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Trademark Protection

Trademarks that are Unprotectable

Trademarks that are Unprotectable

Nonuse of Trademarks

A company wishing to trademark its business logo at the United States Patent and Trademark Office is required to fill out one of two forms. The form required will depend on whether or not the trademarked logo is currently being used for business operations. If it is, a normal application will be filed. If it is not, but is intended for use in the future, the company must fill out an intent-to-use form. 
After doing so, the company has six months to show a certified document proving that the logo is being used in business practices, such as advertising or product packaging. If it fails to use the trademark, this will qualify as nonuse, and the trademark may become void. In other cases, a trademark may be unregistered in the U.S. Patent and Trademark Office if a company’s trademark is no longer used in its business practices.
Trademark Genericide
A company works hard to build up the popularity of its trademarks through advertising practices and product packaging. However, a popular trademark has the potential of backfiring on the company if the trademark becomes the generic description or synonymous with a general name for a certain product or service. 
This is a process known as genericide and when the public begins to refer to general products or services using a trademarked name, the company may be in danger of losing that trademark. There are corrective measures that a company can perform to help prevent this from happening.
Examples of genericide include Aspirin, originally a trademark of Bayer AG and Escalator, originally a trademark of Otis Elevator Company. Both of these companies have lost their trademark protection in the United States because the general population began to refer to the general product name by the trademarked name. 
Since the trademark name becomes public domain, the original manufacturer of the product may still continue to use the trademark, though it is no longer protected from other companies using it as well.
Some companies such as Johnson & Johnson started to perform corrective measures to prevent their trademark from being lost through genericide. Their Band-Aid brand began to appear in everyday speech when referring to bandage strips used to treat cuts. To combat this, Johnson & Johnson changed its commercial jingle to include the phrase “Band-Aid brand” instead of just “Band-Aid”.

Confusingly Similar Marks:
Marks that bear a similar likeness to established trademarks cannot be protected under U.S. intellectual law. If the U.S. Patent and Trademark Office believes that two alike trademarks may cause customer confusion, the infringing trademark will not be granted protection. 

Customer confusion is defined as:
         A customer may buy a product other than the one intended, or;
         Has a reason to believe that one company’s products are sponsored by another company.
While the guidelines for determining the likelihood of customer confusion can be unclear, the U.S. Patent and Trademark Office (USPTO) has certain guidelines which companies follow when submitting trademarks for protection. First, companies that offer different goods are in different classes.
 If two similar trademarks are in two different classes, the USPTO will not consider these trademarks as being in conflict with each other. They are confusingly similar, however, if they are sold in the same marketing channels with each other. This means that if they are sold in the same department store, they may be considered confusing to a consumer.

Ways to tell if marks are too similar physically:
         If they sound or look alike;
         If they have the same meaning;
         If they mean the same thing in a different language;
         If a picture holds the same meaning as another trademark’s text?

In addition, trademarks may cause customer confusion if:
         The goods are competitive;
         If the goods are complimentary to each other;

Domain Names Under Trademark Law

Domain Names Under Trademark Law

What Makes a Trademark Domain Name Important?

A domain name is similar to a street address. It is a string of letters, directing users to a specific website on the Internet. They are required to be exact. Websites which are most likely to attract a larger number of customers became more valuable assets to companies.
In the early days of the Internet, domain name holders seized domain names that matched specific trademarks of popular companies around the world. The companies began to file disputes against these domain holders, asking them to give up the domain name because of the trademark in which they owned. 
The courts mostly acted through according to a determination of bad faith. If the domain holder acted in bad faith, the ruling was generally made in favor of the company. If the domain holder was void of bad faith, the decision of the court could be in favor of the domain holder.
Trademark Domain Name and Trademark Law Prior to November of 1999:
Domain name cases were handled through traditional trademark law before November of 1999. Some claims attempted to prove customer confusion

Lanham Act Domain Names and Trademark Law After November of 1999:
There was no other alternative to the three arguments above and there had been no laws specifically created to handle a trademark domain name legal dispute. At the time, the NSI was responsible for Internet domain name registration, and even though it did have a dispute resolution service, legal controversies were not settled easily. 
As a result, in the event of a dispute, the NSI put a trademark domain name on hold to allow both parties to settle it on their own or through court.
It was not long before ICANN, an organization responsible for Internet domain management, created a uniform dispute resolution procedure that governs trademark domain name disputes. Starting on January 3, 2000, trademark owners were able to enlist the UDRP as an alternative to litigation. The main factor used by the UDRP was to see if the domain holder acted in bad faith.
What is the
With bad faith;
Similar to the distinctive trademark;
Identical to a famous mark of ownership;
Which are protected by law.
The act does not protect against fair use of trademarks or use otherwise protected by the First Amendment.