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Trademarks
Trademark law protects the consumer in that it prohibits the unauthorized use of another's trademark in commerce where such use is likely to create confusion in the mind of consumers concerning the source of the product. From the organization's perspective, trademark law protects the trademark owner's reputation and goodwill that becomes associated with the trademark through advertisement and brand development. In this sense, trademark law is distinguished from both patent and copyright law in that it does not protect specific features of the intellectual product, but rather protects the commercial impression related to the image that the trademark conveys. Thus, trademark law protects the tools that an organization uses to distinguish its products from others in the market by reference to its goodwill.
The right to a trademark vests in the owner through use of the mark in commerce, by being attached to the goods sold or the services offered. Registration with the PTO according to the Lanham Act provides national protection compared to statewide protection under state law. Trademark law grants the owner the right to perpetually enjoin others in the market from using a similar mark that may confuse consumers as to association between the two similar marks. An application to register a "word, name, symbol, or device" as a trademark should be filed at the PTO for examination. A device has been interpreted to include slogans, colors, product packaging or shape, and trade dress. The Lanham Act also provides for intent-to-use applications which entitle the applicant to reserve a certain mark on the register, provided use is established within two years of the application. In this way the U.S. trademark law comes closer to the laws of most countries where registration, not use, establishes priority rights. A trademark whose validity has not been contested for five years achieves an incontestable status and is presumed valid.
An application is examined to determine whether the mark is protectable under trademark law or not. Those marks that contain a generic name (one that identifies the type of the product), that are not inherently distinctive or have not acquired distinctiveness through use, that are deceptively descriptive (e.g., "Leather Comfort" for vinyl products), or that are confusingly similar to a registered mark, are rejected. Even if registered, such marks may be denied protection later or be afforded only limited protection by the courts.
The Lanham Act also prohibits various practices under the doctrine of unfair competition, which may result in injury to others' business goodwill or trademarks. These include passing off, false advertising, commercial disparagement, trademark dilution, and cyber squatting. Passing off occurs when a false representation is made to directly or indirectly confuse the consumer as to the source or sponsorship of the good (i.e., an attempt to pass one's own goods off as those of the trademark owner).
The false advertising cause of action goes a step further into enjoining activities that are intended or result in injury to the trademark owner by representations made by a third party about the goods. The representation should result in misleading the consumer, and be sufficiently material to affect the purchasing decision. The trademark owner only needs to establish that the false advertising of the defendant resulted to injury to the sales position. Commercial disparagement is similar to the false advertising cause of action but differs in that the misrepresentations relate to the quality of the good or service. In addition, actual monetary loss should be established for the award of damages.
The dilution cause of action provides added protection to famous marks from the use of others where such use is likely to result in the diminution of the mark's uniqueness or distinctiveness, its tarnishing or creation of confusion.12 The law against dilution protects famous marks against commercial use only and allow for comparative advertising and all forms of news reporting.
The Anticybersquatting Consumer Protection Act was enacted in 1999 to provide protection against the registration and use of domain names (including trafficking) that are identical or confusingly similar to a trademark or dilutive of a famous trademark. The main limitation is that the plaintiff should prove that the domain name was registered in bad faith with an intention to commercially profit from the registration, divert profits from the trademark owner, or dilute/disparage the mark. First Amendment issues may hinder recovery in cases where no commercial gain is proven.
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