Tms definition: a word, name, symbol or device that identifies


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  1. Definition: a word, name, symbol or device that identifies goods in commerce, which owners may use exclusively in commerce.

    1. Purposes: to protect consumers from confusion & to protect owner’s investments.

    2. TM law is generally geographically fragmented—different people can use the same TM in different places. Internet is changing this. Difficult because different countries have different TM laws.

  • Search, which is expensive

  1. To qualify for TM protection, a mark must be:

    1. Distinctive

      1. Inherently distinctive: arbitrary (APPLE for computers), fanciful (EXXON) (not a real word), or suggestive (THE MONEY STORE; EVERREADY) (best something in the world)

      2. Acquired distinctiveness: becomes distinct in the market

      3. Cannot protect generic terms (APPLE for apples), even if they were once distinctive (ASPIRIN) (“generecide”);

      4. See fear of Xerox, Google, Kleenex, Teflon – you can diversify your services or goods – you have to go against what you invested in.

      5. Start-up companies: you have to (i) make a good-faith search – but problem of non-registered marks and (ii) find a an arbitrary name

    2. Used in Commerce

    3. Affixed or otherwise associated with goods or services

    4. Signify the source or origin of the goods and services with which it is associated.

  2. Registration.

    1. Application

      1. Use-based

      2. Intent-to-use – TM Revision Act 1988

    2. Statutory bars

      1. Immoral, deceptive or scandalous

      2. Insignia of the US

      3. Name portrait or signature of a living person w/o consent

      4. Word, name or other designation which is confusingly similar

      5. Descriptive

      6. Generic or functional items

    3. Exception to the statutory bar – Section 1052(f). Surnames who acquired secondary meaning

    4. Opposition

    5. Advantages of registration

    6. Geographic segmentation apple computers apple banks. Things can coexist geographically

    7. Register

      1. Principal

      2. Supplemental

  3. Passing off [see also reverse passing off Dastar case]. What is bad about passing off? In competition law we say that free-for-all of market

    1. Goodwill / reputation is a monetizable asset

    2. Free-for-all market is not always good for non-economic reasons: see trade secrecy.

  4. Remedies

    1. Disclaimer

    2. Sucks sites cannot be closed up because they do not create confusion
  5. Traditional TM infringement: Senior user of a mark sues that junior user of a mark claiming consumer confusion, either about the source/origin of the products or the affiliation/sponsorship between the two companies. TM does not need to be registered to merit protection. Likelihood of confusion test considers (Polaroid test):

    1. Strength of TM

    2. Similarity of marks

    3. Similarity of goods

    4. Channels of trade

    5. Sophistication of consumers

    6. Actual confusion

    7. Wrongful intent

    8. Whether the challenged use is within the senior user’s zone of natural expansion

See Beebe (TM scholar at Cordozo) who says that the most important thing is bad faith: “An empirical analysis of the multifactor tests for TM infringement”

  1. TM Dilution: The diminished capacity of a famous mark to distinguish goods or services regardless of (1) competition or (2) likelihood of confusion, mistake, or deception.

    1. Blurring: use of a famous mark highly associated with a particular product on something else (unrelated product). Association between mark and goods is blurred. E.g. Kodak motorcycles.

    2. Tarnishment: The association between an owner’s mark an the goods is tarnished by a good that hurts its reputation. E.g. anything and porn.

    3. 1995 Anti-Dilution Act: 15 U.S.C. §1125. Entitles an owner of a famous mark to injunctive relief against a commercial use that begins after the mark becomes famous (famous?) and if that use dilutes the mark. Test considers 8 factors:

      1. Level of distinctiveness

      2. Duration of use

      3. Amount of Advertising

      4. Geographic scope of use
      5. Channels of Trade

      6. Degree of recognition of the marks

      7. Use of same or similar marks by third parties

      8. Whether the mark was registered

    4. Cyber squatting

  1. Defenses:

    1. Fair use:

      1. Traditional fair use: can use someone else’s TM to describe one’s own goods.

      2. Nominative fair use. Use of someone’s TM to describe their goods.

      3. You can use someone else’s mark in comparative advertising/promotion, noncommercial use of a mark, news/reporting/commentary.

    2. Test for fair use (NKOTB case):

      1. Is the product in question readily identifiable without using Δ’s TMs?

      2. Did the Δ use more of Π’s marks than necessary?

      3. Did the Δ’s use of the TMs suggest employment or affiliation with Π?

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