Stealth Attack

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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.

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Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.

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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.

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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.

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Answer: Answer: A trade name is the actual name of the company. It may or may not also be a trademark. Trademarks are used to label specific goods or services; trade names identify the organization itself. For example, "Ford Motor Company" is a trade name as well as a trademark. "Bronco" is a trademark only. In those cases, if the trade name is registered as a domain name, the name owner is protected against cyber-squatting under traditional trademark provisions and also under the newer Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Dispute Resolution Policy (UDRP) of ICANN.

If a trade name is not used as a trademark, it may still be protected under other kinds of laws (having different criteria and remedies), such as unfair competition. However, if the trade name is registered as domain name, the owner will not be protected against cyber-squatting under the Anti-Cybersquatting Consumer Protection Act (ACPA) or the Uniform Dispute Resolution Policy (UDRP) of ICANN since they both apply only to trademarks.

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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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Answer: Common law rights are those that are recognized by courts as a matter of traditional equitable principles and fairness, even when there is no statute or other law that has been enacted by the legislative branch of government to cover the situation. It also arises from the leeway that judges have in interpretating the language of the written laws when the meaning is not clear. Common law is often known as "judge-made" law. Common law is learned by reading the actual decisions made by courts.

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Answer: The Lanham Act defines a counterfeit mark as a false mark which is identical to or substantially indistinguishable from a registered mark.

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Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered.

Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.

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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.

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Answer: Owners of "famous" marks have special privileges. They can block new uses of any similar name even if consumers wouldn't be confused by it. They are protected against "dilution" and "tarnishment" as well.

If you walk up to someone on the street and ask someone if they recognize the word or symbol, and they recognize it right away, it is probably famous. If you have to remind them ("The Berkman Center is this crazy thing at Harvard

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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).

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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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Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a famous mark if such use causes dilution of the distinctive quality of the mark.

A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name "candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board games.

Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services. The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even though it may not cause confusion to the consumer.

The following uses of a famous mark are specifically permitted under the Act:

1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.

In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet others have said that merely being famous in one's product line is sufficient.

Many states also have antidilution laws protecting mark owners.

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Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered.

Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.

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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

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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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Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994).

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Answer: There are many limits, including:

• Fair Use
  There are two situations where the doctrine of fair use prevents infringement:
  1. 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.
  2. Nominative fair use
     This is when a potential infringer (or defendant) uses the registered trademark to identify the trademark holder's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:
     • the product or service cannot be readily identified without the 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 trademark holder 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.

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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.

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Answer: This website is meant as an aid to help you decipher Cease and Desist notices so you can make informed decisions about your course of action. If, after reading this, you think the C&D you received might have some merit, or you think you might engage your opponent in battle even if the C&D is, in your opinion, baseless, consultation with an attorney is always a good idea.

The Online Media Legal Network (OMLN) is a network of law firms, law school clinics, in-house counsel, and individual lawyers throughout the United States willing to provide pro bono (free) and reduced fee legal assistance to qualifying online journalism ventures and other digital media creators.

You can find an intellectual property attorney at www.martindale.com or by calling your state or local Bar Association and asking for a referral.