Trademark Glossary Entries G-L

GATT (General Agreement on Tariffs and Trade)
The GATT was originally created in 1946 to work out international agreements on world merchandise trade. Since then there have been several "rounds" of the GATT. While serious trademark discussions occurred in the Tokyo Round of the 70's and again in the '80s, it wasn't until the Geneva Round in which TRIPs (Trade Related aspects of Intellectual Property) marked a true involvement of GATT into the area of intellectual property. The WTO (World Trade Organization) and the TRIPs Council monitor the implementation of TRIPs and its enforcement mechanisms. One of the specific changes to U.S. law arising out of GATT are the 1995 amendments to Lanham Act. Specifically section 2(a) was amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Generic marks
These are words or symbols that describe the product or service itself as a category, rather than distinguish between competing versions of the product or service. For example, "shredded wheat" is a generic term that refers to the category of breakfast cereals that are composed of layers of crunchy wheat strips molded together into a pillow-type shape. This cereal may be manufactured by Kellogg's, Post or others., and each manufacturer is free to use the term "shredded wheat" to advertise their version of the cereal. To prevent them from using "shredded wheat" would mean they could not equally compete with regard to this product. Thus, generic words are not protected as trademarks precisely because to do so would be akin to granting a monopoly in the product itself, not in a word or symbol.

Genericness as a defense
Defendants can succeed with a genericness defense when the mark which has allegedly been infringed is a mark that describes the entire category or genus of product that the mark is supposed to distinguish, and thus cannot receive protection under the law. Generic marks are either generic from the outset, or become generic after they become part of the common descriptive name of a category or genus of products. Thus a mark that has been registered can loose its registration through a cancellation proceeding or by order of the court where the term has been shown to have become generic through use.

Genericide
This occurs when a trademark starts out as distinctive or descriptive, but then though use becomes generic. This occurs when the mark becomes part of the common descriptive name of a category or genus of products. Genericide is more likely to happen to marks that are used improperly as nouns instead of adjectives, whether such usage is by the trademark owner or by others.

Geographically remote area
An area in which a mark has no presence either through actual use, advertising or general reputation. As a general rule, a trademark owner has no rights in geographically remote areas, unless the mark is federally registered in which case the mark has nationwide priority, even if there is no presence in the mark for a given region. For unregistered marks, the doctrine of natural expansion provides another exception to the requirement that a trademark be used in a area in order for rights in it to exist.

Geographical terms, trademark protection of
Geographical terms are those that convey to consumers a geographical connotation primarily or immediately , where such consumers are likely to believe that the underlying goods or services in fact come from that location. Such terms fall into three categories (1) primarily geographically descriptive; (2) geographically deceptively misdescriptive; or (3) geographically deceptive. The first two are capable of protection if the owner can demonstrate they have acquired distinction through secondary meaning, while the latter of these, geographically deceptive marks are never capable of receiving protection. If the geographic mark is accurate, it is geographically descriptive. If not, then the mark is either geographically deceptively misdescriptive or geographically deceptive, depending on which test a court applies, and the facts of the situation. A minority of courts look at the intent of the mark owner, while most courts look at whether or not consumers are likely to materially rely upon the misdescription. Thus a mark will be geographically deceptive if either the owner intended to to deceive the public about the origin of the product, or if consumers are likely to rely upon the misdescription in making their purchasing decisions. Finally, after the U.S. implementation of TRIPs, the Lanham Act. 2(a) has been amended to include a prohibition against the registration of any geographical mark for wines or spirits not from the place indicated in the mark.

Geographical territory
The geographical territory is the territory in which one uses a mark. Use in a territory generally determines the extent of trademark rights granted to the user. The first to use a mark in one region has exclusive rights in the mark for that region, and a junior user of a mark in that region can be forced to cease using the mark there. However, the senior user cannot stop the junior user from using the mark in a different territory as long as the junior user is the first to use the mark in that particular territory. Two notable exceptions to this rule are nationwide priority which is only available to federally registered marks, and the doctrine of natural expansion, which is available to any mark owner.

Good faith defense
When a defendant claims that use of plaintiff's mark is defensible as a fair use, one deciding factor is whether or not the defendant was exercising good faith. Good faith means that the defendant did not use the mark in order to "cash in" on the plaintiffs hard work in generating goodwill with consumers. If it appears that defendant was justifiably using the mark in order to describe the underlying goods or services, then the defendant will likely be found to have had good faith in using the mark. Furthermore, since the plaintiff in a trademark lawsuit is often seeking injunctive relief, which is an equitable remedy requiring the balancing of harms, whether or not the defendant exercised good faith or bad faith can have a considerable impact on the court's decision.

Goodwill
An intangible reward for businesses once they generate "name recognition" and establish public confidence in their goods or services. When this happens, consumers want to return to that business for repeat purchases. Thus, as goodwill increases, so does demand, and the business can then raise its prices in accordance. Without trademarks, most businesses would be unable to establish goodwill because their customers would have no way of recognizing their products or services. Erosion of goodwill occurs when consumer confusion exists as to a product's source. Thus, protection of goodwill is one of the primary purposes of trademark law, and is highly guarded.

Goodwill, assignment without
Assignment or transfer of a trademark must occur in conjunction with the transfer of goodwill represented by that mark, or else the assignment is invalid. Furthermore, if assignment occurs without goodwill, the trademark is effectively abandoned Typically, it is the assignee's rights in the mark that are abandoned, but sometimes it is the assignor that abandons its rights. The result of such an abandonment on the assignee is that the assignee cannot benefit from the early first use date of the assignor, and must instead go by the assignee's date of first use in order to establish priority.

Grammatical rules when using marks
Failure to use the proper grammatical rules when using a trademark may result in the mark becoming generic, and thereby loosing all its protection. Specifically, it is very important to always use the mark as if it were an adjective, and never use it as a noun. For example, do not allow marketing material to read, "Aurora is the best cat litter on the market." Instead say, "Aurora brand cat litter is the best on the market," or even "Aurora cat litter is the best...." This may seem a ridiculous distinction to some. However, the consequences for dismissing this advice are great. If your mark is challenged on the basis that it is generic, you will have a much harder time arguing that it is not generic when you have treated your mark as if it were a class of goods, rather than a single brand in a class of goods."

Gray-market goods (Parallel Imports)
These are goods that are manufactured abroad for sale in foreign countries and properly marked with trademarks registered in the United States. Later these goods are purchased and imported into the United States to compete with the United States trademark owner's or licensee's own products. There is considerable incentive to sell gray-market goods in the United States if the prices on goods sold abroad are substantially lower than those sold in the United States. The interesting dilemma created by gray-market goods is that there is ostensibly no trademark infringement since the mark does in fact represent the true source of the goods to which the mark is affixed. For this reason, Congress passed 19 U.S.C. § 1526 to address the problem by stopping such imports at the border, with a couple exceptions. If the foreign manufacturer who affixes the mark to the goods is a related company (i.e. subsidiary or brother -sister company) to the United States trademark owner, then 19 U.S.C. § 1526 will not prohibit the importation. The statute will also not prohibit the importation of goods that are purchased by an individual in a foreign country and brought into the United States for personal use and not for resale.

Grounds for cancellation
Cancellation of a trademark registration can occur within the first five years of registration for any reason that the mark could have been precluded from registration in the first place. Specifically, that includes: (1) Likelihood of confusion with petitioner's previously used or registered mark, (2) Fraud, (3) Descriptiveness, (4) Genericness, (5) Abandonment, (6) Misdescriptiveness and deceptiveness. However, fair use, trademark misuse, unfair competition, or violation of anti-trust laws are generally not considered valid grounds for cancellation.

Five years after registration, and if incontestability status has been successfully obtained, the mark can no longer be canceled on the basis that the mark lacks distinctiveness or creates a likelihood of confusion with a prior-registered mark. However, the mark can still be canceled on the basis of: (1) Genericness, (2) Abandonment, (3) Fraud, (4) The mark is forbidden, (5) The mark is an improperly used collective or certification mark, (6) The mark disparages or falsely suggests a connection with persons, institutions, beliefs, or national symbols, or (7) The mark is used to misrepresent the source of goods. Since these latter two grounds (6 & 7) appear akin to likelihood of confusion, which is supposed to be ruled out as a ground for cancellation after the five year period, they have been the subject of criticism. In any event, if you are claiming cancellation on the basis of 6 or 7, you will inevitably need to prove something more than likelihood of confusion to succeed.

Grounds for dilution lawsuits
In order to have a claim for federal trademark dilution, the mark in question must be famous, and use of the mark must either blur the mark's product identification; or tarnish the affirmative associations conveyed by the mark. State dilution laws may have slightly different grounds, such a mark which is distinctive or well known, rather than one that is famous. Likelihood of confusion is not a required element of a federal dilution lawsuit.

Grounds for infringement lawsuits
Grounds for trademark infringement lawsuits exist when there is use of another company's trademark that is likely to cause an appreciable number of consumers to be confused about the source of the underlying goods or services. Such use must occur in the same geographic territory as the allegedly infringed mark being used. Click here for more information on confusingly similar marks.

Grounds for opposition
The grounds for opposition can be as broad as "any person who believes that [they] would be damaged by the registration of a mark." Despite this broad language, it is also true that the opposer must have a personal interest in the outcome beyond that of the general public, and generally involved with the goods or services that may be described by the alleged mark. Oppositions are most commonly filed when a mark is (1) likely to confuse consumers with respect to an existing mark, (2) descriptive, (3) generic, (4) misdescriptive, (5) deceptive, or (6) registered under fraud.

H - I

Identifying source
Identifying the source of a product or service for the consuming public is the primary objective of trademark law. As such, the Trademark Act grants exclusive rights only to those trademarks enabling a consumer to discriminate between different brands of goods and services. The consumer need not be able to discern the precise manufacturer or service provider by company name. It is enough that the consumer can determine that the maker of this brand is different than the maker of another. For example, nothing in the trademark "Kix" for breakfast cereal tells the consumer that it is manufactured by General Mills. To determine company information, a consumer would have to look elsewhere on the cereal box. What is important is that when the consumer sees a corn-based, puffed cereal with the name "Kix" on it, the consumer instantly knows it is manufactured by an entity different from a similar corn-based, puffed cereal that does not have the word "Kix."

Immoral marks (scandalous marks)
Marks consisting of immoral or scandalous matter cannot be federally registered. Courts have defined scandalous marks to include marks giving offense to the conscience or moral feelings; exciting reprobation, calling out condemnation for a substantial composite of the general public. In re McGinty, 660 F.2d 481 (1981). A fairly recent example of a mark denied registration on the basis of being immoral is the mark DICK HEAD'S accompanied by the logo depicting male genitalia, for restaurant and bar services. In re Wilcher Corp. 40 USPQ2d 1929 (1996).

Importation restrictions
There are a couple steps trademark owners can take to prevent the importation into the United States of counterfeit goods, gray-market goods, or goods that bear confusingly similar marks. First, the owner of a trademark registration or the user of a trade name for six months can record their marks with U.S. Customs who can stop the importation of such goods. Second, the trademark owner can petition the International Trade Commission who has the power to issue temporary or permanent exclusion orders that bar the importation of goods.

Ingredients, protection of
As long as an ingredient in a product is also used as a trademark, it is worthy of trademark protection. An example would be where a cat litter product contains the substance, "GREENGUARD," and a manufacturer or cat litters features the word "GREENGUARD" on its label as a way of distinguishing the product from others.

In gross assignment
Assignment of a mark without the necessary transfer of goodwill associated with the mark. Such assignments are invalid, and can result in abandonment of the trademark. If so, the person to whom the mark was assigned will no longer have the benefit of the assignor's earlier first use date to establish priority, but must instead start over with the priority date being the assignee's own first use date.

Incontestability status
A benefit granted to owners of federal trademark registrations, allowing them to prohibit challenges pertaining to the owner's exclusive rights in a mark. Incontestability can help prevent attacks on the basis that the mark is confusingly similar to another mark, that it is functional, or that it lacks secondary meaning. Incontestability status does not mean a mark is attack-proof. However, the most expensive challenges to defend against are virtually eliminated when you have an incontestable mark. Incontestable marks are still subject to challenges that (1) the mark is generic, (2) the mark was obtained through fraud in registration, (3) the owner has abandoned of the mark, (4) the mark misrepresents the source of goods or services, or it is scandalous in nature, (5) defendant's use is a fair use of the mark, (6) defendant's adoption and use of the mark was prior to plaintiff's registration, (7) defendant's registration of the mark was prior to plaintiff's registration, or (8) the mark is used to violate anti-trust laws.

Infringement
Infringement is the use of a trademark in a way that is confusingly similar to another company's trademark, without that company's prior permission. While consumer confusion is the touchstone to an infringement lawsuit, actual confusion of a consumer it is not required in order for infringement to exist. All that matters is that an appreciable number of consumers are likely to be confused about the source of the underlying goods or services. Click here for more information on the factors that a court will look at to determine likelihood of confusion

Inherent distinctiveness
A mark can be inherently distinctive, or it can acquire distinctiveness over time. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself. The more a mark includes words or symbols related to the good or service, the more likely a consumer will be confused and think that the mark is actually identifying or describing the product itself. Examples of inherently distinctive marks are: DOMINO for sugar, WRANGLER for jeans, BRIM for Coffee, and BLISTEX for lip balm. Each of these trademarks are, in greater or lesser degrees, different enough from the product for which they are used that they serve to identify source rather than describe any qualities of the product. As such, they are inherently distinctive. Fanciful, Arbitrary and Suggestive marks are all inherently distinctive, while descriptive and generic marks are not inherently distinctive.

Injunctive relief
A court order that prohibits a party from doing something or demanding that the party undo some wrong or injury. In trademark infringement or dilution cases, an injunction can include the ordering of corrective advertising, demanding the use of disclaimers of association with the trademark owner, product recall, or prohibiting future use of a mark. Since injunctive relief is an equitable remedy, the court will weigh the harm to defendant if the injunction is imposed against the harm to plaintiff if no injunction is ordered.

Injury to reputation
Injury to reputation occurs when a trademark representing one level of quality is infringed or diluted by a mark that represents a lower level of quality, and the infringement harms the goodwill generated by the original user of the mark. Demonstrating injury to reputation may be extremely difficult, and the plaintiff may have no choice but to rely on market survey data.

Intellectual property
The term used to identify a form of property rights granted to intangible creations of the mind. There are distinct varieties of intellectual property, including trademarks, copyrights, patents, trade secrets, and publicity rights. Each state protects intellectual property in its own way, if at all. However trademarks, copyrights, and patents all receive federal protection, in addition to whatever state protection is available, if any.

Intentional infringement
Trademark infringement that occurs because the defendant hopes to "cash in" on plaintiff's goodwill generated by the mark. Proving intentional infringement can be quite difficult, just as in proving any state of mind. However, courts can consider circumstantial evidence such as the alleged infringer's choice of a trademark in light of the effectiveness of plaintiff's mark. Award of monetary relief by a court is generally reserved for cases of intentional infringement. Reliance upon legal advice will typically not be sufficient in and of itself to disprove intentional infringement.

Intent of the defendant
The mental state of the defendant at the time of adopting a mark is very significant in many aspects of trademark lawsuits. Bad faith on the part of defendant is not required to find trademark infringement or dilution. However, courts are far more likely to award monetary damages in a case where there is bad faith. If it appears that defendant was justifiably using the mark in order to describe the underlying goods or services, then the defendant will likely be found to have had good faith in using the mark, and thereby offer a defense of fair use. Furthermore, since the plaintiff in a trademark lawsuit is often seeking injunctive relief, which is an equitable remedy requiring the balancing of harms, whether or not the defendant exercised good faith or bad faith can have a considerable impact on the court's decision.

Intent to Use (ITU) application
An application for a federal registration made to the United States Patent and Trademark Office for a trademark that is not yet being used. ITU applications secure trademark rights prior to actually using the mark. It allows companies the opportunity to see if the USPTO will register the mark without having to invest in the marketing and promotion of the mark in the event the mark is rejected. It also secures an early priority date (normally a priority date is not set until actual use).

Inter partes proceedings
These are proceedings before the Trademark Trial and Appeal Board (TTAB) at the U.S. Patent and Trademark Office (USPTO). Conflicts over whether a trademark can be registered are heard in front of the TTAB (or possibly in court too). These proceedings consist of: (1) cancellation of marks registered on the Principal or Supplemental Registers; (2) opposition to applications for registration on the Principal Register; (3) Concurrent use proceedings; or (4) interferences declared by the Commissioner of the USPTO.

INTA (International Trademark Association)
Formerly called the United States Trademark Association, this organization lobbies for legislation favorable to trademark owners, and provides a resource for trademark policy development and legal education. The INTA may be reached at:

1133 Avenue of the Americas
New York, NY 10036
(212) 768-9887
http://www.inta.org

Interference proceedings 18.35
This proceeding before the Trademark Trial and Appeal Board is near-obsolete, and reserved for those cases showing extraordinary circumstances. An interference proceeding is declared by the Commissioner of Patents and Trademarks upon petition. At issue in these proceedings is priority of use. Generally speaking, the interference proceeding will not be granted unless the issue of priority which is at stake could not be addressed most efficiently in an opposition or cancellation proceeding.

International class
An international class is a number associated with a category of goods or services into which a trademark may be assigned for the purposes of a trademark registration. Each application for registration must list one or more international classes (at $245 per class). The classes are based upon the type of good or service the mark identifies. Bitlaw has an excellent hypertext listing of the Acceptable Description of Goods and Services Manual which lists all the possible international classes. http://www.bitlaw.com/source/goodscls

Interstate commerce requirement
Interstate commerce of a mark occurs when the trademark applicant or owner uses the mark on goods or in connection with the sale of goods or services that are sold or otherwise transported across state lines. The kind of use required to create or maintain a trademark under the Trademark Act must be a "bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark." 15 U.S.C. §1127. Using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing a statement of use under an intent-to-use application, or filing a renewal application.

International Trademark Association (INTA)
See INTA

International Trade Commission (ITC)
The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC's decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.

International Treaties
There are several treaties that govern trademark rights with respect to other nations, including: the Benelux system of registration, Paris Convention treaty, Trademark Registration Treaty, Madrid agreement, Madrid protocol, and the European Community Trade Mark (CTM). With the exception of the Madrid agreement, these treaties do not attempt to harmonize the trademark laws of the member countries, but instead provide centralized trademark registration filing systems.

Internet, trademark issues posed by
Conflicts over domain names have received the most attention in the trademark legal press. However, such disputes have only affected a small number of trademark owners. Where the Internet has its greatest impact on trademark owners or prospective owners is in searching for prior rights in a mark and policing existing marks. Other areas of trademark law of interest to businesses is whether or not a link to another company's site infringes or dilutes that site's trademark. This latter area overlaps significantly with copyright and unfair competition laws, since linking and framing only implicate trademark infringement or dilution laws in narrow circumstances. Finally, the use of another company's trademarks in meta tags arguably infringes or dilutes that company's trademarks. While there are certainly other trademark issues raised by the Internet, they have not been as widely talked about.

For an elaboration of these topics, see Trademarks on the Internet

Internic (Network Solutions)
The company commissioned by the United States government to administer the assignment of domain names for the following top level domains: .EDU, .COM, .NET, .ORG, and .GOV. Internic's domain name dispute policy has received wide-spread criticism for its bias toward trademark owners. If you want to determine whether a your trademark is being used as a domain name, visit http://www.internic.net.

Intra-State commerce
Commercial trade that takes place entirely within one state, as opposed to interstate commerce which takes place across state and/or national boundaries. Interstate commerce is a prerequisite to federal trademark registration, however marks that are used in intra-state commerce may be registered in the state of trade.

Invalid assignment
Any assignment of a trademark is invalid if the assignment of the mark is made without assignment of the goodwill associated with the mark. If a mark is invalidly assigned, the usual result is that the company that purchased the mark, the assignee, is deprived of the benefit of the early priority date of the assignor, and must instead start all over with a new priority date beginning when the assignee begins using the mark in commerce.

ITC (International Trade Commission)
The ITC can help stop the importation of counterfeit goods by issuing a temporary or permanent exclusion orders. The ITC has its own rules of practice and discovery, and the Commission participates as a party and conducts its own discovery. The ITC can grant temporary relief such as injunctions and restraining orders that can be granted under the Federal Rules of Civil Procedure. The ITC's decision may be vetoed by the President of the United States within sixty days, or appealed to the Court of Appeals for the Federal Circuit.

J - K

Judicial estoppel
A legal doctrine whereby a party is bound by prior judicial declarations which cannot be contradicted in subsequent proceedings involving the same issues and parties. Where a party's pleadings, statements or contentions taken under oath adopt a particular position in one proceeding, that party is estopped from adopting an inconsistent position in a later proceeding.

Junior user
The second or subsequent user of a mark who may or may not have rights in the mark depending whether the mark is being used in the same territory as the senior (first) user. The senior user of a mark has rights superior to all others, and can generally exclude others from using their mark. However, a junior user may still have rights in the mark if the junior user is using the mark in a different territory than the senior user, or the junior user registers the mark federally prior to the senior user. If the junior user registers first, then the junior user obtains nationwide priority, and can exclude all uses of the mark except the senior user's use of the mark in the senior user's own territory.

Jurisdiction
Jurisdiction is the power of a court to inquire into facts, apply the law, make decisions, and declare a judgment. This power is typically determined by the locale of the events leading to a lawsuit, but may also be determined based on other factors, with primary attention always paid to fairness to the party being haled to court. One of the first defenses a trademark defendant may utilize is the lack of jurisdiction by the court demanding the defendant's attention. If defendant succeeds in a motion to dismiss based on lack of proper jurisdiction, the plaintiff can generally bring the same lawsuit to a different court and start all over.

Laches, defense of
A defense based upon plaintiff's inexcusable delay in asserting or attempting to enforce trademark rights. This doctrine is based on the theory that equity rewards the vigilant and not those who slumber on their rights.

Labels, trademark protection of
Labels on goods can be protected under trademark law if the features on the label for which trademark protection is claimed identifies source for consumers, and if such features are not functional. Product labels fall into a rapidly expanding area of trademark protection for trade dress.

Lanham Act
Otherwise known as the Trademark Act of 1946, this statute provides protection against trademark infringement, trademark dilution, and false designation, description or representation. The act also governs procedures for federal trademark registration. The Act is contained in Title 15 of the United States code, sections 1051-1127.

Legal strength of a trademark
Strength of a mark can be measured on two different levels; marketing strength and legal strength. Words that describe very closely the underlying good or service they represent have strong marketing potential, since such marks immediately communicate to customers what the product actually is or does. An example is "Quick Fix Radiator Mix." This tells the customer immediately that it is a substance that fixes radiators quickly. The problem with using descriptive marks such as these is that they are weak from a legal perspective. The legal strength of a mark is generally measured by its distinctiveness, not its descriptiveness. In fact, distinctiveness and descriptiveness are almost two ends on the same spectrum. Generally speaking, the more distinctive the mark, the stronger is the legal protection available for that mark, but the less ability the mark has to communicate with the consumer. Distinctive marks are those that are coined or fanciful (made up), or suggestive (suggesting qualities of the underlying products, without plainly describing them).

Letters, trademark protection of
Alphabetic and Alphanumeric characters can be protected under trademark law, and indeed comprise the most common form of trademark, otherwise known as textual or lingual marks. Such marks receive their broadest protection if they are used as trademarks in block-letter format, i.e. without specialized fonts, coloring or other stylized features. Alternatively, if lingual marks are used with stylized features, but registered as block letters alone, or used in a variety of different stylized formats, then protection can more reasonably extend to all similar configurations of letters.

License
An agreement between a trademark owner and one or more other parties that allows the other parties to make limited, specified use of the trademark in question. Licensing of trademarks can result in the loss of the trademark unless the license arrangement provides for a certain degree of control over the licensed use.

Licensee
The party to whom a trademark owner grants a license to use a trademark.

Licensor
The trademark owner who is licensing a trademark to the trademark licensee(s).

Likelihood of Confusion Test
An analysis of whether confusion is caused when the mark in question is used to identify the same or closely related goods or services as an existing mark. If the relevant consuming public will be confused or mistaken about the source of product or service sold using the mark in question, then likelihood of confusion exists, and that mark can be excluded from being used by the prior mark owner. The likelihood of confusion test is one of several examinations conducted by the U.S. Patent and Trademark Office in determining whether to approve an applicant’s trademark application. The test is also used in trademark infringement lawsuits to determine whether or not the defendant is liable for infringement.

Lingual Marks
These are trademarks in the form of either words or phrases, and are the most widely used kinds of marks. Depending on the meaning of the word or phrase, these marks have more or less legal strength.

Litigation
A lawsuit. In order to litigate a trademark conflict, there must be a legal cause of action such as infringement or dilution. Trademark litigation often occurs on a very fast schedule since the plaintiff usually requests the court to grant a temporary injunction to stop the alleged trademark infringer from using the mark until the whole dispute can be resolved through a longer process. If a court grants the injunction, the defendant typically settles quickly and changes marks because the incentive for litigating a mark that cannot be used (at least in the short term) is obviously prohibitive since goodwill will have to be generated under a new name.

Lost profits, as a measure of damages
The plaintiff's lost profits may be awarded as damages in a trademark lawsuit, but monetary relief is generally reserved for cases of intentional infringement. To receive plaintiff's lost sales as damages, the plaintiff must show that if it were not for the defendant's infringing activities the plaintiff would have had a certain number of sales that were not in fact had. Proving this is often difficult since there may be a number of reasons besides defendant's infringing use of the mark that could account for plaintiff's lost sales. As such, a market survey may be necessary to prove such damages.

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