Act (1946) - current federal trademark statute


   State Trademark Law

     Many states have trademark statutes similar to Lanham Act
     Tennessee Trademark Act, T.C.A. §47-25-501 et. seq.
•   U.S.: TM ownership derived from “use of a mark in
    commerce”

    – First to use mark to sell product or service has superior rights over
      subsequent user of same or similar mark in connection with same or
      similar goods or services
    – Selecting mark not enough - must use to identify product or service
      available for sale
    – Rights limited to area in which trademark is used

•   Other Countries

    – First to file (register) has rights
    – Use not necessarily required before filing
   Distinctive marks identify goods or services as originating
    from a particular company, and consequently distinguish
    those goods or services from competitors’ goods or services

     Have little or no descriptive function; Operate primarily to identify a
      product source

   Inherently distinctive: Marks that are unique (made up) or
    very original

   Secondary Meaning: Marks that become distinctive due to
    TM owner’s efforts to create distinctiveness (long-term use
    & public recognition)
                                 Coined/Fanciful
                                 Arbitrary
                                 Suggestive
   The more distinctive a
                                 Descriptive
    mark, the greater the
                                   Weak protection
    protection it receives.
                                   Only protected if
                                    secondary meaning
                                 Generic
                                   No protection
   No relationship to the nature of goods or
    services

     Coined: Exxon, Kodak, HaagenDazs


     Arbitrary: Apple (computers)


   Strongest marks – greatest protection
   Suggest rather than describe some aspect of the
    goods or services

     Coppertone, Jaguar, Microsoft


   Strong trademark protection since they don’t
    actually describe products or services they identify,
    but can be good for marketing since they suggest
    products they identify
   Describe some quality or characteristic of goods or
    services

          “Apple” brand apple juice
          “The Band”

   Not protected unless “secondary meaning” acquired

     Presumed if 5 years continuous use. 15 U.S.C. §1052
   Do not function as TM unless secondary meaning

     Curb Records, Geffen Records


   Identify a person rather than a product or service

   Same for geographic names

     Tennessean (newspaper), Nashville Network
   Choose name carefully – try not to infringe existing
    trademarked names.
   Important to consider foreign trademarks as well if
    you might sell your products or services abroad
   UK band The Charlatans changed to The Charlatans
    UK in U.S. to avoid confusion with American 60s
    band with same name.
   Important to address who owns name & who
    has right to use if group breaks up or
    membership changes.
     Does mark belong to group, to members
     (collectively or individually) or someone else?

     Steppenwolf former bass player allowed to use
     name to describe himself as "former member of
     Steppenwolf," but agreed not to record or
     perform under name.
   Do not function as
    trademarks

   Describe type of
    product rather than a
    particular brand

   Genericide: A term
    becomes so generic as
    to lose protection
   File Application

     PTO examines for registrability & conflicts
     Takes about 1 year to receive response
     May require amendment or modification
     After PTO approves, opportunity for opposition
      from other mark owners
     Registration issues if no opposition
   Nationwide rights

     Except for prior users (registration never outweighs prior
      use under U.S. trademark law)

   Constructive notice of ownership claim

   Presumption of ownership & validity. 15 U.S.C.
    §1072

   People conducting searches will find your
    registration & avoid using similar mark
   Right to use ® symbol 15 U.S.C. §1111
     Use ™ for unregistered marks


   Can record registration with U.S. Customs to prevent
    importation of infringing goods

   Can file foreign registrations based on U.S.
    registration
 Protected where products are sold

   Rights acquired by use in commerce, but only
    in area of use

 Can be source of conflict

   2 Users in different areas
   Ownership & rights based on use

     TM can be abandoned by non-use

   Federal Registration: 10 years

     Can renew for 10 year periods as long as mark still
     being used
   Likelihood of Confusion Test: Whether consumers
    are likely to be misled or confused as to source or
    sponsorship of goods. Lanham Act ; 15 U.S.C.
    §1114(1)




          McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC :
          Company that makes Splenda® sued competitor. Would
          this be likely to confuse consumers?
Apple v. Apple

                                       Series of disputes began in 1980:
                                       George Harrison saw Apple
                                       Computers ad in a magazine and
                                       thought potential for trademark
                                       conflict
Beatles sued & settled twice - Apple Computer agreed not to use the
word Apple to sell music

3rd lawsuit in 2006 over iTunes – Case decided on contract grounds rather
than TM
     - Settlement gave Apple Computer right to name in connection with
“electronic goods, computers, telecommunications equipment, data
processing equipment” and “data transmission services”
   Strength of Mark (distinctiveness)
   Similarity of Marks
   Similarity of goods or services
   Evidence of Actual Confusion
   Marketing Channels
   Sophistication of Consumers
   Bad faith
   Unauthorized use of a famous trademark on products that
    do not compete with those of trademark owner. Lanham Act
    § 43(c); 15 U.S.C. §1125(c)

     Designed to protect distinctive quality of famous
      trademarks

     No requirement of consumer confusion

     A trademark is diluted when use of similar or identical
      marks to identify non-competing goods or services results
      in the lessening of trademark owner’s ability to identify its
      products or services
   TM registered as domain name by someone
    other than TM owner

     Can be registered without being used at all

     Often, motive for registration of domain name is
     to sell to TM owner

   People who register domain names for
    eventual sale labeled "cybersquatters“
   1999 amendment to Trademark Act. 15 USC 1125(d)

   Cybersquatting: “registering, trafficking in, or using
    a domain name with bad faith intent to profit from
    the goodwill of a trademark belonging to someone
    else.”

   Remedies: Transfer or cancellation of domain name
    & civil remedies from $1000 to $100,000; or simpler
    arbitration procedure can be used to resolve dispute
   Domain registrants required to submit to arbitration
    when TM owner asserts:

     Domain name is confusingly similar to a trademark
     Registrant has no legitimate interest in domain name
     Domain name registered in bad faith:
      ▪ Registrant intends to cause diversion of consumers or
        dilution of trademark
      ▪ Registrant offers to sell name to trademark owner
      ▪ Registrant applied for multiple domain name
        registrations
   Gordon Sumner (Sting) v.            Madonna v. Parisi
    Urvan                                 P registered domain & used
     Singer had no legal claim to         as link to porn site
      sting domain since not his           ▪ Rejected defense based on
      real name & never                      existence of word in
      registered                             dictionary; no evidence P
                                             intended to use word in
     No bad faith use by Urvan
                                             ordinary meaning
      ▪ Used for sting computer
                                           ▪ P had not used domain name
        game web site
                                             prior to registering &
      ▪ Common word with a                   purchased for $20,000
        variety of meanings

				
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