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Terms in this set (21)
a word, name, symbol, device or any combination of those used identify and distinguish goods in commerce.
A word, name, symbol, device or combination used to identify and distinguish services.
Words that merely describe a product
Terms that suggest rather than describe a product automatically qualify for trademark protection. (ex: coppertone - suntan lotion)
A term, name, symbol or other device that has no bearing on a particular good is an arbitrary one and automatically qualifies fro trademark protection. (ex: Kodak, Oreo, Mustang = Car)
- Registered with Patent and Trademark Office in Dept. of Commerce.
- Registrants must submit a drawing of the mark along with forms and fee.
- Registration is for 10 years and may be renewed without limit.
- Registrant must give notice that the mark is registered.
What can be registered?
- Words, symbols, colors, etc.
- Something not protected by copyrights can be protected by trademark.
- Spider-Man movies, graphic novels and TV shows are protected by copyrights, but the name and various emblems are protected by trademark.
Trademark in Colors
- The U.S. Supreme Court has said a color can be a trademark if it has a trademark if it has acquired a secondary meaning.
- Upscale jeweler Tifanny has registered this shade of blue as a trademark.
Value of registration
- It is prima facie evidence of a valid mark in an infringement suit.
- Once infringement established, the owner of the mark is entitled to infringer's profits, damages and cost.
- Against innocent infringers (publishers of an ad that violated trademark) the owner is entitled to an injunction only.
What can not be registered?
- iImmoral, scandalous or disparaging matter.
- Flags, symbols of U.S.., any state or any country.
- Name, portrait of any living person or deceased U.S. president.
- A mark similar to an existing mark.
- Descriptive or deceptive marks.
ELEMENTS OF INFRINGEMENT
- Use of a reproduction, counterfeit, copy or imitation of a mark.
- Without the registrant's consent
- in connection with the sale of goods
- Where such use is likely to cause confusion.
Test for Confusion
- Strength of Mark.
- Relatedness of goods.
- Similarity of goods.
- Evidence of actual confusion.
- Marketing channels used.
- Likely degree of purchaser care.
- Defendant's intent.
- Likely expansion of product lines.
Dilution of Trademark
- In addition to allowing trademark holders to sue for infringement, federal law allows them to sue for dilution of their mark.
- Dilution is a broader concept that takes into consideration uses that might lessen the value or distinctiveness of a well established mark.
Two Types of Dilution
Dilution by Blurring
Dilution by Tarnishment
Dilution by Blurring
An association arising from the similarity between a famous mark and another mark that impairs the distinctiveness of the famous mark.
Dilution by Tarnishement
An association arising form the similarity between a famous mark and another mark that harms the reputation of the famous mark.
Elements of Blurring
+ Courts may consider all relevant facts including.
- Degree of similarity between the marks
- Distinctiveness of the famous marks.
- Extent to which owner of famous mark makes exclusive use of it.
- Degree of recognition of the famous mark.
- Whether use of junior mark intended mark intended to create an association.
- Actual association between the marks.
It is NOT Dilution to....
+ Make fair use of a mark for
- Advertising or promotion that allows consumers to make comparisons.
- Identifying, parodying, criticizing or commenting upon the famous mark, its owner or goods.
- Any noncommercial use of the mark.
Permitted Uses of Trademarks
- Law allows one to use another's trade or service marks to convey truthful information in news, commentary or advertising.
- Trademark cannot insulate the owner form criticism.
- Usually the use of a trademark in a parody or criticism is protected.
When You Use a Trademark
Be sure to...
- Capitalize brand names, trademarks.
- Note registration,
- Don't use brand names in genetic sense.
THIS SET IS OFTEN IN FOLDERS WITH...
Limited Liability Company (LLC)
Antitrust Laws: State and Federal Law
Federal & State Court Structure
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