Trademarks

for BLAW final yippie

trademarks

a distinctive symbol or word, sound, or design that identifies the manufacturer as the source of the particular goods and distinguishes its products from those made or sold by others

failing to protect trademarks

risk them being generic, companies must determine how much it is worth to protect its rights

the lanham act

enacted in part to protect manufacturers from losing business to rival companies that used confusingly similar trademarks

trademark dilution

unauthorized use of a trademark that is distinctive and famous and impairs the mark’s distinctiveness or harms its reputation

plaintiff must prove for dilution

1) owns the distinctive mark 2) defendant has begun using a mark in commerce that’s allegedly diluting the famous mark 3) similarity between the two marks gives rise to an association 4) the association is likely to impair the distinctiveness or impair the famous mark’s reputation

when are famous marks protected

even when the unauthorized use is on a noncompeting good or unlikely to confuse

trademark registration

1) it is currently in commerce or 2) applicant intends to put it in commerce in 6 months; can be registered at the state or federal level

trademark infringement

when a registered trademark is copied to a substantial degree or used by another (intentionally or unintentionally)

winning an infringement suit

owner must show the defendant’s use of the TM created confusion, does not need to prove if it was intentional, can collect damages under the Lanham Act

distinctiveness of Marks

only trademarks deemed sufficiently distinctive from all competing trademarks will be prote

strengths of marks (strongest to weakest)

fanciful/arbitrary marks — suggestive marks — distinctive marks — generic marks

strong marks

fanciful/arbitrary get automatic protection because they are identifiable; use words or phrases not commonly connected to the product

suggestive marks

can become stronger with recognition or substantial advertising

secondary meaning

becomes attached to a term or name usually depends on the extensivity of the advertisements; considered distinctive/protected

generic terms

refer to an entire class of products, recieve no protection even with secondary meaning

service mark

trademark used to distinguish the services of a company or person from those of another

certification mark

used by one or more persons rather than the owner to certify the region/manufacturer/materials of the goods or services

collective mark

used by members of a cooperative, union, association, or other association

trade dress

the image and overall appearance of a product; broad concept and can include all or part of the image of the product or packaging

what is trade dress subject to?

the same protection at trademarks; major consideration is if the consumers are likely to be confused

trade names

part or all of the business’s name, whether the business is a sole proprietorship, a partnership, or a corporation

how are trade names protected?

as a trademark if the trade name is the same as the company’s trademarked product; protected under common law but only if they are fanciful or unusual

license

an agreement permitting the use of a trademark, copyright, patent , etc. for certain limited purposes

licesor

party that owns the intellectual property rights and issues the license

licensee

party obtaining the license

royalties

often received from the licensee in return for permission to use the trademarked item

domain names

part of an internet address

top level domain

indicates the type of entity that operates the site (google.com — .com)

second level domain

chosen by the entity registering the domain name (google.com — google)

domain name distribution system (ICANN)

oversees the distribution of domain names and operates the online system; sells generic top level domains which can now take any form for a price and have now been proliferated

cybersquatting

when a party registers a name that is the same or confusingly similar to the trademark of another and then tries to sell the domain name back to the trademark owner

anti-cybersquatting legislation. illegal if:

1) domain name is identical or confusingly similar to the trademark and 2) the one quatting was using “bad faith” to profit

cybersquatting proliferation

the speed which domain names changes hands has allowed cybersquatting to flourish

typosquatting

registering a name that is a misspelling of a popular brand name

applicability and sanctions of the ACPA

applies to all domain name registrations of trademarks, there are roadblocks to suing the ACPA and many cybersquatting issues are settled out of court

dispute resolution options by ICANN

1) UDRP (most settled here) or 2) URS (more limitations but faster)

meta tags

give the internet browsers information about the internet page; can increase the likelihood of the site appearing in search engine results

metatags and infringements?

using another’s trademark as a metatag constitutes infringement

keyword advertising

the business legally purchases certain terms to use in its online ads although it’s possible for businesses to purchase the same terms

trademark dilution in the online world

occurs when a trademark is used without authorization in a way that diminishes the distinctive quality of the mark

requirements of dilution claims

does not require proof that consumers are likely to b confused by a connection between the unauthorized use and the mark

licensing and domain names

a licesor may permit another party to use the trademark name as part of a domain name

licensing agreements

often include restrictions that prohibit licensees from sharing the file and creating similar applications; when you download software you are typically entering a licensing agreement

what is intellectual property?

products of the mind

forms of intellectual property

copyrights, trademarks, patents, trade secrets

purpose of trademarks

source indicator to consumer, quality assurance, symbol of goodwill, marketing and advertising

forms of marks

design, number, slogans, shape, sound, color (rare)

trademark infringement: Likelihood of confusion test

can sue if someone is using your trademark whether you are famous or not

trademark dilution: likelihood of dilution test

can combine with infringement, greater protection to owners of famous marks

average purchaser

does not include side by side comparison or perfect recall

descriptive marks

must acquire secondary meaning to be considered distinctive

rationale for distinctiveness of trademarks

public interest is encouraging competition and avoiding monopolies

descriptive vs. suggestive marks

very subjective line drawing

credit line notice

a written trademark notice as an alternative to a TM or SM or r circle symbol

registration

trademark may only be registered when mark is used publicly in the “ordinary course of trade”

statutory notice for trademarks

not mandatory, either statutory or actual notice is required before a plaintiff can collect damages and profits in an infringement suit

what is one legal tool that would permit you to legally use the intellectual property rights owned by another author?

a license