FAQ: Questions and Answers

[back to notice text] Question: What is a trademark and why does it get special protection? Answer: A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws. Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic. The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused. [back to notice text] Question: How can I find out if someone has a valid trademark? Answer: It isn't easy. In the United States, a trademark owner isn't required to register the mark anywhere, so there is no single central list of them all. Unlike most other nations, registration here is optional. Many owners do register their marks with the government, however, to better notify the world of their claims. Each state has its own trademark registry for goods and services sold locally. For companies that sell in more than one state, there is a US federal registry that is accessible online through TESS. TESS is searchable by key word as well as by registration number. Because registration is not required, however, a word might still be a protected mark even if it doesn't appear in any of these locations. When a company is selecting a new brand, its trademark attorney will usually conduct a "trademark availability" search which will look in many different locations to try and ferret out competing uses of the desired name. Business directories, Internet search engines, telephone directories are other searched sources. Multi-national vendors will search trademark registries in foreign nations as well. Even the most exhaustive search will not be conclusive, however, but it will usually indicate that if there is any other commercial use, it is probably limited to a very local area. It is OK to use the same mark as another company, so long as the new use isn't likely to confuse consumers. [back to notice text] Question: Where can I find federal trademark registrations? Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks. This database may not be complete. One should check the News page to see how current the information actually is. Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered (common law marks) and foreign marks as well. A mark does not have to be registered to be valid. [back to notice text] Question: What are the limits of trademark rights? Answer: There are many limits, including: Fair Use There are two situations where the doctrine of fair use prevents infringement: The term is a way to describe another good or service, using its descriptive term and not its secondary meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe. If the term is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as part of a narrative, then this is a non-commercial use even if the narrative is commercially sold. Nominative fair use This is when a potential infringer (or defendant) uses the registered trademark to identify the registrant?s product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements: his/her product or service cannot be readily identified without pointing to the registrant?s mark he/she only uses as much of the mark as is necessary to identify the goods or services he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant Parody Use Parodies of trademarked products have traditionally been permitted in print and other media publications. A parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is not the original and is instead a parody. Non-commercial Use If no income is solicited or earned by using someone else's mark, this use is not normally infringement. Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially. Product Comparison and News Reporting Even in a commercial use, you can refer to someone else?s goods by their trademarked name when comparing them to other products. News reporting is also exempt. Geographic Limitations A trademark is protected only within the geographic area where the mark is used and its reputation is established. For federally registered marks, protection is nationwide. For other marks, geographical use must be considered. For example, if John Doe owns the mark Timothy?s Bakery in Boston, there is not likely to be any infringement if Jane Roe uses Timothy?s Bakery to describe a bakery in Los Angeles. They don't sell to the same customers, so those customers aren't confused. Non-competing or Non-confusing Use Trademark rights only protect the particular type of goods and services that the mark owner is selling under the trademark. Some rights to expansion into related product lines have been recognized, but generally, if you are selling goods or services that do not remotely compete with those of the mark owner, this is generally strong evidence that consumers would not be confused and that no infringement exists. This defense may not exist if the mark is a famous one, however. In dilution cases, confusion is not the standard, so use on any type of good or service might cause infringement by dilution of a famous mark. [back to notice text] Question: What is trademark infringement? Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers. [back to notice text] Question: What implication does alleged confusion have on claims of trademark infringement? Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include: proof of actual confusion strength of the established mark proximity of the goods in the marketplace similarity of the marks? sound appearance and meaning how the goods are marketed type of product and how discerning the customer is intent behind selecting the mark likelihood of expansion in the market of the goods [back to notice text] 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). [back to notice text] Question: What does "distinctive" mean? Answer: "Distinctive" is a term of art in trademark law and is determined by analyzing several factors. Essentially, a mark is distinctive when the consumers have come to recognize it as the source or origin of certain goods or services. Take the word "bronco": consumers recognize it as a brand of automobile; therefore it is distinctive as to automobiles. But it is not distinctive as to horses, where it would be generic, nor as to baby diapers since there is no one offering such goods under that label. Some words can never become distinctive as marks if they generically describe the very good or service for which they are used (i.e., one cannot trademark the word "basketball" to describe a brand of basketballs.) In general, if a word has been in substantially exclusive and continuous use as a mark in commerce for five years, it will be deemed distinctive as to those goods/services 15 USC 1052(f). [back to notice text] Question: What is a famous mark? Answer: A famous mark is a mark that has become so well known, that it has become almost universally recognized. An example of such a mark would be "McDonald's" or "Coca-Cola." Famous marks become important where an owner of a trademark is claiming trademark dilution against a defendant. The Federal Anti-Dilution Act of 1996 provides that an owner of a famous mark is entitled to an injunction where a defendant's use of the mark causes dilution of the distinctive quality of the owner's famous mark. In determining whether a mark is famous, a court will consider a list of eight factors, found in the 1996 Federal Anti-Dilution Act. [back to notice text] Question: Can a trademark give someone rights in common words and letters? Answer: Not all identifying names and phrases can be protected by trademarks. Protection depends on a mark's strength, which is determined by how it is categorized. There are four categories (in descending order of strength): arbitrary suggestive descriptive generic An arbitrary mark receives the most protection since the name bears no relationship to the product -- it implies imagination and thought. Kodak is an example of an arbitrary mark because the name itself suggests no connection to film or camera equipment. We learn this association only after the name has been used and becomes associated with the source of that product. A descriptive mark receives protection if it has secondary meaning in consumers' minds. A generic mark rarely receives protection because it is naturally associated with something in consumers' minds. An ordinary description is not special enough to warrant protection. However, if consumers connect the mark and its source in a way that would not exist without the mark's use in commerce, then the mark can be protected. Alphabet letters, initials, abbreviations and acronyms may be entitled to protection if they are so original that they constitute an arbitrary mark (e.g., NICAD for nickel cadium). Otherwise, they may be protected only if they had acquired a secondary meaning which means that consumers have come to recognize the mark and associate the goods with a particular manufacturer (e.g., IBM and BMW). [back to notice text] 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. [back to notice text] Question: What about common words that are used for many purposes? Answer: Common words and alphabetical letters can be protectable trademarks if they are used in arbitrary or unusual ways. One cannot trademark DIESEL to sell that generic type of fuel, otherwise no other diesel fuel dealer could use the word to identify the product. However, one could trademark DIESEL as a brand of ice cream. The owner of the ice cream mark can't use its rights to prevent fuel dealers from using the word on their station pumps nor can it prevent anyone else from using the word for non-trademark purposes, such as a website listing diesel fuel dealers. In general, the more a mark describes the good or service that it labels, the less strong the trademark protection it gets and the more freedom others have to use the same word for other purposes. See also this question on the strength of trademarks. [back to notice text] Question: I do not know what these cases or statutes cited in the C&D mean. Answer: If your opponent has cited cases and statutes in the C&D, do not freak out. The fact that your opponent can include some legal authority in the C&D does not mean that the law is on its side. If you can, go look up the cases and statutes to see what they say. You can go to the nearest law school's law library for help, or you can try a free legal resource web site like Findlaw. Many of them are accessible on the Internet by keyword search using the full case name or it's citation (the numbers and abbreviations that follow the names of the parties). If your opponent is relying on federal law, it will probably cite one or more of the following sections of the Lanham Act: (1) section 32 (also known as section 1114); (2) section 43(a) [a/k/a section 1125(a)]; or (3) section 43(c) [a/k/a section 1125(c)]. (The smaller numbers indicate how the statutory sections were numbered when the law was a bill in Congress; the larger numbers indicate how the statutory sections were re-numbered when the law was codified in the U.S. Code. Under either numbering system, the laws say the same thing). An additional statute, the Anti-cybersquatting Consumer Protection Act (ACPA) [a/k/a section 1125(d) relates specifically to domain names. Section 32 (codified as 15 U.S.C. 1114) is the basic statute governing trademark infringement of registered marks. If you use a mark in commerce that is confusingly similar to a registered trademark, you may be civilly liable under section 32. This section describes how to determine infringement, what the remedies are, and what defenses are available. Section 43(a) [codified as 15 U.S.C. 1125(a)] is the "false designation of origin" statute. If you use a mark in commerce that is likely to cause confusion or deception as to affiliation, association, origin, or sponsorship with another trademark, you may be civilly liable under section 43(a). Section 43(a) does not require that any of the marks be registered. Section 43(c)[codified as 15 U.S.C. 1125(c)] is the "anti-dilution" provision. This section allows the owner of a famous trademark to prevent use of the mark by junior users whose use ?dilutes? the distinctive quality of the famous trademark. In other words, 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. The ACPA [codified as 15 USC 1125(d) prohibits "cybersquatting" and lists the elements and defenses to a civil claim against a domain name holder. If you identify the statutory provisions on which your opponent relies, you can begin to get a feel for whether the C&D has merit. For instance, if your opponent relies on section 32, but does not disclose a registration number, your first question is: does your opponent have a registered mark? If not, it has no claim under section 32. [back to notice text] Question: How can I lose a domain registration in a UDRP? Answer: The trademark owner must prove three things: (1) that s/he has a trademark right that is identical or confusingly similar to your domain, (2) that you have no right or legitimate interest in the domain name, and (3) that you registered and used the domain in bad faith. [back to notice text] Question: Where can I find state trademark law? Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and remedies. If marks are used in interstate commerce, then federal law will also apply. [back to notice text] Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)? Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA. ACPA applies to people who: (1) have a bad faith intent to profit from a domain name; and (2) register, use or traffic in a domain name; (3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered. ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name. Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services. See the module on ACPA to find out more about bad faith and legitimate defenses. [back to notice text] Question: What are the possible penalties for violating the ACPA? Answer: Normally, the domain name holder will not evaporate, and can be sued directly. In such a case, the court can order the cancellation or transfer of the domain registration, as well as require the payment of money damages to the plaintiff trademark owner. 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. Attorney fees may be awarded in exceptional circumstances, such as when there was a willful and malicious violation. 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. [back to notice text] Question: How can I show that Complainant's trademark rights in a mark do not extend to my use of the mark in my domain name? Answer: One way is by showing the mark is a common name or common word. Using "Basset" as an example: A. Conduct a white pages search on the Internet, or local phone books, to demonstrate the word is a common last name. B. Using a search engine, such as "Google", show that the word has been used many times in many contexts not related to Complainant's field of use. C. (Attach this evidence to your Answer) D. (Link to UDRP decision concerning Basset) Of course that will only help you if you are using the term in a way that does not make people believe your site is run by the Complainant trademark holder, and outside the class of goods or services for which the trademark applies. [back to notice text] Question: What are the UDRP and ACPA? Answer: Follow these links for Frequently Asked Questions on the UDRP (Uniform Domain Name Dispute Resolution Policy) or ACPA (Anti-cybersquatting Consumer Protection Act).

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