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Protection of Trademarks, Service Marks, Tradenames and Domain
Names
Trademarks, service marks, tradenames and domain names need not be registered to be protectable against infringement.
However, registration offers important benefits and advantages.
Benefits And Advantages Of Prompt Federal
Registration.
Federal registration creates constructive notice and constructive use of the mark nationwide. As
a result, it acts as a deterrent to subsequent use of the mark by others as it places them on notice that exclusive rights
to use are being claimed by the registered owner. Federal registration also grants the owner the right to display an “®”
with the mark. Significantly, federal registration prior to infringement allows the owner to recover statutory damages, even
if actual damages cannot be proven, and attorneys' fees in certain cases. In addition, certain presumptions arise in favor
of the trademark owner in the event of litigation to enforce or protect the mark if the mark was previously registered. In
particular, the registration is prima facie evidence of the validity of the registration, of the registrant's ownership of
the mark, and of the registrant's exclusive right to use the mark in commerce on the goods or services specified therein.
Additionally, a federal registration may become incontestable after a period of time. Significantly, registration of a mark with the U.S. Trademark Office establishes the registrant’s
rights in the mark in a domain name dispute under the Uniform Dispute Resolution Policy. Federal registration also
entitles a registrant to request Customs to stop the importation of infringing articles into the U.S.
Definition
of a Trademark or Service Mark
A trademark is a word, name, symbol or device used to identify and distinguish the
goods of one entity from the goods of others, and to indicate the source of the goods. Likewise, a service mark is a word,
name, symbol or device used to identify and distinguish the services of one entity from the services of others, and to indicate
the source of the services. Trademarks and service marks may be referred to simply as marks.
The Function
of Trademarks and the Objectives of Trademark Law
Trademarks identify one seller’s goods or services and
distinguish them from the goods or services sold by others. Trademarks make it possible for consumers to choose between various
goods and services offered for sale.
Trademark laws exist for three reasons: (1) to prevent confusion among consumers
as to the source of goods or services; (2) to permit the trademark owner to control the products’ or services’
reputation; and (3) to protect the good will that the trademark owner has built up in his products or services.
Trademark Rights
If a business owns a trademark, then it has the exclusive right to use the mark. No other person
can use the same or similar trademark in any manner that would be likely to cause confusion, mistake, or deception among consumers.
Trademark Rights Extend to Related Goods and Services
The law gives a trademark owner protection
against the use of its mark not only on the same goods or services on which it uses its trademark, but also on any other product
or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated
with, connected with, or sponsored by, the trademark owner. That is, the parties do not have to be direct competitors in order
to find that concurrent use of marks is likely to cause confusion.
Trademark Infringement Generally
“Trademark infringement” occurs when anyone, without the consent of the owner, uses a trademark or service mark
in connection with the sale, or the offering for sale, of goods or services in a manner that is likely to cause confusion,
mistake or deception as to (1) the affiliation, connection, or association of such person with another person, or as to (2)
the origin, sponsorship, or approval of his goods or services or commercial activities by another person.
Federal
Trademark Registration
A mark may be registered with the United States Patent and Trademark Office. A federal registration
entitles a registrant to three presumptions: 1) the registration is presumed to be valid; 2) the registrant is presumed to
be the owner of the mark; and 3) the registrant is presumed to have the exclusive right to use the mark in commerce in connection
with the services specified in the certificate. Once a valid registration is obtained, no person can acquire any additional
rights superior to those of the registrant.
Constructive Notice
After a federal trademark registration
is granted, the registration becomes part of the trademark register of the United States, and the United States Patent and
Trademark Office issues a Certificate of Registration to the trademark owner. Copies of the certificates of registration are
available to anyone.
By law, registration provides what is called “constructive notice” of the registrant’s
claim of ownership of the mark. That is, even though someone else may not have actual notice of the existence of a registered
mark, he is conclusively presumed to have knowledge of the mark and knowledge of the fact that it is registered and appears
on the trademark register.
A person who infringes the registered mark of another cannot escape liability by showing
that he was unaware of the registration as a result of his failure to conduct a search of the records at the Patent and Trademark
Office.
Infringement
To succeed on a claim of trademark infringement, a Plaintiff must prove by
a preponderance of the evidence that it is the owner of a mark, that the Defendant has used a similar mark without the Plaintiff’s
consent in connection with the sale of its good or services, and that the Defendant’s use of the similar mark is likely
to cause confusion, mistake, or deception among ordinary consumers of the relevant products or services:
1. as to the
affiliation, connection, or association with the relevant products or services;
2. as to the origin, sponsorship, or
approval of Defendant’s goods, services, or commercial activities by the Plaintiff.
Likelihood of Confusion
In determining infringement, the critical issue is “likelihood of confusion.” To assess whether a likelihood
of confusion exists, one should consider the following factors:
1. Similarity of the marks
2. Similarity of the
services
3. Area and manner of concurrent use
4. Degree of care likely to be exercised by consumers of the relevant
products or services
5. Strength of Plaintiff’s mark
6. Actual confusion
7. Intent of Defendant to “palm
off services as those of another”
Not all of these factors must be present to find a likelihood of confusion.
Furthermore, no one factor by itself is conclusive. Different factors will weigh more heavily than others, depending the particular
facts and circumstances of this case.
Similarity of the Marks
In assessing the first factor, similarity
of the marks, one must compare the Defendant’s use of the allegedly infringing mark to Plaintiff’s mark. If one
word or feature of the Defendant’s mark is the prominent part of the mark, it may be given greater weight than the surrounding
elements. One must compare the parties marks in light of what happens in the marketplace. When the public does not encounter
the two marks together, it is inappropriate to focus on minor stylistic differences to determine if confusion if likely.
A side-by-side comparison of the marks is not the proper test. One must determine the consumer’s state of mind when
faced with the marks individually.
Noncompetition Does Not Avoid Infringement
The second factor
is similarity of the Plaintiff’s and the Defendant’s services. A person can still infringe a trademark even if
he uses the mark to sell goods or services that are different from those of the owner of the mark. That is, the infringing
party does not have to be in direct competition with the owner of the mark. Trademark infringement exists if a party uses
a mark to sell or advertise a product or service which, in the mind of the ordinary purchaser, is sufficiently related to
or associated with the services or products of the trademark owner, so that confusion as to the source, sponsorship, or affiliation
of that service or product is likely to result. The mark owner needs only to show that its products or services are similar
to the extent that they are the single source.
Degree of Care Exercised by Consumers
The fourth
factor, the degree of care likely to be exercised by consumers should be assessed not only at the time that the consumer is
purchasing the product or service, but also at a time when the company is rendering its services, for example, when the consumer
is contacting the company to make a claim or when the consumer is paying a premium.
Third-Party Uses Effect
on Strength of the Mark
With respect to the fifth factor, strength of the Plaintiff’s mark, the Plaintiff’s
mark may be weakened by uses of the mark by third parties. In this factor, keep in mind that, even if a third party does use
the Plaintiff’s mark without authority, this infringement by a third party is not a defense to trademark infringement.
That is, the Defendant is not allowed to infringe the Plaintiff’s mark just because someone else may be doing the same
thing.
Actual Confusion Is Not Required
The sixth factor that you are to consider is actual confusion.
A Plaintiff does not have to prove that instances of actual confusion have occurred in order to prevail on its claim of trademark
infringement. Actual confusion is just one factor in this inquiry; the likelihood of confusion is issue that you must resolve.
Actual confusion is, however, strong proof that a likelihood of confusion exists. In addition, while very little
proof of actual confusion would be necessary to prove the likelihood of confusion, an almost overwhelming amount of proof
of no likelihood of confusion would be necessary to refute proof of actual confusion.
Intent to Confuse
The seventh and final likelihood of confusion factor to consider is the Defendant’s intent to “palm off
services as those of another.” Said another way, one should determine whether the Defendant intended to confuse customers.
Likelihood of Confusion Survey
Another means by which a Plaintiff may attempt to demonstrate a likelihood
of confusion is through the introduction of a survey. In considering a survey, one must assess its reliability and credibility,
and ascribe its weight accordingly.
In assessing the weight to give the survey, one should consider whether:
1.
the proper universe was selected and examined;
2. a representative sample was drawn from that universe;
3. a fair
and correct method of questioning was used;
4. the persons conducting the survey were recognized experts;
5. the
data gathered was accurately reported;
6. the sample, the questionnaire and the interviewing were in accordance with
generally accepted standards of objective procedure and statistics in the field of such surveys;
7. the sample and the
interviews were conducted independently of the attorneys in the case; and
8. the interviewers were adequately trained
in the field and had no knowledge of the litigation purposes for which the survey was to be used.
Even if the survey
does not meet all of these criteria, one may still consider the results of the survey and give them whatever weight one determines
is appropriate.
Defendant Has Duty to Avoid Confusion
The Defendant, as the second users of a
mark, has a duty to select a name or trademark that would avoid confusion by the consuming public as to the source of its
goods and services.
Defendant’s Belief in His Right to Use Mark is Not a Defense
The fact
that a Defendant believes that it has a right to use a mark has no relevance whatsoever to the questions of whether the Defendant
has infringed a valid service mark and whether damages should be awarded to the Plaintiff.
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Two Types of Monetary Relief
A judge or jury may award a Plaintiff two non-exclusive types of money damages: the Plaintiff’s actual damages
and the Defendant’s profits.
Plaintiff’s Actual Damages
The purpose of providing a
prevailing Plaintiff with its damages is to make the plaintiff whole. That is, to put the Plaintiff in the same position it
would have been in had it not been for the Defendant’s wrongful conduct. Actual damages consists of lost sales or profits,
a loss of good will, and other specific compensating damages proven to be necessary to make the Plaintiff whole.
Plaintiff’s Lost Sales or Profits
A judge or jury may consider whether the Plaintiff has lost any
sales or profits as a result of the Defendant’s actions. The Plaintiff is not required to prove the amount of these
damages with absolute certainty. A judge or jury may measure the amount of the lost sales or profits by evidence that they
believe establishes a just and reasonable estimate of the amount of such lost sales or profits.
Plaintiff’s
Loss of Good Will
A judge or jury may also compensate the Plaintiff for the loss of its good will. The good will
of a company is an intangible business value that reflects the basic human tendency to do business with a company that offers
products and services of the type and quality that customers desire and expect. Service to customers and a willingness to
stand behind representations and warranties concerning the quality of the products and services sold by the company are all
factors in the good will of a business.
If a judge or jury finds that Plaintiff’s good will has been damaged, they
may assess such damages as they find to be just and reasonable in light of the evidence.
Cost of Corrective
Advertising
To justify damages to pay for corrective advertising, Plaintiff must show two things: (1) that the
confusion caused by Defendant’s use of the mark injured Plaintiff, and (2) that repair of Plaintiff’s old trademark,
rather than adoption of a new one, is the least expensive way to proceed.
Entitlement to Actual Damages
In order for the Plaintiff to be entitled to its actual damages, it must establish the following requirements: (1)
There was at least one instance of actual confusion; (2) the Plaintiff was actually damaged as a result of the Defendant’s
conduct; and (3) What the amount of damages are.
Certainty of Damages
While the burden of proving
actual damages is on the Plaintiff, difficulty or uncertainty in measuring the precise amount of actual damages does not preclude
recovery.
A judge or jury must find that there is some evidence from which they can reasonably ascertain the amount
of damage suffered by the Plaintiff. A judge or jury must not award a specific dollar amount of damages based upon mere speculation
or guesswork. However, the Plaintiff is not required to prove the amount of damage with mathematical precision. It is only
required that the Plaintiff present such evidence as might be reasonably expected to be available under the circumstances.
Accordingly, if a judge or jury is able to make a just and reasonable estimate of the damages from the evidence presented
to them, they may find that the Plaintiff has suffered that amount of damages. If, on the other hand, a judge or jury finds
that the Plaintiff has suffered an injury but that there is no evidence to establish a reasonable basis to ascertain the amount
of those damages for that injury, they may return a verdict for the Plaintiff in some nominal amount such as one dollar.
Defendant’s Profits
The second type of money damages that a judge or jury can award to Plaintiff
is the Defendant’s profits on the sales of its services using the mark. A judge or jury may award this type of monetary
damages even if they do not think that the Plaintiff is entitled to its actual damages or that any person was actually confused.
In assessing the amount of Defendant’s profits, Plaintiff is only required to prove the amount of Defendant’s
sales of its services using the mark. The burden of proof then shifts to the Defendant to prove proper costs and reductions
from those sales. If a judge or jury decides to award the Defendant profits, they are to compute them by taking the Defendant’s
gross sales, as proved by the Plaintiff, and deducting those expenses that the Defendant has proved are fairly attributable
to the Defendant’s sale of its services using the mark.
Exceptional Case
Treble damages
and attorneys’ fees may be awarded by the court in exceptional cases. Exceptional cases are those in which a
losing plaintiff was guilty of abuse of process in suiing or a losing defendant had no defense yet persisted in the trademark
infringement or false advertising. It should be enough to justify the award if the party seeking it can show that his
opponent’s claim or defense was objectively unreasonable – was a claim or defense that a rational litigant
would pursue only because it would impose disproportionate costs on its opponent – in other words only because it was
extortionate in character if not necessarily in provable intention. Trademark Bullies or Trademark BullyingOur
trademark lawyers have significant experience defending individuals and small businesses against so-called "trademark
bullies" or "trademark bullying." As the United States Trademark Office
has stated, a trademark bully "could be described as a trademark owner that uses its trademark rights to harass
and intimidate another business beyond what the law might be reasonably interpreted to allow." Trademark
bullies are considered such a problem that legislation has been passed and the United States
Trademark Office has begun studies to address trademark bullying and the litigation tactics of trademark bullies. Indeed, the
Trademark and Technical Conforming Amendment of 2010 directs the Secretary of Commerce to "study and report"
to Congress on “The extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark
rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”
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