“Any word, name, symbol, or device, or any combination thereof used by a person to identify and distinguish his or her goods from those manufactured or sold by others.” 15 U.S.C. §1127

Identifies a brand of product or service.

Since businesses often invest substantial amounts of time & money building brand recognition, important to protect trademark rights.

Names - most commonly used

Coca-Cola

Starbucks

Nike

The Beatles

Slogans

“Absolutely positively overnight”

"Tastes Great, Less Filling”

"Good to the Last Drop”

"Breakfast of Champions”

"Where's the Beef?"

What Can Be Used as a Trademark?

Slogans: “Just Do It”

Logos

Band Logo Examples

Record Label Logo Examples

Other Identifiers:

Sound

Color: Rarely, but possible if not necessary for particular product

Color as a Trademark

Consumers tend to buy well known brands & recognize brands by their trademarks.

Prevent consumers from being misled or confused by use of similar names & other identifiers

Consumers may rely on source as an indication of quality.

Prevent businesses from stealing goodwill others have generated by creatively & consistently identifying & marketing their products.

Encourages investment in quality & service by protecting investment in creating favorable reputation

Both federal & state law since federal & state governments have authority to regulate commerce.

Federal Trademark Law

Congress first enacted trademark statute in late 19th century

The Lanham Act (1946) - current federal trademark statute

State Trademark Law

Many states have trademark statutes similar to Lanham Act

Tennessee Trademark Act, T.C.A. §47-25-501 et. seq.

• U.S.: TM ownership derived from “use of a mark in commerce”

– First to use mark to sell product or service has superior rights over subsequent user of same or similar mark in connection with same or similar goods or services

– Selecting mark not enough - must use to identify product or service available for sale

– Rights limited to area in which trademark is used

• Other Countries

– First to file (register) has rights– Use not necessarily required before filing

Distinctive marks identify goods or services as originating from a particular company, and consequently distinguish those goods or services from competitors’ goods or services

Have little or no descriptive function; Operate primarily to identify a product source

Inherently distinctive: Marks that are unique (made up) or very original

Secondary Meaning: Marks that become distinctive due to TM owner’s efforts to create distinctiveness (long-term use & public recognition)

The more distinctive a mark, the greater the protection it receives.

Coined/FancifulArbitrarySuggestiveDescriptive

Weak protection Only protected if

secondary meaningGeneric

No protection

No relationship to the nature of goods or services

Coined: Exxon, Kodak, HaagenDazs

Arbitrary: Apple (computers)

Strongest marks – greatest protection

Suggest rather than describe some aspect of the goods or services

Coppertone, Jaguar, Microsoft

Strong trademark protection since they don’t actually describe products or services they identify, but can be good for marketing since they suggest products they identify

Describe some quality or characteristic of goods or services

“Apple” brand apple juice“The Band”

Not protected unless “secondary meaning” acquired

Presumed if 5 years continuous use. 15 U.S.C. §1052

Do not function as TM unless secondary meaning

Curb Records, Geffen Records

Identify a person rather than a product or service

Same for geographic names

Tennessean (newspaper), Nashville Network

Choose name carefully – try not to infringe existing trademarked names.

Important to consider foreign trademarks as well if you might sell your products or services abroad

UK band The Charlatans changed to The Charlatans UK in U.S. to avoid confusion with American 60s band with same name.

Important to address who owns name & who has right to use if group breaks up or membership changes.

Does mark belong to group, to members (collectively or individually) or someone else?

Steppenwolf former bass player allowed to use name to describe himself as "former member of Steppenwolf," but agreed not to record or perform under name.

Do not function as trademarks

Describe type of product rather than a particular brand

Genericide: A term becomes so generic as to lose protection

File Application

PTO examines for registrability & conflicts

Takes about 1 year to receive response May require amendment or modification After PTO approves, opportunity for

opposition from other mark owners Registration issues if no opposition

Nationwide rights

Except for prior users (registration never outweighs prior use under U.S. trademark law)

Constructive notice of ownership claim

Presumption of ownership & validity. 15 U.S.C. §1072

People conducting searches will find your registration & avoid using similar mark

Right to use ® symbol 15 U.S.C. §1111 Use ™ for unregistered marks

Can record registration with U.S. Customs to prevent importation of infringing goods

Can file foreign registrations based on U.S. registration

Protected where products are sold

Rights acquired by use in commerce, but only in area of use

Can be source of conflict

2 Users in different areas

Ownership & rights based on use

TM can be abandoned by non-use

Federal Registration: 10 years

Can renew for 10 year periods as long as mark still being used

Likelihood of Confusion Test: Whether consumers are likely to be misled or confused as to source or sponsorship of goods. Lanham Act ; 15 U.S.C. §1114(1)

McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC : Company that makes Splenda® sued competitor. Would this be likely to confuse consumers? 

Apple v. Apple

Beatles sued & settled twice - Apple Computer agreed not to use the word Apple to sell music

3rd lawsuit in 2006 over iTunes – Case decided on contract grounds rather than TM

- Settlement gave Apple Computer right to name in connection with “electronic goods, computers, telecommunications equipment, data processing equipment” and “data transmission services”

Series of disputes began in 1980: George Harrison saw Apple Computers ad in a magazine and thought potential for trademark conflict

Strength of Mark (distinctiveness)Similarity of MarksSimilarity of goods or servicesEvidence of Actual ConfusionMarketing ChannelsSophistication of ConsumersBad faith

Unauthorized use of a famous trademark on products that do not compete with those of trademark owner. Lanham Act § 43(c); 15 U.S.C. §1125(c)

Designed to protect distinctive quality of famous trademarks

No requirement of consumer confusion

A trademark is diluted when use of similar or identical marks to identify non-competing goods or services results in the lessening of trademark owner’s ability to identify its products or services

TM registered as domain name by someone other than TM owner

Can be registered without being used at all

Often, motive for registration of domain name is to sell to TM owner

People who register domain names for eventual sale labeled "cybersquatters“

1999 amendment to Trademark Act. 15 USC 1125(d)

Cybersquatting: “registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.”

Remedies: Transfer or cancellation of domain name & civil remedies from $1000 to $100,000; or simpler arbitration procedure can be used to resolve dispute

Domain registrants required to submit to arbitration when TM owner asserts:

Domain name is confusingly similar to a trademark

Registrant has no legitimate interest in domain name

Domain name registered in bad faith:▪ Registrant intends to cause diversion of

consumers or dilution of trademark▪ Registrant offers to sell name to trademark

owner▪ Registrant applied for multiple domain name

registrations

Gordon Sumner (Sting) v. Urvan Singer had no legal

claim to sting domain since not his real name & never registered

No bad faith use by Urvan▪ Used for sting

computer game web site

▪ Common word with a variety of meanings

Madonna v. Parisi P registered domain &

used as link to porn site▪ Rejected defense

based on existence of word in dictionary; no evidence P intended to use word in ordinary meaning

▪ P had not used domain name prior to registering & purchased for $20,000