8.3 Trademarks

LibraryThe Virginia Lawyer: A Deskbook for Practitioners (Virginia CLE) (2022 Ed.)


8.301 Introduction.

The origins of trademarks are very old, dating back to ancient Greece and beyond. Modern trademark law is a creature of both state law and federal statute. Because there is no mention of trademarks in the Constitution, the federal government derives its authority to regulate trademarks from its power to regulate commerce among the states. To obtain federal trademark registration, the trademark owner must prove that the mark has been used in interstate or international commerce. 5322 Frequently this is accomplished through the use of a website that offers products or services for sale. Merely advertising the product is not enough. The applicant must submit a verified statement that the mark is in use in commerce as of the application filing date. 5323

Trademarks may be registered and protected under both state and federal laws. The United States Patent and Trademark Office (PTO) controls the federal registration process, while the state registration processes are usually controlled by each state's secretary of state. In Virginia, the State Corporation Commission (SCC) registers state trademarks. Federal jurisdiction and state jurisdiction over trademarks co-exist for the most part without conflict. Most courts generally rule that state trademark statutes control the use of the mark within a state as long as there is no federal trademark or interstate or international use. Federal trademark statutes control the use of marks in interstate or international commerce, federally registered and unregistered (or "common law" marks), and matters involving trade dress and advertising. However, the courts recognize that when a state trademark law provides additional protection, benefits, or remedies, state laws may be applied to interstate commerce activities. 5324 Federal trademark registration is much stronger than state registration simply because the scope of protection afforded under federal trademark law, the Lanham Act, 5325 is much greater. However, sometimes there are reasons to obtain a state registration rather than a federal registration or to obtain both. It is important to note that a United States trademark registration only provides protection for the trademark in association with the goods or services within the borders of the United States.

This discussion is intended to give general practitioners an overview of trademark law. Many trademark law issues are not covered in depth. Because trademark law is a specialized area of law, if an attorney needs assistance with a trademark law matter, he or she should contact an attorney whose practice is devoted primarily to intellectual property law. Intellectual property law attorneys can be found through the Virginia State Bar's Intellectual Property Law Section. Also, many areas have regional intellectual property law associations that serve as intellectual property law practice groups. Most of these groups also have websites and have participating attorneys available to assist general practitioners with intellectual property law questions by email, telephone, or otherwise.

8.302 What Is a Trademark?

The Lanham Act defines a trademark as "any word, name, symbol, or device, or any combination thereof—(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the Principal Register established by" the Act. 5326 Virginia law defines a trademark as "any word, name, symbol or device or any combination thereof used by a person to identify and distinguish the goods of such person from those manufactured or sold by others." 5327 In short, a trademark is a brand name.

Although trademarks frequently consist of words or graphic designs, almost anything can function as a trademark. For example, the shape of the Coca-Cola bottle, the THX sound (an electronically produced musical chord that builds) at the beginning of many movies, the pink color of home insulation made by Owens Corning, the number 45 for Colt 45 malt liquor, the Nike swoosh symbol, and the Internet domain name monster.com are all registered trademarks.

The essential element of a trademark is the exclusive right of its owner to use a word, symbol, or device to distinguish and identify its products or services. Federal and state trademark laws protect the trademark owner's investment in the mark and the quality of the goods or services that the mark identifies. Trademark law also protects the goodwill of the business symbolized by and inherent in its trademarks.

8.303 Types of Marks.

A. In General.

Trade, service, certification, and collective marks and trade dress are all protected by the Lanham Act. Trademarks that are not registered in any jurisdiction but are simply applied to products or services as a brand name are called "common law" trademarks. Common law trademarks and trade dress are also protected under section 43(a) of the Lanham Act. 5328 The term "trademark" or "mark" is used throughout this discussion to refer to any or all trademark types. Although each kind of mark is unique, for the most part the rules that govern trademarks apply to all other forms of marks as well.

B. Trademark.

A trademark includes any word, name, symbol, or device or any combination used or intended to be used in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others and to indicate the source of the goods. A trademark may not consist of words or symbols that incorporate the insignia of any nation or state, or that are misdescriptive of the goods or services or the geographic origin of the goods (as in the case of wines). 5329 "Microsoft" is an example of a trademark for computer software.

C. Service Mark.

A service mark is any word, name, symbol, device, or any combination used or intended to be used in commerce to identify and distinguish the services of one provider from services provided by others and to indicate the source of the services. 5330 "Remax" is an example of a service mark for real estate home sale services.

D. Certification Mark.

A certification mark is any word, name, symbol, device, or any combination used or intended to be used in commerce with the owner's permission by someone other than its owner to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of the goods or services or that the work or labor on the goods or services was performed by members of a union or other organization. 5331 A certification mark may only be used on goods and services that meet certification standards established by the trademark owner. The owner of this type of mark must maintain control over the standards and the mark's use during the life of the mark. 5332 The "Good Housekeeping" seal of approval is an example of a certification mark.

E. Collective Mark.

A collective mark is a trademark or service mark used or intended to be used in commerce by the members of a cooperative, an association, or other collective group or organization. 5333 Collective marks include those marks that indicate membership in a union, an association, or other organization. The "Kiwanis Club" seal is an example of a collective mark.

F. Trade Dress.

Trade dress is the total image of a product or service and may include features such as size, shape, color or color combination, texture, graphics, company uniforms, restaurant decor, building design, or even particular sales techniques. The applicable test for determining whether trade dress is protectable as a trademark is discussed in Abercrombie & Fitch Co. v. Hunting World, Inc., 5334 which states that the same trademark spectrum of distinctiveness analysis should be applied to trade dress claims under section 43(a) of the Lanham Act as with any other mark and that secondary meaning need not be proven as long as inherent distinctiveness is shown. 5335 The picture of Betty Crocker on cookbooks is an example of trade dress. More recently, the court in Express Lien Inc. v. National Ass'n of Credit Management Inc., 5336 joined a growing number of jurisdictions in recognizing the viability of trade dress protection for a website's look and feel. To state a claim for trade dress infringement, a plaintiff must allege that "(1) the trade dress is distinctive in that it identifies the source of the product; (2) there is a likelihood of confusion between the parties' goods; and (3) the trade dress is not functional." 5337

G. Domain Name.

A domain name is the website address of a business preceded by www. and followed by an identifier, such as .com, .org, .us, or .gov. Domain names function like telephone numbers, but they are even more precise identifiers of the source of goods or services. Domain names use words rather than numbers to access information about particular companies or their goods and services. The Domain Name System (DNS) is composed of thirteen root servers around the world that keep track of domain name information. The DNS maps textual domain names to their respective Internet Protocol (IP) addresses used to identify computers on the Internet. The domain name is akin to store signage on the Internet highway where customers may drop in with the click of a button to purchase goods or services. For this reason, it is commonly accepted that domain names can function and are protected as trademarks. The Internet domain name "monster.com" is an example of a registered trademark. Conflicts between domain name holders and the owners of registered trademarks can be addressed through the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). 5338 Alternatively, or additively, if a plaintiff can prove that a defendant has a "bad faith intent to profit from that mark" 5339 the plaintiff may have recourse under the Anticybersquatting Consumer Protection Act (ACPA), 5340 which "was intended to prevent...

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