Trademark Law

โ„ข๏ธTrademark Law Unit 1 โ€“ Intro to Trademark & Unfair Competition Law

Trademark law protects distinctive identifiers of products and services, preventing consumer confusion and safeguarding brand identities. It covers words, logos, and symbols used in commerce, encouraging companies to invest in strong brands while helping consumers quickly identify desired goods. Key concepts include distinctiveness, likelihood of confusion, and dilution. Trademarks range from fanciful to generic, with registration processes and protection strategies. Unfair competition practices like passing off and false advertising are also addressed in this area of law.

What's Trademark Law All About?

  • Trademark law protects distinctive words, phrases, logos, symbols, slogans, and any other devices used to identify and distinguish products or services
  • Aims to prevent consumer confusion between products or services from different sources in the marketplace
  • Protects a company's brand identity and reputation by giving exclusive rights to use the trademark
  • Encourages companies to invest in developing strong brands and high-quality products or services
  • Helps consumers quickly identify the source of goods or services they desire
  • Covers trademarks used in commerce, which can be either interstate, intrastate, or international
  • Governed by both state and federal laws in the United States, with the primary federal statute being the Lanham Act

Key Concepts and Definitions

  • Trademark: A distinctive word, phrase, logo, symbol, or other device that identifies and distinguishes the source of goods or services
  • Service Mark: A trademark used in connection with services rather than physical goods
  • Trade Dress: The overall appearance and packaging of a product, which can include size, shape, color, texture, and graphics
  • Distinctiveness: The ability of a trademark to identify and distinguish the source of goods or services
    • Inherently Distinctive: Trademarks that are immediately capable of identifying the source (arbitrary, fanciful, or suggestive marks)
    • Acquired Distinctiveness: Descriptive marks that have gained secondary meaning through extensive use and advertising
  • Secondary Meaning: When a descriptive mark has become associated in the minds of consumers with a particular source through extensive use and advertising
  • Likelihood of Confusion: The key test for trademark infringement, which assesses whether consumers are likely to be confused about the source of goods or services
  • Dilution: The weakening of a famous trademark's distinctiveness or reputation through unauthorized use by others

Types of Trademarks

  • Fanciful Marks: Made-up words with no inherent meaning (Exxon, Kodak)
  • Arbitrary Marks: Common words used in an unrelated context (Apple for computers, Camel for cigarettes)
  • Suggestive Marks: Marks that suggest a quality or characteristic of the goods or services without directly describing them (Coppertone for sunscreen, Microsoft for software)
  • Descriptive Marks: Marks that describe a quality, characteristic, function, or feature of the goods or services (Holiday Inn for hotels, Best Buy for electronics retailers)
    • Require secondary meaning to be protected
  • Generic Terms: Common names for the goods or services themselves, which cannot function as trademarks (aspirin, escalator)
  • Certification Marks: Marks used to certify that goods or services meet certain standards or qualities (UL for product safety, USDA Organic for agricultural products)
  • Collective Marks: Marks used by members of a collective group or organization (CPA for certified public accountants, Realtor for real estate professionals)

Trademark Registration Process

  • Conduct a trademark search to ensure the proposed mark is available and not likely to cause confusion with existing marks
  • File a trademark application with the United States Patent and Trademark Office (USPTO)
    • Include the mark, goods or services, and filing basis (use in commerce or intent to use)
  • USPTO examines the application to ensure it meets all requirements and does not conflict with existing marks
  • If approved, the mark is published for opposition, allowing third parties to object to the registration
  • If no opposition is filed or the opposition is overcome, the mark is registered on the Principal Register
  • Maintain the registration by filing necessary documents and fees at regular intervals
    • Section 8 Declaration: Filed between the 5th and 6th years after registration and every 10 years thereafter to keep the registration alive
    • Section 15 Declaration: Filed after 5 years of continuous use to make the mark incontestable

Protecting Your Trademark

  • Monitor the marketplace for unauthorized use of your trademark or similar marks that may cause confusion
  • Send cease and desist letters to infringers, demanding they stop using the infringing mark
  • File a trademark infringement lawsuit in federal court to seek injunctions, damages, and other remedies
  • Record your registered trademark with U.S. Customs and Border Protection to prevent importation of infringing goods
  • Use proper trademark notices (TM for unregistered marks, ยฎ for registered marks) to alert others of your rights
  • Develop and maintain a strong brand identity through consistent use, advertising, and promotion of your trademark
  • License your trademark carefully and monitor licensees to ensure proper use and prevent loss of rights
  • Avoid using your trademark as a noun or verb, as this can lead to genericide (aspirin, escalator)

Unfair Competition: The Dirty Tricks

  • Passing Off: Selling goods or services under the pretense that they originate from another, usually well-known, source
  • False Advertising: Making false or misleading statements about the quality, characteristics, or origin of goods or services
  • Trade Disparagement: Making false or misleading statements about a competitor's goods or services to harm their reputation
  • Misappropriation of Trade Secrets: Obtaining and using a competitor's confidential business information through improper means
  • Bait and Switch: Advertising goods or services at a low price to attract customers, then steering them to buy more expensive items
  • Cybersquatting: Registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark
  • Dilution: Using a famous trademark in a way that blurs its distinctiveness or tarnishes its reputation
    • Blurring: The use of a famous mark by others on unrelated goods, weakening the mark's ability to identify the original source (Kodak bicycles)
    • Tarnishment: The use of a famous mark in an unwholesome or degrading context, harming the mark's reputation (Toys "R" Us adult entertainment)
  • Polaroid Corp. v. Polarad Electronics Corp. (1961): Established the "Polaroid Factors" for determining likelihood of confusion
  • Two Pesos, Inc. v. Taco Cabana, Inc. (1992): Held that trade dress can be inherently distinctive and protected without secondary meaning
  • Qualitex Co. v. Jacobson Products Co. (1995): Held that color alone can serve as a trademark if it has acquired secondary meaning
  • Moseley v. V Secret Catalogue, Inc. (2003): Clarified that dilution requires actual harm to the famous mark's economic value, not just a likelihood of dilution
  • KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. (2004): Held that fair use is an affirmative defense to trademark infringement, even if some confusion is likely
  • Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. (2012): Held that a single color can be a valid trademark in the fashion industry if it has acquired secondary meaning

Practical Tips for Trademark Management

  • Choose a strong, distinctive trademark that is not merely descriptive or generic
  • Conduct a thorough trademark search before adopting a new mark to avoid conflicts
  • Register your trademark with the USPTO and other relevant international offices
  • Use your trademark consistently and prominently in advertising and promotion
  • Monitor the marketplace for potential infringers and take prompt action to enforce your rights
  • Develop a trademark usage guide for employees, licensees, and partners to ensure proper use
  • Keep accurate records of your trademark use, advertising, and enforcement efforts
  • Conduct regular trademark audits to ensure your registrations are up to date and your rights are being properly maintained
  • Work with experienced trademark attorneys to develop and implement a comprehensive trademark strategy


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ยฉ 2024 Fiveable Inc. All rights reserved.
APยฎ and SATยฎ are trademarks registered by the College Board, which is not affiliated with, and does not endorse this website.