Frequently Asked Questions (and Answers) about Trademark

What to Expect When You're Expecting

to Be Sued for Trademark Infringement
Maya Alexandri and Berkman Center
You are likely reading this after you have breathlessly opened an envelope with law firm letter head on the exterior and
read with increasing dismay a letter that in a vulgar tone accuses you of foul and immoral acts. If so, congratulations.
You have come to the right resource.
This primer explains trademark law as it dissects the anatomy of an average cease and desist letter (C&D). Most
trademark C&Ds have at least one, and perhaps all, of the following six elements: (1) gorilla chest thumping; (2)
recitation of facts; (3) citation to cases and statutes; (4) a laundry list of potential remedies; (5) mention of the AntiCybersquatting Consumer Protection Act; and (6) a reservation of rights.
Q: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c
& d mean I am going to lose this dispute?
Q: What can be protected as a trademark?
Q: How can I find out if someone has a valid trademark?
Q: Where can I find federal trademark registrations?
Q: What is the bare minimum of trademark law that I have to understand to decipher this C&D?
Q: Can the owner of a foreign trademark make any claim against me?
Q: Does the product or service on which I am using the mark matter? Do dates matter?
Q: What facts should a C&D include?
Q: What do these registration numbers mean? or Why dont I have any registration numbers in my C&D?
Q: I do not know what these cases or statutes cited in the C&D mean.
Q: What is this laundry list of things the C&D says will happen if I don't obey?
Q: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?
Q: What does the "reservation of rights" language mean? What are they "waiving" at me?
Q: What implication does alleged confusion have on claims of trademark infringement?
Q: What exactly are the rights a trademark owner has?
Q: What are the limits of trademark rights?
Q: How long do trademark rights last?
Q: What about common words that are used for many purposes?
Q: Do I have to register my brand name to get trademark rights?
Q: How do I register a trademark?
Q: What is a trade name?
Q: What is the difference between a trademark and a service mark?
Q: Where can I find federal trademark law?
Q: Where can I find state trademark law?
Q: What are the benefits of federal trademark registration?
Q: What are "common law" rights in a trademark?
Q: What are the limits on dilution?
Q: What does "Secondary Meaning" refer to?
Q: What is trademark tarnishment?
Q: What is contributory trademark infringement?
Q: Why do trademark owners worry about meta tags?
Q: What does it mean to take all reasonable steps to protect a trademark?
Q: What is "goodwill"?
Q: What is a "generic name"?
Q: What is a "counterfeit" mark?
Q: What is the difference between copyright and trademark?
Q: What defenses are there to trademark infringement or dilution?
Q: What does the PTO's refusal to register a trademark mean?
Q: What is trade dress?
Q: What is trademark misuse?
Q: What is a "coined term"?
Q: What is non-commercial use of a trademark? Is non-commercial use infringment of a trademark?
Q: What is Section 43(a) of the Lanham Act?
Q: I want to complain about a company. Can I use their name and logo?
Q: Can I use a trademark in my blog's name or in the title of a blog post?

Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the
tone of the c & d mean I am going to lose this dispute?
Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: its nasty. The first thing to do is take a deep
breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writers perception
that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the
facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has
egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl,
youre never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994).
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Question: What can be protected as a trademark?
Answer: You can protect
names (such as company names, product names)
domain names if they label a product or service
images
symbols
logos
slogans or phrases
colors
product design
product packaging (known as trade dress)
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Question: How can I find out if someone has a valid trademark?
Answer: It isn't easy. In the United States, a trademark owner isn't required to register the mark anywhere, so there is
no single central list of them all. Unlike most other nations, registration here is optional.
Many owners do register their marks with the government, however, to better notify the world of their claims. Each
state has its own trademark registry for goods and services sold locally. For companies that sell in more than one
state, there is a US federal registry that is accessible online through TESS. TESS is searchable by key word as well as
by registration number.
Because registration is not required, however, a word might still be a protected mark even if it doesn't appear in any of
these locations.
When a company is selecting a new brand, its trademark attorney will usually conduct a "trademark availability" search
which will look in many different locations to try and ferret out competing uses of the desired name. Business
directories, Internet search engines, telephone directories are other searched sources. Multi-national vendors will
search trademark registries in foreign nations as well.
Even the most exhaustive search will not be conclusive, however, but it will usually indicate that if there is any other
commercial use, it is probably limited to a very local area. It is OK to use the same mark as another company, so long
as the new use isn't likely to confuse consumers.
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Question: Where can I find federal trademark registrations?
Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an
online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks.
This database may not be complete. One should check the News page to see how current the information actually is.
Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered
(common law marks) and foreign marks as well. A mark does not have to be registered to be valid.
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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?
Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer
confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this,
then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics
or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is
confusingly similar, even if it isn't exactly the same.
Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services.
For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar

products or services are sufficiently different. The law also protects famous marks against dilution of value and
tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless
of any confusion.
You can roughly assess the validity of your opponents claim of confusion by classifying the marks involved. A
trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5)
generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.
A fanciful mark is a mark someone made up; examples include KODAK or HAGEN-DAZS. An arbitrary mark is a
known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store
cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and
garner substantial trademark protection.
A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection:
COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also
strong marks and receive protection.
A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI
describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used
them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the
goods or services on which the descriptive term appears with a single source. In other words, if consumers know that
HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives
trademark protection.
Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and
"perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for
everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).
If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop,
then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact
that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.
There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images
which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the
design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the
design elements.
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Question: Can the owner of a foreign trademark make any claim against me?
Answer: Trademark rights are limited to the territory of the government that grants them. The owner of a French
trademark, for example, cannot block someone else from using the same term in New York. However many courts
around the world have held that they have authority to block Internet material because it "invades" their territory.
Can a foreign court order be enforced against you? Maybe. If you have assets in that country, they could be seized. If
you visit that location, you could be arrested. If your website host has assets in the foreign jurisdiction, however, the
host might delete your material to avoid liability. Domain names registered in certain TLDs (such as .com, .org and
.net) can be lost to foreign mark owners under the UDRP, the special ICANN-imposed dispute procedure which
protects every trademark owner in every country.
If the French trademark owner also has a US mark, then it can sue you in US courts, but only under the US mark rights
and only for the kind of activity that would be an infringement under US trademark laws. US law protects free speech
rights much more strongly than most foreign nations.
The truth is that anyone can make a claim even if a court would immediately reject it. The mere threat of a claim is
often enough to cause the person receiving the threat to give up when s/he doesn't understand his rights.
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Question: Does the product or service on which I am using the mark matter? Do dates matter?
Answer: It matters if the mark is not famous. The C&D should disclose your opponents products and/or services and
the date on which it commenced use of the allegedly infringed mark. This will help you guesstimate whether a
likelihood of confusion between the marks exists. For instance, if your opponent uses opera on truffles and you use
"opera" on silk gloves, consumers are not likely to confuse the products. If the mark is determined by a court to be
famous, however, confusion is irrelevant and [non-fair] use on any type of goods may be an infringement.
The date on which your opponent began using the mark is significant because a junior user cannot displace a senior
user in the senior users geographic region. In other words, if you have owned a chain of donut shops called "Lucky
Donuts," with locations in New Jersey, New York, and Connecticut since 1943, a national chain called "Lucky Donuts"
founded in 1979 has no trademark infringement claim against you in the NJ-NY-CT tri-state area. If your opponent has
begun using its allegedly infringed mark after your use, you have another reason to question the merit of the C&D.
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Question: What facts should a C&D include?

Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following
information:
(1) the trademark that is allegedly being infringed;
(2) the trademark, domain name or other use that is allegedly doing the infringing;
(3) the products and services on which your opponent uses the allegedly infringed mark;
(4) the date your opponent commenced such use; and
(5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office.
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Question: What do these registration numbers mean? or Why dont I have any registration numbers in my
C&D?
Answer: Do not be led astray by the registration numbers: trademark rights in the United States arise from use of the
mark in commerce, not from registering. However, both state and federal law can provide relief from trademark
infringement.
If your opponent has registered its mark on the Patent & Trademark Offices register, then you know that litigation
about the mark could occur in federal court. If your opponent has not included any registration numbers, you still could
be sued in federal court, but your opponent might simply be relying on state law (or just trying to scare you). If the C&D
does not reveal any registration numbers, you should ask if the marks are registered.
If the opponent has included registration numbers, look them up on the Patent & Trademark Offices Trademark
Electronic Search System (TESS). You can check the status of a trademark by entering the registration number into
TESSs search engine. If your opponents trademark is labeled "LIVE," then it is likely to be protected by federal law; if
TESS labels the mark "ABANDONED," then you have reason to believe that federal law will not protect it (although
even abandoned marks can garner protection in some instances). Pending trademark applications are also marked
"LIVE", but they do not get a "Reg. Number" unless/until the registration issues.
A Community Trade Mark (CTM) offers regional trademark protection throughout the European Union. The CTM
database of registered marks is OAMI-Online.
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Question: I do not know what these cases or statutes cited in the C&D mean.
Answer: If your opponent has cited cases and statutes in the C&D, do not freak out. The fact that your opponent can
include some legal authority in the C&D does not mean that the law is on its side. If you can, go look up the cases and
statutes to see what they say. You can go to the nearest law school's law library for help, or you can try a free legal
resource web site like Findlaw. Many of them are accessible on the Internet by keyword search using the full case
name or it's citation (the numbers and abbreviations that follow the names of the parties).
If your opponent is relying on federal law, it will probably cite one or more of the following sections of the Lanham Act:
(1) section 32 (also known as section 1114);
(2) section 43(a) [a/k/a section 1125(a)]; or
(3) section 43(c) [a/k/a section 1125(c)]. (The smaller numbers indicate how the statutory sections were numbered
when the law was a bill in Congress; the larger numbers indicate how the statutory sections were re-numbered when
the law was codified in the U.S. Code. Under either numbering system, the laws say the same thing). An additional
statute, the Anti-cybersquatting Consumer Protection Act (ACPA) [a/k/a section 1125(d) relates specifically to domain
names.
Section 32 (codified as 15 U.S.C. 1114) is the basic statute governing trademark infringement of registered marks. If
you use a mark in commerce that is confusingly similar to a registered trademark, you may be civilly liable under
section 32. This section describes how to determine infringement, what the remedies are, and what defenses are
available.
Section 43(a) [codified as 15 U.S.C. 1125(a)] is the "false designation of origin" statute. If you use a mark in commerce
that is likely to cause confusion or deception as to affiliation, association, origin, or sponsorship with another
trademark, you may be civilly liable under section 43(a). Section 43(a) does not require that any of the marks be
registered.
Section 43(c)[codified as 15 U.S.C. 1125(c)] is the "anti-dilution" provision. This section allows the owner of a famous
trademark to prevent use of the mark by junior users whose use dilutes the distinctive quality of the famous
trademark. In other words, if someone tries to sell "KODAK pianos," KODAK could stop the person -- even if
consumers were not confused -- because KODAK is a famous mark, and its use on products other than film and filmprinting accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness.
The ACPA [codified as 15 USC 1125(d) prohibits "cybersquatting" and lists the elements and defenses to a civil claim
against a domain name holder.
If you identify the statutory provisions on which your opponent relies, you can begin to get a feel for whether the C&D
has merit. For instance, if your opponent relies on section 32, but does not disclose a registration number, your first
question is: does your opponent have a registered mark? If not, it has no claim under section 32.

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Question: What is this laundry list of things the C&D says will happen if I don't obey?
Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you
unless you capitulate. This list generally includes, but is not limited to:
(1) ceasing use of the allegedly infringing mark or surrendering the domain name;
(2) rendering an accounting;
(3) posting corrective advertising;
(4) obtaining an injunction;
(5) recovering costs and fees.
Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that
Torquemada never thought of them).
Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might
also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion
with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if
the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponents;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona
fide business or for non-commercial fair use purposes); and
(3) your name is registered and used in bad faith.
An accounting basically means that you disclose the following information to your opponent:
(1) the date you began using the allegedly infringing mark;
(2) the names of individuals who knew of the use when it began;
(3) the amount of traffic at your web site or business at your store; and
(4) your profits and revenues during the time you used the allegedly infringing mark.
Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your
opponents, and that you are not affiliated with your opponent.
An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing
trademark.
Some provisions of the Lanham Act permit a trademark holder to recover attorneys fees and court costs from an
infringer.
That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the
smorgasbord of legal options with your opponents right to inflict any of them on you.
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Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?
Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of
taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you
registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could
be liable under ACPA.
ACPA applies to people who:
(1) have a bad faith intent to profit from a domain name; and
(2) register, use or traffic in a domain name;
(3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered.
ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are
found liable, as well as being forced to transfer the domain name.
Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of
Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit
www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also
protects mark owners from loss of customer goodwill that might occur if others used the trademark to market
disreputable goods or services.
See the module on ACPA to find out more about bad faith and legitimate defenses.
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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?
Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies,
which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still
sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your
opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it
wants.
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Question: What implication does alleged confusion have on claims of trademark infringement?
Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse
consumers as to the source of the product or service. Consumers could be likely to believe that the product with the
confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a
confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to
his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a
registered mark. The factors that determine infringement include:
proof of actual confusion
strength of the established mark
proximity of the goods in the marketplace
similarity of the marks sound
appearance and meaning
how the goods are marketed
type of product and how discerning the customer is
intent behind selecting the mark
likelihood of expansion in the market of the goods
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Question: What exactly are the rights a trademark owner has?
Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they
come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in
future commerce. In most foreign countries, trademarks are valid only upon registration.
There are two trademark rights: the right to use (or authorize use) and the right to register.
The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or
services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark
involves establishing who was the first to use it to identify his/her goods.
The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use
it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark.
However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has
registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that
requires other people to stop using the mark) or award damages if people other than the owner use the trademark
(infringement).
Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in
commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The
same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta
Airlines and Delta Faucets.
Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can
prevent uses of their marks by others on goods that do not even compete with the famous product.
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Question: What are the limits of trademark rights?
Answer: There are many limits, including:
Fair Use
There are two situations where the doctrine of fair use prevents infringement:
1. The term is a way to describe another good or service, using its descriptive term and not its secondary
meaning. The idea behind this fair use is that a trademark holder does not have the exclusive right to
use a word that is merely descriptive, since this decreases the words available to describe. If the term
is not used to label any particular goods or services at all, but is perhaps used in a literary fashion as
part of a narrative, then this is a non-commercial use even if the narrative is commercially sold.
2. Nominative fair use
This is when a potential infringer (or defendant) uses the registered trademark to identify the
registrants product or service in conjunction with his or her own. To invoke this defense, the defendant
must prove the following elements:
his/her product or service cannot be readily identified without pointing to the registrants mark
he/she only uses as much of the mark as is necessary to identify the goods or services
he/she does nothing with the mark to suggest that the registrant has given his approval to the
defendant

Parody Use
Parodies of trademarked products have traditionally been permitted in print and other media publications. A
parody must convey two simultaneous -- and contradictory -- messages: that it is the original, but also that it is
not the original and is instead a parody.
Non-commercial Use
If no income is solicited or earned by using someone else's mark, this use is not normally infringement.
Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or
services are being offered, or the goods would not be confused with those of the mark owner, or if the term is
being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then
the term is not being used commercially.
Product Comparison and News Reporting
Even in a commercial use, you can refer to someone elses goods by their trademarked name when
comparing them to other products. News reporting is also exempt.
Geographic Limitations
A trademark is protected only within the geographic area where the mark is used and its reputation is
established. For federally registered marks, protection is nationwide. For other marks, geographical use must
be considered. For example, if John Doe owns the mark Timothys Bakery in Boston, there is no infringement if
Jane Roe uses Timothys Bakery to describe a bakery in Los Angeles.

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Question: How long do trademark rights last?
Answer: Trademark rights can last indefinitely if the trademark owner continues to use the mark to identify goods or
services. According to the PTO website, The term of a federal trademark registration is 10 years, with 10-year renewal
terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit
setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.
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Question: What about common words that are used for many purposes?
Answer: Common words and alphabetical letters can be protectable trademarks if they are used in arbitrary or
unusual ways. One cannot trademark DIESEL to sell that generic type of fuel, otherwise no other diesel fuel dealer
could use the word to identify the product. However, one could trademark DIESEL as a brand of ice cream. The owner
of the ice cream mark can't use its rights to prevent fuel dealers from using the word on their station pumps nor can it
prevent anyone else from using the word for non-trademark purposes, such as a website listing diesel fuel dealers.
In general, the more a mark describes the good or service that it labels, the less strong the trademark protection it gets
and the more freedom others have to use the same word for other purposes.
See also this question on the strength of trademarks.
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Question: Do I have to register my brand name to get trademark rights?
Answer: Not in the United States. Here, you do not need to register a mark to establish rights to it, though registration
provides important advantages. Registering a mark means that the registrant is presumed to be the owner of the mark
for goods and services specified in the application. This makes proving your rights easier in court.
However, US federal law also provides rights to unregistered (common law) marks if they are actually used in
commerce. In addition, each state provides local protection for both registered and unregistered marks under
regulations governing unfair competition. Most other countries require prior registration to protect a mark.
If you register a trademark with the PTO, you have rights to the mark only in the United States and its territories. If you
want protection in other countries, you must register the mark in each country in which you want to protect it. However,
you can file a single trademark application that covers all the European countries. Contact an attorney for help on
rights and procedures in other countries.
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Question: How do I register a trademark?
Answer: There are three ways to register:
1. file a use application, which lets someone who is already using the mark register it,
2. file an intent to use application, which states that you honestly intend to use the mark in commerce. The
mark must be associated with commerce, instead of simply being a mark that you want to reserve. Merely
using the mark in advertising or promotion does not qualify under this category -- the use must be associated
with an actual commercial purpose, or
3. (non-US applicants only) file based on an existing foreign registration.

All applications require a fee. Remember that it is not necessary to register a trademark to gain protection in the United
States.
Four months after registration, the trademark application is examined by an attorney at the PTO. The attorney
determines whether the mark is registerable. If not, the applicant receives a letter stating the grounds for refusal and
information on needed corrections (if applicable). If the attorney requests additional information, the applicant has six
months to respond; after six months, the application is deemed abandoned.
The most common reason for being unable to register is that the mark is confusingly similar to an existing mark. If the
attorney finds a conflicting mark and cannot grant the application, the PTO does not refund the application fee.
If the mark can be registered and the application passes, the attorney approves the mark for publication in the PTOs
Official Gazette. When the mark is published in the Gazette, anyone who opposes registration must state their
opposition within thirty days.
For marks used in commerce before filing that are unopposed, the PTO registers the mark, and the certificate of
registration is available about twelve weeks after publishing. If the application is based on intention to use the mark in
commerce, the PTO issues a notice of allowance. This notice lasts for six months, during which the applicant must
1. use the trademark in commerce and submit a statement of use, or
2. request an extension to file a statement of use.
Once the PTO approves the statement of use, registration is complete.
Anyone with trademark rights can use the trademark symbol TM or service mark symbol SM to designate ownership. This
serves notice to the public that you have claim to the designated mark. However, only a mark registered with the PTO
may use the symbol .
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Question: What is a trade name?
Answer: Answer: A trade name is the actual name of the company. It may or may not also be a trademark. Trademarks
are used to label specific goods or services; trade names identify the organization itself. For example, "Ford Motor
Company" is a trade name as well as a trademark. "Bronco" is a trademark only. In those cases, if the trade name is
registered as a domain name, the name owner is protected against cyber-squatting under traditional trademark
provisions and also under the newer Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Dispute
Resolution Policy (UDRP) of ICANN.
If a trade name is not used as a trademark, it may still be protected under other kinds of laws (having different criteria
and remedies), such as unfair competition. However, if the trade name is registered as domain name, the owner will
not be protected against cyber-squatting under the Anti-Cybersquatting Consumer Protection Act (ACPA) or the
Uniform Dispute Resolution Policy (UDRP) of ICANN since they both apply only to trademarks.
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Question: What is the difference between a trademark and a service mark?
Answer: Trademarks refer to goods and products, that is, physical commodities which may be natural or manufactured
or produced, and which are sold or otherwise transported or distributed.
Service marks refer to intangible activities which are performed by one person for the benefit of a person or persons
other than himself, either for pay or otherwise.
Because the legal rights are essentially the same, the term "trademark" is frequently used to refer to both types of
marks.
To learn about other types of marks, see Chapter 100 of the USPTO's Trademark Manual of Examining Procedure.
To tell whether something is a good or a service, see 37 C.F.R. 6.1.
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Question: Where can I find federal trademark law?
Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate
commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United
States Patent & Trademark Office as well as those that are in use but never registered.
Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and
remedies. See the links to court sites provided by the Legal Information Insitute.
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Question: Where can I find state trademark law?
Answer: Each state has its own laws governing use of trademarks within its borders. To locate the trademark laws of
the 50 states, use the Legal Information Institute links. Both legislation and court opinions create trademark rights and
remedies.
If marks are used in interstate commerce, then federal law will also apply.
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Question: What are the benefits of federal trademark registration?

Answer: Federal registration of a trademark has several advantages including notice to the public of the registrant's
claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark
on or in connection with the goods or services set forth in the registration.
Registration Provides the Following:
1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
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Question: What are "common law" rights in a trademark?
Answer: Common law rights are those that are recognized by courts as a matter of traditional equitable principles and
fairness, even when there is no statute or other law that has been enacted by the legislative branch of government to
cover the situation. It also arises from the leeway that judges have in interpretating the language of the written laws
when the meaning is not clear. Common law is often known as "judge-made" law. Common law is learned by reading
the actual decisions made by courts.
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Question: What are the limits on dilution?
Answer: The Federal Trademark Dilution Act of 1995 (FTDA, 15 U.S.C. 1125) prohibits the commercial use of a
famous mark if such use causes dilution of the distinctive quality of the mark.
A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior
or unwholesome goods or services. For example a court found that a sexually explicit web site using the domain name
"candyland.com" diluted by tarnishment the famous trademark "CANDY LAND" owned by Hasbro, Inc. for its board
games.
Blurring occurs when a famous mark or a mark similar to it is used without permission on other goods and services.
The unique and distinctive character of the famous mark to identify one source is weakened by the additional use even
though it may not cause confusion to the consumer.
The following uses of a famous mark are specifically permitted under the Act:
1) Fair use in comparative advertising to identify the goods or services of the owner of the mark.
2) Noncommercial uses of a mark.
3) All forms of news reporting and news commentary.
In addition, the courts have differed as to what constitutes a "famous" mark under the FTDA. In some cases the courts
have said that the famousness requirement limits the Act to a very small number of very widely known marks. Other
courts, however, have accepted lesser-known marks as PANAVISION, WAWA and EBONY as being famous and yet
others have said that merely being famous in one's product line is sufficient.
Many states also have antidilution laws protecting mark owners.
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Question: What does "Secondary Meaning" refer to?
Answer: Many words are commonly used in ordinary language. Can they become trademarks? They can if they
acquire special significance in reference to particular goods. For example, "apple" is a common word, but also a
trademark for computers and for recordings. The word has acquired "secondary meaning" in each product category
because consumers associate it with a particular brand of product.
Secondary meaning gives trademark owners protection, but does not prevent people from using the same word for
other types of products or in common conversation.
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Question: What is trademark tarnishment?
Answer: Trademark "tarnishment," a kind of dilution, can occur if a non-owner uses the mark in connection with
shoddy or unsavory products or services, illegal activity, or activity that is likely to offend the average person. For
example, using a Walt Disney trademark on a website filled with pornography could be claimed to tarnish the
reputation of the Disney mark in the minds of viewers who saw this material. Tarnishment is not always actionable -- it
might be non-commercial or parody use.
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Question: What is contributory trademark infringement?

Answer: Even if you are not using someones mark directly in a product or service you sell, your opponent may say
you have liability under the theory of contributory trademark infringement. This liability may exist if you knowingly
allow someone else to violate another partys trademark rights and personally gain from such violation. It may also
exist if you intentionally encourage another person to violate a trademark.
For example, in one case a court found that the operator of a California swap meet was liable for contributory
trademark infringement because it was aware that vendors at its swap meet were selling counterfeit recordings that
violated the trademark of the company that owned the rights to the recordings. While the swap meet operator did not
sell the counterfeit items itself, it profited on the sale of the items by selling booth space to the vendors and collecting
an entrance fee from the customers buying the infringing products. In another case the manufacturer of a generic drug
was found liable for contributory trademark infringement because it continued to supply the drug to pharmacists it knew
were mislabeling the drug with the name of the trademarked medication.
However in another case a court felt that a company providing domain name registration, had less control over the use
of its service and was not liable for contributory trademark infringement when someone registered a domain name that
infringed a trademark.
The important issues in determining liability for contributory trademark infringement are if you are aware of the
infringement, if you have the ability to monitor and control the use of your product or service, and you are in a position
to receive some benefit from the violation.
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Question: Why do trademark owners worry about meta tags?
Answer: A meta tag on a Web page stores key words describing the Web site to a search engine for use when
someone searches for one of those keywords. Some courts have held that it is trademark infringement when one
company uses anothers trademark to attract people who search for the competing company. There are meta tag uses
that are considered fair use -- for example, when a site uses a descriptive term that is also a trademark.
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Question: What does it mean to take all reasonable steps to protect a trademark?
Answer: If a trademark owner fails to police his or her mark, the owner may be deemed to have abandoned the mark
or acquiesced in its misuse. A trademark is only protected while it serves to identify the source of goods or services.
If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to
write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer
refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary
injunction on use of the mark -- tell the infringer to stop using the trademark pending trial.
If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent
injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the
mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using
the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement.
Of course, the determination of infringement is actually one that will be made by the court, so a trademark owner is
simply using a best guess about whether or not infringement actually has occurred. That best guess may be a good
one, based on experience and expertise, or it may be a bad one that doesn't reflect any of the legitimate defenses that
might exist. The law doesn't require the mark owner to sue everyone; it just requires the owner to keep his mark
distinctive.
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Question: What is "goodwill"?
Answer: Goodwill is a business or trademark owner's image, relationship with customers and suppliers, good
reputation, and expectation of repeat patronage. It is the value a trademark owner builds in a brand.
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Question: What is a "generic name"?
Answer: A generic word is one used by much of the public to refer to a class or category of product or service. A
generic name can not be protected or registered as a trademark or service mark. For example, no one seller can have
trademark rights in "telephone" or "oven." If a seller did have exclusive rights to call something by its recognized name,
it would amount to a practical monopoly on selling that type of product. Even established trademarks can lose their
protection if they are used generically: thermos and escalator are famous examples.
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Question: What is a "counterfeit" mark?
Answer: The Lanham Act defines a counterfeit mark as a false mark which is identical to or substantially
indistinguishable from a registered mark.
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Question: What is the difference between copyright and trademark?

Answer: Copyright protects original expression in literary and artistic works such as plays, books, films, songs,
software, performances, etc.). To qualify for copyright protection, a work must be an original creation of the author and
not copied from any other source. In the U.S., copyright does not protect facts. Individual words cannot be copyrighted,
and there is a gray area of protection for short phrases. Copyright owners have strong rights to prevent copying of their
material, subject to the doctrine of "fair use." Copyrights arise when the work is fixed in a permanent form. Infringement
consists of copying, publicly distributing, making changes to, or publicly distributing or performing the work without the
author's permission.
Trademark only protects names and logo images that are used to label goods or services. Trademark does not require
originality; its purpose is to identify the source of goods. In the U.S., trademark rights arise only when there is actual
use in commerce. Infringement consists of selling goods or services under the same or a confusingly similar name.
Trademark has its own types of "fair uses" including use for product comparison and criticism, news reporting, and
parody.
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Question: What defenses are there to trademark infringement or dilution?
Answer: Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense:
fair use or parody.
Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary (trademark),
meaning, and no consumer confusion is likely to result. So, for example, a cereal manufacturer may be able to
describe its cereal as consisting of "all bran," without infringing upon Kelloggs' rights in the mark "All Bran." Such a use
is purely descriptive, and does not invoke the secondary meaning of the mark. Similarly, in one case, a court held that
the defendant's use of "fish fry" to describe a batter coating for fish was fair use and did not infringe upon the plaintiff's
mark "Fish-Fri." Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). Such uses are privileged
because they use the terms only in their purely descriptive sense.
Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use.
Nominative use occurs when use of a term is necessary for purposes of identifying another producer's product, not the
user's own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers
to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA
Today for trademark infringement. The court held that the use of the trademark "New Kids on the Block" was a
privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today
used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement
or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk
about another party's products and services. When the above conditions are met, such a use will be privileged. New
Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).
Finally, certain parodies of or using trademarks may be permissible if they are not too directly tied to commercial use.
The basic idea here is that artistic and editorial parodies of trademarks serve a valuable critical function, and that this
critical function is entitled to some degree of First Amendment protection. The courts have adopted different ways of
incorporating such First Amendment interests into the analysis. For example, some courts have applied the general
"likelihood of confusion" analysis, using the First Amendment as a factor in the analysis. Other courts have expressly
balanced First Amendment considerations against the degree of likely confusion. Still other courts have held that the
First Amendment effectively trumps trademark law, under certain circumstances. In general, however, the courts
appear to be more sympathetic to the extent that parodies are less commercial, and less sympathetic to the extent that
parodies involve commercial use of the mark.
So, for example, a risqu parody of an L.L. Bean magazine advertisement (L.L. Beam's "Back to School Sex Catalog")
was found not to constitute infringement. 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 violate Hormel's rights in
the trademark "Spam." Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). On the other hand,
"Gucchie Goo" diaper bags were found not to be protected under the parody defense, Gucci Shops, Inc. v. R.H. Macy
& Co., 446 F. Supp. 838 (S.D.N.Y. 1977). Similarly, posters bearing the logo "Enjoy Cocaine" were found to violate the
rights of Coca-Cola in the slogan "Enjoy Coca-Cola", Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183
(E.D.N.Y. 1972). In short -- although the courts recognize a parody defense, the precise contours of that defense are
difficult to outline with any precision.
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Question: What does the PTO's refusal to register a trademark mean?
Answer: The Trademark Office can reject a proposed mark for a number of reasons, for example, that the term does
not function as a trademark (does not identify the source of goods or services), that the term is generic for the goods or
services, or that the term is likely to cause confusion with an existing registered mark. Further, an application might be

rejected because of non-compliance with procedural rules, such as improperly specifying the class in which the mark is
used. If the applicant does not respond to the "office action", the application is abandoned.
See the Trademark Office's Frequently Asked Questions for more.
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Question: What is trade dress?
Answer: Trade Dress is a distinctive, nonfunctional feature, which distinguishes a merchant's or manufacturer's goods
or services from those of another. The trade dress of a product involves the "total image" and can include the color of
the packaging, the configuration of goods, etc... Even the theme of a restaurant may be considered trade dress.
Examples include the packaging for Wonder Bread, the tray configuration for Healthy Choice frozen dinners, and the
color scheme of Subway sub shops. Such a broad and ambiguous definition makes trade dress very easy to
manipulate. Seeking protection against trade dress infringements can be vital to the survival of a business.
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Question: What is trademark misuse?
Answer: Trademark Misuse is a largely theoretical argument about how a trademark holder can use its rights. It would
be similar to the defenses brought in copyright and patent cases, which dictate that if the owner of the intellectual
property rights (e.g. a patent or copyright) over-exerts its rights (e.g forces someone to buy an unrelated product to
gain acess to the protected work), then the copyright or patent holder loses its right to sue for infringement.
Recently, the theory was employed in challenging Network Solutions' dispute policy which held that registered
trademark holders had the right to have Network Solutions immediately freeze any allegedly infringing domain names
until the dispute was settled. It was argued that often claims with little or no support were being alleged by registered
trademark holders so as to prevent possibly infringing sites from materializing. Although the trademark holder's
registration (and rights) were not cancelled, the argument that giving "extra" rights to registered trademark holders was
unfair ultimately led to a change in Network Solution's dispute policy.
It is believed that the trademark misuse theory may still prove useful where a domain name owner is forced by a
trademark owner to litigate or arbitrate a frivolous claim of infringement.
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Question: What is a "coined term"?
Answer: A coined term is a made-up word, such as Kodak or Xerox, with no pre-existing use than as a trademark.
These generally receive the strongest protection under the law because they are usually not similar to other terms or
descriptive of other goods.
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Question: What is non-commercial use of a trademark? Is non-commercial use infringment of a trademark?
Answer: Non-commercial use of a trademark is generally that use which is not related to the sale of goods or services.
If no funds are solicited or earned by using someone else's mark, this use is not normally infringement.
Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services
are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a
literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being
used commercially.
One example of non-commercial use is descriptive use (where the name is used to describe something, such as "He
went to MacDonald's for lunch" or "She was wearing the MacDonald tartan.")
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Question: What is Section 43(a) of the Lanham Act?
Answer: The Lanham Act is the basic federal trademark and unfair competition law. Section 43(a) (15 U.S.C. 1125(a))
is intended to protect consumers and competitors against false advertising and false designations of origin.
The law allows for suit against someone who makes false claims about its own or a competitor's products.

" 1125. False designations of origin, false descriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses
in commerce any word, term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or misleading representation of
fact, which--

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person's goods, services, or commercial activities, shall be
liable in a civil action by any person who believes that he or she is or is likely to be damaged by such
act.
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Question: I want to complain about a company. Can I use their name and logo?
Answer: Yes. While trademark law prevents you from using someone else's trademark to sell your competing products
(you can't make and sell your own "Rolex" watches or name your blog "Newsweek"), it doesn't stop you from using the
trademark to refer to the trademark owner or its products (offering repair services for Rolex watches or criticizing
Newsweek's editorial decisions). That kind of use, known as "nominative fair use," is permitted if using the trademark is
necessary to identify the products, services, or company you're talking about, and you don't use the mark to suggest
the company endorses you. In general, this means you can use the company name in your review so people know
which company or product you're complaining about. You can even use the trademark in a domain name (like
walmartsucks.com), so long as it's clear that you're not claiming to be or speak for the company.
Since trademark law is designed to protect against consumer confusion, non-commercial uses are even more likely to
be fair. Be aware that advertising may give a "commercial" character to your site, and some courts have even gone so
far as to say that links to commercial sites makes a site commercial. (See PETA v. Doughney)
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Question: Can I use a trademark in my blog's name or in the title of a blog post?
Answer: Yes, if it is relevant to the subject of your discussion and does not confuse people into thinking the trademark
holder endorses your content. Courts have found that non-misleading use of trademarks in URLs and domain names
of critical websites is fair. (Bally Total Fitness Holding Corp. v. Faber, URL http://www.compupix.com/ballysucks; Bosley
Medical Institute v. Kremer, domain name www.bosleymedical.com). Companies can get particularly annoyed about
these uses because they may make your post appear in search results relating to the company, but that doesn't give
them a right to stop you.
Sometimes, you might use a trademark without even knowing someone claims it as a trademark. That is permitted as
long as you're not making commercial use in the same category of goods or services for which the trademark applies.
Anyone can sell diesel fuel even though one company has trademarked DIESEL for jeans. Only holders of "famous"
trademarks, like CocaCola, can stop use in all categories, but even they can't block non-commercial uses of their
marks.
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