For example, a bold parody of an advertisement in L.L. Bean magazine was not found to be counterfeit. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 28 (1st Cir. 1987). Similarly, the use of a pig-like character named “Spa`am” in a Muppet movie was found not to infringe Hormel`s trademark rights to “Spam.” Hormel Foods Corp. v.
Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). On the other hand, it was found that the “Gucchie Goo” diaper bags were not protected by the parody defence Gucci Shops, Inc. v. R.H. Macy & Co., 446 F. Supp. 838 (N.L.D.Y. 1977). Posters bearing the “Enjoy Cocaine” logo were also found to infringe Coca-Cola`s rights under the slogan “Enjoy Coca-ColaCoca-Cola Co. v. Gemini Rising, Inc., 346 F.
Supp. 1183 (E.D.N.Y. 1972)”. Although the courts recognize a parody defence, the exact contours of such a defence are difficult to describe precisely. Trademarks are subject to both federal and state law. Originally, state common law was the primary source of trademark protection. However, in the late 1800s, the U.S. Congress enacted the first federal trademark law. Since then, federal trademark law has continued to expand, taking over much of the area originally covered by state common law. The most important federal law is the Lanham Act, which was enacted in 1946 and last amended in 1996.
15 U.S.C. §§ 1051 et seq. Today, federal law provides the most important and, overall, comprehensive source of trademark protection, although state common law lawsuits are still available. Most of the discussion in this summary focuses on federal law. It`s also important to note that you only get trademark protection for the exact design. Therefore, you can submit multiple applications for a logo or symbol. If you want to use it in more than one color, submit a request for each version, including one in black and white. This protects your brand in all its forms.
If you are registering a trademark that contains only words, your trademark application must include a model of the word(s) as you intend to use them. If you trademark a logo or symbol, add an image of the mark that looks exactly what it will look like when you use it on your product, documentation or other documents. Similarly, when submitting a certificate for accepted names or “dba” to the Secretary of State or a county clerk, only information about the underlying business is recorded. Simply submitting a certificate for aliases or “dba” does not entitle you to use the name in violation of someone else`s rights to the name. This does not prevent anyone from using the name in Texas commerce. It does not prevent the Minister from registering a new organization bearing that name as a corporate name. This does not prevent the Secretary of State or the County Clerk from registering the same name as an assumed name. It shall not preclude the Secretary of State from registering a trade mark identical with or similar to that name. Arbitrary trademarks use existing words that have nothing to do with the product or its description, while fanciful marks use invented words. In both cases, proof of acquired significance for registration is not required. While likelihood of confusion and dilution are the two most important trademark means, there are a number of additional constitutional grounds under state competition law: passing-on, passing-on, reverse disclosure, and misappropriation. A transfer occurs when the defendant attempts to pass off his proceeds as the plaintiff`s proceeds.
For example, the manufacture of computers and the claim that they are manufactured by Apple Computer, Inc. A contributory transfer exists when the defendant supports or passes off another (usually a retailer) for its plaintiff product. For example, asking a computer store to claim that computers are made by Apple, when in fact they are not. A reverse transfer exists when the defendant attempts to pass off the plaintiff`s proceeds as its own. For example, take an Apple computer, remove the label, and put another label on it. Finally, embezzlement is a very volatile but potentially fruitful source of additional trademark claims. It is also much more difficult to infringe a trademark if the defendant states that he did not know that the mark was a trademark. The use of the registered symbol serves to inform everyone who sees it that it is registered with the USPTO. It will also stand up well in court if the infringer tries to claim that they didn`t know you owned the trademark on the trademark. In addition to filing an infringement action, trademark owners can also file a trademark dilution claim under federal or state law. Under federal law, a dilution claim can only be claimed if the mark is “famous.” In deciding whether a trademark is famous, courts consider the following factors: (1) the degree of inherent or acquired distinctiveness; (2) duration and scope of use; (3) the scope of the advertising and advertising; 4. the geographical scope of the market; 5.
trade routes; (6) the degree of recognition in commercial territories; (7) any use of similar marks by third parties; 8. if the trademark is registered. 15 U.S.C. § 1125(c). Kodak, Exxon and Xerox are examples of famous brands. Under state law, a trademark does not need to be famous to substantiate a dilution claim. Instead, dilution occurs when: (1) the trademark has “selling power” or, in other words, a distinguishing feature; and (2) the two marks are substantially similar. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026 (2d Cir. 1989).
In order for a trademark to benefit from trademark protection, two basic conditions must be met: it must be used in commerce and it must have distinctive character. Whenever you claim rights to a trademark, you can use TM (trademark) or SM (service mark) to inform the public of your claim. You don`t need to register a trademark before using TM or SM in Texas. The second requirement, that a mark must have distinctive character, concerns the ability of a mark to identify and distinguish certain goods as coming from one manufacturer or source and not another. Trademarks have traditionally been divided into four categories of distinctiveness: arbitrary/imaginative, suggestive, descriptive and generic. See Zatarain`s, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir.
1983). If a mark is classified as arbitrary/fanciful or suggestive, it is considered inherently distinctive and exclusive rights to the mark are determined solely by priority of use. A mark classified as descriptive can only be protected as a trademark if it has acquired secondary importance in the minds of the consuming public. A secondary meaning is also necessary to establish trademark protection for a personal name or geographical term. Generic terms are never protected by trademark law, as they refer to a general class of goods and do not refer to a clear source. A trademark may be generic ab initio and have refused registration, or it may become generic over time through use. Defendants in a trademark infringement or dilution claim can generally assert two types of positive defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary rather than secondary meaning and is unlikely to cause confusion among consumers. For example, a grain manufacturer can call its grain “whole sound” without infringing Kelloggs` rights to the trademark “All Bran”.
This use is purely descriptive and is not based on the secondary meaning of the mark. Similarly, in one case, a court held that the defendant`s use of “fish frying” to describe a fish paste coating constituted fair use and did not infringe the plaintiff`s trademark “fish-fri”. Zatarain`s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are preferred because they use the terms only in their purely descriptive sense. In principle, the registration of a trademark confers an exclusive right to use the registered trademark. This means that the trademark can only be used by its owner or licensed to another party for paid use. Registration creates legal certainty and strengthens the position of the rights holder, for example in the event of a dispute. After our discussion of descriptive terms, how about the name “brown in the bag” for a clear bag you can cook in? Is it merely descriptive (and therefore requires secondary meaning to obtain protection)? To be used as a trademark, a trademark must be distinctive, that is, it must be able to identify the source of a particular product.
To determine whether a trademark is distinctive, courts group marks into four categories based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive or (4) generic. Since the marks of each of these categories differ in their distinctiveness, the requirements and degree of legal protection of a particular mark depend on the category to which it belongs. As with copyright, trademark law is constantly changing as the way we do business and the international nature of trade changes. However, the mark is only part of Title 15, which refers to trade and commerce in general. Of course, Title 15, Chapter 22, Trademarks (not to be confused with the repealed Chapter 3) is in good company. Other chapters of Title 15 deal with a variety of legal issues, including: Note that if a court finds that the “big chunks” are generic and non-descriptive, regardless of any secondary meaning acquired, the mark is not protected. Thus, a defendant accused of trademark infringement will generally argue that the term is generic, but even if the court considers it descriptive, no secondary meaning has been acquired.
