A trademark is a word, phrase, symbol or design or combination of words, phrases, symbols or designs that identifies the goods and services of one party and distinguishes them from those of another. A mark not only identifies the goods and services with which it is associated, it serves as a guarantee of quality. Although initially only words, numbers, and designs were considered to be marks, over the years, the definition of a trademark has been expanded by judicial decisions to include configurations of the goods themselves, containers for the goods, colors, fragrances, décor, and ambience (e.g., for restaurants).
Types of Marks
- Trademarks are used on products/goods (TASTYCAKES, IBM computers).
- Service marks are used to identify services (BURGER KING restaurant, WALT DISNEY WORLD amusement park).
- Collective membership marks identify members of an organization, association, or union (PHI BETA KAPPA honorary fraternity, SAG Screen Actors Guild).
- Collective trademark/service marks identify the products or services of all of the members of an organization (BETTER BUSINESS BUREAU for information services relating to business practices).
- Certification marks identify marks that are used by a party other than its owner to certify quality, origin, material, or mode of manufacture of goods or services. These marks also show that the product or services are manufactured or provided by members of a union or other organization (GOOD HOUSEKEEPING adherence to specific standards).
The Lanham Act
The Lanham Act (also known as the Trademark Act of 1946) is the federal statute that governs trademarks, service marks, and unfair competition. State trademark registration protects trademark owners in the state where the trademark is registered.
To prove trademark infringement under the Lanham Act, a plaintiff must first show that it has developed a protectable right in a trademark. The plaintiff must then show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake, and/or deception among the consuming public. The courts have established a number of factors to determine if there is a likelihood of confusion:
- The strength of the mark;
- The degree of similarity between the marks;
- The geographic and market proximity of the products;
- The likelihood the prior owner may one day enter the market of the subsequent owner;
- Actual consumer confusion;
- Defendant’s bad faith in adopting the mark;
- Quality of the defendant’s product; and
- The sophistication of the buyers.
The most common form of relief granted to a successful plaintiff in a trademark infringement suit is an injunction against further infringement. If the mark was federally registered, attorneys’ fees may also be available. Monetary damages are available under the Lanham Act, but are not commonly awarded.
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