Madrid Agreement
The Madrid Agreement
Concerning the International Registration of Marks is an international treaty
signed originally in 1891. It is designed to simplify the filing of trademarks
and service marks in different countries. The treaty provides for the international
registration of an approved trademark by a single filing in one language, under
one procedure, with the payment of one fee. Nationals of member countries must
first register their trademark in the country of origin prior to international
registration. For this reason, the treaty tends to favor countries having the
least rigorous application procedures, and consequently the United States and
Canada, having more elaborate trademark registration procedures, have declined
to become signatories.
Mark
Any trademark, service mark, certification mark, or collective mark.
Any trademark, service mark, certification mark, or collective mark.
Market survey
Research conducted by
an independent firm and used to support arguments before the US Patent and
Trademark Office or civil courts when trying to prove various aspects of
trademark viability. For example, a survey may be useful to prove that a mark
has acquired secondary meaning, is not generic, is not functional, is legally
strong, or is not likely to confuse consumers with regard to an existing
trademark. Surveys can also be used to prove plaintiff's lost profits, which is
evidence that is notoriously difficult to obtain without a survey. According to
Phyllis J. Welter, an expert on trademark surveys, the discussion of surveys in
trademark litigation has grown from roughly 5.6% in the 1950's to over 12% in
the 1980's. Ms. Welter's book, Trademark Surveys, published in 1998
by West Group, is an excellent source of information on how to utilize surveys
in trademark litigation.
Measure of damages.
Both the Lanham
Act and the common law provide for two standard methods of
calculating damages, if indeed damages are awarded at all. These are typically
the plaintiff's lost profits or defendant's profits gained as a
result of defendant's infringing activity. Additionally, damages have been
based on a reasonable royalty or a the cost of corrective advertising.
Finally, the court may awardtreble damages and prejudgment interest to
the plaintiff where the court deems such damages as equitable and not
punitive.
Misdescriptive marks (deceptively misdescriptive)
Deceptively
misdescriptive marks are those that incorrectly describe features of the
underlying services or goods to which the mark is affixed. Like deceptive
marks, deceptively misdescriptive marks tend to mislead consumers as to the
underlying product. However, deceptively misdescriptive marks do not meet the
requirements of a deceptive mark (i.e. bad intent or reliance by
purchasers upon the misdescription). As such, deceptively misdescriptive marks
can be registered on the Principal Register once they acquire secondary
meaning.
Misspelled words as marks
Often
business owners choose misspelled words that are phonetically similar to the
correctly spelled word, in hopes of adding distinctiveness, or even perhaps as
a marketing ploy. However, trademark law deems words that are misspelled, but
otherwise descriptive of a product to be the same as the non-misspelled descriptive
term for that product. For instance, "KWIK SNAQ" as a trademark for a
convenience food item would be treated as a descriptive term in the same way as
if the item were instead named "QUICK SNACK."
Misuse of trademark.
An affirmative defense
to trademark infringement. Misuse occurs when the trademark owner uses the mark
in violation of the law, such as canceling a trademark license on the basis of
illegal discrimination. Some legal scholars have also suggested that the misuse
of a trademark should result in cancellation of a trademark registration where
the trademark holder uses the registration to invoke Internic's domain dispute
policy when there is no valid argument for actual trademark infringement by the
domain name owner. However, the US Patent and Trademark Office has never
canceled a mark yet based on trademark use. Nonetheless, cancellation of
patents and copyrights have occurred based on misuse, and it may be a matter of
time before a similar precedent is set in trademark law.
Monetary relief
Monetary relief is but
one form of protection available to trademark owners under the Lanham Act.
Monetary relief may include provable damages, attorneys fees, corrective
advertising costs, lost profits (either defendants’ or plaintiffs’),
prejudgment interest, punitive damages, reasonable royalty or treble damages. Monetary
awards are not required when infringement has occurred. The court has wide
discretion under "principles of equity" to grant or deny such relief,
and frequently requires a finding of intentional infringement before
making such a reward.
Monopoly
A privilege vested in one or more parties consisting of the exclusive right to carry on a particular business or trade. In the case of trademark law, a monopoly specifically references the exclusive right to use a word, symbol, sound or trade dress, etc. in association with a particular kind of good or service.
A privilege vested in one or more parties consisting of the exclusive right to carry on a particular business or trade. In the case of trademark law, a monopoly specifically references the exclusive right to use a word, symbol, sound or trade dress, etc. in association with a particular kind of good or service.
Multiple-class application
An application for
Federal trademark registration in which the applicant seeks registration for
more than one international class. The registrant must pay an additional
registration fee ($245) for each class applied for.
Music, trademark protection of
Trademark protection
exists for any sounds or musical compositions to the extent that such music
meets the requirements of a trademark. A famous example is the melody to
"Sweat Georgia Brown" for the Harlem Globetrotters International.
Musical notation, trademark protection of
Musical notes
appearing with or without a staff are protected as long as they function as
proper trademarks. As such, there is arguably no independent trademark
protection against the printing of musical notes as a symbol identifying the
specific song communicated by those notes, because they describe the music
itself. Moreover, such notation would arguably be functional for the creation
of that particular music. However, musical notation as a symbol for anything
other than the song itself could operate as a trademark.
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Posted in: Glossary
