Trade dress is different from a trademark, SERVICE MARK, or TRADE NAME.. Under state and federal law, it is advantageous for businesses to register their trademarks, service marks, and t
Trang 1Reynolds, Osborne M., Jr 2009 Local Government Law.
3d ed St Paul, Minn.: West.
CROSS REFERENCE Zoning.
TOWNSHEND ACTS The Revolutionary War in America was the result of a series of acts levied against the colonists by the English Parliament One of these measures, the Townshend Acts, not only contributed to the American Revolution but precipitated theBOSTON MASSACREas well
In 1767 Parliament decided to reduce the property tax in England To compensate for the deficit, Charles Townshend, chancellor of the exchequer, proposed legislation that would raise revenue from various taxes directed at the colonists These laws, called the Townshend Acts, imposed duties on the importation of such articles as lead, glass, paint, tea, and paper into the colonies The money collected from the colonists was to be applied to the payment of wages of English officials assigned to the colonies
In addition to the taxes, the acts also provided for the maintenance of the American Board of Customs Commissioners in Boston
A third aspect of the legislation involved the disbanding of the New York legislature This assembly had staunchly opposed and refused to accept the Quartering Act of 1765, and all its meetings were suspended until it complied with the unpopular act
Antagonism between the colonists and English officials over the Townshend Acts increased, and English troops were sent to quell disturbances Agitation continued, and on March 5, 1770, the Boston Massacre occurred when English soldiers fired into a crowd of hostile colonists, killing five men
The colonists drafted nonimportation agree-ments and boycotted English goods English merchants felt the loss of revenue, and in 1770 the Townshend Acts were repealed with the exception of a tax on tea This tax, retained to reaffirm the right of Parliament to levy taxes on the colonists, led to the Boston Tea Party
FURTHER READINGS Knight, Carol Lynn H 1990 The American Colonial Press and the Townshend Crisis, 1766–1770: A Study in Political Imagery Lewiston, Mass.: E Mellen Press.
Thomas, Peter David Garner 1987 The Townshend Duties Crisis: The Second Phase of the American Revolution, 1767–1773 New York: Oxford Univ Press.
CROSS REFERENCES Boston Massacre Soldiers; Stamp Act; “Townshend Acts” (Appendix, Primary Document).
TOWNSHIP
In a government survey, a square tract of land six miles on each side, constituting thirty-six square miles In some states, the name given to the political subdivision of a county
CROSS REFERENCE Town.
TRACING
An equitable remedy that allows persons to track their assets after they have been taken by FRAUD, misappropriation, or mistake The remedy is also used inBANKRUPTCY, commercial transactions, and property disputes in marital dissolution cases Persons who have been victims of fraud, misappropriation, or mistake may reclaim their property through the equitable remedy called tracing Tracing makes such victims secured creditors in bankruptcy claims, which means by law they are the first to claim their share of a bankrupt’s assets Tracing can be invoked only
if two requirements are met: victims must be able to identify their property and must show that they have a claim of restitution in kind This means a victim must prove that he has interest in a specific property and that he is not simply someone to whom the defendant owed a debt Once an individual satisfies these requirements a bankruptcy court will declare that the property never belonged to the person
in bankruptcy, so it does not belong to the bankruptcy trustee, who distributes the pro-ceeds to the bankrupt’s creditors
The tracing of assets can be difficult once money is moved into bank accounts or property
is sold and the proceeds used to purchase other property However, there are many tracing rules that aid courts in determining if and how much
a person can recover For example, if a person is defrauded of real estate and the perpetrator
of the fraud sells the property and invests the proceeds in corporate stock, the victim may be able to claim the stock The victim could not use tracing to recover the real estate from a third person who was a GOOD FAITH purchaser
68 TOWNSHEND ACTS
Trang 2(i.e., the individual did not know that the seller
had defrauded the victim) and had paid a
reasonably equivalent value
The UNIFORM COMMERCIAL CODE (UCC) gives
secured creditors the right to trace their
collateral into proceeds of its sale and to trace
these proceeds through commingled bank
accounts Therefore, if a business pledges their
fleet of trucks to secure a loan, the creditor is
entitled to the proceeds of the sale of the trucks
by the debtor
Tracing is also used in FAMILY LAW where a
divorcingHUSBAND AND WIFE had separate assets
before and during the marriage Tracing can be
used to determine if these assets have been
commingled, such as joint contributions toward
the purchase of a home In this area, as in other
fields covered by tracing, the rules can become
very complex and require the testimony of
expert witnesses versed in accounting and
sophisticated financial transactions
TRADE DRESS
A product’s physical appearance, including its size,
shape, color, design, and texture
In addition to a product’s physical
appear-ance, trade dress may also refer to the manner
in which a product is packaged, wrapped,
labeled, presented, promoted, or advertised,
including the use of distinctive graphics,
con-figurations, and marketing strategies In
intel-lectual property law, aCAUSE OF ACTIONfor trade
dress infringement may arise when the trade
dress of two businesses is sufficiently similar to
cause confusion among consumers In such
situations the business with the more
estab-lished or recognizable trade dress will ordinarily
prevail Two remedies are available for trade
dress infringement: injunctive relief (a court
order restraining one party from infringing on
another’s trade dress) and money damages
(compensation for any losses suffered by an
injured business)
LikeTRADEMARKS, trade dress is regulated by
the law of UNFAIR COMPETITION At the federal
level, trade dress infringement is governed
(15 U.S.C.A § 1051 et seq.); at the state level,
it is governed by similar INTELLECTUAL PROPERTY
statutes and various common-law doctrines
Both state and federal laws prohibit businesses
from duplicating, imitating, or appropriating a
competitor’s trade dress in order to pass off their merchandise to unwary consumers
To establish a claim for trade dress infringe-ment, a company must demonstrate the dis-tinctiveness of its product’s appearance Trade dress will not receive protection from infringe-ment unless it is unique, unusual, or widely recognized by the public Courts have found a variety of trade dress to be distinctive, including magazine cover formats, greeting card arrange-ments, waitress uniform stitching, luggage designs, linen patterns, cereal configurations, and the interior and exterior features of commercial establishments In certain contexts courts may find that distinctive color combina-tions are protected from infringement, as when
a federal court found the silver, blue, and white foiled wrapping in which Klondike ice cream bars are packaged to be part of an identifiable trade dress (AmBrit v Kraft, 812 F.2d 1531 [11th Cir 1986])
Goods that are packaged or promoted in an ordinary, unremarkable, or generic fashion normally receive no legal protection under the law of trade dress For example, containers shaped like rockets and bombs are considered hackneyed devices for marketing fireworks and will not be insulated from trade dress infringe-ment At the same time, something as simple as
a grille on the front end of an automobile may
be considered sufficiently original if the manu-facturer takes deliberate and tangible steps to promote that aspect of the vehicle over a long period of time
The law of trade dress serves four purposes
First, the law seeks to protect the economic, intellectual, and creative investments made by businesses in distinguishing their products
Second, the law seeks to preserve the good will and reputation that are often associated with the trade dress of a particular business and its merchandise Third, the law seeks to promote clarity and stability in the marketplace by encouraging consumers to rely on a business’s trade dress when evaluating the quality of a product Fourth, the law seeks to increase competition by requiring businesses to associate their own trade dress with the value and quality
of the goods they sell
Trade dress is different from a trademark, SERVICE MARK, or TRADE NAME Trademarks are
emblems, and other devices that are affixed to
TRADE DRESS 69
Trang 3goods to demonstrate their authenticity to consumers Levi’s jeans, Nabisco cookies, Bic pens, Ford trucks, Rolex watches, and Heinz ketchup are just a few examples of well-known trademarks Service marks identify services rather than goods Roto-Rooter, for example,
is the service mark of a familiar plumbing company Trade names distinguish entire busi-nesses from each other, as opposed to their individual goods and services Coca-cola, for example, uses its trade name to distinguish itself from other soft drink manufacturers Under state and federal law, it is advantageous for businesses to register their trademarks, service marks, and trade names with the government
Conversely, trade dress has no formal registra-tion requirements and receives legal protecregistra-tion simply by being distinctive and recognizable
FURTHER READINGS American Law Institute 1995 Restatement (Third) of Unfair Competition New York: American Law Institute.
Bouchoux, Deborah E 2008 Intellectual Property: The Law
of Trademarks, Copyrights, Patents, and Trade Secrets for the Paralegal 3d ed Clifton Park, N.Y.: Delmar Cengage Learning.
Dorr, Robert C., and Christopher H Munch, eds 1999.
Trade Dress Law 2d ed Gaithersburg, Md.: Aspen Law &
Business.
Harris, Ray K., and Stephen R Winkelman 2003 “Trade Dress: Always in Style? ”IP Litigator 9 (May-June).
Mohr, Stephen F 1995 Recent Trends in the Law of Trade Dress New York: Practising Law Institute.
Prosser, Elise K., and James K Smith 2002 “Accounting for Trade Dress: Companies Need to Accurately Value their Product ’s Unique Packaging or Appearance.” Journal of Accountancy 194 (November).
Trade Dress, Product Configuration & Design Patent Protec-tion 2003 Mechanicsburg: Pennsylvania Bar Institute.
TRADE NAME Names or designations used by companies to identify themselves and distinguish their busi-nesses from others in the same field
Trade names are used by profit and nonprofit entities, political and religious orga-nizations, industry and agriculture, manufac-turers and producers, wholesalers and retailers, sole proprietorships and joint ventures, partner-ships and corporations, and a host of other business associations A trade name may be the actual name of a given business or an assumed name under which a business operates and holds itself out to the public
Trade name regulation derives from the COMMON LAW of UNFAIR COMPETITION The
common law distinguishes betweenTRADEMARKS and trade names Trademarks consist of sym-bols, logos, and other devices that are affixed to goods to signify their authenticity to the public The common law of trade names encompasses a broader class ofINTELLECTUAL PROPERTY interests, includingTRADE DRESS and service marks Trade dress is used by competitors to distinguish their products by visual appearance, including size, shape, and color, whereas service marks are used by competitors to distinguish their services from each other Gradually, the law of trade dress and service marks has evolved into separate causes of action, independent from the law of trade name infringement
To maintain a CAUSE OF ACTION for trade name infringement, a plaintiff must establish that it owned the right to operate its business under a certain name and that the defendant violated this right by use of a deceptively similar name The right to use a particular trade name ordinarily is established by priority of adoption
In states that require registration of trade names, a business may acquire the rights to a trade name by being the first to file for protection with the appropriate governmental office, usually the SECRETARY OF STATE In states that do not require registration, a business may acquire the rights to a trade name through public use, which means that the law will afford protection only if it can be demonstrated that a business and its trade name have become inseparable in the public’s mind Under federal law businesses may acquire the rights to a trade name only through regular and continued public use of an individual name Federal law will not protect trade names that are used sporadically or irregularly
Once a business has established the right to use a particular trade name, it must then prove that the defendant fraudulently attempted to pass itself off as the plaintiff through use of a deceptively similar name Not every trade name that resembles an existing one will give rise to liability for infringement The law will not forbid two unrelated businesses from using the same trade name so long as their coexistence creates no substantial risk of confusion among the public For instance, two businesses may call themselves “Triple Play” if one business is a video store and the other is a sports bar and grill By the same token, the law permits businesses in different geographic markets to use identical trade names, unless the good will
70 TRADE NAME
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into the market where a new business has
opened
A greater degree of protection is afforded to
fanciful trade names than to names in common
use Generic words that are widely used to
describe any number of businesses in the same
field may not be appropriated by a single
competitor For example, a professional
part-nership of attorneys would receive no trade
name protection for emblazoning the name
“law office” across its front doors Such a name
would be considered generic in nature, telling
consumers nothing unique or unusual about
that particular business The same partnership
would receive full protection for a name that
identifies the firm by the individual names of
each partner in the office
Trade name regulation serves four purposes
First, the law seeks to protect the economic,
intellectual, and creative investments made by
businesses in distinguishing their trades
Sec-ond, the law seeks to preserve the good will and
reputation that are often associated with a
particular trade name Third, the law seeks to
promote clarity and stability in the marketplace
by encouraging consumers to rely on a
merchant’s trade name when evaluating the
quality of its merchandise Fourth, the law seeks
to increase competition by requiring businesses
to associate their own trade names with the
value and quality of their goods and services
Both state and federal laws provide
protec-tion against trade name infringement At the
federal level, trade names are regulated by the
Lanham TRADEMARK Act (15 U.S.C § 1051 et
seq.) At the state level, trade names are
regulated by analogous intellectual property
statutes and various common-law doctrines
In general, the law of trade name infringement
attempts to protect consumers from deceptive
trade practices The law does not treat
con-sumers as unwitting dupes and may require
them to make reasonable distinctions between
competitors under appropriate circumstances
When consumers have been deceived by use of
a deceptively similar trade name, an injured
business may avail itself of two remedies for
infringement: injunctive relief (a court order
restraining one party from infringing on
another’s trade name) and money damages
(compensation for any losses suffered by the
injured business)
CROSS REFERENCE Lanham Act.
TRADE SECRET Any valuable commercial information that pro-vides a business with an advantage over compe-titors who do not have that information
In general terms trade secrets include inventions, ideas, or compilations of data that are used by a business to make itself more successful Specifically, trade secrets include any useful formula, plan, pattern, process, program, tool, technique, mechanism, compound, or device that is not generally known or readily ascertainable by the public Whatever type of information is represented by a trade secret, a business must take reasonable steps to safeguard
it from disclosure
Absolute secrecy is not required, however
Commercial privacy need only be protected from ESPIONAGE that can be reasonably antici-pated and prevented Trade secrets may be revealed to agents, employees, and others ordinarily entrusted with such information, so long as it is understood that the information is confidential and disclosure is forbidden At the same time, keeping information strictly confi-dential does not make it a trade secret unless the information is useful or valuable Information that is common knowledge will never receive protection as a trade secret Information must rise to a sufficient level of originality, novelty, or utility before a court will recognize it as a commodity
Similarly, merely because something has been classified as a trade secret does not make every public disclosure of it the theft of a trade secret For liability to attach for trade secret theft, the owner of valuable commercial infor-mation must demonstrate that it was appropri-ated through a breach of contract, a violation of
a confidence, the use of surreptitious surveil-lance, or other improper means For example, most employees who work in a commercially sensitive field are required to sign a contract prohibiting them from disclosing their employ-er’s trade secrets to a competitor or the general public These contracts normally bind employ-ees even after their employment relationship has ended
In the absence of a contractual obligation, employees and others may still be held liable for disclosing a trade secret if a court finds they
TRADE SECRET 71
Trang 5had reason to know that the information was valuable and were expected to keep it confiden-tial For example, engineers and scientists who consult on a commercial project are ordinarily bound by a duty of strict confidentiality that precludes them from later sharing any informa-tion they acquire or using it to facilitate their own research Although many businesses re-quire consultants to sign a nondisclosure agree-ment before beginning work on a sensitive project, this duty of confidentiality arises from the circumstances surrounding a particular venture, independent of any formal agreement reached between the parties
Imposition of liability for theft of a trade secret is not contingent upon a relationship between the owner of commercial information and the individual or entity that appropriated it
Liability may be premised solely on the means used to acquire confidential commercial infor-mation Industrial espionage, which includes both aerial and ELECTRONIC SURVEILLANCE, is an indefensible means of acquiring a trade secret
TRESPASS, BRIBERY, FRAUD, and MISREPRESENTATION are similarly illegal However, the law permits businesses to purchase a competitor’s products and subject them to laboratory analysis for the purpose of unlocking hidden secrets of the trade Called“reverse engineering,” this process
is considered by some courts to be the only proper means of obtaining valuable commercial information without the owner’s consent
The owner of a trade secret has the exclusive right to its use and enjoyment Like any other property right, a trade secret may be sold, assigned, licensed, or otherwise used for pecu-niary gain If the owner of a trade secret knowingly permits it to enter the public domain, however, he has waived the right to its exclusive use and enjoyment An owner who has been injured by the wrongful disclosure or appropriation of a trade secret may pursue two remedies: injunctive relief and damages An INJUNCTION (a court order restraining or com-pelling certain action) is the proper remedy when the owner of a trade secret desires to prevent its ongoing use by the individual or entity who wrongfully appropriated it Money damages are the appropriate remedy when theft
of a trade secret has resulted in a measurable pecuniary loss to its owner
FURTHER READINGS Cundiff, Victoria A., and Salem M Katsh 2002 Trade Secrets 2002: How to Protect Confidential Business &
Technical Information New York: Practising Law Institute.
Lockerby, Michael J., ed 2000 The Trade Secret Handbook: Protecting Your Franchise System’s Competitive Advan-tage Chicago: Forum on Franchising, American Bar Association.
Quinto, David, and Stuart Singer 2009 Trade Secrets: Law and Practice New York: Oxford Univ Press.
TRADE UNION
An organization of workers in the same skilled occupation or related skilled occupations who act together to secure for all members favorable wages, hours, and other working conditions
Trade unions in the United States were first organized in the early nineteenth century The main purpose of aTRADE UNIONis to collectively bargain with employers for wages, hours, and working conditions Until the 1930s, trade unions were at a severe disadvantage with management, mainly because few laws recog-nized the right of workers to organize With the passage of the National Labor Relations Act (WAGNER ACT) of 1935 (29 U.S.C.A § 151 et seq.), the right of employees to form, join, or aid labor unions was recognized by the federal government
Trade unions are entitled to conduct a strike against employers A strike is usually the last resort of a trade union, but when negotiations have reached an impasse, a strike may be the only bargaining tool left for employees There are two principal types of trade unions: craft unions and industrial unions Craft unions are composed of workers per-forming a specific trade, such as electricians, carpenters, plumbers, or printers INDUSTRIAL UNION workers include all workers in a specific industry, no matter what their trade, such as automobile or steel workers In the United States, craft and industrial unions were repre-sented by different national labor organizations until 1955 The craft unions that dominated the American FEDERATION of Labor (AFL) opposed organizing industrial workers Trade unions and labor unions are often thought of as being the same entity However, trade unions differ in that their members are all working in the same trade, whereas labor unions have workers in various fields
During the 1930s, several AFL unions seeking a national organization of industrial workers formed the Committee for Industrial Organization (CIO) The CIO aggressively
72 TRADE UNION
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labored in automobile, steel, and rubber plants
In 1938, the AFL expelled the unions that had
formed the CIO The CIO then formed its own
organization and changed its name to Congress
of Industrial Organizations In 1955, the AFL
and CIO merged into a single organization, the
AFL-CIO
Membership in U.S trade unions has fallen
since the 1950s, as the number of workers in the
manufacturing sector of the U.S economy has
steadily declined Union membership in 1995
comprised just 14.9 percent of the American
workforce, compared with a high of 34.7
percent in 1954
Labor Union
In the United States, labor unions are legally
recognized as representatives of workers in
many industries In 1935, Congress passed the
National Labor Relations Act (NLRA) to
encourage a healthy relationship between
pri-vate-sector workers and their employers Prior
to the NLRA, employers were not required by
law to recognize a union or to bargain inGOOD
FAITH
In the public sector, most labor unions are
for public workers such as teachers and police
However, in the corporate sector, unions
represent workers of various fields Most labor
unions in the United States have membership
in the American Federation of Labor–Congress
of Industrial Organizations (AFL-CIO) or the
Change to Win Federation (CWF), which split
from the AFL-CIO in 2005 The government
saw a decline in unions in the manufacturing
sector and a swift rise in the service industry in
2007 This was due mainly to the shrinking
automotive and manufacturing industries
The Employee Free Choice Act (H.R 800,
S 1041), which has been very controversial,
would enable working people to bargain for
better wages, benefits, and working conditions
by restoring workers’ freedom to choose for
themselves whether to join a union It would
strengthen penalties for violation of employee
rights when workers seek to form a union and
during first-contract negotiations; provide
me-diation and ARBITRATION for first-contract
dis-putes; and allow employees to form unions by
signing cards authorizing union representation
Trade unions and labor unions are often
thought of as being the same entity However,
trade unions differ in that their members are all working in the same trade, whereas labor unions have workers in various fields
CROSS REFERENCES Collective Bargaining; Labor Law.
TRADE USAGE Any system, custom, or practice of doing business used so commonly in a vocation, field, or place that an expectation arises that it will be observed
in a particular transaction
The concept of trade usage recognizes that words and practices take on specialized mean-ings in different areas of business Though these common understandings are not necessarily set out explicitly in a written sales or service agreement, the courts will generally employ them when construing a commercial contract
In the United States, the UNIFORM COMMERCIAL CODE (UCC), which has been adopted in some form in all fifty states, permits trade usage to be used in the interpretation of sales agreements
Trade usage supplements, qualifies, and imparts particular meanings to the terms of an agreement for the purpose of the agreement’s interpretation Contractual language cannot be interpreted out of the context of the agreement
of the parties
Union Membership, in 2008
SOURCE: U.S Department of Labor, Bureau of Labor Statistics, Union Membership,
annual.
Male
Female
White
Black
Hispanic
Total
Number of members (in thousands)
8,938
12,863
2,178
1,960
16,098
20,000
7,160
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A PART OF CENGAGE LEARNING.
TRADE USAGE 73
Trang 7The enforcement of contractual promises protects the justified expectations of the prom-isee, the person to whom the promises were made Trade usage emphasizes such expecta-tions If a particular trade follows a practice so regularly that the promisee is justified in expecting that the promisor considered that practice when making the promise, the practice becomes a part of the agreement between the parties Sometimes usage becomes so common
in an industry that written trade codes are compiled to provide specific language on contract interpretation
Section 1-2.05 of the UCC adopts the principle of trade usage In a contractual dispute, the party who asserts a trade usage must prove the “existence and scope of such usage.” If the trade usage is proved, a court may use it to “supplement or qualify terms of an agreement.” The express terms of an agreement and trade usage must be construed “wherever reasonable as consistent with each other.” If the construction is unreasonable, however, the court will ignore trade usage and apply the express terms of the agreement
In the absence of evidence to the contrary, courts assume that when persons in business employ trade terms, they intend the terms to have their commercial significance To counter this assumption, the parties must expressly state within the contract their intention to render the terms devoid of their trade significance and reduce them to their ordinary meanings The failure to do so indicates the parties’ intention
to use the trade terms according to their commercial meanings
Trade Usage as Extrinsic Evidence The contract language does not have to be ambiguous before a court may consider trade usage To protect against unfair surprise, however, evidence of trade usage is inadmissible unless sufficient notice has been provided to the other party Trade usage is consideredEXTRINSIC EVIDENCE, that is, evidence that is inadmissible or not properly before the court, jury, or other determining body Several factors are relevant to determining whether the alleged introduction of extrinsic evidence constitutes reversible error, including whether the extrinsic material was actually received, and if so, how; the length of time it was available to the jury; the extent to which the jury discussed and considered it;
whether the material was introduced before a
verdict was reached, and if so, at what point in the deliberations it was introduced; and any other matters that may bear on the issue of whether the introduction of extrinsic material affected the verdict
CROSS REFERENCES Sales Law; Extrinsic Evidence.
TRADEMARKS Trademarks are distinctive symbols of authenticity through which the products of particular manu-facturers or the salable commodities of particular merchants can be distinguished from those of others
A trademark is a device, word or combina-tion of words, or symbol that indicates the source or ownership of a product or service
A trademark can take several forms, including
a name, such as Adidas; a symbol, such as McDonald’s golden arches; or a combination of the two, such as when the NIKE name is written with the “swoosh” symbol beneath it In very limited cases, a shape or even a distinctive color can become a trademark
People rely on trademarks to make in-formed decisions about the products they buy
A trademark acts as a guarantee of the quality and origin of a particular good A competing manufacturer may not use another company’s trademark The owner of a trademark may challenge any use of the mark that infringes upon the owner’s rights
The presence of trademark protection for the name or logo of a company or product is often indicated by the small symbol of an R in a circle placed near the trademark The R means that the mark is a registered trademark and serves as a warning that the law prevents unauthorized use of it A party may indicate that it is claiming rights to a particular mark by displaying a TM rather than an R symbol Marks bearing the TM symbol are not regis-tered, but the presence of the symbol shows an intent to register
Origins and Development
of Trademark Law Trademark law in the United States is governed
by the Trademark Act of 1946, also known
as theLANHAM ACT(15 U.S.C.A § 1051 et seq.) The Lanham Act defines trademarks as includ-ing words, names, symbols, or combinations
74 TRADEMARKS
Trang 8My Commission Expires: _ Notary Public: _
TM 1 (7/99)
Trademark/Service Mark Application
COMMONWEALTH OF VIRGINIA STATE CORPORATION COMMISSION APPLICATION FOR REGISTRATION OF A TRADEMARK OR SERVICE MARK
(Please type or print)
Applicant (owner) name and address:
Contact person name and address:
_Daytime phone: Fax number:
Applicant is a: _Applicant's state or jurisdiction of formation:
(entity type, e.g., corporation, partnership, etc.)
Kind of mark (check one):Trademark _ Service Mark _
Identify the trademark or service mark (or attach an exhibit of the exact mark): _
Class number(s) of goods or services (see 21 VAC 5-120-100):
Describe the product(s) or service(s) the mark represents (identifies): _
_
Date mark was first used anywhere by applicant or applicant's predecessor: _
Date mark was first used in Virginia by applicant or applicant's predecessor: _
PLEASE NOTE: A specimen of the mark must accompany this application.
The applicant asserts that it is the owner of this mark and that the mark is in use in the Commonwealth of Virginia No other person has
registered this mark or has the right to use this mark in Virginia, either in the identical form thereof or in such near resemblance thereto as
to be likely, when applied to the goods or services of such person, to cause confusion or mistake, or to deceive.
(NOTE: The application must be signed in the name of the applicant, either by the applicant or by a person authorized by the applicant The
application must be sworn to by the person who signed the name of the applicant.)
Signature: Date: _
Signer’s Name: Title:
(print or type)
State of: _, County/City of: _, to-wit:
The foregoing application was subscribed and sworn to before me by _
on the _ day of , .
A sample trademark/ service mark application.
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A PART OF CENGAGE LEARNING.
TRADEMARKS 75
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in commerce to distinguish his or her goods from those made or sold by another Potential trademarks are categorized by the functions they perform Within trademark law are several specialized terms used to categorize marks that may be subject to protection The categories include form, mode of use, and, most com-monly, strength The four subcategories of strength are generic, descriptive, suggestive, andARBITRARYor fanciful
A generic name is the common name for a product and can never be considered a trademark Terms such as shoe, ball, hat, and lightbulb are all generic product names Some marks that do not begin as generic may later become generic if the public adopts the mark as the general name for that product Examples of marks that were not originally generic but later became so are cellophane and aspirin Generic marks are not “strong” because they are not distinctive To give trademark status to the generic or common name of a product would prevent all other manufacturers of the product from identifying it
A descriptive term tells the consumer something about the product and may only become a trademark after it has acquired SECONDARY MEANING This occurs after a period
of time during which the term’s association with that product is exclusive This acquisition
of secondary meaning is sufficient to make a mark distinct, meaning that in the eyes of consumers it has come to represent that products bearing the mark come from a particular source The mark “Brooklyn Dodgers” is an example of a descriptive mark that is exclusively associated with a professional baseball team formerly from New York
A suggestive term, rather than describing the product, merely makes a subtle suggestion about the type of product and its qualities It requires consumers to use their imaginations to make the intellectual jump between the sugges-tion and the actual product For those reasons,
it can be a trademark immediately upon use
Examples of suggestive marks are Orange Crush (orange-flavored soft drink), Playboy (sexually oriented magazine for men), and Ivory (white soap)
When distinguishing between descriptive and generic terms, courts try to determine the viewpoint of the prospective consumer Courts
look for the meaning that the buyer of a product assigns to the contested word Courts may also look at the term as used by dictionar-ies, third partdictionar-ies, trademark owners, texts, PATENTS, newspapers, literature, and surveys Use of a term as a common name indicates that the word may be the generic name of a product
The strongest marks are arbitrary and fanciful marks, which need not acquire second-ary meaning They are strong because they bear little or no relationship to the products with which they are affiliated, and thus their use is not unfair to others trying to compete in the marketplace with similar products Arbitrary marks are common words used in an uncom-mon way and are used in connection with the goods in a way that does not describe the goods
or suggest anything about them Examples include Camels in reference to cigarettes and Dial as the name of a brand of soap Fanciful words, by contrast, are invented and (at least at the time they are first applied to the goods) have
no dictionary meaning Examples of fanciful marks are Kodak, Exxon, and Rolex
These considerations force a producer to select or create a symbol or name for its product that is suitable for trademark protection
A producer labors to create a good name for a product, and a protected trademark prevents competitors from unfairly capitalizing on the reputation of that name When trying to decide what mark is appropriate, the potential trade-mark owner should keep in mind a fundamental rule of trademark selection: In most situations, one will not be allowed to use a trademark that another entity already uses Before an entity incorporates under a certain name or attempts
to sell a service or product bearing a particular name, the entity should conduct a search or hire
an attorney to investigate prior or existing use of the name Those companies that fail to conduct this kind of a search or blatantly ignore existing use of a trademark are likely to face a lawsuit by any existing owner of the mark Such a lawsuit may lead to a court order to stop any infringing use and an award of damages to the holder of the mark
Uniqueness is a major consideration to the potential trademark owner, regardless of whether the mark is descriptive, suggestive, and arbitrary or fanciful The fewer unique char-acteristics a mark possesses, the less legal protection it receives To compete, the potential
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Trang 10trademark owner must consider whether others
need to use a particular mark in conjunction
with a product A unique mark that bears little
relationship to the product is preferred over a
mark that is more generic
The Lanham Act distinguishes trademarks
from trade names and service marks and also
addresses certification marks and collective
marks A SERVICE MARK is used to identify and
distinguish the services of one company from
another, such as Sears for retail stores, and
American Express for credit cards ATRADE NAME
or commercial name distinguishes and
identi-fies a business The same name or portion of a
name may also serve as a trademark, trade
name, or service mark An example is the name
Ford Motor Company, which is the trade name
of a company that builds and sells cars and
trucks that bear the trademark Ford In short,
trademarks apply to products, service marks to
services, and trade names to businesses
Certification marks endorse products and
certify approval of their origin, quality, or
authenticity A certification mark is not the
property of the maker of the products upon
which the mark will be affixed Examples are the
Union Label in garments and various seals of
approval When the provider of goods or services
belongs to an association, it often advertises or
attaches a collective mark to announce that
relationship The mark is used on products or
services not provided by the owner of the mark,
typically as a symbol guaranteeing quality and
taking advantage of the supposed benefits to the
consumer that stem from the product’s
associa-tion with the owner of the mark
Trademark Registration
Traditionally, trademark rights depended on
prior use, but since 1988 a party with a genuine
intent to use a mark may apply for trademark
registration The applicant must intend to use
the mark in commerce and must intend to do
so in order to sell a product, not merely to
reserve rights for future use
Registration begins with application to the
commissioner of patents and trademarks in the
PATENT AND TRADEMARK OFFICE Registration of a
mark means that others will be presumed to
know that the mark is owned and protected By
itself, registration is considered evidence that
the registrant has ownership and that the
registration is valid
Registration benefits the trademark owner because it suggests that the registrant did everything necessary to protect its mark While trademark rights actually stem from use, a party may have difficulty convincing a court that it had good reasons not to register a mark for which it now claims a protected right Such is the case particularly when a claimed symbol’s status as a trademark is uncertain, such as in a dispute over the design of a product as a trademark
One may apply with either the principal register or supplemental register of the Patent and Trademark Office The principal register is for arbitrary, fanciful, suggestive, or descriptive marks that have acquired secondary meaning or distinctiveness The supplemental register is for descriptive terms capable of acquiring second-ary meaning Once a mark establishes secondsecond-ary meaning, it can be transferred to the principal register
Registration with the principal register is preferable to supplemental registration for many reasons Principal registration is proof that the mark is valid, registered, and the INTELLECTUAL PROPERTY of the registrant, which has exclusive rights to use the mark in commerce Further, a registered mark is presumed to have been in continuous use since the application filing date After five years of continuous use, a registered mark may not be contested Registration with the principal regis-ter means that a potential infringer will be considered to know about the registrant’s claim
of trademark ownership The owner of a mark registered with the principal register has the right to BRING SUITin federal court Those who COUNTERFEIT registered marks face criminal and civil penalties The owner of a trademark who registers with the principal register and deposits the registration with the U.S Customs Service can prevent goods bearing infringing marks from being imported
A mark on the supplemental register may become a trademark, but its status as such has not yet been determined For this reason, the presumption created by registration with the principal register, that the registrant can be the only valid owner, does not apply to supplemen-tal registration
The owners of registered trademarks can lose their rights in a number of ways When a trade
or the general public adopts a trademark as the
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