In Trademarks 101 (Part 1 of this series), trademarks, service marks and the registration process briefly explained. In this installment, trademark limitations, infringement and importance of registration are explored.
Common Instances Where A Company Cannot Acquire Trademark Protection
- Abandonment. Abandonment is a situation in which the owner of a mark does not use the mark for a significant period of time, fails to protect the unauthorized use or lets others use the mark without adequate supervision. If a mark is abandoned, the owner might lose its exclusive rights to the mark. For example, if the owner of a mark for an apartment closed its business and failed to use the mark for twenty years the owner would have abandoned the mark.
- Generic Terms. Generic terms are common words or terms which the relevant purchasing public identify products and services and are not specific to any particular source. For example, the term “cola” is a generic term.
- Likelihood of Confusion. The terms “likelihood of confusion” or “confusingly similar” refer to the foundation of trademark law. It is the standard required to prove infringement of a trademark. The likelihood of confusion test is also one of several examinations conducted by the USPTO in determining whether or not to approve an applicant’s trademark application. Intent to infringe is not necessary as an innocent infringement is just as damaging to a trademark owner as an intentional one. Although the defendant’s intent to infringe may play a role in assessing damages, there is no requirement that defendant have intended to infringe another’s mark.
- Descriptive Trademark. A descriptive trademark is a mark that is descriptive or suggestive of the product or service and entitled to a lesser degree of protection than a stronger mark (i.e., one that is arbitrary or fanciful). A descriptive trademark will not be protected unless the owner of the mark can prove that consumers are aware that the mark is associated with their product or service. If an applicant attempts to register a weak mark, the USPTO will not approve a mark unless the applicant proves distinctiveness.
- Functional Design. Trade Dress is the totality of elements in which a product or service is shaped or packaged, such as the shape and appearance of a product or container. Trademark law will not protect functional aspects of a product or packaging. For example, an electric guitar body can be made with various designs. The guitar designs may be trademarked because the guitar’s design is not required for it to function properly. The design may be also protected as a design patent.
Infringement may occur when a mark is identical or confusingly similar to a trademark of its owner. Once it is determined that another mark may be confusingly similar, a trademark owner should take aggressive action. Failure to take steps to protect a mark can be held to constitute a waiver of any rights in the mark. If a mark is federally registered, the registrant may initiate a civil action in federal court against anybody who used the mark without the registrant’s consent in a manner likely to cause confusion.
If the mark is infringing, the registered mark’s owner may be able to recover the infringer’s profits, the mark owner’s damages, treble damages, costs and attorney’s fees. On the contrary, if the trademark’s owner has not been damaged, the court has discretion to allow the competitor to use the mark under very limited circumstances in order to avoid the possibility of consumer confusion.
Importance Of Trademark Registration
Registration of a trademark with the USPTO gives constructive notice nationally that trademark belongs exclusively to the registrant. The registrant is also allowed to use the symbol ® to indicate that the trademark has been registered. Once a mark is registered with the USPTO, an infringement action can be initiated in federal court, a variety of remedies can be granted, including damages. A mark owner does not need to have federally registered a trademark with the USPTO to initiate a lawsuit for competing use of the infringing mark, but would rely on unfair competition laws. Moreover, the unregistered mark owner’s right of enforcement may also be geographically limited to one or more states, rather than nationwide had the mark been registered with the USPTO. Most states also provide for some means registering trademarks with a state agency and allow for some remedies in case of infringement.