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.
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
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” 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.
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.
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
1. Similarity of the marks
2. Similarity of the services
3. Area and manner of concurrent
4. Degree of care likely to be exercised by consumers of the relevant products or services
5. Strength of Plaintiff’s
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
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.
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.
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.
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
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
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.
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.
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.
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.
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
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
Trademark Bullies or Trademark Bullying
Our 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.”
WHY SHOULD YOU CONSIDER USING THE SERVICES
OF AN EXPERIENCED TRADEMARK ATTORNEY TO FILE TRADEMARK APPLICATIONS?
A recent study indicates that hiring an experienced trademark attorney statistically
gives you a much greater chance of successfully registering your trademark or service
In “Do Trademark Lawyers Matter?”
University of North Carolina School of Law faculty members Jon McClanahan and Deborah
Gerhardt studied applications filed from 1985 to 2010 to determine whether having a trademark
attorney makes a difference in getting your application approved by the USPTO.
The study concluded that yes, in fact, it does. “These data suggest that the presence of
a lawyer made a meaningful difference,” the researchers wrote.
The study found that inexperienced, non-attorney applicants’ chances for
registration would have increased by 50 percent if they had used an attorney to file their application.