21st Century Trademark Basics

21st Century Trademark Basics
The Committee on Trademarks and Unfair Competition

Table of Contents

I. Trademark Rights
A. What is a trademark?
B. What is secondary meaning?
C. How do you prove secondary meaning?
D. Can others still use a descriptive mark to indicate its primary significance (fair use)?
E. Are there different kinds of marks?
F. Trademark rights at the federal state and common law levels
G. What do trademark, copyright, and patent protect?
II. Filing and Registration Process?
A. Pre-filing concerns
B. Issues for federal registration/prosecution
C. Post-registration
III. Usage
A. Proper usage of notice symbols (T v. ®)
B. Maintenance of trademark rights
C. What if a mark is materially altered?
IV. Conflicts with Third Parties
A. Inter partes proceedings before the TTAB
B. Infringement
V. Trademarks and the Internet
A. Does registering a domain name automatically trigger trademark protection of that name worldwide?
B. May registration of a domain name subject the domain name registrant to liability for trademark infringement?
C. What is cybersquatting?
D. Can trademark owners complain to the domain registrar if they believe a domain name was improperly registered?
VI. References


A. What is a Trademark?
A trademark is a word or other kind of symbol that is used by a person or company to distinguish its goods or services and indicate their source. For example, Ford Motor Company uses the trademark MUSTANG to distinguish a line of cars.

1. What is capable of trademark registration?
Under the United States Trademark Act (“Lanham Act”), 15 U.S.C. Sec. 1051, et seq, a trademark may be “any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.” Although the Lanham Act’s definition of what is protectable as a trademark appears to be short and simple, the scope of its potential coverage extends as far as the creativity of marketing executives and is limited only by the decisions of judges and the U.S. Patent and Trademark Office.

The most common and straightforward protection extends to words. For example, PALMOLIVE is a famous trademark. Because the statute talks about a “combination” of any of the elements, a series of words turned into a slogan (e.g., SOFTENS HANDS WHILE YOU DO DISHES) can also be protected as a trademark. Of course, the slogan must function as a trademark, which usually means that it must be on the goods themselves rather than just in advertising.

Even a single letter or a group of letters (or numbers) that do not make up a word can be protected as a trademark. For example, V-8 has been protected on vegetable juice and “S” has been protected alone for Singer sewing machines. Phone numbers have been protected as trademarks-in one case, a retail mattress dealer with a 628-8736 phone number and the slogan “DIAL-A-MATTRESS and drop the last ‘S’ for savings” was able to obtain an injunction against the use of the slogan and telephone number 1-800-MATTRESS.

The key is that the words, letters, numbers or slogans should not be descriptive of the products or services but should serve as an identifier of the source of the products or services.

2. Can symbols or designs function as a trademark?
Symbols and designs are commonly used as trademarks. Some famous examples are the Nike “swoosh” and the Mercedes-Benz symbol. These symbols immediately convey the source of the goods to a consumer.

3. Can trade dress (that is, the design, appearance and/or shape of a product or its packaging) function as a trademark?
When the design and appearance of the product and packaging, with other elements that create the overall image, identify the source of the product, then this trade dress will be protected. To be considered trade dress, the combination of elements must be distinctive (either inherently or through acquired secondary meaning) and cannot be functional. See Two Pesos v. Taco Cabana, 505 U.S. 763 (1992); Wal-Mart v. Samara, 529 U.S. 205 (2000). Examples of protected trade dress include the design of the Dodge VIPER, the combination of features on a jug of maple syrup and a toy bank that resembled a small flush toilet. A functional design that had been protected by an expired patent cannot be protected as trade dress. Traffix Devices v. Marketing Displays, 121 S. Ct. 1255, 58 U.S.P.Q.2d 1001 (2001).

Similarly, distinctive elements that are used to identify the source of a service may be protected as trade dress: An example of service mark trade dress might be the distinctive decor of a restaurant chain. (see I.E.1 for more on service marks)

4. Can colors function as a trademark?
For some time, it was unclear whether color alone could function as a trademark. In 1995, the Supreme Court settled the issue, holding that even a single color could be protected as a trademark as long as the color did not serve a utilitarian function. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Usually, for a single color to serve as a trademark, a plaintiff will have to demonstrate secondary meaning, i.e., that the public associates the color with the source of the goods in question. An example is the pink color used on the Owens-Corning insulation.

5. Can one’s name function as a trademark?
Generally, surnames and first names can be protected as trademarks only upon proof that they have acquired distinctiveness and secondary meaning through use. For instance, if the public has come to associate the name with goods or services that come from a particular source, then the name functions as a trademark and is entitled to protection. However, there is generally considered to be a qualified right of an individual to use her own name, even if that name has been used as a trademark by someone else. Courts may require disclaimers or other measures to prevent confusion on the part of the public in such situations.

6. Can non-visual marks such as sounds and smells function as a trademark?
There is little law on the protection of sounds, smells and other marks that are detected through non-visual senses. However, the Trademark Rules of Procedures had allowed marks that are “not used in printed or written form” to be registered, and the U.S. Patent and Trademark Office has on occasion permitted the registration of these “non-traditional” trademarks. Certificates of registration have been issued for sounds such as the roar of the Metro-Goldwyn-Mayer lion and the sound of the NBC “chimes.” In 1990, the Trademark Trial and Appeal Board ruled that a fragrance could serve as a trademark and permitted the registration of a scent in connection with sewing thread and embroidery yarn. The TTAB emphasized the evidence required to obtain such a registration is substantial, and that scents could not be registered as trademark for products such as cologne and perfume, where the scent is considered to be functional.

7. Are all trademarks equal in strength?
Not all trademarks are created equal. In the vast array of trademarks that consumers encounter in the marketplace, some marks are stronger than others. While some marks start out strong, others gain strength through time and effort. A strong mark is a mark that is distinctive in connection with the goods or services with which it is used, and, as a result will be readily recognized by consumers as a source indicator. The varying levels of distinctiveness are described below.

8. What is the difference between inherently distinctive and non-distinctive marks?
Inherently distinctive marks serve as source indicators the minute they are created. There are three types of inherently distinctive marks: arbitrary marks, fanciful marks and suggestive marks.

  • Arbitrary marks are common words or symbols which are in common use but have no meaning in connection with the goods or services with which they are used. Some examples are, PENGUIN for books, and APPLE for computers.
  • Fanciful marks are coined words or symbols that are created to serve as a trademark. Generally these words or symbols are readily recognized as source indicators because they have no other meaning. Some examples are, PROZAC for pharmaceutical preparations and CLOROX for bleach.
  • Suggestive marks are trademarks which suggest a characteristic of the goods or services, but do not directly describe the goods or services. Some examples are MIRACLE GRO for plant fertilizers and SNACKWELLS for cookies.

Non-distinctive marks generally cannot function as trademarks because they are either the generic names, and therefore not an indicator of the source of the goods or services, or they are so highly descriptive that consumers will never perceive them as indicating the source of the goods or services. For example, it is likely that the use of “WHITE” on white rice would never be perceived as a source indicator. Consumers would likely perceive this as a generic description that only describes the goods, not their source.

9. Can a mark “acquire distinctiveness”?
Some marks are not distinctive at their inception but grow to be distinctive over time. These words or symbols initially may not be recognized as trademarks for a variety of reasons. For example, the relevant wording may be descriptive of the goods on which it is used, or the name of the geographic origin of the goods. As a result, consumers would not immediately recognize the word or symbol as a source indicator.

Nevertheless, it is often possible for such designations to acquire distinctiveness and become source indicators through efforts such as extensive use of the mark in commerce, or widespread advertising and promotion. Thus, while the wording EVEREADY at one time may have been perceived as a laudatory description of the readiness of batteries, this wording is now readily recognized by consumers as a trademark.

B. What is Secondary Meaning?
Things can become protectable trademarks in two ways: by being inherently distinctive or by becoming distinctive (see Questions I.A.8 and I.A.9, above). “Secondary meaning” is another term used to indicate “acquired distinctiveness” and means that the mark has come to indicate to consumers that goods or services bearing the mark come from or are sponsored or endorsed by one source. Thus, a phrase that has a “primary,” natural meaning, e.g., “bird’s eye”, comes to have a “secondary” meaning-a brand of frozen food.

C. How Do You Prove Secondary Meaning?
To show that something has acquired secondary meaning, the following evidence may be relevant:

  • Age and history of the mark.
  • Amount of effort and expenditure used to promote the mark as a name or symbol distinctive of the plaintiff’s goods or services.
  • Conscious attempts by competitors to imitate the mark. Courts are divided over the evidentiary significance of conscious copying. Some circuits hold that evidence of conscious copying of a mark raises a presumption of secondary meaning, while other circuits hold that it is merely evidence of secondary meaning.
  • Actual confusion.
  • Consumer surveys.
  • Registration. Because registered trademarks are presumed to be distinctive, owners of registered marks need not plead or prove secondary meaning, and may instead rely on a presumption of secondary meaning.

D. Can Others Still Use a Descriptive Mark to Indicate its Primary Significance (Fair Use)?
Under the doctrine of fair use, even where a word or phrase has acquired secondary meaning, it can retain its original primary meaning in English, if any. Such marks can still be used freely when they are used in their original sense and not in a misleading fashion. Such use is called “fair use.”

E. Are There Different Kinds of Marks?
While the word “trademark” is commonly used broadly to describe all “marks” there are actually several different kinds of marks that are protected under the law: trademarks, service marks, certification marks and collective marks.

1. What is the difference between a trademark and a service mark?
A trademark is used to distinguish or identify the source of goods. Service marks are like trademarks except that they apply to services rather than goods. The same word or symbol can be both a trademark and a service mark. For example, NICKELODEON is a service mark for television entertainment services, and it is also used as a trademark for products such as clothing and plush toys.

2. What is a certification mark?
Certification marks are marks which certify, among other things, the quality or other characteristics of goods or services. One example of a certification mark is the Underwriter’s Laboratories UL logo.

3. What is a collective mark?
A collective mark is used by members of a collective organization, such as a union, to indicate membership in the organization. For example, AAA is a collective mark for the American Automobile Association.

F. Trademark Rights at Federal, State, Common Law Levels
1. How are trademark rights acquired?
In the United States, trademark rights are acquired through use of the mark on or in connection with the goods or services. While registration of the mark usually provides substantive and procedural benefits to the trademark owner, trademark rights are not created by the act of registration. In fact, while an application for federal trademark registration may be filed before use of the mark commences, a registration will not issue until the mark has been used in interstate commerce.

2. Can trademark rights be enforced if the mark has not been registered?
Yes. The ownership of a trademark registration is not a prerequisite for filing a trademark infringement action. If the trademark has been used in a way that has created a public association between the mark and the products or services, the owner of the trademark may possess enforceable common law trademark rights.

What are the benefits of having a Federal registration? There are two types of federal registrations in the United States: Principal Register registrations and registrations on the Supplemental Register. (See Questions II.B.2 and II.B.3 below). Both Principal and Supplemental Registrations confer upon the registrant valuable procedural and remedial benefits. Among these benefits are:

  • The registration can be used as a basis for suit in federal courts.
  • The owner may use the r registration notice, which tends to discourage third party innocent infringement.
  • The registration will be located by Trademark Examiners when conducting trademark searches and may therefore be cited as a bar against the registration of similar marks in later filed applications.
  • The registration will also be located in clearance searches conducted by third parties and may therefore discourage adoption of a similar mark.
  • The registration can be the basis for collecting treble damages for infringement of trademarks.

Marks that are registered on the Principal Register confer the following significant additional benefits:

  • A Principal Register registration is prima facie evidence of the validity of the registration and of the registrant’s ownership thereof. In an infringement action the owner of a Supplemental Register registration would be required to prove ownership and validity of its claim.
  • A Principal Register registration is constructive notice of the registrant’s claim of ownership. A Supplemental Register registration is not deemed to be constructive notice of such a claim.
  • A Principal Register registration can become incontestable under Section 15 of the Lanham Act, 15 U.S.C. Sec. 1065 (which means it is not thereafter subject to cancellation on the grounds that it is descriptive, among other basis). A Supplemental Register registration can never become incontestable. (see II.C.3 for more on incontestability)

3. When should a state trademark registration be considered?
The filing of state trademark or service mark registration is a relatively simple and inexpensive matter. Moreover, a state trademark registration can often be obtained even in the case of a relatively non-distinctive mark. Although state registrations give minimal protection, the comparative ease and availability they afford gives rise to a preference of overall efficiency and economy. In addition state trademark registrations are appropriate for marks that are only used within a given state, because use in interstate commerce is a prerequisite of federal registration. However, as a result of today’s Internet revolution, interstate commerce may be practically automatic for companies that advertise their goods and services on the Internet.

G. What do trademark, copyright, and patent protect?
Trademarks are commercial symbols of source or quality. A copyright is a property right in an original work of authorship that is fixed in a tangible medium of expression. This right extends to items such as literary works, dramatic works, musical compositions, computer software, graphical works, architectural works, and sound recordings. A patent is a grant of a property right to an inventor to exclude others from making, using, or selling the invention. A patent protects ideas that are reduced to a novel utilitarian invention or design. This right extends to such things as chemicals, devices, designs, plant varieties, and some forms of animal life, genetic material, process, and methods including business methods. While patents and copyrights are granted only for a limited time, trademarks are of potentially infinte duration.

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A. Pre-filing Concerns
1. Is it necessary to perform a trademark availability search prior to filing a trademark application?
There is no requirement that a trademark availability search be performed before the adoption of a trademark or the filing of a trademark application. Notwithstanding the foregoing, performing a trademark availability search is a reasonable and prudent step prior to the adoption of a mark because it may reveal that use of the mark would infringe upon a third party’s rights. Similarly, performing a trademark availability search may reveal existing trademark registrations that are likely to constitute a bar to registration of the proposed mark.

2. How is a trademark availability search performed?
Trademark availability searches can be performed in various ways and in varying degrees of complexity and comprehensiveness.

3. What is a trademark search report and how do you evaluate it?
A simple or initial search may include a basic search of trademark directories, or the use of online trademark search systems that contain federal and state trademark registration information. This type of search may reveal quickly and inexpensively whether there is a directly conflicting trademark.

A more comprehensive search, usually conducted by an independent search firm, will attempt to locate marks that, while not identical to the proposed mark, may be considered confusingly similar to the proposed mark. For example, a comprehensive search will attempt to locate marks that are synonyms for the terms in the proposed mark, or alternate spellings of the mark. A comprehensive search will also attempt to locate marks in related fields. For example, the proposed mark my be the name for a record label that might be blocked by the name of a band or a music publishing company using the same or a similar name. The use of the mark as name for a record label might not, however, be blocked by the use of the same name for an automobile parts distributor or a furniture manufacturer. See Question IV.B below on likelihood of confusion. A comprehensive search would also include a wider variety of sources than the preliminary search described above. Trademark search firms maintain and have access to databases that may reveal unregistered marks that exist at common law. Such databases include periodicals, trade directories, company name registration databases and other sources.

B. Issues for Federal Registration/Prosecution
1. What is the procedure for obtaining a federal trademark registration?
The United States Patent and Trademark Office (“PTO”) issues federal trademark registrations after a detailed application process. Specific information on the trademark application process, including downloadable and electronic application forms, can be obtained from the PTO website. Additional information is available from the International Trademark Association and from numerous publications and treatises, some of which are referenced in Section VII below.

2. What is the Principal Register?
The Principal Register is the primary register in the United States. Only marks that are distinctive, or have acquired distinctiveness may be registered on the Principal Register.

3. What is the Supplemental Register?
The Supplemental Register is reserved for designations which are deemed to be capable of serving a trademark function, but which do not yet do so, such as descriptive marks and marks which are primarily merely surnames.

4. What are the statutory grounds for the rejection of a trademark application?
Section 2 of the Lanham Act prohibits registration of a mark that:

  • Consists of or comprises immoral, deceptive or scandalous matter (Example: Dick Heads and design of male genitalia for restaurant services),
  • Consists of matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute. (Example: QUEEN MARY for underwear),
  • Consists of or comprises the flag or coat of arms or other insignia of the United States, or any State or municipality, or any foreign nation,
  • Consists of or comprises a name, portrait, or signature of a living individual without his or her consent,
  • Consists of or comprises the name, portrait or signature of a deceased President of the United States during the life of his widow without the consent of the widow,
  • Is confusingly similar to a prior existing mark,
  • Is primarily descriptive or deceptively misdescriptive of the goods or services,
  • Is primarily geographically descriptive or deceptively misdescriptive of the origin of the goods or services,
  • Is primarily merely a surname,
  • Comprises matter that, as a whole, is functional.

C. Post-registration
1. Do trademark registrations need to be renewed?
Yes. Trademark registrations that issued or were renewed on or after November 16, 1989 must be renewed every ten years. The renewal application is due on the tenth anniversary of registration. The initial renewal period for registrations that issued before November 16, 1989 is twenty years, with subsequent renewals due every ten years.

2. Are there any other filings that need to be made after registrations?
Yes. Pursuant to Section 8 of the Lanham Act, 15 U.S.C. Sec. 1058, the owner of a trademark registration is required to periodically submit a declaration attesting to and demonstrating that the mark is still in use in commerce. The Declaration of Use must initially be submitted between the fifth and sixth anniversaries of registration, and subsequently with or during the same registration year as each renewal.

3. What is a Declaration of Incontestability and when may it be filed?
A federal trademark registration can become incontestable if the mark has been used continuously for any consecutive five-year period after registration upon the filing of a Declaration of Incontestability. Accordingly, either simultaneously with the filing of the Declaration of Use, or at any subsequent point, the owner of the trademark registration may file such a declaration attesting to the continuous use of the mark.

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A. Proper Usage of Notice Symbols (T v. Statutory notice ®)
1. When and how should a trademark owner use the ® symbol?
The ® symbol may only be used in connection with marks that are registered with the PTO and only when used in connection with the goods or services covered by the registration. The symbol should be displayed next to the word, logo, or drawing which is registered at least once in all advertising and promotional materials. In addition or as an alternative, the notation “Marca Registrada” or “Registered in the United States Patent Office” may also be used. Similarly, a legend may be used stating that the words or logo are “a registered trademark of…” or simply “®” followed by the name of the corporate owner. Failure to include some indication that the mark is registered may result in a denial of certain damage awards in an infringement action.

2. What are the T and SM symbols and how may they be used?
The T and SM symbols are symbols that a trademark owner may use to indicate that a term is considered a trademark (T) or service mark (SM) when the term has not been registered. Use of these symbols puts third parties on notice that trademark rights are being claimed. The symbols should be used in the same manner that an ® is used for registered marks.

B. Maintenance of Trademark Rights
1. In what ways can one lose the right to a trademark? 
Unlike copyrights or patents which have a limited life, trademarks, at least theoretically, can exist indefinitely. However, under certain circumstances, trademarks can be “lost.” A trademark is “lost” when it ceases to identify the origin or quality of the goods or services on which it is used. The most common ways to lose a trademark are through (1) abandonment; (2) using the mark in a “generic” manner; (3) licensing the mark indiscriminately; and (4) failing to prosecute infringers.

Under the Lanham Act, a mark will be deemed abandoned when the trademark owner has discontinued use of the mark in connection with the particular good or service and has no intent to resume use within the reasonably foreseeable future. In general, nonuse for three consecutive years creates a presumption of abandonment. A trivial or token interim use will not be sufficient to avoid a finding of abandonment. Even longer periods of nonuse will not create a presumption of abandonment under some circumstances. One is when the goodwill in the mark continues after the nonuse (i.e., where the public still associates the mark with the owner and its product or service). Another is when there is an explanation for the nonuse (i.e., the owner is in the process of re-positioning the product or its market). Finally, abandonment will also not be presumed if nonuse is caused by factors beyond the owner’s control (i.e., war, labor strike, import problems, or some natural catastrophe). If a mark truly has been abandoned through nonuse, a subsequent resumption of use will not revive it. In such a case, the trademark owner must start to build trademark rights anew.

2. What if a mark has not been used in a few years or has been used only minimally?
Because trademark rights are based on use, when a trademark owner discontinues its use of a mark, this can result in abandonment. However, the fact that use of the mark has stopped does not, by itself, mean that it has been abandoned. In order for a mark to be abandoned, the owner must (1) intend not to resume use or (2) act in such a manner that its claims to resume use are not reasonable. Thus, while temporary cessation of use does not mean a mark has been abandoned, a trademark owner cannot “warehouse” a mark that it is truly not using merely by claiming that it intends to resume use.

3. What happens to a mark when the public adopts it as a generic name for a product or service?
Trademark rights can also be lost when the mark is used as the generic name for a product or service and thus ceases to serve its function of identifying the source (and quality) of the product or service. When a trademark owner itself uses the mark as a generic term or allows others to do so, rights are lost and it becomes available for use by all. While an occasional descriptive use will not cause a trademark to be lost, widespread generic use will. Examples of once-strong trademarks that have become generic through descriptive or generic use include “yo yo,” “cellophane,” “trampoline,” “escalator,” “thermos,” “aspirin” and even “raisin bran.”

To avoid this result, trademark owners should be careful to use the mark as a brand name rather than descriptively. A trademark can be lost if it becomes generic (i.e., when it is used to describe a product or service rather than to identify its source and quality). A trademark owner may avoid widespread generic use by: 1) using it as an adjective as opposed to a noun (i.e., “KLEENEX tissue” not “a kleenex”); 2) capitalizing the trademark or otherwise setting it apart from surrounding text; or 3) using it in conjunction with the term “brand” (i.e., “SCOTCH brand tape”). All of these measures will have the effect of preserving the trademark’s value as a “brand name” and will discourage its use as a generic term.

4. What is a trademark or service mark owner’s responsibility when licensing a mark for use by third parties?
While a trademark can be licensed to another by the owner, the owner must exercise control over the quality of the licensee’s goods. Therefore, in order for the owner to license its mark and keep ownership of it at the same time, certain responsibilities must be met. Merely licensing the trademark to another without controlling the quality of the licensee’s goods will result to the loss of ownership over the trademark. Such a license is a license in gross and or a “naked” license.

Quality control by the licensor can take various forms. The following are forms of general standard provisions that impose some responsibility on the owner to maintain quality control: (1) the owner shall have the right to control the quality of the licensee’s products; (2) written specific guidelines or standards must be followed by the licensee; (3) the owner shall have the right to inspect the licensee’s premises and production processes; (4) the licensee shall provide product samples to the licensor according to a specific schedule; and (5) the owner shall have the right to disapprove packaging and advertising by the licensee.

5. What are some of a trademark or service mark owner’s other responsibilities to preserve its rights in its mark?
The owner must take action against third party infringers of the mark. In short the owner must “police” his mark. Failure to prosecute infringers can substantially weaken the strength of the mark and thus the owner’s ability to stop future unauthorized use. Once infringement is discovered the owner should take prompt action against it. Many infringements can be addressed by sending cease and desist letters.

C. What if a mark is materially altered?
When the original version of a mark is replaced with a newer or updated version there is a risk that a third party can claim the mark has been abandoned (for more on abandonment see III.B.1). For purposes of determining priority there is a risk that the new version may be so altered so as to be deemed only to have been used since the new version was adopted, rather than allowing the owner to track his or her priority of use back to the date when the original form of the mark was adopted. The key test to determine whether the original version of the mark has been abandoned is whether the commercial impression of the mark has been altered and whether the change is so dramatic that the two versions will not be seen as legal equivalents.

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A. Inter Partes Proceedings Before the Trademark Trial and Appeal Board
1. Can a member of the public or a competitor challenge a trademark application before a registration issues?
All trademark applications that have been approved for registration are published in a weekly Official Gazette. Any party that believes it will be injured by the issuance of a trademark registration may oppose that registration by filing a Notice of Opposition within the permitted time. Once a Notice of Opposition has been filed, the application file is transferred to the Trademark Trial and Appeal Board, a quasi-judicial administrative tribunal within the PTO, and proceedings are instituted. An opposition proceeding is similar to litigation in that discovery is permitted, testimony is recorded and briefs are submitted. Decisions of the Trademark Trial and Appeal Board may be appealed to the United States Court of Appeals for the Federal Circuit.

2. Can a member of the public or a competitor challenge a trademark registration after it has issued?
If at any time after a mark has been registered, a third party believes that the registration is statutorily invalid, that party may file a petition for cancellation of the registration. Cancellation proceedings are similar to oppositions and are also considered by the Trademark Trial and Appeal Board.

B. Infringement
1. When is use of a trademark an infringement?
The key issue in determining infringement is whether there is a likelihood of confusion caused by the alleged infringer’s use of the owner’s mark (or something similar). The courts look at several factors in assessing likelihood of confusion. The factors are:

  • The strength of the mark. Is the mark well-known? Has the owner devoted much time, money and effort to publicize the mark? How closely is it associated with the owner and its products and services?
  • The degree of similarity between the mark and the thing alleged infringer is using-how close are they in appearance, meaning or sound?
  • The proximity of the parties’ products-are they in the same product category? Do they use the same channels of distribution?
  • The likelihood that, if the parties’ products do not directly compete, they will sometime in the future ‘bridge the gap’ that currently exists.
  • Actual confusion. Is there anecdotal evidence of confusion? Does the owner have a survey of consumers demonstrating confusion?
  • The intent of the defendants-did defendant know of plaintiff’s mark? Did defendant deliberately copy plaintiff’s mark?
  • The quality of the products-is defendant’s product clearly inferior to plaintiff’s?
  • The sophistication of the purchasers-are they discerning or careful enough that confusion is unlikely?

See Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert denied, 368 U.S. 820 (1961).

The court will balance these factors, and a trademark plaintiff need not prevail on each of them to succeed on its claim. For example, actual confusion is not required. Malicious intent is not required-a defendant who acts in complete good faith may still be prevented from using its own mark. Generally, and as one might expect, courts use common sense in balancing the relevant factors.

2. What is the difference between trademark infringement and unfair competition?
Unfair competition is the same as trademark infringement except without the requirement of the existence of an enforceable trademark. Seriously, unfair competition is the creation of a false impression as to the source, origin, sponsorship or endorsement of products or services without the use of a trademark. There is a federal version of unfair competition embodied in section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), which prohibits the use, with goods or services, of a false designation of origin or a false or misleading description or representation of fact. A claim of unfair competition may arise from the same facts as a claim for trademark infringement if a trademark is used in a way which creates a false designation of origin or a false or misleading description or representation of fact.

New York, like many states, has a body of legislation aimed at “deceptive business practices.” Often, causes of action for unfair competition under state common law are accompanied by such claims. See N.Y.B.C.L. Sec. 349 (which precedent has construed as being applicable to competitors, so long as there is an element of injury to the public at large). This “amorphous” cause of action may be used for claims sounding in false designation of origin, false advertising, etc. and has a six-year statue of limitations compared with the three-year period available for claims for common law unfair competition.

3. What is trademark dilution?
Trademark dilution is the use of a mark or trade name in a way that dilutes the distinctive quality of a famous mark. Unlike traditional infringement claims, to establish a claim for dilution, the owner of a famous mark does not need to demonstrate that there is any competition between its goods or services and those offered under the offending mark, or that there is any likelihood of confusion. Traditionally, the courts have found two types of dilution to be actionable: dilution by blurring and dilution by tarnishment.

a) What is dilution by blurring?
Dilution by blurring is the traditional injurious impact of dilution as envisioned by its original proponents and occurs when customers or prospective customers see the plaintiff’s mark used by other persons to identify different sources on many different goods and services. See J.T. McCarthy, McCarthy on Trademarks, §§ 24:68, 24:94. The unique and distinctive significance of the mark to identify and distinguish one source may be diluted and weakened, but no confusion as to source, sponsorship, affiliation, or connection has occurred. A hypothetical example of dilution by blurring would be the effect on the famous KODAK mark if it were used on pianos or ball gowns. While the average consumer would be unlikely to believe that Eastman-Kodak had begun to manufacture these items, KODAK would cease to become a unique identifier of Eastman-Kodak cameras and related products.

b) What is dilution by tarnishment?
Dilution by tarnishment can arise where the effect of the defendant’s unauthorized use is to degrade positive associations of the mark and thereby dilute the distinctive quality of the mark. Since a tarnishing use lessens the ability and capacity of a famous mark to identify a certain standing or reputation of type, quality, or wholesomeness of goods or services, the definition of dilution under the federal statute may be read to include tarnishment. In Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996), the court held that the mark “candyland.com,” which was used for an Internet web site showing sexually explicit pictures, diluted by tarnishment the famous mark CANDYLAND for a children’s board game.

c) What are the statutory defenses to a federal dilution claim?
Section 43(c) of the Lanham Act, 15 U.S.C. Sec. 1127(c)(4) defines three defenses to a claim of dilution under the federal statute: comparative advertising, non-commercial use, and news reporting and commentary. The comparative advertising defense is conditioned on the challenged use being “fair.” For example, use of a famous mark in a purely non-trademark, descriptive sense would be fair, while altering the famous mark in an advertisement so as to lead consumers to associate undesirable characteristics with the mark would be unfair. The non-commercial use defense is intended to permit the use of a trademark in, for example, a negative product review in the media. See House Report 104-374 (Nov. 30, 1995). Defendants may also raise the traditional defenses of laches, acquiescence, estoppel, and unclean hands.

4. What is counterfeiting?
A particularly egregious form of trademark infringement is called counterfeiting. See Lanham Act, Sec. 32(d), 15 U.S.C. Sec. 1116(d). Counterfeiting consists of the use of a substantially identical copy of a registered trademark on the same goods or services for which the original mark is registered. There are special remedies for counterfeiting including ex parte seizure orders, treble damages and statutory damages.

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A. Does Registering a Domain Name Automatically Trigger Trademark Protection of that Name Worldwide?
No. It is true that an internet site may be accessed through the domain name by internet users anywhere in the world. Courts in the United States have ruled that mere registration of a domain does not constitute use of the domain name as a trademark. The offering of goods or services through a website, however, usually does constitute interstate use for the purposes of U.S. trademark protection. Accordingly, if the domain name is distinctive, common law trademark rights will arise upon activation of the website. Domain names that consist merely of a descriptive or generic term for the goods or services offered on the website may be difficult to protect as trademark.

The foregoing is not necessarily true outside of the United States. Trademark rights are territorial, and the trademark laws of foreign countries vary widely. In fact, a number of countries will accord trademark protection only to a mark that has been registered in their country. Therefore, if the domain name owner seriously intends to effectively deter or prosecute infringers abroad, foreign trademark registrations may have to be sought.

B. May Registration of a Domain Name Subject the Domain Name Registrant to Liability for Trademark Infringement?
As stated above, in the United States, mere registration of a domain name does not constitute use of the domain name as a trademark. Accordingly, the courts have found that mere registration of a domain name, with no other act, does not constitute trademark infringement. Use of the domain name in connection with an active website, may however, trigger liability. In addition, registration of a domain name that consists of or contains a well-known trademark may constitute trademark infringement or dilution if the domain name registrant registered the domain name with the intent to sell it back to the trademark owner for a profit, or otherwise registered the domain name in bad faith.

Like any other user of a mark, a domain name registrant should consider having a thorough clearance of the domain name performed before embarking upon an extensive marketing campaign using the name or other activity that might subject the domain registrant to liabiltiy. Due to the international nature of the internet, the domain name registrant may be well advised to consider performing availability searches in foreign countries where the website is expected to be frequently accessed.

C. What is Cybersquatting?
Cybersquatting is a broad term used in the trademark and internet communities to describe the bad faith registration of domain names. Cybersquatting encompasses registration of domain names containing trademarks, either to sell back to the trademark owner or prevent the trademark owner from using the domain name. Cybersquatting has also been used to define certain types of wholesale domain name registration and wharehousing.

1. Is there a law that regulates cybersquatting?
Congress enacted the Anti-Cybersquatting Consumer Protection Act which prohibits certain types of cybersquatting. The statute amended the Lanham Act to make it a type of trademark infringement if a domain name containing a distinctive or famous trademark is registered in bad faith.

2. What are some of the benefits conferred by this Act?
The Act provides certain benefits not previously available to trademark owners.

. Beyond the damages which are conventionally available in a trademark infringement action, the Act gives trademark owners the opportunity to elect to recover statutory damages between $1000 and $100,000 per domain name.
. When a trademark owner cannot obtain in personam jurisdiction over a domain name registrant, either because the person used an alias in registering the domain name or is outside the jurisdiction of the United States courts, the trademark owner may file a civil in rem action against the domain name. In these civil in rem actions, the relief is limited to transfer of the domain name to the trademark owner, cancellation or forfeiture.

D. Can Trademark Owners Complain to the Domain Name Registrar if they Believe a Domain Name was Improperly Registered?
According to the most recent regulatory framework, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has established a uniform domain name dispute resolution policy that is applicable to all registrars of .com, .net and .org domain names (and may apply to other domains as they are adopted). Currently, ICANN accredits domain name registrars. As a result, Network Solutions, Inc. (NSI) and other domain name registrars are required to adopt ICANN’s new policy, which became effective between December 1, 1999 and January 1, 2000. See www.icann.org/udrp/udrp.htm.

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Numerous resources are available to both attorneys and members of the general public regarding issues of trademark law, practice and procedure.

A. Government Resources and Information
1. www.uspto.gov-The United States Patent and Trademark Office website contains a wide variety of useful information relating to trademark law and prosecution, including a searchable database of United States trademark registrations, an extensive FAQ file, and downloadable and electronic application forms.
2. USPTO Basic Facts About Trademarks booklet-available in hard copy or on line at the USPTO website.
3. Title 15 of the USCA-contains the full text of the Lanham Act and all subsequent amendments.
4. Title 37 of the Code of Federal Regulations-contains the Rules of Practice before the USPTO.
5. The Trademark Manual of Examining Procedures-available on-line at the USPTO website and in hard copy from several sources-is the manual used by Trademark Examiners at the USPTO in examining applications and post-registration materials.
6. Acceptable Identification of Goods and Services Manual-available on-line at the USPTO website and in hard copy from several sources-contains a comprehensive listing of acceptable descriptions of goods and services for use in trademark applications.

B. International Trademark Association
1. www.inta.org-The International Trademark Association website contains basic trademark information and a catalogue of useful pamphlets, books and other publications.

C. Treatises
1. McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition, 4th edition (West)
2. Gilson, Jerome, Trademark Protection and Practice (Matthew-Bender)

D. Trademark Search Firms
1. CCH Corsearch-(800) 732-7241 and www.cch-corsearch.com
2. Thomson & Thomson-(800) 692-8833 and www.thomson-thomson.com

The Committee on Trademarks and Unfair Competition
Bret I. Parker, Chair
Lauren Mandell, Secretary

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