FAQ: Questions and Answers

[back to notice text] Question: What is a trademark? Answer: A trademark is a "mark" (word, phrase, symbol, design, mark, device, or combination thereof) used to identify the source of a product. Trademarks allow consumers to evaluate products before purchase. [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 is "trade dress"? Answer: At one time the term referred only to the manner in which a product was dressed up to go to market e.g. a label, package, display card and other packaging. Today, the term refers to the totality of elements in which a product or service is packaged or presented. These elements combine to create the visual image presented to customers. This "trade dress" is capable of acquiring exclusive legal rights as a type of trademark---or, identifying symbol of origin. All aspects of appearance are potentially protected as trade dress [back to notice text] Question: What does it mean to take all reasonable steps to protect a trademark? Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services. If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial. If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement. Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark distinctive. [back to notice text] Question: What does it mean to take all reasonable steps to protect a trademark? Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services. If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial. If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement. Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark distinctive. [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: How do I register a trademark? Answer: There are three ways to register: file a use application, which lets someone who is already using the mark register it, file an intent to use application, which states that you honestly intend to use the mark in commerce. The mark must be associated with commerce, instead of simply being a mark that you want to reserve. Merely using the mark in advertising or promotion does not qualify under this category -- the use must be associated with an actual commercial purpose, or (non-US applicants only) file based on an existing foreign registration. All applications require a fee. Remember that it is not necessary to register a trademark to gain protection in the United States. Four months after registration, the trademark application is examined by an attorney at the PTO. The attorney determines whether the mark is registerable. If not, the applicant receives a letter stating the grounds for refusal and information on needed corrections (if applicable). If the attorney requests additional information, the applicant has six months to respond; after six months, the application is deemed abandoned. The most common reason for being unable to register is that the mark is confusingly similar to an existing mark. If the attorney finds a conflicting mark and cannot grant the application, the PTO does not refund the application fee. If the mark can be registered and the application passes, the attorney approves the mark for publication in the PTO [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 is a "generic" name? Answer: A word used by the majority of the public to name a class or category of product or service. A generic name cannot be protected or registered as a trademark or service mark. For example, no seller can have trademark rights in "telephone" or "oven." If a seller did have exclusive rights to call something by its recognized name, it could amount to a monopoly on selling that type of product. [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 exactly are the rights a trademark owner has? 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. [back to notice text] 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. [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 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 an "innocent fan fiction?" Answer: [back to notice text] Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute? 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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