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United States trademark law

From Wikipedia, the free encyclopedia

United States trademark law

A trademark is a word, phrase, or logo that identifies the source of goods or services.[1] Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.[2]

United States trademark law is mainly governed by the Lanham Act. Common law trademark rights are acquired automatically when a business uses a name or logo in commerce, and are enforceable in state courts. Marks registered with the U.S. Patent and Trademark Office are given a higher degree of protection in federal courts than unregistered marks—both registered and unregistered trademarks are granted some degree of federal protection under the Lanham Act 43(a).[3]

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Transcription

Hi! I'm Stan Muller, this is Crash Course Intellectual Property, and today we're talking about trademarks. Trademarks are everywhere, and they can often be confusing, so today we're gonna talk about why just about everything seems to be trademarked, and why trademarks are good for business. Mr. Muler! Trademarks don't intersect with my life, so I really don't see why we need to cover this. One, its Muller, and two, just watch the video. A trademark is any word, name, symbol, or device, used to identify and distinguish goods from those manufactured or sold by others, and to indicate the source of the goods, even if that source is unknown. This bit about unknown sources means that you, as a consumer don't usually know the person or factory that actually made the goods you buy. Before the industrial revolution, you often knew exactly who was making your stuff, and how it was made. If you wanted a hammer, you went to the blacksmith, and you knew his name. It was probably Smith. These days, brand names assure you that you're buying the same product, say toilet paper, that you bought last time you went shopping. You know, like the stuff with the ripples. Seriously though, getting the wrong medication because of brand name confusion or counterfeiting could be disastrous. The rational for granting legal protection for trademarks is that they're a type of property -- it demonstrates to the purchasing public a standard of quality and embodies the good will and advertising investment of its owner. In other words, companies expend a tremendous amount of resources to develop the product, market it to customers, and provide customer support, and back up their product with warranties. At its core, trademark law functions like a consumer protection measure. It prevents consumer confusion, and makes it easier for consumers to select and purchase the goods and services they want. For example, if you go shopping for a new television, you don't have to sift through dozens of products that are confusingly similar to Samsung. Knockoffs like Samsong or Wamsung or Sony. You want the Samsung, maybe based on past experience, or the company's reputation, or even a funny ad. Because the law protects the manufacturer's use of the trademark, you can be reasonably sure that the TV you're picking up at Best Buy is the TV you saw the Verge reporters freaking out about at CES. Though trademarks are often classified as intellectual property, the Supreme Court held, in the 1879 trademark cases, that Congress has no power to protect or regulate trademarks under the intellectual property clause of the Constitution. Which, as you'll recall provides congress with the authority to regulate and protect copyrights and patents. But this didn't stop congress from regulating trademarks - they used the commerce clause of the constitution which gives them the power to regulate commerce with foreign nations, and among the several states, and with the Indian tribes. Beyond trademarks, there are also service marks, which are very similar in that they distinguish one particular service. An example of a service mark is that roaring lion at the beginning of MGM movies - it's registered for motion picture production or something. Trade dress or product packaging is protected if it's distinctive and nonfunctional. Like, the shape of a nutter-butter cookie is protected trade dress. What they oughta trademark is the smell. Some people have registered smells, but we'll get to that in a minute. Trademarks are symbols, and since human beings might use as a symbol or device almost anything that is capable of carrying meaning, just about anything conceivable thing can function as a trademark. Trademarks can be words like Kraft or Lego, logos, designs like the Nike swoosh, aromas, like there's a brand of oil for race cars that smells like cherries, sounds like: *to the tune of the NBC ad* bong bong bong or *to the tune of the T Mobile ad* ba da da da dong or *to the tune of the Intel ad* dong dong dong dong or *to the tune of the McDonald's ad* ba da ba ba baaaa. Even *in the manner of Homer Simpson* "Doh!" is a registered trademark. You can register colors like UPS brown or Home Depot orange or Tiffany blue or John Deere green, personal names like Taylor Swift - T Swizzy's name is registered for 61 different goods and services, from shoes to Christmas tree ornaments. Even containers like the Coca-cola bottle or this perfume bottle shaped like a human skull can be registered. In short they can be almost anything that distinguishes the product from others and which signifies the source of the goods. Despite the breadth of potential trademark subject matter, there are some limits on what can be a valid trademark. Recently, a restaurant in Texas asserted trademark rights in the flavor of it's pizza. One of the restaurants former employees allegedly stole the recipe and opened up a competing pizza joint, selling pizzas that tasted a lot like those made by his former employers. The judge rejected the claim and dismissed the case, finding that it is unlikely that flavors can ever be inherently distinctive because they do not automatically suggest a product's source. Also, functional product features are not protectable under trademark law. Pizza has only one function - and that's to taste delicious. So, there are three requirements for trademarks. We just discussed the first one - that a trademark has to be a symbol or a device that a court or the patent and trademark office deems to qualify. The second requirement is that the mark has to be used in interstate commerce, and the third is that it has to identify the mark owners goods and distinguish them from those manufactured or sold by others. It has to be distinctive. Let's talk about trademarks and what makes them distinctive in the Thought Bubble. Courts rank trademark distinctiveness along a spectrum, ranging from unprotectable to highly protectable. At the bottom end of the spectrum is generic. Generic names refer to stuff like using the word orange for the fruit or dog for the canine or cheese for... cheese. Descriptive terms simply describe the goods and convey an immediate idea of what the product is, such as "break and bake" for scored cookie dough. Suggestive marks require some imagination or perception to link them to the goods, like Sheikh for middle eastern food or Froot Loops for circular fruit flavored breakfast cereal. Arbitrary marks are commonly used words used in unexpected ways - Apple for computers, or Amazon for book sales, or Shell for gasoline. The most distinctive marks are usually made up words. Fanciful marks are non dictionary words such as Google for an internet search engine, or Clorox for bleach, or Kodak for film. Fanciful, arbitrary, and suggestive marks receive automatic protection upon use because they are considered to be inherently distinctive. So the owner of the break 'n bake mark has to show that the consumers identify the product with Nabisco or Pillsbury or whoever makes the product. I honestly don't know who makes it, which isn't a good sign as to whether it's acquired secondary meaning. Generic terms are never entitled to protection. This becomes important when trademarks are gradually assimilated into the language as common names. Through a process sometimes called "genericide," the public comes to view such names as referring to the products themselves rather than as distinguishing the source of the products. As a result, the name loses its protection. Words like escalator, cellophane, and aspirin were all once protected by trademark. This process is ongoing today and there are a lot of modern marks that are threatened by genericide, like Google or Kleenex or Photoshop or Xerox. Thanks, Thought Bubble. So, once an owner meets the requirements for trademark and has a protected product they'll often put a TM or a little r in a circle next to a product name or brand. The TM shows that the owner is asserting trademark in the product. When you see the little circle r, that means the trademark has been registered with the US patent and trademark office. Like in copyright law, one you're registered with the feds, you have standing to take your case to federal court and maybe be awarded damages. Once the PTO is satisfied that the mark meets all the requirements the application is published for opposition. Anyone who might be affected by the registration has 30 days to oppose it. If no one opposes, the mark is registered! The owner is then required to file affidavits of continuous use -- basically you have to submit proof you are still selling the product associated with the trademark. You have to do this every five years to maintain the registration. Trademark owners can do this forever. This is different than patents and copyrights, whose trademarks are DOOMED by the limited times language in the intellectual property clause. So when it comes to trademarks, you have to use it or lose it. Trademarks are often disputed, and in pretty much every case, likelihood of confusion is the central issue. The principles set forth in an 1877 Supreme Court opinion in an unfair competition case: "What degree of resemblance is necessary to constitute an infringement is incapable of exact definition, as applicable to all cases. All that courts of justice can do, that regard, is to say that no trader can adopt a trade-mark, so resembling that of another trader, as that ordinary purchasers, buying with ordinary caution, are likely to be misled." Every court uses a slightly different set of criteria for deciding trademark cases. We're going to talk about the 7th Circuit Court of the United States' definition, which has seven parts. Those criteria are: One, similarity between the marks in appearance and suggestion. Two, similarity of the products. Three, the area and manner of concurrent use, which means where in the United States the product is for sale. Four, the degree of care likely to be exercised by the consumers. Five, the strength of the plaintiff's mark or how distinctive it is. Six, whether there is evidence that people were actually confused, which is a pretty strong sign that there's a likelihood of confusion. And seven, whether the defendant intended to palm off his product as that of the plaintiff. These factors are going to be weighed differently in individual cases, but the court has often noted that the similarity of the marks, the defendant's intent, and evidence of actual confusion are of particular importance. In addition, the Seventh Circuit has held that a court may consider other relevant factors such as the party's marketing channels and whether a trademark is being used in a parody. Trademark protection is also available under certain circumstances, even in the absence of likely or actual confusion. The Federal Trademark Dilution Act benefits only famous trademarks trademarks against a weakening of their valuable distinctive quality. There are two basic types of dilution: dilution by blurring, and dilution by tarnishment. Dilution by blurring happens when a similar trademark chips away at the distinctiveness of a famous trademark. For example, someone selling Apple brand toilet seats or bulldozers will blur the ability of Apple to identify a single source, even if people buying that stuff didn't think Apple computer made their bulldozer. Dilution by tarnishment happens when similarity between a mark or trade name and a famous mark harms the reputation of the famous mark. For example, and this is a real case, the guy that uses the trade name Victor's Little Secret for his store selling sex related products is likely to tarnish the famous Victoria's Secret mark. There's no real risk of confusion here, but the company Victoria's Secret is seeking to prevent the gradual tarnishing of their mark. One major issue with dilution is that famous trademarks are hard to come by. While there are super marks, like IBM, Google, Budweiser, Microsoft, courts have typically been hesitant to find less well known trademarks to be famous. It's not like YouTube or something, where you can be kind of famous, your trademark has to be really, actually, IRL famous to attain this status. Trademarks are fascinating, regardless of whether you are someone who enjoys strolling through the shopping mall with logos firmly affixed to your bags and coffee and clothes, or whether you believe brands and trademarks have become so powerful that they have been internalized by modern society and dictate our aspirations, our self image and our lifestyles. As we've watched Don Draper and James Bond conspicuously guzzle Heinekens, maybe we worry that brands are controlling and corrupting our creative content. Regardless, trademarks are ubiquitous. Trademarks help us make sound decisions about the products we need and want. They protect us from knock off goods and allow us to go about the daily business of our lives more quickly and more efficiently so that we can sit down tune our Samsung television to PBS on our Comcast cable tuner, watch the season finale of Downton Abbey, brought to you by Viking River Cruise Lines and Ralph Lauren. Thanks for watching, and as they say in Hank and John's hometown, don't forget to be awesome. Which is not a registered trademark. Which is how this happened: Tell either Eleanor or Alice not to forget to be awesome. Oh! Thank you, sir! Crash Course Intellectual Property is filmed at the Chad & Stacey Emigholz studio in Indianapolis, Indiana, and it's made by all of these nice workers for hire. If you'd like to keep Crash Course freely available for everyone forever, you can support the series at Patreon, a crowd funding platform that allows you to support the content you love. Speaking of Patreon, we'd like to thank our Headmaster of Learning Thomas Frank and our Vice Principals Kathy and Tim Philip and Linnea Boyev. Thank you so much for supporting Crash Course. You can get awesome rewards for your support. You cannot get ownership of the Crash Course copyright, but you can get the satisfaction of helping people learn. Thanks for watching, see you next week.

History

United States law has protected trademarks under state common law since colonial times, but it was not until 1870 that Congress first attempted to establish a federal trademark regime. This 1870 statute was purported to be an exercise of Congress' Copyright Clause powers, however, the Supreme Court struck down the 1870 statute in the Trade-Mark Cases. In 1881, Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress revised the Trademark Act in 1905.[4]

In the 1917 decision in Aunt Jemima Mills Co. v. Rigney & Co.,[5] the federal courts created the "Aunt Jemima Doctrine" which protects a trademark even when used to sell a different product (in this case, pancake syrup instead of pancake mix).[6]

In 1946, Congress passed the Lanham Act (15 U.S.C. §§ 10511127). The Lanham Act defines federal trademark protection and trademark registration rules. The Lanham Act grants the United States Patent and Trademark Office ("USPTO") administrative authority over trademark registration.

State law continues to add its own protection, complementing (and complicating) the federal trademark system.

Recent developments in U.S. trademark law have included the adoption of the Federal Trademark Dilution Act of 1995 (see Trademark dilution), the 1999 Anticybersquatting Consumer Protection Act, and the Trademark Dilution Revision Act of 2006 (see Trademark dilution).

Purpose

Trademark law protects a company's goodwill, and helps consumers easily identify the source of the things they purchase.

In principle, trademark law, by preventing others from copying a source-identifying mark, reduces the customer's costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale.[7] [internal punctuation omitted]

Symbols

U.S. Trademark rights come in two types: common law and federal registration.

  • – Signifies common law trademark rights. Businesses automatically receive common law trademark rights by using a brand name or logo in the normal course of commerce.
  • ® – Signifies a registered trademark. The ® symbol may only be used on a trademark that has been examined, approved and registered with the USPTO.

Acquiring trademark rights

Trademark rights are acquired through use of a mark in the normal course of commerce. For example, by using a brand name or logo on a product or its retail packaging.

Trademarkable things

A word, phrase, or logo can act as a trademark. But so can a slogan, a name, a scent, the shape of a product's container, and a series of musical notes.[7]

The language of the Lanham Act describes that universe [of things that can qualify as a trademark] in the broadest of terms. It says that trademarks "includ[e] any word, name, symbol, or device, or any combination thereof." § 1127. Since human beings might use as a "symbol" or "device" almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on sewing thread).[7]

Distinctiveness

Some trademarks afford more potent rights than others. The closer the relationship between the mark and the goods, the weaker the mark. Trademarks are often separated into four categories of distinctiveness:[8]

  • Arbitrary and Fanciful (strongest)
  • Suggestive (medium)
  • Descriptive (weak)
  • Generic (no protection)

Arbitrary and fanciful

Where there is no logical relationship between the mark and the goods or services, trademark protection is at its strongest. Arbitrary and fanciful marks are considered inherently distinctive and are prima facie registrable. For example, coined words – such as Kodak, Polaroid, or Starbucks – are considered fanciful and receive strong trademark protection. Arbitrary marks include preexisting words used in an arbitrary way, such as "Apple" when used for computers.

Suggestive

Suggestive trademarks are still broadly protected. These marks "suggest" something about the product or services they are used on. The suggestion is a subtle connotation, not an outright description of the product. An example is "Whirlpool" for washing machines.

Descriptive

Descriptive terms immediately describe the goods, or some important characteristic of the goods. Trademark law does not protect descriptive terms unless they achieve "secondary meaning" in the minds of consumers. That is, trademark rights accrue when the public comes to associate the descriptive term with a particular company rather than the product in general.

Generic

The generic term for a product or service cannot be trademarked. Granting trademark rights on a generic term-say "apple" for use on apple juice-puts other companies at an unfair competitive disadvantage. Every company has the right to describe its products and services using generic terms.

Trademark registration

Registration for Apple Computer Logo

Once acquired, trademark rights may be registered with the USPTO. "The Lanham Act gives a seller or producer the exclusive right to "register" a trademark, 15 U.S.C. § 1052, and to prevent his or her competitors from using that trademark, § 1114(1)."[7]

Benefits

Trademark protection depends on use in commerce, not registration. Both registered and non-registered trademarks are eligible for protection under the Lanham Act. However, registration (on the "Principal Register") affords several advantages:

  • Nationwide trademark rights
  • A registered mark is presumed to be a valid trademark
  • The owner listed on the registration is presumed to be the true owner of the trademark rights
  • Presumption that the mark has not been "abandoned" through non-use
  • Access to Federal Courts for litigating trademark infringement
  • "Incontestability." After five years of unopposed registration, a trademark is eligible to become "incontestable." An incontestable mark cannot be attacked on the grounds that it is "merely descriptive."
  • Constructive notice – that is, infringers cannot claim that they were unaware of a registered trademark
  • Enhanced remedies for infringement, including the possibility of triple damages and criminal penalties for counterfeiting (note that counterfeiting is a more culpable type of infringement)
  • Right to have the U.S. Customs Service prevent others from importing goods bearing infringing marks

Application process

Trademarks may be registered online. The USPTO charges a $275 fee for online trademark applications. The process takes about 6 months from initial application to final registration. It is a general practice to hire a trademark lawyer to file the application on behalf of the future owner.

Once the application is filed, it sits in a queue for a few months. Eventually, a USPTO Trademark Examiner will examine the application according to the rules of the Trademark Manual of Examining Procedure. If the Trademark Examiner identifies problems with the applications, the applicant will be sent a "preliminary rejection." The applicant will then have 6 months to file a reply with arguments in favor of their trademark application. If the Trademark Examiner is persuaded by the reply arguments, the application will be granted registration. If not, a "final rejection" will be issued.

When an application is allowed, it moves on to "publication" in the Trademark Official Gazette. Once published, there is a 30-day opportunity for other companies to appeal the registration. If no appeal is filed, the registration is finally issued.

If the registration receives a final rejection from the Trademark Examiner, the applicant may appeal the rejection to the Trademark Trial and Appeal Board. Likewise, if the application is opposed by a third party, the appeal will be reviewed by the Trademark Trial and Appeal Board.

Actual use vs. intent to use

An application for registration may be based upon "actual use" in commerce (a §1(a) registration) or upon a bona fide intent to use ("ITU") the mark in commerce (§1(b) registration). An ITU application is a placeholder. It will not be allowed to register until the applicant actually begins using the mark in interstate commerce. The value of ITU is in establishing priority—that is, determining which business first acquired the trademark rights.

Principal and Supplemental Registers

The benefits of federal trademark registration only accrue to marks listed on the "Principal Register". To be eligible for the Principal Register, a mark must be recognized as a trademark, and not just a description of some goods or services. Eligible marks include (a) arbitrary or fanciful marks, (b) "suggestive" marks, and (c) descriptive marks that have achieved "secondary meaning" or "distinctiveness."

The Supplemental Register is for "descriptive" marks that have not yet become distinctive. Descriptive marks describe some quality of the goods or services they are used with. Descriptive marks may become distinctive (acquire "secondary meaning") through 5 years of use in commerce, or through evidence of heavy advertising and market recognition.

Secondary meaning is acquired when in the minds of the public, the primary significance of a product feature... is to identify the source of the product rather than the product itself.[7]

Note that "generic" terms are ineligible for trademark protection altogether, and may not be registered on either the Principal or Supplemental Registers.

State-level

Trademarks may also be registered at the state level. State registrations are less potent than federal trademark registration. But federal registration requires use of the mark in interstate commerce. If a mark is only used in one particular state, registration at the state level may be appropriate. State trademark registration is usually by filing an application with the Secretary of State of the relevant state.

Infringement: likelihood of confusion test

Trademark infringement is measured by the so-called "likelihood of confusion" test. A new trademark will infringe on an existing one if the new one is so similar to the original that consumers are likely to confuse the two marks, and mistakenly purchase from the wrong company.[9]

The likelihood of confusion test turns on several factors,[9] including:

  • Strength of the plaintiff's trademark
  • Degree of similarity between the two marks at issue
  • Similarity of the goods and services at issue
  • Evidence of actual confusion
  • Purchaser sophistication
  • Quality of the defendant's goods or services
  • Whether the defendant's attempt to register the trademark was bona fide (in good faith).

This multi-factor test was articulated by Judge Henry Friendly in Polaroid v. Polarad.[9] and are often referred to as the "Polaroid Factors".

Note that other factors may also be considered in determining whether a likelihood of confusion exists. "Even this extensive catalogue does not exhaust the possibilities—the court may have to take still other variables into account."[9]

Limits

Consistent with the limited nature of trademark protection and the free speech guarantees of the First Amendment, U.S. law provides for a fair use defense to trademark infringement. Fair use in trademark law does not employ the same four-pronged analysis used in copyright law. The law recognizes two fair use defenses: classic fair use, where the alleged infringer is using the mark to describe accurately an aspect of its products;[10] and nominative fair use, in which the trademark is being used to actually refer to the trademarked product or trademark owner.

These uses are still subject to the requirement that there be no consumer confusion as to source or sponsorship. Trademarks may also be lawfully used in parodies, since in that case there is usually no likelihood of confusion.

Loss

Trademark rights operate under a "use it or lose it" rule. In other words, the trademark owner must continuously use the mark in commerce or risk a finding of abandonment through nonuse (usually after three years of nonuse).[11]

Difference from similar laws

In contrast to copyright or patent law, trademark protection does not have a set duration or definite expiration date. Trademark rights only expire when the owner stops using the mark in commerce. However, federal trademark registrations expire ten years after the registration date, unless renewed within one year prior to the expiration.

The U.S. Constitution specifically grants Congress power over copyright and patent law, but not over trademark law. Instead, Congress' power to create federal trademark law is derived from the Commerce Clause. Therefore, there must be some degree of interstate commerce present for a trademark to receive Lanham Act protection. The U.S. Supreme Court invalidated the first federal trademark law by finding that Congress could not stretch the Copyright Clause to cover trademarks.[12]

Unlike copyright law which provides for criminal penalties as well as civil damages, trademark law in the United States is almost entirely enforced through private lawsuits. The exception is in the case of criminal counterfeiting of goods. Otherwise, the responsibility is entirely on the mark owner to file suit in either state or federal civil court in order to restrict an infringing use. Failure to "police" a mark by stopping infringing uses can result in the loss of protection.

See also

References

  1. ^ "Trademarks". www.wipo.int. Archived from the original on 2018-02-21. Retrieved 2018-02-25.
  2. ^ "Overview of Trademark Law". cyber.harvard.edu. Archived from the original on 2018-03-08. Retrieved 2018-02-25.
  3. ^ "Overview of Trademark Law". cyber.harvard.edu. Archived from the original on 2018-03-08. Retrieved 2018-02-25.
  4. ^ "Approved February 20, 1905; CHAP. 692, P. L. 84 Stat" (PDF). Library of Congress. Archived (PDF) from the original on August 5, 2020. Retrieved January 17, 2020.
  5. ^ "247 F. 407 (2nd Cir. 1917), 42, Aunt Jemima Mills Co. v. Rigney & Co". Archived from the original on 2021-09-08. Retrieved 2021-09-08.
  6. ^ "Aunt Jemima, what took you so long?". 3 August 2011. Archived from the original on 2021-09-08. Retrieved 2021-09-08.
  7. ^ a b c d e Qualitex v. Jacobson Products, 514 U.S. 159 (Supreme Court 1995).
  8. ^ Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4 (2nd Cir. 1976)
  9. ^ a b c d Polaroid v. Polarad, 287 F.2d 492 (2nd Cir. 1961).
  10. ^ KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).
  11. ^ Fishman, Stephen (2016). Trademark: Legal Care for Your Business & Product Name (11th ed.). Berkeley: Nolo. p. 238. ISBN 9781413322941. Archived from the original on 3 April 2023. Retrieved 2 October 2020.
  12. ^ The Trade-Mark Cases, 100 U.S. 82 (1879).

External links

This page was last edited on 9 January 2024, at 20:11
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