Jane runs a tax preparation service and manages to recruit all of her preparers from H&R BLOCK offices. It would then be true to say that all the preparers were trained by that well-known company:
J.R.Eweing Tax Service
Filed your taxes yet?
We’re ready, willing,
to get it done for you
(Our preparers are H&R BLOCK-trained.)
However, when a statement of fact like that is made in a way that may lead consumers to reasonably believe they are going to get the brand name services and everything that goes with them from her unaffiliated company, that’s deceptive use:
get it done for you.
J.R.Eweing Tax Service
Unfair use can be even more subtle. If Willy makes a variety of specialized auto-roof-top carriers, it would seem to be natural to display his Willy-Porters in catalogs and advertising atop automobiles, even atop the vehicles most likely to be driven by people who need such carriers. Willy could do this by picturing his carriers on the rooftops of cars, or atop a nondescript, of a generalized SUV, and saying as a matter of fact what makes and models of vehicles they fit. Instead Willy chooses to show them conspicuously on Land Rover® estate wagons and Ford’s Explorer® trucks. If Willy does that without permission, that’s unfair, because, seeing the Willy-Porters on the well-known vehicles, consumers may reasonably believe that the vehicle makers endorse Willy’s products for use on their vehicles. It is also intrusive, because such a belief by consumers may tend to expose the vehicle makers to claims of liability for the damages that result whenever one of Willy’s carriers comes off of one of their vehicles and crashes through someone else’s windshield.
Although unfair and abusive activities may not directly threaten your rights your mark and cause your registration to be invalidated, they can affect your bottom line by taking business away from you. More seriously, however, such abusive activities can directly affect the relationship between you and your customers and clients by diminishing the public perception of your products, tarnishing your commercial reputation, and exposing you to consumer complaints for which you should not have to answer. These effects will ultimately wear away your trademark rights and the value of your brand, if allowed to go on unchallenged, and you’re bound to do something about them.
Just as you need to take care to use your mark properly, you need to take care that others use it properly, too. In most cases, misuse by others is unintentional, and in fact it’s mostly done by those whom you want to promote your brand: your sellers, customers, clients, the general and trade journalists who write about your products, and the entertainment industry.
For example, you make a line of emergency replacement parts branded MARKELEY replacement parts. You have a network of authorized dealers and installers who each have an exclusive territory, and you want them to advertise their inventory or use of genuine MARKELEY-brand replacement parts. You’ve just picked up an important dealer in Indiana, who goes out and has his fleet of 100 fast-response emergency service vehicles repainted to include, “We use genuine MARKLEY parts.” You have to do something about that, not only because that’s not your trademark, and it’s use, misspelled, doesn’t strengthen your rights in your mark, but also because, if you don’t do something, your dealer will eventually acquire trademark rights in MARKLEY that he or she can then use on competing replacement parts. (In such a case, with a new, important dealer, you may want to offer to help pay for the correction.)
Most misuse involves someone else doing what you’re careful not to do in labeling your products, calling the product by the trademark. When you create a slogan for your advertising, you will be careful to say, “When you need it fast and it has to fit, make it a MARKELEY replacement part!” Others may not be so careful, and you have to be sure your dealers don’t advertise “Make it a MARKELEY” and that writers don’t write that the plant manager markeleyed the machine back into service, and that the Harrison Ford character doesn’t say to the Brad Pitt character “Hand me that markeley.” For years Kimberly-Clark has run advertising in trade journals admonishing writers, editors, movie producers, and the like that KLEENEX® is “spelled with an R,” and that it’s not “a kleenex,” but a KLEENEX® tissue. When you let others take liberties with your trademarks and service marks, you allow your rights to slip away.
“Dilution” of a trademark is a legal concept long acknowledged in law and now codified in the trademark statutes. It is a cause of action that is not available to most trademark owners. It deals with the special circumstances of famous federally-registered marks.
Infringement of trademark rights occurs when a mark identical or similar to a legally established mark is used on similar or related products. It does not usually occur when even an identical mark is used on dissimilar products, especially when those products are sold to different comsumers in different channels of trade. However, the law recognizes that certain marks are so well known that their use on anything would likely call to mind the owner of the famous mark and lead consumers to reasonably believe that the famous company made, provided, and stood behind the similarly branded product or service.
For example, if someone is using RUB-A-DUB as a trademark on motor oil, it should not be infringement for someone else to use RUB-A-DUB for television sets or provide ROB-A-DOB financial services. But what about a mark identical or similar to EXXON®. It’s hard to imagine anyone in the United States who doesn’t know that trademark. Exxon Mobile Corporation makes fuels, lubricants, parts, and accessories for cars and also for other specialized vehicles and machines under the EXXON brand. They sell caps and jackets under that brand. They operate and franchise service stations and convenience stores under that brand. They issue EXXON-branded credit cards. They don’t make TVs, and they don’t provide tax preparation services, and the EXXON® things they do make and provide are not marketed through electronics stores and professional financial firms. So X-ON televisions and TAXXON accounting services should not infringe EXXON® fuels and retail services. However, Exxon Mobile might feel justified in bringing a claim of dilution of their EXXON brand against a consumer electronics company or accounting firm that took up such marks for such goods and services. The issue is not literally infringement. Rather, it is whether EXXON is a famous trademark — a determination that is not necessarily a given, by the way, even in the case of such a well-known brand — and whether such other uses may dilute and weaken the strong identification of the EXXON brand with Exxon Mobile Corporation’s goods and services.
Enforcing and Defending Your Rights:
It is up to you to take care of your trademarks and service marks. You need to know how to properly use your marks, or you need to ask someone who does know. You need to keep track of the due dates of maintenance actions in the Trademark Office, or you need to have someone paying attention to that for you. Doing business in a particular market, you will probably notice misuse and abuse of your mark in that market, but you need to also watch other markets and other places for the kinds of unfair, malicious, careless, and ignorant acts that can erode and even destroy your trademark rights. Having done all that, having carefully chosen and nurtured your brand identity — at no small expense — and having registered your trademarks and service marks, you must also act take care of them in other ways. There are a number of actions you can and should take, and sometimes those extend to taking legal action.
Litigation, even an agency-level proceeding before a regulatory board, is expensive, inconvenient, and time-consuming. It is also an uncertain process, no matter how strong you and your attorney believe your case to be. When you bring legal action, you place the determination of the outcome into the hands of others, whether a single judge, a tribunal, or a jury, who may not see things the way you do, or even the way they should. In most cases, it is preferable to try first to resolve the matter informally.
In any case, when you become aware of a misuse or abuse of your mark, the first thing to do is to put the other party on notice, and the sooner you do that, the better. Someone who innocently misuses your mark, when there was no apparent reason to believe your rights were being tread on, is almost never liable for acts committed prior to notification. For that reason, your proper use of the TM and SM symbols prior to registration of your mark, and especially your registration and use of the ® symbol, are important and play an important part in determining the time from which recoverable damages can be calculated. However, your direct notification of an abuser is unambiguous and becomes the latest date at which the abuse can be said to have begun.
How you deliver the notice depends on the particular situation. In cases where the activity is recent and appears unintentional or uninformed, a telephone call from you is often the best and quickest remedy. In doing so, however, it’s best not to begin by threatening dire consequences, or by threatening at all, no matter how angry or threatened you feel. Your threats won’t inspire willing cooperation, and you probably don’t understand the law and its terminology well enough to make threats that can be taken seriously. So, your contact with another party who is trespassing on your trademark rights in some way is best seen as informational, and best accomplished in a firm but friendly manner. It also helps to be open-minded, especially with regard to the outcome you expect. Since the trespasser is probably engaged in a related business and shares your interests in some way, the misstep that brought the other party to your attention may also bring you a new customer, a new supplier, or a profitable business opportunity.
Contact by an attorney is almost always going to be seen as threatening. However, when your direct contact is unproductive, or when it seems inappropriate, you should let a professional who understands the rules and the remedies handle it. The first goal of the attorney you choose should be to resolve the disagreement short of litigation and compensate you for any losses. When settlement proves impossible, then you may have no choice but to begin a formal action against your abuser. Formal action does not necessarily mean rushing into federal court with your complaint. Except for cases where the financial loss and damage to your reputation is great and immediate, it is often best to take advantage of the help you can get from various government agencies. In any event, the first aim of initiating formal action against an abuser of your rights should be to bring the other party into the process of finding a solution. Often the simple event of receiving notice from a court or regulatory agency that a complaint has been filed is enough to jump-start the out-of-court settlement process.
Actions in the Trademark Office
In general, actions in the Trademark Office will involve an application for registration of a mark, yours or someone else’s. If you catch a potential infringer early enough, in the act of trying to register a potentially infringing mark, you can protest or oppose its registration. Or, sometimes, trying to register your own mark, you may find another’s application or registration standing in your way. Under certain circumstances you can move to cancel an interfering registration or oppose the interfering application, or there may be a way, not harmful to you or the other party, for both of you to use the mark for your respective purposes through concurrent use or consent.
Examination of a trademark application transpires between the applicant and the examiner. Third parties are barred from interfering directly. However, acknowledging that others may know things that the examiner would not know and could not discover in the ordinary course of examination, the Trademark Office provides an avenue by which anyone with an interest in a particular application may put information before the Office. The U.S. Trademark Office provides a form for bringing facts relevant to the examination of a pending application to the Commissioner for Trademarks, and the Commissioner may then choose to bring those facts to the attention of the examiner. This is better done early in the application process, before the application is published, and it must be done before the mark becomes registered. The action of the Commissioner is discretionary, a letter of protest is not supported by force of law, the decision of the Commissioner is not reviewable by anyone else, and the examiner in the application is not obligated to act on the information. Still, if protest works, it’s an inexpensive solution to heading off a conflict of rights before any legitimacy is accorded the potentially conflicting claim. Registration refused often discourages use of the refused mark.
Prior to registration on the Principal Register, an application must be published for opposition. When that happens, anyone who, for good cause, believes that registration should be denied may bring an action in the Trademark Office in opposition to registration. Opposition takes the form of civil litigation before an administrative court, the Trademark Trial and Appeal Board. The outcome of an Opposition proceeding can be denial of federal registration and rights under federal trademark law, and any decision of the Board carries the weight of law.
Attempting to register your mark, you may find your application refused on the basis of an existing registration of a similar mark for use with products similar to those you identified as yours. When this happens, and you have knowledge or reason to believe that the registration standing in your way is, or has become, invalid, you can petition the Trademark Office to cancel the registration.
There are several reasons a prior registration barring your registration may be held invalid: As happens sometimes when a business fragments, someone with no interest in the continuation of the business, or parts of it, may have obtained registration of the business’s trademarks and not continued to use them. Registration can have been granted to a “second comer” — someone whose rights from actual use in the marketplace are not as established in terms of duration or market penetration as yours. A registration belonging to a business that did not survive may still be in the Register. An existing registration remains in effect for years — ten years between each renewal — and the registration will stand valid until the registrant fails to maintain it. Also, a registration placed on the Supplemental Regsiter is not subject to Opposition, so that opposition to it must be brought by means of a Cancellation proceeding after its registration.
Like the Opposition proceeding, a Cancellation proceeding takes the form of litigation in the Trademark Office.
As a trademark registrant, you may also find yourself the defendant in a Cancellation action. Very often a Petition to Cancel is initiated in the belief (or hope) that the registrant is no longer in business, or at least may not answer the complaint. A Petition to Cancel a registration must be answered by the registrant, or the registration will be lost by default. For that reason, you must be sure your contact information in the Trademark Office is always up to date, and you must be sure to respond promptly to any notice of an action against you.
There is no way for the examiner of a trademark application to know more than what is put in the application and what other information exists in a few, obvious sources of public record — primarily, Trademark Office registration records, the dictionary, and the Internet. For that reason, your registered or applied-for mark may be put into contention with that of another on the basis of appearances, only, when both you and the other party know that there is no conflict between your respective uses of the marks, nor any likelihood of consumer confusion. When that is the case, it may be to the benefit of both parties to enter into a Consent Agreement in which each party consents to the registration and rights of the other. When put before the Trademark Office, the agreement makes clear that both trademark owners, who best know their respective marks, products, markets, and customers, should be entitled to registration and separate protection under trademark law. When this can be done without diminishing the strength and value of the senior registrant’s rights, it has the effect of clarifying the claim of rights of each registrant. However, consent cannot, and should not, be used simply to avoid litigation. To be accepted by the Trademark Office, the agreement cannot merely say that both parties acquiesce regardless of the consequences. Rather it must state that there are significant differences, especially in the products, the markets in which the products are traded, and/or the target consumers for the products. In making those concessions, each registrant explicitly gives up to the other areas in which he would otherwise be able to enforce and defend his trademark rights. The Consent Agreement is not a trivial matter.
The concept of Concurrent Use comes out of a time when goods were transported by horse-drawn lories and trains with steam locomotives, long before the prowess of a particular manufacturer of widgets could be broadcast in an instant to the entire world. Unlike a Consent Agreement, the basis of Concurrent Use is that the marks, the goods and services, and the relevant consumers are so similar that registration cannot be granted to separate owners, but that the marks are not used in the same physical or virtual marketplace. Concurrent Use registrations divide the market among two or more registrants, usually by geography, setting explicit boundaries around the area in which the benefits of each registration may be claimed and enforced.
In a time when markets expanded slowly, growing geographically outward from the physical location of the manufacturer or provider of a product, Concurrent Use proceedings were more common and more often applicable to circumstances. Today, the circumstances to justify Concurrent Use registration are limited to only a few goods that are not practical to transport over long distances — for example, heavy steel components for major construction and large stone products — and a few services the providing of which is located in a specific place — such as regionally interesting resorts and amusement parks. In these cases, the goods may be transported to, or consumers of services may come from, only the states surrounding the one in which the products originate.
Although a Concurrent Use proceeding almost always comes out of an Opposition or Cancellation proceeding, where one or both parties discover that such an outcome is warranted by the facts and their respective interests, any trademark owner may directly petition the Trademark Office for a judgment of Concurrent Use.
Trademark Matters in Other Federal and State Agencies
Assistance both in preventing and stopping abuse of your trademarks is available from other federal agencies and some state agencies.
U.S. Customs and Border Protection:
The Customs and Border Protection (“CBP”) bureau of the United States Department of Homeland Secutiry provides for placing into its system notice of your U.S. trademark registration. It must be a valid federal registration on the Principal Register, not a Supplemental registration, state registration, or claim of rights under common law. Once filed with the Service, goods like those identified in your registration that enter the U.S. bearing your mark, or something obviously similar (the Service is not equipped to make discriminating judgments), will be detained, and it will be up to the source exporter or the local importer to show that the use of the mark is proper. Absent such a showing, and especially after an order of the International Trade Commission or a federal court wherein infringement, counterfeit, or other trade violations have been proven, the Customs Service will seize the goods, can order their forfeiture and assess fines and other penalties.
Depositing your registration with the CBP is not absolute protection against infringement and other abuses of your marks from abroad. Where the evidence of the mark is not included on the shipping and customs documents, and where the goods in containers are not physically inspected, importation of infringing goods can be missed. For that reason, the CBP encourages your assistance in identifying particular sources and ports of entry, and even particular shipments, of infringing goods.
U.S. Post Office
The U.S. Postal Inspection Service works with the U.S. CBP to identify and detain shipments of infringing and gray market products sent into the United States by mail. These products can include services offered and provided by letter mail. However, such interception is still a CBP function, and the filing of the U.S. registration is still done in the CBP.
The Trade Commission
The U.S. International Trade Commission regulates trade between the United States and other countries. The U.S. Federal Trade Commission regulates trade among the states. The regulatory functions of these commissions include the power to enforce trade regulations, including trademark infringement and a broad range of unfair and deceptive trade practices involving trademarks, by bringing legal actions against foreign exporters and domestic providers of goods and services. These powers include the levying of fines and the impounding (and sale to satisfy fines) of goods. In fact, while Customs And Border Protection may block the importation of goods and services bearing infringing trademarks, it takes an order of the International Trade Commission for it to impound and take possession of such things.
State Consumer Protection Authorities:
Every state has, to a greater or lesser degree, a state agency or departmental function that is empowered to act to protect consumers from fraud and deceptive practices. Many instances of trademark abuse involve some sort of deceptive trade practice and may run afoul of local consumer protection laws. These authorities are often helpful in stopping and preventing misuse of your trademarks on a local level, before the matter becomes serious enough to be brought before the courts. Furthermore, even when a case of abuse of your trademark has become a state-wide or a federal matter, these authorities are useful in eliminating, discouraging, and controlling individual instances of misuse.
Actions in the Courts
The actions brought before the federal and state executive authorities outlined above, and matters brought to their attention, can serve to help you discourage and stop misuse and abuse of your trademark. However, none of those authorities can help you recover damages you may have sustained. To recover financial losses from lost sales, to regain lost profits taken by others in sales of infringing products, and to be compensated for damage to your business and reputation, you have to take your claims to court.
Note that, in all matters brought before the courts, the questions of jurisdiction and venue are extremely important. In matters first decided in the Trademark office, the jurisdiction of Federal Circuit, located in Washington, DC, is well established. Otherwise, determination of jurisdiction over a person or business, and determination of venue (where the dispute can be adjudicated) in civil and criminal actions are thorny calculations, and these, along with the choice of court itself and the claims to be brought to it, should be considered only with the guidance of a competent attorney.
Having a U.S. registration automatically gives you access to federal courts for claims of infringement and of dilution of a famous mark. In addition, some claims, including false designation and false representation, can be brought in federal court with regard to unregistered trademarks and trade names, when it can be shown that confusion among consumers or actual damage to the claimant has occurred or is likely to occur, and that the claimed offense occurred in interstate or international commerce.
Furthermore, those who have been, or may be, damaged by someone’s misuse of your federally-registered mark may have standing to bring suit against that party in federal court. In instances involving widespread distribution of inferior products by others using your mark, this can bring you allies who may join in your attempt to redress the damage done.
Without federal registration, however, most matters of misuse of trademarks must be treated in state courts under laws governing unfair and deceitful trade practices, consumer protection, and various claims in common law (torts), such as breach of contract, defamation, and fraud.
Appeal from the Trademark Office
All decisions of the Trademark Office may be appealed in federal court. These will involve denial, cancellation, and revocation of registration initiated by or in the Trademark Office. Actions of trademark examiners are reviewed by the Commissioner, regarding certain subject matter, or appealed to the Trademark Office’s Trademark Trial and Appeal Board. Thereafter, appeals from decisions of the Commissioner in certain areas, and from all decisions of the Trademark Trial and Appeal Board, are heard in federal appellate court, usually the Court of Appeals for the Federal Circuit.
The Trademark Office is subject to the federal courts, so that it may not consider an action involving a registration that is the subject of a proceeding in a federal court. The Trademark Office and federal registrations are not subject to any state court.
*Note: MINUTE MAID? is a registered trademark of The Coca-Cola Company
SUNKIST? is a registered trademark of Sunkist Growers, Inc.
KLEENEX? is a registered trademark of Kimberly-Clark Corporation
WATERFORD? is a registered trademark of Waterford Wedgwood Plc
XEROX? is a registered trademark of Xerox Corporation
NUTRI/SYSTEM? is a registered trademark of NutriSystem, Inc.
NABISCO? is a registered trademark of Kraft Foods Holding, Inc.
HOT WHEELS? is a registered trademark of Mattel, Inc.
H&R BLOCK? is a registered trademark of HRB Royalty, Inc
LAND ROVER? is a registered trademark of Rover Group Limited
EXPLORER? is a registered trademark of Ford Motor Company
TEXACO? is a registered trademark of Texaco, Inc.
CHO-1? and design is a registered trademark of Biowhittaker Technologies, Inc.
Onion Industries? and design was a registered trademark of William C. Holden, III.
These marks are used for illustrative purposes, only, and do not represent any endorsement or participation by the trademark owners.