Trademark Partial Protection

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 What is a Trademark?

Trademarks are used to identify:

  • Products;
  • The source of products; and
  • The manufacturers or merchants.

Trademarks come in the form of:

  • Words;
  • Phrases;
  • Logos; or
  • Symbols.

Trademarks are typically used to distinguish products and manufacturers from one another. If an individual is considering registering a trademark, it may be helpful to consult with an attorney to ensure that their trademark is registered properly.

Before registering a trademark, it is important for an individual to run a trademark search to determine whether another entity or business is already using the same name. It would be very difficult for an individual to create a business name, run advertisements, create items or brochures, and then be forced to change their name later.

What are the Common Types of Trademarks?

There are numerous different categories of trademarks. Common types of trademarks include:

  • Service marks: Rather than promoting a product, service marks are used to promote a particular type of service;
  • Trade dress: Products are sometimes known for their special packaging or trade dress;
  • Collective marks: Collective marks are used to identify a group’s products, services, or members. They may include:
    • symbols;
    • words; or
    • phrases; and
  • Certification marks: Certification marks are symbols or names used to guarantee the quality of another’s service or product.

What is Trademark Infringement?

Trademark infringement is the unauthorized use or reproduction of a trademark, for example, a logo or brand symbol. Trademark infringement is very similar to service mark infringement.

A common example of trademark infringement occurs when a clothing manufacturer attaches a brand label to a generic item, attempting to pass the item off as authentic. A trademark infringement violation is very serious and often involves an aspect of deceptive trade practices.

Trademark infringement may result in several legal consequences, including:

  • Monetary reimbursement for losses to the plaintiff;
  • An injunction requiring the defendant to stop producing, using, or distributing goods with the trademark; and
  • Seizure of the goods that were used or incorporated the unauthorized trademark.

What if the Two Trademarks are not Exactly the Same but Only Similar?

Trademark infringement may also involve using a trademark similar to one officially registered. This applies especially in cases where a copycat trademark is used to deceive consumers into believing it is authentic.

In these cases, the essential factor for proving trademark infringement is a high likelihood of confusion that would cause a consumer to believe that the trademark owner made the product.

Additionally, several factors can be used to determine whether trademark infringement has occurred, including:

  • How close the products or goods are in nature;
  • The strength of the mark, or how visible it is;
  • How similar the marks are in appearance;
  • The types of distribution and marketing channels that are used;
  • The degree of care that the normal consumer would have exercised when selecting the item;
  • The defendant’s intentions in selecting the trademark; and
  • Evidence that the consumer was, in fact, confused over the trademark.

For example, if a copycat item is distributed using the same marketing channels as the original product, it is more likely that the court would determine that trademark infringement did occur.

What is Trademark Dilution?

Trademark dilution is similar to trademark infringement. With trademark dilution, the trademark is used in such a way that it lessens, or dilutes, the uniqueness of the original trademark.

For example, Tylenol is a brand name that is associated with pain relief medication. If a company tries to market a Tylenol Cooking Oil product, that company may be sued for trademark dilution.

This is because the phrase Tylenol Cooking Oil contains the word Tylenol in a way that severely detracts from a product that the public would normally be associated with Tylenol. It may be more difficult to prove trademark dilution than trademark infringement.

Trademark dilution typically involves a trademark that is very famous or popular in the public consumer market.

What is Partial Trademark Protection?

According to trademark laws, a second user is not permitted to gain an equitable claim to use a trademark if the second user adopts the mark after another user has registered it. There are, however, two remaining sources of potential conflict.

First, constructive notices do not affect any preexisting rights between two users. This means that it may be possible for a registrant to acquire rights in a trademark while another user may have acquired rights in a remote area.

It may be difficult to resolve these rights. The second source of potential conflict is between the application and publication, and it may be possible for a second user to adopt a mark innocently without notice.

This may occur whether the notice is constructive or in another form. There are three positions for registrants and other users, including:

  • An earlier user is permitted to apply for registration even though a later user has acquired certain rights in other areas;
  • A later user may apply for registration even though an earlier user also has acquired rights in other areas; or
  • An earlier user may apply for registration even though a later user may acquire rights in the interim between application and publication.

What Type of Claim is Rewarded Registration?

Claims are based on first use. Claims based on the first application, although they may be the second use of a trademark, are occasionally awarded registration to encourage the use of the federal registration system.

What are my Rights as a Senior Registrant against a Pre-registration User?

Typically, federal registration does not affect the rights established by good faith pre-registration users. Pre-registration users have the right to continue their use within the limited area in which the trademark has been established.

Federal registrants cannot enter the geographical market of pre-registration users who established their rights before registration or publication or tell pre-registration users to stop using their trademark.

What are my Rights as a Junior Registrant against a Pre-registration User?

Junior registrations face serious issues. These issues may vary depending upon whether the junior user is aware of the senior user’s activities at the time of their application.

If a junior user knows, they must disclose that information in the application. In addition, the user is required to seek a concurrent registration rather than an exclusive registration.

What is Concurrent Registration?

Concurrent registration is available when more than one individual is entitled to use a mark due to actual use before an application for that mark. This applies if confusion, mistake, or deception is unlikely.

There is a general presumption in favor of prior users. Therefore, if the applicant is the first user, nationwide registration presumptively belongs to them.

Should I Consult a Lawyer about My Trademark Issue?

The deadlines, requirements, and regulations for trademark registration are detailed and strict. If you have any issues, questions, or concerns related to trademarks, it may be helpful to consult with a trademark lawyer.

Your lawyer can assist you with meeting all the deadlines and fulfilling all the requirements for registering your trademark. In addition, your attorney can conduct ongoing research to ensure that no other individuals are using or diluting your trademark without your consent.

If you have an issue with trademark dilution or infringement, your attorney can guide you through the difficult and strict procedural requirements for litigation.

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