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Trademark Infringement: Whose Mark Is It Anyway?


Q:
Is there a master list of all trademarks currently filed with the United States Patent and Trademark Office?
A: Yes. Trademarks filed with the United States Patent and Trademark Office (USPTO) are now accessible via the Internet at http:// www.uspto.gov.

Q: Why file a trademark with the USPTO?
A: A trademark that is registered with the PTO may be used throughout the United States and is protected by U.S. courts. The Lanham Act of 1946 protects federally registered trademark owners from infringers whose use of a mark is likely to cause confusion among consumers. The argument is that such confusion weakens the original mark’s value. Ultimately, however, it is the owner’s responsibility to protect its trademark through proper use and labeling.

Q: What is trademark infringement?
A: Trademark infringement occurs when a person or entity uses a trademark, which is the same as—or similar to—the registered mark, in an attempt to profit from the recognition value of the established trademark. For example, the NBA® is known throughout the sports world to be the initials of the National Basketball Association and all its products. The use of the initials “NBA” in ads and on goods identifying a National Bowling Association would cause confusion and may constitute infringement unless specifically sanctioned by the “official” NBA®.

Q: What type of compensation may the trademark owner receive from the infringer if trademark infringement is proven?
A: If trademark infringement is proven, the court may issue an injunction ordering the infringer to immediately stop using the mark. The owner may also be awarded damages for “actual losses,” such as lost profits from lost sales, and/or damages from the loss of “good will” that represents the mark’s reputation in the marketplace. If the owner proves that the infringement was deliberate, the court may award the trademark owner as much as three times the actual money damages (“treble damages”), as well as a portion of the infringer’s profits and attorney’s fees.

Q: What is incontestability status?
A: A trademark owner may file for incontestability status once the mark has been used continuously while appearing on the Principal Register for five years. A trademark that is granted incontestability status may be immune from certain legal challenges that arise after the date of registration. Immunity is granted if the owner proves: 1) there are no legal claims against the mark; 2) no action is pending against the mark; 3) all required PTO forms have been filed; and 4) the mark has not become “generic.” Generic terms such as “hand cream, “cola,” or “lite” beer, describe marks used throughout the marketplace to refer to entire types of products rather than to a specific owner’s product (such as Neutrogena® hand cream, Coke® or Budweiser®).

Q: Does longevity or incontestability status guarantee that the trademark will never be challenged?
A: No. Disputes may arise at any time. In 1997 Metro-Goldwyn-Mayer (MGM) sued Sony Pictures for trademark infringement based on Sony’s intent to produce its own James Bond 007® films. Sony’s allegation arose from a deal it had with a producer who worked directly with Bond writer-creator Ian Fleming on the 1965 Bond film, Thunderball. Arguing that it owned the rights to the characters from the 1965 film, Sony intended to use the same characters in future films. In 1999, MGM was granted an injunction against Sony, which prohibited Sony from making Bond films. Later that year, MGM and Sony settled the dispute in court. As a result, MGM kept its 37-year-old rights to James Bond 007® and also acquired rights to all of the late Ian Fleming’s 007 novels, including Thunderball, putting an end to all future challenges.

11/27/2013

Law You Can Use is a weekly consumer legal information column provided by the Ohio State Bar Association. This article was prepared by Youngstown attorney Rebecca M. Gerson, whose practice focuses on corporate, construction and trademark law.

Articles appearing in this column are intended to provide broad, general information about the law. Before applying this information to a specific legal problem, readers are urged to seek advice from an attorney.

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