PUBP 4640: Trademark Basics

Trademark

Distinctive, non-functional feature identifying company's goods/services

Trade Dress

Distinctive product/packaging designs, sounds, scents (if non-functional)

Palming Off

Deceptive practice of passing off another's goods as one's own

Goodwill

Reputation and value of a business

Common Law

Trademark rights obtained through use, not registration

Scope of Use

Extent of rights to use/exclude others from using a mark

Lanham Act

Main federal statute governing trademark law in the US

Intent-to-Use (ITU)

Registering a mark with intention to use in commerce

Statement of Use

Document showing actual use of mark in commerce

Prosecution

Approval process for trademark registration by the USPTO

Functional Trademark

Characteristic of a product that is non-distinctive or utilitarian

Aesthetic Functionality

Denies trademark protection to design features for aesthetic appeal

Secondary Meaning

Association of a mark with a specific source over time

Fanciful Mark

Made-up terms with no prior meaning (e.g., ROLEX)

Arbitrary Mark

Existing words unrelated to goods/services (e.g., APPLE for computers)

Suggestive Mark

Requires imagination to link mark to goods (e.g., COPPERTONE)

Descriptive Mark

Describes some aspect of the goods (e.g., RAISIN BRAN)

Generic Mark

Common name for a product, no protection

Fanciful Marks

Coined terms with no previous meaning, such as ROLEX watches and EXXON gasoline.

Arbitrary Marks

Existing words unrelated to the goods, like APPLE computers.

Suggestive Marks

Terms requiring imagination to link to goods, for example, COPPERTONE suntan lotion.

Descriptive Marks

Terms describing goods, like RAISIN BRAN cereal, which may qualify for protection after acquiring secondary meaning.

Genericide

The process where a distinctive trademark becomes generic over time, losing its protection.

Generic Term

A word denoting a broad type of product rather than a specific source, leading to loss of trademark protection.

Elliot v. Google Inc.

A case establishing that if the primary significance of a trademark is to describe the product type rather than the producer, it cannot be a valid trademark.

Velcro

An example of a brand actively avoiding genericide through legal and marketing efforts.

Iancu v. Brunetti

A case addressing the constitutionality of the Lanham Act's prohibition on registration of 'immoral' and 'scandalous' trademarks.

Trademark Classification

The arrangement of trademark documents based on the description and scope of goods or services, often requiring fees for each classification.

Likelihood of Confusion

The possibility that consumers may be confused by the similarity of marks or classification of goods, affecting trademark protection.

Domino Sugar v. Domino's Pizza

A case where Amstar lost a trademark infringement lawsuit against Domino's Pizza due to the weak nature of the Domino mark in relation to food.

Domino's Pizza

A company that introduced evidence of 15 uses of marks including 'Dominos' in the marketplace by other companies, related to food and grocery stores.

US Federal Trademark Registration

The process of registering a trademark for goods and services, with 45 categories including Class 029 for Meat, Fish and Poultry, Class 030 for Coffee, Flour and Rice, Class 035 for Advertising and Business Services, and Class 043 for Food Services.

International - Trademark Treaties

Agreements such as the Paris Convention, TRIPS, Madrid Protocol, and EU Community Trademark System that facilitate international registration and protection of trademarks.

Madrid Protocol

An international registration system that allows registering a mark in multiple countries, with the effect of the registration being the same as if the mark had been deposited directly with the office of each designated country.

Cancellation of a US Trademark Registration

The loss of trademark rights through abandonment, improper licensing or assignment, or genericity, with non-use for three consecutive years being prima facie evidence of abandonment.

Trademark Infringement

When a party owning the rights to a trademark sues subsequent parties for using a similar mark likely to cause consumer confusion as to the source or approval of the goods.

Defenses to Trademark Infringement

Negative defense ('I am not infringing') and affirmative defense ('I admit I am infringing, but it is allowable under a doctrine'), with doctrines including Fair Use, Parody, Doctrine of Laches, Estoppel, Unclean Hands, or Contesting Registration.

Fair Use

Includes Descriptive Fair Use (using a descriptive mark in good faith for its primary meaning without causing consumer confusion) and Nominative Fair Use (using a term to identify another producer's product).

Trademark Dilution

An action for dilution under federal or state law, available for 'famous' marks under federal law and for marks with 'selling power' or substantial similarity under state laws, with remedies including 'Blurring' and 'Tarnishment' of the mark.

Remedies

Entitlements for successful plaintiffs, including injunctions against further infringing or diluting use of the trademark, monetary relief, and possible trebled damages upon showing of bad faith.

Gray Market

Arises when foreign manufacturer's goods, legitimately sold abroad, are imported into the United States to compete with those of the manufacturer holding the US trademark rights, with legality determined by the 'first-sale doctrine' and the prevention of consumer confusion.

Avoid Advertising and Marketing Pitfalls

Best practices including conducting clearance searches before using a mark or name, monitoring use of others' intellectual property, monitoring others' use of trademarks, monitoring registrations, and filing oppositions.