Trademarking IP LAW 2

8/13/2019 Trademarking IP LAW 2

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Introduction to

Trademark Protection

Assignment 1


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Trademark Definition Trademark any word, name, symbol,

or device, or any combination thereof,that is used by an individual to identifyand distinguish his or her goods fromthose manufactured or sold by others

and to indicate the source of the goodsor services.


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Basis for Trademark Laws Common law, state registration, federal

registration Federal Registration:

Congress enacted trademark law under its CommerceClause powers

The Lanham Act The Lanham Act was enacted in 1946 The producer has the right to prevent others from using the same mark, or a

confusingly similar mark, on the same goods, or on related goods.

Justification for Creating Exclusive Rights inMarks:

Prevents consumer confusion, encourages competition The production of goodwill: the investment in quality, reputation, and service.


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The Application Process Requirements for Registration:(1) Use of the mark as a marketing symbol in

commerce,(2) Use of the mark interstate, and(3) Distinctiveness

3 ways to establish entitlement to registration:

(1) use,(2) bona fide intent to use, and(3) trademark registration in a foreign country.


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Use-based Applications Application elements: fee, application

form, and a drawing of the mark. Applicant must: (1) categorize their

goods or services according to theinternational classification scheme; and

(2) state the date of first use and firstuse in commerce.


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Use-based Applications Applicant with the earliest use is entitled

to registration. Once a mark is registered, the owner

has the right to prevent others fromadopting and using a confusingly similar

mark for similar goods/services, as ofthe date the application was filed.


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Use-based Applications An examiner from the USPTO

determines whether the mark qualifiesunder the Lanham Act for protection.

If it appears to, the PTO publishes themark in the Official Gazette .

Anyone that believes they would be injured by registration ofthe mark has 30 days from the time of publication to opposethe registration.


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Use-based Applications If no one opposes the mark, the PTO

issues a certificate of registration andregisters the mark on the PrincipalRegister.

The owner can display the mark with

Registered in U.S. Patent andTrademark Office

or the symbol Note: Use of TM does not require

registration.


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Intent-to-use Applications File for protection with a bona fide

intention to use the mark in commerce. If the mark conforms to the Lanham

Act

s general provisions, it will bepublished. If no one opposes

registration, the applicant receives aNotice of Allowance.


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Notice of Allowance Within 6 months, applicant must file Statement of

Use. PTO issues certificate of registration and

registers the mark on the Principal Register. If mark has not been used in commerce, applicant

can file a 6-month extension of time. May file additional requests for extensions of time,

but must show good cause. Ex: continued marketresearch, promotional activities.

Total time from the Notice of Allowance to ActualUse cannot exceed 36 months.


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Registration Problems Mark is too similar to a mark already

registered

Likelihood of confusion rejection Mark is generic Mark is descriptive

If mark is capable of becoming distinctive(capable of acquiring secondary meaning)

-> Supplemental Register.


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Secondary Meaning A mark may acquire distinctiveness

through use if the public comes to

recognize the mark as an indication ofsource -> giving it secondary meaning. The public must think of the producer, not

the product. Trademark = origin indicator. Ways to show secondary meaning: survey evidence,length of use of the mark, amount and manner ofadvertising, etc.


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Supplemental Register Supplemental Register does not:

Give trademark owner the right to enjoin othersfrom using the mark or the right to stop othersfrom importing infringing goods.

Supplemental Register does: Provide actual notice. Marks can be displayed

with the Allow owners to use the federal courts to assert

state-based rights and certain federal rights Lends to registration on the Principal Register

after 5 years.


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Maintenance Protection and registration lasts as long as a

mark is in use. Certificates of registration last for 10 years and

can be renewed for additional 10-year periodswith payment of fees and periodic affidavitsaverring continued use or explanations ofnonuse.

Declaration of Use must confirm use of eachgood/service listed.

Incontestibility after 5 years Presumptions of validity, ownership, and

exclusivity.


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Cancellations and

Invalidity Actions The Lanham Act allows for: (1)

cancellation proceedings; and (2)

invalidity actions.Cancellation proceedings a mark can be

cancelled at any time if: it becomes

generic, it is functional, it has beenabandoned, its registration wasobtained fraudulently, or it is being used

to misrepresent the goods/services.


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International Protection U.S. marks are infringed only when there is a

likelihood of confusion in the U.S.

Madrid Protocol 79 countries as of December

U.S. trademark owners became able to submit aninternational application to the USPTO to forward to theInternational Bureau in Geneva, Switzerland.

Also, foreign trademark owners can seek extension ofprotection of an international registration of a mark to theUnited States.

Documents

Trademarking IP LAW 2