That law was almost immediately struck down by the Supreme Court based on the commerce clause of the U. To this day, states still maintain copyright laws that reside alongside and are sometimes at odds with federal protections.
What are your rights, and how do you exercise them? Schwartz, INC. Business litigation attorney David Schwartz has 45 years of experience in defending trademarks, trade secrets, and fighting unfair competition. The first thing to know is that the earliest user of a trademark is the one who retains the right to use that trademark for his product.
Two types of trademarks exist — common law and registered. Both are protected by law whether or not the symbol is used. In order for a mark to serve as a trademark, it must go beyond being generic and become arbitrary or fanciful e.
Generic terms, in other words, cannot become trademarks without acquiring a secondary meaning. Common law trademarks are initially limited to the area in which you market your product.
If you sell Big Mike Lager only in the Northeast, brewers in other parts of the country are entitled to use the same mark. Registering with the USPTO, however, enables you to assert nationwide rights, providing someone else is not already using the same mark in a particular geographic area, where they would retain that right. They brought an action for trade mark infringement against the defendants who used the mark "Sleekcraft" in connection with the sale of high-speed performance boats.
The Court thought that the products were indeed related but they were not identical; the two types of boats served substantially different markets. However, after applying many of the tests listed above, the court decided that the use of Sleekcraft was likely to cause confusion among consumers.
In UK the "likely of confusion" is an essential requirement for a finding of infringement under s. This includes a "likely of association also which was first introduced into UK trade mark law by The Act 10 Section 10 2 of the TMA provides that if an identical or similar sign is used in conjunction with identical or similar goods for which a mark is registered then there is infringement if there is a likelihood of public confusion.
In cases falling under this section, judges apply a three part test. First consider the identity similarity of the mark with the sign; second, analyse the concept of similarity between the respective goods and services; and third, determine whether there was a likelihood of confusion because of that similarity.
Section 10 1 of the Act provides that if a sign that is identical to a registered trade mark is used in the course of trade in connection with identical goods and services for which the mark is registered then there is infringement. This is a type of infringement that does not require proof of a likelihood of confusion on the part of the public. In Decon Laboratories Ltd. Fred Baker Scientific Ltd. The defendant sold identical products under a range of marks that included the word "Decon".
This was held to infringe as the principal function of the suffixes was to describe the product and they did not distinguish the defendant's products from those of the claimant. Section 10 3 of the Act provides that a registered trade mark is infringed in the UK if a similar or identical mark is used in relation to goods or services which are not similar to those for which it is registered, where the trade mark has a reputation and the use of the sign without due course takes fair advantage of or is detrimental to the distinctive character of the trade mark.
This section is actually focusing on dilution which will be discussed further in this essay. On January 16, , the Lanham Act was amended to provide for a trade mark dilution claim. Dilution is the "gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name.
A trade mark is diluted when the use of similar or identical trade marks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. Dilution protection law aims to protect sufficiently strong trademarks from losing their distinctive quality or uniqueness in the public mind. A dilution claim can be brought only if the mark is "famous".
The determination of what constitutes a "famous" mark will probably involve a great deal of litigation in the coming years. Under the terms of the Act, courts may look at the following factors in determining whether a mark is famous:.
A mark may be diluted by either "blurring" or "tarnishment". Dilution through blurring occurs when a junior mark is used with goods or services different from those originally associated with the senior mark thus diminishing the distinguishing and identifying power of the senior mark.
The case of Panavision Intern. Toeppen states that blurring "involves a whittling away' of the selling power and value of a trademark by unauthorized use of the mark. Dilution through tarnishment may occur when an accused junior mark is used on unwholesome or inferior goods or services that may create a negative association with the goods or services covered by the famous mark. In Toys "r" Us, Inc. Akkaoui, 19 the defendant was enjoined from use of the web site adultsrus. As mentioned above, Section 10 3 of the Trade Marks Act , deals with dilution situations.
In UK, again dilution occurs through blurring or tarnishment of the reputation of a well known or famous trademark. The Act is silent as to whether a likelihood of confusion is required to infringe under s. This form of infringement is limited to marks enjoying a reputation. According to Pumfrey J. According to the Standing Committee on the Law of Trade Marks of the WIPO, the following information must be examined by Courts when deciding whether a mark is a well known or famous one:.
Following a routine check on my trademark I found that it has been infringed; I discovered the existence of a domain name that is identical or confusingly similar with my trademark. The infringing domain could very probably damage the goodwill and repute of my mark and cause me loss and damages.
The first thing I can do is to send to the infringer a "cease and desist" letter stating that I have a trademark on which he is infringing and causes me damage and that he the infringer must immediately cease using my mark and not to use it in the future.
Furthermore, I will ask him to transfer the domain to me and that if he fails to do that, that I will take all appropriate legal measures including claiming damages. I could enter a mark license agreement with the infringer but I don't want to take this option.
If the infringer continues infringing my trade mark even after my notice given to him within my cease and desist letter, I will have to think of my next step to take. If the domain name was one controlled by Nominet UK I could use Nominet's Dispute Resolution Service to have the registration cancelled or suspended or to ask the registration to be given to me to control haw the domain is used.
The requirements of a valid complain under the Nominet DRS are:. The fair use defense applies to descriptive trademarks and argues that the trademark was used in good faith for its primary meaning, not the secondary meaning that is protected.
A similar defense is called nominative use, which happens when the use of the trademark is necessary to identify the other product. For instance, a running magazine cannot do a survey about who wears which Nike products without using the trademarked name Nike. Another defense is when the trademark is used in a parody or other critical analysis. In these situations the First Amendment right to free speech outweighs the rights of the trademark owner.
If you win a trademark infringement lawsuit, the following remedies may be available:. The remedy for dilution is much more limited. Damages are only awarded if the defendant purposefully tried to profit by using a trademark similar to the famous one. Before you start using a trademark, you should do some research to make sure no one else is using it.
You should also search for variations on the name that could be considered infringing. If you find that the trademark you are considering is already in use by a third party in connection with the same or similar goods or services, or that a third party is using a confusingly similar trademark in connection with the same or similar goods or services, you should find another trademark.
It is not worth it to proceed and hope for the best.
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