Tag Archives: circumstances

Trademarks

Trademarks are generally speaking a word, name, symbol, device, or any combination of the above used or intended for use in commerce. In limited circumstances, trademarks can be extended to cover product packaging or other aspects of a product. For instance, the box used from Tiffany's Jewelry, or the bottle used by Coca-Cola may qualify as trademarks. Generally speaking, Trademarks serve two primary purposes. 1. Trademarks are used to identify or distinguish the goods or services between one manufacturer or provider and another. 2. Trademarks are used to easily convey or identify the source or provider of goods and services.

It is important to emphasize, that trademark law is mainly to help with the identification of goods or services with its provider by consumers. Although helpful for businesses, if it causes confusion in consumers, trademark protection will most likely be denied. The “swoosh” used by NIKE is to identify the goods are manufactured and produced by NIKE. If everyone had a swoosh, consumers would be confused as to who the producer or supplier of the shoes or athletic gear is.

Governing Law

In the United States, Trademarks are governed Federally by the Patent and Trademark Office (“USPTO”). The controlling federal law is the Lanham Act 15 U.S.C. §§ 1051 – 1127 (passed in 1946, amended in 1996). There are also state statutory and/or common laws which may be applicable to trademark registration, use, and protection within that state's borders.

When a Trademark is registered under the Lanham Act, it is protected nationwide by federal law. Registration does not guarantee the preservation or protection of a mark, but is often a key step in signifying and preserving rights. A mark can be registered by an individual or company that is already using a mark, or that is planning on using the mark in federally regulated commerce. (When a mark is used to sell goods across state borders.)

The USPTO has published regulations regarding trademarks, their use, and rights afforded. They are found in Parts 1 – 7 of Title 37 in the Code of Federal Regulations. Upon application, the trademark is reviewed by an examiner, and if approved, is published in the Official Gazette of the Trademark Office to notify any and all interested parties of the pending trademark approval. Once notified, Interested parties may file a complaint with the USPTO to contest the Trademark application for cause, if the mark is already in use, or if the mark is likely to cause confusion about the source of goods or services.

If rejected, there is an established appeals process for applicants to ask for reexamination of rejected applications.

Qualifying as a Trademark

In order to qualify as a trademark, and to be regulated by the Lanham Act, two purposes or conditions must be met.

1. The mark must be used in federally regulated commerce. This means that the mark must be advertised and used to sell goods across state borders. If it is only advertised or used within the confines of a city, county, or state, then the mark cannot be protected by the Lanham Act, and falls under protection of your local statutory and common laws.

2. The mark must be distinctive. Distinctive is a term used to describe marks that under normal circumstances do not describe the underlying product, and if the mark does describe the underlying product, then it will require a secondary meaning. Moreover, the mark cannot fall within the category of a “forbidden mark.”

Forbidden marks are marks, signs, slogans, or instances used to designate a product which are not allowed to receive protection either through the U.S. Court system nor through registration with the USPTO. They include the following categories: 1. Generic Marks; 2. immoral, disparaging or scandalous marks; 3. marks which are primarily functional; 4. marks consisting of a living person's name, signature, or portrait, unless written permission has been given; 5. deceptive marks and 6. marks consisting of a deceased President's name, unless the President's spouse has granted written permission or is no longer alive.

Trademark Classification

Trademarks are required to be distinctive or capable of allowing consumers to identify goods or services based on the marks use. The courts use four different categories to determine the degree of protection offered to a mark. The four categories are 1. arbitrary or fanciful; 2. suggestive; 3; descriptive; and 4. generic. They are listed in descending order based on what is considered the “strength of the mark.” The stronger the mark, the easier and more protection a mark is granted.

The strongest marks are “arbitrary or fanciful.” These marks bear no logical relationship to the product or service being offered except for the advertising, marketing, or use of the mark by the producer or supplier of the goods and services being offered. Words such as “Apple,” “NIKE,” or “Ferrari” are examples of arbitrary marks, bearing no logical relationship to computers, athletic gear, or cars respectively. Because there is no logical relationship to the product or service being offered except by the one created by the users of the mark, the mark is given the highest degree of protection.

Next are suggestive marks. These marks, although they do not describe the mark represent a characteristic of the product or service. Some more famous suggestive marks include “Orange Crush” (the soft drink), “Coppertone” (the sun-tan lotion), and “Playboy” (adult entertainment). The mark is related to the product in that it identifies a characteristic of the product, but does not necessarily describe the product. It is a fine line between suggestive and descriptive, and it is advisable to choose marks that are arbitrary or fanciful as often as possible.

Descriptive marks are marks that describe the actual product or service. Although much harder to protect than the previous marks, there are very prominent examples of descriptive marks that are afforded protection such as “Holiday Inn” and “Windows.” Unlike the previous examples, descriptive marks are required to demonstrate a “secondary meaning” in order to receive protection.

A mark acquires or demonstrates a secondary meaning when the general consumer public primarily associates that mark with a particular supplier or producer, and not the underlying product. For example, “Holiday Inn” is not associated with hotel services in general, much like Bed and Breakfast, but as a brand or provider of services. Similarly with Windows, although initially descriptive of the computer operating system and how it operates, it has acquired a secondary meaning associating it with a particular service provider. In order to determine the strength of a secondary meaning, courts will often look to the following factors: 1. the amount and manner of advertising; 2. the volume of sales; 3. the length and manner of the term's use; and 4. consumer or general public opinion. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).

Lastly, generic marks are very general terms. Marks which fall into this category do not receive protection under trademark law. Words such as “car,” “computer,” or “light” are unprotectable because of the harm it would cause the general public in making general terms protectable and the unfair market advantage. Moreover, terms can become generic over time because of use or acquisition by the public. This is currently an issue being addressed by Google, and examples of loss include “Thermos,” and “Cellophane.” “Kleenex” has also bordered on becoming a generic mark because the public has adopted the term to describe not the particular brand, product, or producer of goods and services, but a product in general.

If you have questions or comments, please contact us .

 

Six Steps to Guide Copyright Owners on User Generated Content

The Electronic Frontier Foundation, a leader in the protection of Internet rights and the open source community, has issued six principles to help copyright owners “minimize collateral damage” and standardize approaches in removing infringing user generated content.

The Six Steps are:

  1. A Wide Berth for Transformative, Creative Uses. The intent is to allow a wide degree of interpretation and leniency in the definition of “Fair Use” in the sense of parody, comment and criticism, in appeasement to and protection of the potential largely non-lawyer portion of the population. Especially in areas that are transformative or non-commercial in nature.

  2. Filters Must Incorporate Protections for Fair Use. In the realm of automated software checking for and removing content, it is recommended that additional steps be taken to accommodate for potentially “Fair Use” associated content. The steps include applying a matching test for completeness of product, allowing humans to overrule automated processes, and ensuring the minimum amount of intimidation and encroachment in areas of free speech and public comment.

  3. DMCA Notices Required for Removals. Service providers must require DMCA compliant take down notices before removing user generated content.

  4. Notice to Users upon DMCA Takedown. It is also important to educate the users of these services, particularly in instances of repeat violators. By issuing the notice of infringing content and educating the user on what is and what is not “Fair Use”, the user is put on notice and is also better equipped to comply with the law in the future.

  5. Informal Reconsideration Process. If a user feels that their content was removed or blocked for unwarranted circumstances, a procedure or process should be created to allow for review, allowing users to petition in an informal and user friendly manner.

  6. Mandatory Reinstatement upon Counter-notice or Retraction. Users, Service Providers and Copyright Owners should all be informed of instances when content is returned, “put-back”, or unblocked, allowing for further comment, or simply to ensure that all interested parties are appraised of the matter.

 

You can view the entire release here .