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Legal Structure of US Trademark Protection

Module by: Samuel Feng. E-mail the author

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Underlying Theory

Trademarks do not protect newness or creativity- they are purely linked to the seniority of commercial practice when the first user prevents the subsequent user from employing a similar identifier of goods and services in order to avoid confusion by a consumer.

Subject Matter

Any identifying attribute of a commercial enterprise can potentially become a trademark. A distinction exists among several trademark categories:

  • Trade Marks identify goods of a company
  • Service Marks identify services of a company
  • Certification Marks certify conformance with standards by a central organization
  • Collective Marks trademarks or service marks used by a collective entity
  • Trade Dress product design and packaging

Standard for Protection

  • Distinctiveness: The inherently distinctive TMs are automatically protected: they range from arbitrary trademarks, which are the strongest (Camel®) to fanciful (Evian®) to suggestive (Tide®)
  • Secondary Meaning: For the marks lacking such distinction, for example, if they are purely descriptive, point at a geographic location, or are personal name marks, the requirement for protection is the proof of established “secondary meaning”- the way by which the public identifies such a mark with its source rather than with the product itself (Nantucket Nectars®)
  • Commercial Use: The requirement is that a trademark is used in commerce, but not necessarily for an extended period of time. In fact, in order to register a trademark, it is sufficient to demonstrate intent of use. Under priority rules, however, the first person to use the trademark in commerce owns rights to it.
  • Fame: In the cases of dilution, a special protection is granted to the famous trademarks.

Scope of Protection

Rights are granted in the US to be protected against infringement and dilution. The non-commercial use of trademark by others is protected under the fair use policy and the First “Freedom of Speech” amendment to the Constitution (see Mattel, Inc. v MCA Records, Inc.) http://library.findlaw.com/2003/Mar/1/132734.html

Infringement (benchmark- consumer confusion):

  • confusion as to source
  • confusion as to sponsorship
  • initial interest confusion
  • post-sale confusion
  • reverse confusion

Infringement is usually proven when the following factors are taken into account:

  • trademarks’ strength
  • trademarks’ similarity
  • goods’ proximity
  • evidence of actual consumer confusion
  • marketing channels used
  • type of goods
  • defendant’s intent
  • likely expansion of the product lines

Dilution:

Even in the absence of confusion, unauthorized users of famous trademarks can dilute their distinctive quality by trading on their good name. To assert dilution the court would have to determine whether the mark is distinct and famous and receive evidence of how the distinctiveness of the mark actually suffered.

(see Moseley v. Victoria Secret Catalogue,Inc.), http://news.com.com/2100-1028-991052.html,

Source: Merges, Menell, Lemley. "Intellectual Property in the New Technological Age." Aspen Publishers,2003

Additional Study Questions

  • In order to prove trademark infringement, what would be the hardest evidence to obtain?
  • Why wasn’t “freedom of speech” defense for Mr. Doughney in PETA v. Doughney sufficient to alleviate PETA’s claim of dilution? Why did that defence apply in Mattel. Inc v. MCA Records?
  • What is the significance of the supreme court decision in Moseley v. Victoria Secret Catalogue, Inc. ?

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