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. §1127
Identifies 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-Cola
Starbucks
Nike
The 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”

6. Logos

7. Band Logo Examples

8. Record Label Logo Examples

9. Other Identifiers:
Sound
Color: Rarely, but possible if not necessary for particular product

10. Color as a Trademark

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 identifiers
Consumers 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 Law
Congress first enacted trademark statute in late 19th century
The Lanham Act (1946) - current federal trademark statute
State Trademark Law
Many states have trademark statutes similar to Lanham Act
Tennessee 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 services
Selecting mark not enough - must use to identify product or service available for sale
Rights limited to area in which trademark is used
Other Countries
First to file (register) has rights
Use 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 services
Have little or no descriptive function; Operate primarily to identify a product source
Inherently distinctive: Marks that are unique (made up) or very original
Secondary Meaning: Marks that become distinctive due to TM owner’s efforts to create distinctiveness (long-term use & public recognition)
Distinctiveness = key to strong trademark rights 14

15. The more distinctive a mark, the greater the protection it receives.
Coined/Fanciful
Arbitrary
Suggestive
Descriptive
Weak protection
Only protected if secondary meaning
Generic
No protection
The more distinctive a mark, the greater the protection it receives.

16. No relationship to the nature of goods or services
Coined: Exxon, Kodak, HaagenDazs
Arbitrary: Apple (computers)
Strongest marks – greatest protection

17. Suggest rather than describe some aspect of the goods or services
Coppertone, Jaguar, Microsoft
Strong 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” acquired
Presumed if 5 years continuous use. 15 U.S.C. §1052

19. Do not function as TM unless secondary meaning
Curb Records, Geffen Records
Identify a person rather than a product or service
Same for geographic names
Tennessean (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 band
Vito 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 brand
Genericide: A term becomes so generic as to lose protection

24. File Application PTO examines for registrability & conflicts
Takes about 1 year to receive response
May require amendment or modification
After PTO approves, opportunity for opposition from other mark owners
Registration issues if no opposition

25. Constructive notice of ownership claim
Nationwide rights
Except for prior users (registration never outweighs prior use under U.S. trademark law)
Constructive notice of ownership claim
Presumption of ownership & validity. 15 U.S.C. §1072
People conducting searches will find your registration & avoid using similar mark

26. Right to use ® symbol 15 U.S.C. §1111
Use ™ for unregistered marks
Can record registration with U.S. Customs to prevent importation of infringing goods
Can 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 use
Can be source of conflict
2 Users in different areas

28. Ownership & rights based on use
TM can be abandoned by non-use
Federal Registration: 10 years
Can 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. Apple
Series of disputes began in 1980: George Harrison saw Apple Computers ad in a magazine and thought potential for trademark conflict
Beatles sued & settled twice - Apple Computer agreed not to use the word Apple to sell music
3rd 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 Marks
Similarity of goods or services
Evidence of Actual Confusion
Marketing Channels
Sophistication of Consumers
Bad 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 trademarks
No requirement of consumer confusion
A 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 all
Often, motive for registration of domain name is to sell to TM owner
People 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 trademark
Registrant has no legitimate interest in domain name
Domain name registered in bad faith:
Registrant intends to cause diversion of consumers or dilution of trademark
Registrant offers to sell name to trademark owner
Registrant 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 registered
No bad faith use by Urvan
Used for sting computer game web site
Common word with a variety of meanings
Madonna v. Parisi
P registered domain & used as link to porn site
Rejected defense based on existence of word in dictionary; no evidence P intended to use word in ordinary meaning
P had not used domain name prior to registering & purchased for $20,000