Trademark Law Notes

Trademark Basics

  • A trademark identifies the source of goods/services (word, phrase, symbol, etc.).
  • Registered with the USPTO, offering a limited monopoly.
  • Can last indefinitely with proper maintenance.
  • Main legal sources: federal (Lanham Act), state, and common law.

Other Intellectual Property Rights

  • Copyright: Protects original works in a tangible medium (e.g., writings, music).
    • Excludes ideas, procedures, and processes.
    • Duration: Author's lifetime + 70 years, or 95/120 years for work for hire/anonymous works.
  • Patent: Exclusive rights for an invention (article, process, machine).
    • A negative right to exclude others.
    • Term: 20 years from filing date.
    • Types: utility, design, and plant patents.
  • Trade Secret: Confidential information with economic value.
    • Protected under the Defend Trade Secrets Act.

Types of Trademarks

  • Service Mark: Identifies the source of services.
  • Trade Name: Official business name; doesn't offer legal brand protection.
  • Trade Dress: Distinctive design/packaging that identifies a product; protected under Lanham Act.
  • Certification Mark: Indicates goods/services meet specific standards.
  • Collective Mark: Used by members of an organization (association, union).

Trademark Symbols

  • ™: Common law trademarks (claim of ownership).
  • ℠: Service marks (claim of ownership for services).
  • ®: Registered trademarks (mark is protected by USPTO).

Trademark Infringement

  • Unauthorized use that causes confusion about the source/sponsorship.
  • Courts use the "likelihood of confusion" test.
    • Plaintiff must prove ownership and validity.
    • Mark does not need to be registered to sue.
    • If unregistered, owner establish ownership and validity.

Likelihood of Confusion Factors

  • Strength of the mark.
  • Proximity of the goods.
  • Similarity of the marks (sight, sound, meaning).
  • Evidence of actual confusion.
  • Marketing channels used.
  • Type of goods and degree of purchaser care.
  • Defendant’s intent.
  • Likelihood of expansion of product lines.

Dilution

  • Applies to famous, distinctive trademarks even without confusion.
  • Can occur between unrelated markets.
  • Types: blurring (impairs distinctiveness) and tarnishment (harms reputation).

Trademark Fair Use

  • Nominative Fair Use: Referencing trademark owner's goods/services without implying endorsement.
    *Example: cellular phone case for iPhones.
  • Descriptive Fair Use: Using trademark for its common, descriptive meaning.
    *Example: the inhibitor by WD-40.
  • Parodies, criticisms, and commentaries are also fair use.

Other Defenses

  • First Amendment: Freedom of speech may override trademark law.
  • Noncommercial use: Use not connected to the sale of goods/services.

Unregistered Marks

  • Enforceable within the geographic region where the owner conducts business.
  • Cannot obtain actual damages (lost profits) or attorney's fees.

Remedies for Infringement

  • Injunctions (stop infringing use).
  • Damages (defendant’s profits, owner’s losses).
  • Costs of the action.
  • Increased damages (up to three times) and attorney’s fees in exceptional cases.
  • Willful dilution can lead to similar damages.
  • Need to provide notice of trademark registration.