Transcript Fundamentals of Trademark Law

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
WHAT IS A TRADEMARK?
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.
TRADEMARK, PATENT, OR COPYRIGHT?
Trademark law is primarily
concerned with protecting a
particular brand of products
and/or services . . .
Whereas patents deal with innovation, and
copyright protects creative expression . . .
TRADEMARKS
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?
“TRADE DRESS”
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.
WHAT IS A TRADEMARK?
“Geographic Marks”
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.
WHAT IS A TRADEMARK?
“Sound Marks”
Even sounds associated with a particular brand of
products or services can be protected by
trademark law.
http://www.youtube.com/watch?feature=play
er_detailpage&v=XVEflECtfBM
WHAT IS A TRADEMARK?
SERVICE MARKS
A service mark is the same as a trademark, except
that it identifies and distinguishes the source of a
service, rather than a product.
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. Ch. 22
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.
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.
GENERIC
NOT Eligible for
TM protection
DESCRIPTIVE
SUGGESTIVE
Weak and/or limited
tm protection
ARBITRARY and
FANCIFUL
Strong
tm protection
SPECTRUM OF DISTINCTIVENESS
GENERIC
NOT Eligible for
TM protection
DESCRIPTIVE
SUGGESTIVE
Weak and/or limited
tm protection
ARBITRARY and
FANCIFUL
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
™
[YOUR MARK HERE!]
2. By being the first to register the mark with the
U.S. Patent and Trademark Office ("PTO").
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?
TRADEMARK INFRINGEMENT TEST
“Likelihood of Confusion”
?
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.
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,”
http://www.inta.org/Membership/Pages/probono.aspx
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.