Presentation on theme: "“Any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or."— Presentation transcript:
2 “Any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others.” 15 U.S.C. §1127Identifies a brand of product or service.Since businesses often invest substantial amounts of time & money building brand recognition, important to protect trademark rights.
3 Names - most commonly used Coca-ColaStarbucksNikeThe Beatles
4 Slogans “Absolutely positively overnight” "Tastes Great, Less Filling” "Good to the Last Drop”"Breakfast of Champions”"Where's the Beef?"Fed-Ex; Miller Lire; Maxwell House; Wheaties; Wendy’s
5 What Can Be Used as a Trademark? Slogans: “Just Do It”
11 Consumers tend to buy well known brands & recognize brands by their trademarks. Prevent consumers from being misled or confused by use of similar names & other identifiersConsumers may rely on source as an indication of quality.Prevent businesses from stealing goodwill others have generated by creatively & consistently identifying & marketing their products.Encourages investment in quality & service by protecting investment in creating favorable reputation
12 Both federal & state law since federal & state governments have authority to regulate commerce. Federal Trademark LawCongress first enacted trademark statute in late 19th centuryThe Lanham Act (1946) - current federal trademark statuteState Trademark LawMany states have trademark statutes similar to Lanham ActTennessee Trademark Act, T.C.A. § et. seq.
13 U.S.: TM ownership derived from “use of a mark in commerce” First to use mark to sell product or service has superior rights over subsequent user of same or similar mark in connection with same or similar goods or servicesSelecting mark not enough - must use to identify product or service available for saleRights limited to area in which trademark is usedOther CountriesFirst to file (register) has rightsUse not necessarily required before filing
14 Distinctive marks identify goods or services as originating from a particular company, and consequently distinguish those goods or services from competitors’ goods or servicesHave little or no descriptive function; Operate primarily to identify a product sourceInherently distinctive: Marks that are unique (made up) or very originalSecondary Meaning: Marks that become distinctive due to TM owner’s efforts to create distinctiveness (long-term use & public recognition)Distinctiveness = key to strong trademark rights14
15 The more distinctive a mark, the greater the protection it receives. Coined/FancifulArbitrarySuggestiveDescriptiveWeak protectionOnly protected if secondary meaningGenericNo protectionThe more distinctive a mark, the greater the protection it receives.
16 No relationship to the nature of goods or services Coined: Exxon, Kodak, HaagenDazsArbitrary: Apple (computers)Strongest marks – greatest protection
17 Suggest rather than describe some aspect of the goods or services Coppertone, Jaguar, MicrosoftStrong trademark protection since they don’t actually describe products or services they identify, but can be good for marketing since they suggest products they identify
18 Describe some quality or characteristic of goods or services “Apple” brand apple juice“The Band”Not protected unless “secondary meaning” acquiredPresumed if 5 years continuous use. 15 U.S.C. §1052
19 Do not function as TM unless secondary meaning Curb Records, Geffen RecordsIdentify a person rather than a product or serviceSame for geographic namesTennessean (newspaper), Nashville Network
20 Choose name carefully – try not to infringe existing trademarked names. Band named Verve had to change name to The Verve due to existence of record label, Verve Records.20
21 Important to consider foreign trademarks as well if you might sell your products or services abroad UK band The Charlatans changed to The Charlatans UK in U.S. to avoid confusion with American 60s band with same name.21
22 Important to address who owns name & who has right to use if group breaks up or membership changes. Does mark belong to group, to members (collectively or individually) or someone else?Steppenwolf former bass player allowed to use name to describe himself as "former member of Steppenwolf," but agreed not to record or perform under name.Rare Earth - name belonged to corporation set up bt bandVito and the Salutations - Manager owned name since he "exerted influence over the style and content of the group's act"22
23 Do not function as trademarks Describe type of product rather than a particular brandGenericide: A term becomes so generic as to lose protection
24 File Application PTO examines for registrability & conflicts Takes about 1 year to receive responseMay require amendment or modificationAfter PTO approves, opportunity for opposition from other mark ownersRegistration issues if no opposition
25 Constructive notice of ownership claim Nationwide rightsExcept for prior users (registration never outweighs prior use under U.S. trademark law)Constructive notice of ownership claimPresumption of ownership & validity. 15 U.S.C. §1072People conducting searches will find your registration & avoid using similar mark
26 Right to use ® symbol 15 U.S.C. §1111 Use ™ for unregistered marksCan record registration with U.S. Customs to prevent importation of infringing goodsCan file foreign registrations based on U.S. registration
27 Protected where products are sold Rights acquired by use in commerce, but only in area of useCan be source of conflict2 Users in different areas
28 Ownership & rights based on use TM can be abandoned by non-useFederal Registration: 10 yearsCan renew for 10 year periods as long as mark still being used
29 Likelihood of Confusion Test: Whether consumers are likely to be misled or confused as to source or sponsorship of goods. Lanham Act ; 15 U.S.C. §1114(1)McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC : Company that makes Splenda® sued competitor. Would this be likely to confuse consumers?
30 Apple v. AppleSeries of disputes began in 1980: George Harrison saw Apple Computers ad in a magazine and thought potential for trademark conflictBeatles sued & settled twice - Apple Computer agreed not to use the word Apple to sell music3rd lawsuit in 2006 over iTunes – Case decided on contract grounds rather than TM- Settlement gave Apple Computer right to name in connection with “electronic goods, computers, telecommunications equipment, data processing equipment” and “data transmission services”
31 Strength of Mark (distinctiveness) Similarity of MarksSimilarity of goods or servicesEvidence of Actual ConfusionMarketing ChannelsSophistication of ConsumersBad faith
32 Unauthorized use of a famous trademark on products that do not compete with those of trademark owner. Lanham Act § 43(c); 15 U.S.C. §1125(c)Designed to protect distinctive quality of famous trademarksNo requirement of consumer confusionA trademark is diluted when use of similar or identical marks to identify non-competing goods or services results in the lessening of trademark owner’s ability to identify its products or services
34 TM registered as domain name by someone other than TM owner Can be registered without being used at allOften, motive for registration of domain name is to sell to TM ownerPeople who register domain names for eventual sale labeled "cybersquatters“
35 1999 amendment to Trademark Act. 15 USC 1125(d) Cybersquatting: “registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.”Remedies: Transfer or cancellation of domain name & civil remedies from $1000 to $100,000; or simpler arbitration procedure can be used to resolve dispute
36 Domain registrants required to submit to arbitration when TM owner asserts: Domain name is confusingly similar to a trademarkRegistrant has no legitimate interest in domain nameDomain name registered in bad faith:Registrant intends to cause diversion of consumers or dilution of trademarkRegistrant offers to sell name to trademark ownerRegistrant applied for multiple domain name registrations
37 Gordon Sumner (Sting) v. Urvan Madonna v. Parisi Singer had no legal claim to sting domain since not his real name & never registeredNo bad faith use by UrvanUsed for sting computer game web siteCommon word with a variety of meaningsMadonna v. ParisiP registered domain & used as link to porn siteRejected defense based on existence of word in dictionary; no evidence P intended to use word in ordinary meaningP had not used domain name prior to registering & purchased for $20,000