fundamentals of trademark law the honorable bernice b. donald u.s. court of appeals for the sixth...
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FUNDAMENTALS OF TRADEMARK LAW
THE HONORABLE BERNICE B. DONALDU.S. COURT OF APPEALS FOR THE SIXTH CIRCUIT
ISLAMABAD, PAKISTAN SEPT. 18, 2013
LAHORE, PAKISTANSEPT. 20, 2013
KARACHI, PAKISTANSEPT. 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 . . .
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”
http://www.youtube.com/watch?feature=player_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.
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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 andFANCIFUL
SUGGESTIVEGENERIC DESCRIPTIVE
NOT Eligible for TM protection
Weak and/or limited tm protection
Strong tm protection
SPECTRUM OF DISTINCTIVENESS
ARBITRARY andFANCIFUL
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 TRADEMARKIf 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 CONFUSIONConfusion 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