United States Edit

Federal law Edit

The federal law of trademarks and service marks protects a commercial identity or brand used to identify a product or service to consumers. The purpose of a trademark is twofold — to identify the source of products or services and to distinguish the trademark owner's goods and services from those of others. As long as a trademark fulfills these functions, it remains valid. Trademark ownership rights in the United States arise through use of a mark. Continued use of a mark is necessary to maintain trademark rights.

The U.S. Supreme Court has described the dual purposes of trademark law as follows:

[T]rademark law, by preventing others from copying a source-identifying mark, reduce[s] the customer’s costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item — the item with this mark — is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourage[s] the production of quality products, and simultaneously discourages those who hope to sell inferior products by capitalizing on a consumer’s inability quickly to evaluate the quality of an item offered for sale.[1]

The owner of a trademark is entitled to the exclusive right to use the mark. This entitlement includes the ability to prevent the use, by unauthorized third parties, of a confusingly similar mark. Marks used by unrelated parties are confusingly similar if, by their use on the same, similar, or related goods or services, the relevant consumer population would think the goods or services come from the same source.

Unlike patent and copyright law, federal trademark law coexists with state and common law trademark rights. Therefore, registration at either the federal or state level is not necessary to create or maintain ownership rights in a mark. For example, priority of trademark rights between owners of confusingly similar marks, regardless of whether the marks are federally registered, is based upon first use of the mark.[2]

The Lanham Act Edit

Federal trademark law is embodied in the Lanham Act[3] and is based upon the Commerce Clause of the Constitution.[4] The Lanham Act[5] prohibits the unauthorized use of a trademark, which is defined as

any word, name, symbol, or device" used by a person "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods."[6]

Therefore, to obtain a federal trademark registration, in most cases, the mark must be used in interstate or foreign commerce.[7] the owner of a mark must demonstrate that the mark is used in a type of commerce that may be regulated by Congress.[8] Additionally, the Trademark Law Reform Act of 1988[9] amended the Lanham Act to establish trademark rights, which vest upon registration following use of the mark in commerce, as of the filing date of a trademark application indicating a bona fide intent to use the mark in commerce.[10]

Trademark registration Edit

By registering trademarks and service marks with the U.S. Patent and Trademark Office, the owner is granted the exclusive right to use the marks in commerce in the United States, and can exclude others from using the mark, or a comparable mark, in a way likely to cause confusion in the marketplace. A protected mark might be the name of the product itself, such as "Pfizer" or "L.L. Bean"; a distinguishing symbol, such as the Nike "swoosh" or the MGM lion; or a distinctive shape and color, such as the blue diamond shape of a Viagra tablet. Certain symbols like the Olympic rings also receive like protection. Goods and services to which a mark applies in a federal trademark registration are categorized according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised at Stockholm on July 14, 1967, and at Geneva on May 13, 1977 (International Classification). This treaty, of which the United States is a member, is administered by the World Intellectual Property Organization WIPO. WIPO convenes a meeting of experts, including representatives of the United States, every five years to consider and adopt changes to the International Classification.

Trademark infringement Edit

Legal protections for trademarks and service marks not only help protect the goodwill and reputation of trademark owners, but also promote fair competition and the integrity of markets, and protect consumers by helping to ensure they receive accurate information about the origins of products and services. Remedies against trademark infringement and unfair competition are available to trademark owners under both state and federal law.[11] In this regard, the owner of a federal trademark registration has certain benefits. In a court proceeding, registration on the Principal Register constitutes prima facie evidence of the registrant's ownership of the mark.[12] Registration on the Principal Register may also be used as a basis to block importation of infringing goods[13] or to obtain remedies against a counterfeiter.[14] The Lanham Act provides that under certain conditions the right to use a registered mark may become incontestable.[15] Additionally, the Lanham Act provides for cancellation of registrations on certain grounds.[16]

Existing legal precedent accepts electronic transmission of data as a service and, thus, as a valid trademark use for the purpose of creating and maintaining a trademark.[17] Additionally, existing legal precedent applies the available remedies for infringement and unfair competition to such acts occurring through the unauthorized use of trademarks electronically.[18]

With widespread access to and use of the Internet, both the legitimate and infringing electronic uses of trademarks have increased dramatically. Unfair competition may increase in the context of the Internet to the extent that it may be easier to copy or remove trademarks from electronically transmitted information than from labeled products or from services identified in print media.

In the global context for trademarks, there are likely to be ramifications of global electronic transmission of trademarks in view of the fact that trademark rights are national in scope. Conflicts may arise where the same or similar trademarks are owned by different parties in different countries, or where different countries apply different standards for determining infringement. Additionally, conflicts may arise where terms are in general use in one country, but restricted as either trademarks or geographical indications in another country.

Criminal activities Edit

Federal criminal law has long prohibited trafficking in goods or services that bear a counterfeit mark.[19] In March 2006 the criminal trademark statute was amended to also prohibit trafficking in labels or packaging bearing a counterfeit mark, even when the label or packaging is unattached to the underlying good. Individuals convicted of Section 2320 offenses face up to 10 years' imprisonment and a $2,000,000 fine.

State law Edit

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Common law Edit

Common law trademark rights refers to property or other legal rights that do not require formal registration in order to be enforced. Proving such rights in a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the claimant.

See also Edit

References Edit

  1. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-64 (1995)(citations and internal quotations omitted).
  2. Priority may also be established by the filing date of a federal registration based upon an intent to use a mark (15 U.S.C. §1051(b)) or a foreign filing (id. §1126).
  3. Id. §1051 et seq. The Lanham Act, as amended, forms Chapter 22 of Title 15 of the U.S. Code.
  4. The first federal trademark law in the United States was found unconstitutional because it was premised on the patent clause of the Constitution.
  5. 15 U.S.C. §§ 1051-1127.
  6. Id. §1127.
  7. Certain foreign-based applications may register without a showing of use in commerce. Id. §1126(e).
  8. Id. §1127. "The word 'commerce' means all commerce which may lawfully be regulated by Congress." This includes interstate commerce, commerce between the United States and a foreign country, and territorial commerce.
  9. Pub. L. 100-667, 1988 U.S.C.C.A.N. (102 Stat.) 3935.
  10. 15 U.S.C. §1051(b).
  11. See id. §§1114-21, 1125(a) for relevant federal law provisions. State and common law unfair competition provisions include such torts as passing off and dilution.
  12. Id. §1057(b).
  13. Id. §1124.
  14. Id. §1116(d); 18 U.S.C. §2320.
  15. 15 U.S.C. §1065.
  16. Id. §1064.
  17. See In re Metriplex Inc., 23 U.S.P.Q.2d (BNA) 1315 (TTAB 1992), where the Trademark Trial and Appeal Board authorized registration of a mark identifying "data transmission services accessed via computer terminal" and accepted, as evidence of use of the mark, a printout of the mark as it appeared on the computer screen during transmission.
  18. See, e.g., Playboy Enterprises Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993). See also Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, 693 F. Supp. 1080 (S.D. Fla. 1988), mod’d, 881 F.2d 983 (11th Cir. 1989), remanded, 895 F.2d 711 (11th Cir. 1990), in which the court found that interception of cable television programming broadcast via satellite which appropriates trademarks and trade names in a manner likely to cause confusion is unfair competition in violation of Section 43(a) of the Lanham Act. See also Pacific & Southern Co. Inc. v. Satellite Broadcast Networks Inc., 694 F. Supp. 1575 (N.D. Ga. 1988).
  19. 18 U.S.C. § 2320.

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