Trademark

Definitions

Trademark (™): A trademark is a word, symbol, design, phrase, or combination of the following that identifies and distinguishes the source of products or services provided by one party from that of another party. Trademarks typically appear on the products that they protect and must be distinctive enough to be recognizable as a source identifier (for example, a generic term or design cannot be used as a trademark). An easy way to think of a trademark is to think of them as adjectives, not as nouns. For example, one would use the term "Timex" when describing a particular type of watch. The term "Timex" would not be used as a term to describe all watches. A key difference from distinguishing trademarks from copyrights is that copyrights apply to an individual work, such as a book or brochure. Trademarks apply to a continuous or ongoing work, such as the name of a newspaper. For example, the name Pennsylvania Newspaper Association™ can be a trademark, whereas the Pennsylvania Newspaper Handbook © would be copyrighted.

Service mark (SM): A service mark is a word, symbol, design, phrase, or combination of the following that identifies and distinguishes the source of a service. Service marks typically appear in advertising for the services that they protect. For example, in an advertisement for Expressmaid SM Maid Service, the name "Expressmaid" identifies the company that provides maid service and distinguishes the maid service from other maid companies.

Registered (®): A registered mark (trademark or service mark) means that a mark is federally registered with the United States Patent and Trademark Office. This symbol cannot be used before the mark is officially registered. This symbol can be used in place of TM or SM to identify owners' rights in the use of a mark. Registration is not necessary to claim rights in a mark, but doing so will give the register certain rights, such as a presumed ownership in the use of the mark and the right to use the mark throughout the United States. Failure to register a mark may lead to costly legal battles if another party registers a mark that is in use but is not registered.

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Trademark Protection Trademark law concerns marks such as product logo or product brand identification that shows commercial origin. Trademarks establish the exclusive right to use such marks. It is governed by both federal and state laws of unfair competition. The law protects the public from confusion and deception as to the actual source of the product or item bearing the mark. At the same time it provides the owner of the mark a unique way of marketing itself. In the newspaper industry the trademark is generally the name and/or logo of the newspaper, including what has come to be known as trade dress. Trade dress not only covers the paper’s name and spelling, but also covers any unique color scheme and/or fonts used, etc. Additionally, trade dress may also protect the actual format of the newspaper, such as how the first page is laid out everyday, or the placement of the newspaper's contents. Trademark protection is limited by geographic location. An owner of a trademark is only protected within his zone of use. Also, the trademark owner can now register his product before he actually uses it, and has three (3) years to begin marketing the product. Traditionally, ownership rights in a trademark are acquired by priority in use. The first to use a trademark is the one who acquires rights in the mark. But to be protected from infringers, one should register the mark. This will establish priority in use, evidence the registrar's ownership in the mark, and will also provide constructive notice to the rest of the world of such use. However, registration will not overcome ownership rights of a prior continuous user, but it will limit his use and his potential for damages for infringement. If there is any possibility of a dispute over a mark or if the mark is important to the user, registration is strongly recommended. Federal Registration is good for 10 years and can be renewed every ten years for as long as the mark is in use. This is done through the United States Patent and Trademark Office in Washington, D.C. The Commonwealth of Pennsylvania also has a trademark law that allows for a 10 year registration of marks with 10 year renewal periods. Any violations of Pennsylvania registration laws are remedied by damages and or injunctions. The state registration is generally a quicker process. However, registering in Pennsylvania will only protect the mark within Pennsylvania and may offer very limited protection against an entity that is registered under Federal Trademark law.

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Trademark Infringements by Advertisers If the name of a product advertised in a newspaper is the same or confusingly similar to a trademark owned by someone who is not involved in placing the ad, the owner of the mark can sue for an injunction against future printing. The newspaper is not liable for damages unless it ran the advertisement knowing that it would cause confusion or would deceive purchasers. If the newspaper runs the ad with knowledge of a conflicting claim of trademark ownership, the paper is not only subject to an injunction against future printing, but may face liability for damages. If a newspaper is informed of a possible infringement from a trademark owner or his attorney, the newspaper should not run the advertisement until it consults with an attorney.

 

Note: Running advertisements that contain the same or confusingly similar trademarks or trade names may also constitute violations of the Unfair Trade Practices and Consumer Protection Law.

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Protecting Trademarks Trademark owners want to protect their trademarks from infringement. They have worked hard promoting their marks and do not like the idea of others profiting from their hard work. However, this is exactly what can happen if a trademark, because of its constant use, becomes more of a general term used to describe something, rather than a specific brand or manufacturer's product. For example, cellophane and aspirin were both at one time registered trademarks. However, because the public came to identify these marks as describing products generally, rather than a certain manufacturer's product, the owners lost all trademark protection over their marks. With this in mind, it is very important not to use trademarks as general descriptive terms. If you use the trademark, be sure to use ™ (or ® if the trademark is properly registered). This will serve as a reminder to the public that this is actually a trademark that someone has invested time and money to promote. Including the trademark symbol will also stall any possible injunction against the paper for trademark infringement by the owner of the trademark.

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United States Patent and Trademark Office. This office has many informational materials available and is an excellent place to learn more about these topics. Users can even register their marks over the internet at the Patent and Trademark Office website.

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Trademarks and the Internet Meta-tag Infringements: A recent development in internet-trademark law deals with trademark infringement through the use of meta-tags. Meta-tags are invisible text placed in a hypertext document that is recognizable by search engines. Whenever a search engine receives a request to search for a certain term, every site with the requested meta-tag is reported. Several lawsuits have commenced by trademark owners who are suing over the non-permissive use of their trademarks in meta-tags. A well-known lawsuit is Playboy Enterprises, Inc. v. Calvin Designer Label, where an internet site listed the trademarks "Playboy" and "Playmate" as meta-tags. These meta-tags resulted in increased "hits" on the web site. Playboy Enterprises, Inc., sued Calvin Designer Label claiming that these meta-tags created confusion, mistake, deception, and created a belief that Playboy Enterprises Inc., sponsored or authorized the offending web-site. The federal court that heard the case agreed with Playboy Enterprises Inc., and ordered that the web site be shut down and enjoined the use of the trademark infringing meta-tags.

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Framing: Another trademark development dealing with the internet is "framing," which occurs when one internet provider links to another web site, but manipulates the image or text for its own benefit. An example of framing is when one web site allows the viewer to click on a link to another web site, but instead of going to the new web site, the new web site is viewed in a "frame" in the original web site. The commercial ads of the new web site's sponsors are covered over with advertisements from the original web site's sponsors. The effect of this is that the original web site is basically pirating the new web site's information. The question of trademark infringement because of framing has not been settled because the major disputes arising from framing have been settled out of court. However, the settlements suggest that the use of framing violates trademark laws and should be avoided.

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Domain Names: Domain names (the names of internet sites, such as PA-Newspaper.org) are another area where some internet users infringe trademark rights. Many companies look to register their traditional service marks as domain names only to find that these domain names have already been registered by "cyber-squatters" (people who register easily identifiable names for profit). The practice of cyber-squatting has led to many controversies and changes in federal trademark law.

Domain names must now meet the same requirements for registration as do trademarks and service marks. Courts are increasingly recognizing the rights of trademark and registered domain name owners from encroachment by cyber-squatters that are trying to make money off of popular names. Remedies for such cyber-squatting includes not only injunctions against the specific offending name, but also against variations of the name that may be used in the future. For example, in Worldsport Networks Limited v. Artinternet S.A., 1999 WL 269719 (E.D.Pa. 1999), a federal court imposed an order enjoining the use of an offending domain name worldsports.com and enjoined any future use of the similar names world-sport.com and world-sports.com.

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See also: Copyright, Advertising/Unfair Trade Practices and Consumer Protection Law

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