International Treaties and Protection in Other Countries
The Paris Convention. Preserves the priority date for a trademark applicant in one country in the other member countries for six months.
The Madrid Agreement and the Madrid Protocol. Both provide for the centralized registration of marks in member countries. The United States is not a member of either.
TRIPs. Includes provisions on minimum protection of trademarks in member countries.
The management of trademarks is closely related to brand management. Both legal and marketing issues intertwine together to effectively manage trademarks ensuring the preservation of the rights as well as effective marketing.
In general the steps mentioned under Patents should be followed with the following changes to steps 1 through 4:
1. Determine the occurrence of infringement.
Determine the likelihood of consumers' confusion caused by the use of a similar mark by another or by introduction of counterfeit products that use identical marks.
Determine whether the use may dilute a famous mark.
Determine the similarity of the marks by considering similarity of the meaning and sound of the marks, the similarity of the goods, channels of distribution and likelihood of expansion, and the sophistication of consumers.
2. Collect the required evidence.
Obtain a sample of the counterfeit product, if any.
Obtain evidence of actual consumer confusion.
Collect evidence of all losses incurred as a result of the infringing act.
3. Determine the type of infringement.
Trademark infringement where confusingly similar marks are used
Trademark dilution for famous marks
Unfairly competitive practices that result in passing off the infringer's goods as those of the trademark owner or result in commercial disparagement, false advertising, or cyber squatting
4. Assess the strength of the trademark.
• Assess the validity of the mark.
° Proof of first use in trade
° Incontestable status - registration on the federal register for five years
• Assess the scope of protection.
° National protection for federally registered marks - geographical limitations apply for trademark rights created under common law or by registration in State Registers
° Strength of the mark - distinctiveness of the mark or the establishment of secondary meaning, particularly for trade dress
° Popularity of the mark - whether it is a famous mark
• Check any conduct that amounts to genericizing, or abandonment of the mark as well
as lack of policing of infringements that may result in a finding of acquiescence to the
unauthorized use.
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