First, a plaintiff cannot win an infringement lawsuit without proving that the defendant used a confusingly similar mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services. If you operate a purely noncommercial website i. We discuss this issue and other possible defenses to an infringement lawsuit in the Using the Trademarks of Others section.
Second, even if you do sell advertising or solicit donations, you primarily need to worry only about trademarks used by businesses or individuals doing work that is similar to yours. Before adopting a trademark whether a domain name, a title for your blog, a logo, or whatever , you should look around at other websites doing work similar to yours to see if they are using the same or similar trademark.
When you consider whether something is "work similar to yours," take a broad view. This could be anything from a journalism site, a blog, some kind of interactive web service, something tech-y with a heavy online presence, etc. Keep in mind that there is little certainty in this area, and you will just have to do your best in making the call.
There is one important caveat. As discussed below, owners of famous trademarks can protect their trademarks with a dilution claim, even if there is no likelihood of confusion. So you may want to avoid using famous trademarks altogether. Third, if you use a trademark owner's trademark in the process of criticizing, commenting, or reporting on the trademark owner, its activities, or its goods or services, you will have a good argument that no reasonable consumer would be confused into thinking that the trademark owner is the source or sponsor of your work.
Take news reporting, it stretches credulity to imagine that consumers get confused about source or sponsorship when the New York Times reports on Wal-Mart's most recent earnings release or Ford's new hybrid car. The lack of confusion should be even more clear when it comes to criticism. For example, in Lamparello v.
Falwell , F. No one would believe that Reverend Falwell sponsored a site criticizing himself, his positions, and his interpretations of the Bible. An owner of a famous trademark may sue an individual or company for trademark dilution when that company or individual uses its trademark in connection with goods or services in a way that is likely to dilute it.
See 15 U. A trademark owner that wins a trademark dilution lawsuit can get an injunction barring the defendant from continuing its dilution, and in rare circumstances it can obtain money damages and attorneys' fees. To make out its case, the trademark owner need not show that the defendant's use of its trademark causes a likelihood of consumer confusion. The parties to the lawsuit need not be in competition, and the goods or services in question need not be similar.
Importantly, the trademark in question must be "famous," which means pretty much what it sounds like. If an ordinary person would recognize a trademark as a household name, then it probably qualifies as famous. There are two distinct types of dilution, blurring and tarnishment.
Blurring refers to the loss of uniqueness of a trademark because of an association with goods or services other than those of the trademark owner. When Congress passed the statute, it indicated that the law would apply to the sale or advertisement of goods like hypothetical "Kodak Pianos," "Buick Aspirin," and "Dupont Shoes. Blurring is an extremely expansive concept -- it could encompass almost any unauthorized use of a famous trademark, so long as the defendant used the mark to identify its own goods or services, rather than to engage in commentary, criticism, news reporting, and like activities.
Tarnishment occurs when the defendant's use of the famous trademark harms its image in the minds of consumes, such as by associating it with immoral or scandalous goods or services. For example, the lingerie seller Victoria's Secret sued a sex shop called "Victor's Little Secret" for tarnishing its famous trademark.
Because of the potential breadth of trademark dilution, Congress wanted to ensure that trademark owners could not use the law to silence speech protected by the First Amendment.
To this end, Congress created specific exceptions to the dilution statute for the following uses of a trademark:. These exclusions provide a good deal of protection for citizen media creators, but the courts have yet to provide exact or consistent meanings for many of these terms, such as "fair use", "news reporting," and "noncommercial use. See, e. MCA Records , F. Walking Mountain Prods.
Wal-Mart Stores , No. Under this view, you could not be held liable for using a famous mark in nearly all forms of criticism, commentary, parody, and news reporting.
But not all courts have embraced this view. From Champagne to Habanos cigars, the unique geographical characteristics of a product can be key for branding. The Lisbon System for the international registration of appellations of origin protects such products through a single registration. Article 6ter is used to protect armorial bearings, flags and other state emblems of the states party to the Paris Convention. The WIPO Arbitration and Mediation Center provides trademark owners with efficient international mechanisms to deal with disputes over Internet domain names corresponding to their trademark rights.
IP and Business Universities Judiciaries. What is a trademark? How can I protect my trademark? What rights does trademark registration provide? How long does trademark protection last? What kinds of trademark can be registered? Trademark topics and issues From a trip to the shopping mall to an hour in front of the TV, we encounter trademarks at every turn. Photo: iStock. In recent years, trademark law has expanded to include trade dress and antidilution protection.
Almost any word, name, symbol, or device capable of distinguishing the source of goods may be used as a trademark subject to few limitations. However, a mark 's eligibility for trademark protection may be limited by application of the functionality doctrine , and a mark may be denied registration if it falls within any of the categories listed under 15 U. Two basic requirements must be met for a mark to be eligible for trademark protection: it must be in use in commerce and it must be distinctive.
The first requirement, that a mark be used in commerce, arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce. See Commerce Clause.
The Lanham Act defines a trademark as a mark used in commerce, or registered with a bona fide intent to use it in commerce.
If a mark is not in use in commerce at the time the application for registration is filed, registration may still be permitted if the applicant establishes, in writing, a good faith intent to use the mark in commerce at a future date. Both at common law and under traditional Lanham Act registration procedures, exclusive rights to a trademark are awarded to the first to use it in commerce. The second requirement, that a mark be distinctive, addresses a trademark's capacity for identifying and distinguishing particular goods as emanating from one producer or source and not another.
See Zatarain's, Inc. Oak Grove Smoke House, Inc. A trademark that is categorized as descriptive is only protectable as a trademark if it has acquired a secondary meaning in the minds of the consuming public.
Secondary meaning is also necessary to establish trademark protection for a personal name or a geographic term. Generic terms are never eligible for trademark protection because they refer to a general class of products rather than indicating a unique source.
A mark may be generic ab initio and refused registration, or it may become generic over time through use.
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