FAQ: Questions and Answers

[back to notice text] Question: What are the benefits of federal trademark registration? Answer: Federal registration of a trademark has several advantages including notice to the public of the registrant's claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods or services set forth in the registration. Registration Provides the Following: 1. Constructive notice nationwide of the trademark owner's claim. 2. Evidence of ownership of the trademark. 3. Jurisdiction of federal courts may be invoked. 4. Registration can be used as a basis for obtaining registration in foreign countries. 5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods. [back to notice text] Question: What can be protected as a trademark? Answer: You can protect names (such as company names, product names) domain names if they label a product or service images symbols logos slogans or phrases colors product design product packaging (known as trade dress) [back to notice text] 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. [back to notice text] Question: What do these registration numbers mean? or Why don Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the mark in commerce, not from registering. However, both state and federal law can provide relief from trademark infringement. If your opponent has registered its mark on the Patent & Trademark Office [back to notice text] Question: What is a domain name? Answer: A domain name is a name associated with a particular computer online. In the domain name www.chillingeffects.org, .org is the top-level domain ("TLD"), chillingeffects is the second-level domain name, and www is a subdomain. Domain names are looked up on name servers in the DNS hierarchy to resolve them to numerical IP addresses. A domain name registration, like a telephone directory listing, is simply a service by which the domain registry agrees to list your domain name and the corresponding IP address in its domain zone file (such as the .com zone file). The routers that forward data bits around the Internet must consult these zone files to know which machine you're using. If the registry removes the domain name from the zone file, then routers (and users) will not be able to address mail or see your website if they use your domain name. They can, however, still reach you by using your IP address. There are over 250 top level domains (like .com, .us and .uk). Each has its own procedures for handling registrations and trademark disputes. [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 are the limits on dilution? 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. [back to notice text] Question: What is trademark tarnishment? Answer: Trademark "tarnishment," a kind of dilution, can occur if a non-owner uses the mark in connection with shoddy or unsavory products or services, illegal activity, or activity that is likely to offend the average person. For example, using a Walt Disney trademark on a website filled with pornography could be claimed to tarnish the reputation of the Disney mark in the minds of viewers who saw this material. Tarnishment is not always actionable -- it might be non-commercial or parody use. [back to notice text] Question: What is Section 43(a) of the Lanham Act? Answer: The Lanham Act is the basic federal trademark and unfair competition law. Section 43(a) (15 U.S.C. 1125(a)) is intended to protect consumers and competitors against false advertising and false designations of origin. The law allows for suit against someone who makes false claims about its own or a competitor's products. Sec. 1125. False designations of origin, false descriptions, and dilution forbidden (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. [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 is the Paris Convention and how does it apply to United States Trademark Law Answer: Please see Bitlaw for an online copy of the Treaty; the applicable lanugage reads as follows: " (1)Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed. (2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority."

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