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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?
Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same. Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion. You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection. A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection. A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection. A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection. Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection). If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit. There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.
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Question: What is the difference between a trademark and a service mark?
Answer: Trademarks refer to goods and products, that is, physical commodities which may be natural or manufactured or produced, and which are sold or otherwise transported or distributed. Service marks refer to intangible activities which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise. Because the legal rights are essentially the same, the term "trademark" is frequently used to refer to both types of marks. To learn about other types of marks, see Chapter 100 of the USPTO's Trademark Manual of Examining Procedure. To tell whether something is a good or a service, see 37 C.F.R. ?6.1.
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Question: What is trade dress?
Answer: Trade Dress is a distinctive, nonfunctional feature, which distinguishes a merchant's or manufacturer's goods or services from those of another. The trade dress of a product involves the "total image" and can include the color of the packaging, the configuration of goods, etc... Even the theme of a restaurant may be considered trade dress. Examples include the packaging for Wonder Bread, the tray configuration for Healthy Choice frozen dinners, and the color scheme of Subway sub shops. Such a broad and ambiguous definition makes trade dress very easy to manipulate. Seeking protection against trade dress infringements can be vital to the survival of a business.
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Question: What rights are associated with a movie or TV show?
Answer:
An audiovisual work can be covered by several overlapping "intellectual property" rights. These might include:
- Copyrights in the images, story, musical compositions, and sound recordings
- Trademark in the name of a series or producer
- Rights of publicity for the actors
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Question: Where can I find the text of the U.S. Copyright Act?
Answer: The federal Copyright Act may be found at http://www.loc.gov/copyright/title17/.
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Question: What is the difference between copyright and trademark?
Answer: Copyright protects original expression in literary and artistic works such as plays, books, films, songs, software, performances, etc.). To qualify for copyright protection, a work must be an original creation of the author and not copied from any other source. In the U.S., copyright does not protect facts. Individual words cannot be copyrighted, and there is a gray area of protection for short phrases. Copyright owners have strong rights to prevent copying of their material, subject to the doctrine of "fair use." Copyrights arise when the work is fixed in a permanent form. Infringement consists of copying, publicly distributing, making changes to, or publicly distributing or performing the work without the author's permission. Trademark only protects names and logo images that are used to label goods or services. Trademark does not require originality; its purpose is to identify the source of goods. In the U.S., trademark rights arise only when there is actual use in commerce. Infringement consists of selling goods or services under the same or a confusingly similar name. Trademark has its own types of "fair uses" including use for product comparison and criticism, news reporting, and parody.
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Question: What defenses are there to trademark infringement or dilution?
Answer:
Defendants in a trademark infringement or dilution claim can assert
basically two types of affirmative defense: fair use or parody.
Fair use occurs when a descriptive mark is used in
good faith for its primary, rather than secondary (trademark),
meaning, and no consumer confusion is likely to result. So, for
example, a cereal manufacturer may be able to describe its cereal as
consisting of "all bran," without infringing upon Kelloggs' rights in
the mark "All Bran." Such a use is purely descriptive, and does not
invoke the secondary meaning of the mark. Similarly, in one case, a
court held that the defendant's use of "fish fry" to describe a batter
coating for fish was fair use and did not infringe upon the plaintiff's
mark "Fish-Fri." Zatarain's, Inc. v. Oak
Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are
privileged because they use the terms only in their purely descriptive
sense.
Some courts have recognized a somewhat different, but closely-related,
fair-use defense, called nominative use. Nominative use occurs when use
of a term is necessary for purposes of identifying another producer's
product, not the user's own product. For example, in a recent case, the
newspaper USA Today ran a telephone poll, asking its readers to vote for
their favorite member of the music group New Kids on the Block. The New
Kids on the Block sued USA Today for trademark infringement. The court
held that the use of the trademark "New Kids on the Block" was a
privileged nominative use because: (1) the group was not readily
identifiable without using the mark; (2) USA Today used only so much of
the mark as reasonably necessary to identify it; and (3) there was no
suggestion of endorsement or sponsorship by the group. The basic idea
is that use of a trademark is sometimes necessary to identify and talk
about another party's products and services. When the above conditions
are met, such a use will be privileged. New Kids on the Block v. News America
Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
Finally, certain parodies of or using trademarks may be permissible if they are not too directly tied to commercial use. The basic idea here is that
artistic and editorial parodies of trademarks serve a valuable critical
function, and that this critical function is entitled to some degree of
First Amendment protection. The courts have adopted different ways of
incorporating such First Amendment interests into the analysis. For
example, some courts have applied the general "likelihood of confusion"
analysis, using the First Amendment as a factor in the analysis. Other
courts have expressly balanced First Amendment considerations against
the degree of likely confusion. Still other courts have held that the
First Amendment effectively trumps trademark law, under certain
circumstances. In general, however, the courts appear to be more
sympathetic to the extent that parodies are less commercial, and less
sympathetic to the extent that parodies involve commercial use of the
mark.
So, for example, a risqu? parody of an L.L. Bean magazine advertisement (L.L. Beam's "Back to School Sex Catalog") was found not to constitute infringement. L.L. Bean, Inc. v. Drake Publishers, Inc., 811
F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like
character named "Spa'am" in a Muppet movie was found not to violate
Hormel's rights in the trademark "Spam." Hormel Foods Corp. v. Jim Henson Prods., 73
F.3d 497 (2d Cir. 1996). On the other hand, "Gucchie Goo" diaper
bags were found not to be protected under the parody defense, Gucci Shops, Inc. v. R.H. Macy & Co., 446 F.
Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo
"Enjoy Cocaine" were found to violate the rights of Coca-Cola in the
slogan "Enjoy Coca-Cola", Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). In short -- although the courts recognize a parody defense, the precise contours of that defense are difficult to outline with any precision.
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Question: What is the purpose of the fair use defense?
Answer: There is no easy answer to this question. However, one way to approach the question is to examine the purposes of the copyright laws. The clause of the Constitution that gives Congress the power to enact copyright laws indicates that the purpose of the given power is to "promote the progress of science and the useful arts" by allowing authors to secure the exclusive rights in their works for "limited times." Thus, many see the Constitutional scheme behind copyright as a kind of balance between (1) forming incentives for authors to create new works by giving them rights that will allow them to make money from their works, and (2) limiting the rights so that the works themselves are useful to the public and in turn advance the "progress of science and the useful arts." Fair use fits into this scheme by giving the public the right to use copyrighted works in certain situations even though the author has exclusive rights. That is, in some circumstances, such as certain uses involving scholarship or research, the "progress" referred to in the Constitution is best promoted and the public is best served by allowing an unauthorized use of the copyrighted work. These uses are deemed fair because they are consistent with the power given to Congress to enact copyright laws.
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Question: What is trademark dilution?
Answer: A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness. Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c).
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Question: What is false designation of origin?
Answer: It covers similar ground to trademark infringement, but is more specific to misrepresentation of source, and applies even when there is no trademark at issue. If your website makes it appear that you sell products made by Company X, but in fact you make these products in your garage, Company X might accuse you of falsely designating the origin of (or "passing off") your items.
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Question: What civil and criminal liabilities may be imposed for trademark infringement?
Answer: Under federal law (Lanham Act Section 32), an infringer shall be liable in a civil action by the registrant for certain remedies provided in the Act. One such remedy is an injunction, where a court orders a person who was found to violate the Act to stop its infringing activities. A trademark owner/registrant may also be able to obtain lost profits or damages against a defendant in a civil action only if the acts were committed with knowledge that such imitation was intended to be used to cause confusion, mistake, or to deceive. The trademark owner can recover (1) the domain holder's profits from use of the mark, (2) the trademark owner's damages resulting from harm to the value of mark, and (3) court costs as "actual damages." In determining the award to be paid, the court can choose to award up to three times the amount of actual damages. Instead of having to prove the amount of "actual" damages suffered as above, the mark owner can instead request payment of "statutory damages" from $1000 and $100,000 per domain name. Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation. The court can order the cancellation or transfer of a domain registration. In the case of a willful violation of Lanham Act section 43, a court may order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of a defendant bearing the registered trademark shall be delivered up and destroyed.
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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?
Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.
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