FUNDAMENTALS OF TRADEMARK LAW THE HONORABLE BERNICE B. DONALD U.S. COURT OF APPEALS FOR THE SIXTH CIRCUIT ISLAMABAD, PAKISTAN SEPT. 18, 2013 LAHORE, PAKISTAN SEPT. 20, 2013 KARACHI, PAKISTAN SEPT. 23, 2013

It is important to distinguish trademarks from copyright and patents. Trademark law is one of three types of intellectual property (“IP”) protection under U.S. Law. WHAT IS A TRADEMARK?

TRADEMARK, PATENT, OR COPYRIGHT? Trademark law is primarily concerned with protecting a particular brand of products and/or services... TRADEMARKS Whereas patents deal with innovation, and copyright protects creative expression...

TRADEMARK, PATENT, OR COPYRIGHT? Distinguishing patents and copyrights from trademarks...

WHAT IS A TRADEMARK? Trademarks date back to the earliest known civilizations. The basic purpose of trademarks is the same today as it was in ancient times: Indicate the source of goods or services; Assure consumers of the quality of goods; Create “brand awareness” and consumer goodwill.

WHAT IS A TRADEMARK? A trademark is a word, symbol, or phrase used to identify and distinguish the products of a particular manufacturer or seller.

WHAT IS A TRADEMARK? Trademark protection may also extend to certain physical characteristics such as the color or shape of a product or its packaging which denote it’s brand or origin. “TRADE DRESS”

WHAT IS A TRADEMARK? Geographical indications that identify a good as originating from a place where a given quality, reputation or other characteristic of the good related to its geographical origin. “Geographic Marks”

WHAT IS A TRADEMARK? Even sounds associated with a particular brand of products or services can be protected by trademark law. “Sound Marks” er_detailpage&v=XVEflECtfBM

WHAT IS A TRADEMARK? A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service, rather than a product. SERVICE MARKS

SOURCES OF U.S. TRADEMARK LAW The Lanham Act ( “The Trademark Act”) of 1946 Most recently amended in 1996 U.S. Patent and Trademark Office NOTE: Historically, state common law provided the main source of trademark law. Today, however, federal law has taken over as the main source of trademark law in the U.S.

12 The Lanham Act, 15 U.S.C. Chapter 22, is the primary statutory source of federal trademark law. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising. THE LANHAM ACT, 15 U.S.C. Ch. 22

WHAT ARE TRADEMARK RIGHTS? Trademark rights are the exclusive legal right to use a trademark in commerce. Trademark rights generally belong to the first person to use the mark in commerce. Trademark rights can last indefinitely or can be terminated due to market conditions

WHY DOES THE LAW PROTECT TRADEMARK? Prevent unfair competition and protect investments. Protect the integrity of the marketplace. Consumer protection against false or misleading advertisement and quality control expectations

HOW DO YOU PROTECT YOUR TRADEMARK UNDER U.S LAW? Key considerations: 1. Is there a valid trademark? 2. How do I acquire rights in a valid trademark?? 3. Did another party engage in trademark infringement? a. Did the defendant use the trademark? b. Was the use commercial? c. Was the use associated with the sale of competitive goods or services? d. Is there a likelihood of confusion?

HOW DO YOU PROTECT YOUR TRADEMARK UNDER U.S LAW? Key considerations: 1. Is there a valid trademark? 2. How do I acquire rights in a valid trademark?? 3. Did another party engage in trademark infringement? a. Did the defendant use the trademark? b. Was the use commercial? c. Was the use associated with the sale of competitive goods or services? d. Is there a likelihood of confusion?

What constitutes a valid trademark? A trademark must be distinctive. It must enable a consumer to be able to immediately identify a brand or source for the product. ARBITRARY and FANCIFUL SUGGESTIVEGENERIC DESCRIPTIVE NOT Eligible for TM protection Weak and/or limited tm protection Strong tm protection

SPECTRUM OF DISTINCTIVENESS ARBITRARY and FANCIFUL SUGGESTIVEGENERIC DESCRIPTIVE NOT Eligible for TM protection Weak and/or limited tm protection Strong tm protection

HOW DO YOU PROTECT YOUR TRADEMARK UNDER U.S LAW? Key considerations: 1. Is there a valid trademark? 2. How do I acquire rights in a valid trademark?? 3. Did another party engage in trademark infringement? a. Did the defendant use the trademark? b. Was the use commercial? c. Was the use associated with the sale of competitive goods or services? d. Is there a likelihood of confusion?

ACQUIRING RIGHTS IN A TRADEMARK If a trademark is valid, it qualifies for protection, and rights can be acquired in one of TWO WAYS: 1. By being the first to use the mark in commerce; or 2. By being the first to register the mark with the U.S. Patent and Trademark Office ("PTO"). ™ [YOUR MARK HERE!]

SHOULD I REGISTER MY TRADEMARK WITH THE PTO? Although federal registration is not required for a trademark to be protected, it has several advantages: Notice to the public of the registrant's claim of ownership of the mark, Legal presumption of ownership Exclusive right to use the mark on or in connection with the goods/services listed in the registration.

TRADEMARK REGISTRATION ® ™℠ Trademark symbols indicate that a word, symbol, or phrase is a trademark. It puts people on notice that using the mark may be trademark infringement. Registered Trademark Unregistered Trademark Unregistered Servicemark

HOW DO YOU PROTECT YOUR TRADEMARK UNDER U.S LAW? Key considerations: 1. Is there a valid trademark? 2. How do I acquire rights in a valid trademark?? 3. Did another party engage in trademark infringement? a. Did the defendant use the trademark? b. Was the use commercial? c. Was the use associated with the sale of competitive goods or services? d. Is there a likelihood of confusion?

“Likelihood of Confusion” ? TRADEMARK INFRINGEMENT TEST

? LIKELIHOOD OF CONFUSION Confusion is PROBABLE —not merely possible—as to the source, sponsorship, or affiliation of a particular product or service. Courts look to factors such as: How similar are the products? Have consumers been actually confused? Are the two products marketed and sold in the same way?

ADDITIONAL RESOURCES The International Trademark Association (“INTA”) is a global association of trademark owners and professionals dedicated to supporting trademarks in order to protect consumers and to promote fair and effective commerce.International Trademark Association HELPFUL TIP: INTA also has a committee dedicated to raising awareness about IP issues globally, which also provides information about free (“pro bono”) or low-cost legal services. See “Trademark and IP Pro Bono,”

ADDITIONAL RESOURCES The World Intellectual Property Organization’s (“WIPO”) Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications develops international laws and standards for trademarks.