Trademark Glossary Entries T-Z

Tarnishment in dilution law
Under the laws of trademark dilution, a trademark may become tarnished when it is "linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context." The problem with this occurring is that the public may begin to associate the original mark with the degraded quality or prestige depicted by the imitation. There need be no confusion as to source in order for a potential lawsuit to arise out of tarnishment of another company's mark. An example of tarnishment case successfully sued upon in Georgia was the parody of the Pillsbury Doughboy. The defendant had parodied this famous mark by depicting a Pillsbury Doughboy and Doughgirl in lewd positions. Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981).

Telephone numbers, protection of
As long as a telephone number meets the requirements of a trademark, namely that consumers can rely upon it to distinguish the trademark owner's goods or services from those of competitors, then it can receive all the protections provided by trademark and dilution law. Typically, protection for phone numbers is sought for those numbers that are converted to a meaningful word, such as in the case of "Dial L-A-W-Y-E-R-S" in which a court enjoined another company's use of the same phrase outside of the region in which the phone number was originally secured. See Murrin v. Midco Communications Inc., 726 F. Supp. 1195 (Minn. 1989).

Temporary injunction
An order from a court to prohibit or enforce certain conduct on a temporary basis until the court can make a determination based on all the facts and law of the case. The most common example of an injunction in trademark law is a court order to stop using a particular trademark. 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. The court will also require a bond to compensate the defendant in the event the injunction was wrongly ordered.

Text Marks (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.

^TM symbol 4.13
The ^TM symbol used next to a trademark provides notice to the world that a company claims trademark rights in that mark. Companies can use the ^TM symbol on any mark which serves to identify that company's goods, and the ^SM symbol on any mark which serves to identify that company's services. There is no need to have a federal or state registration prior to using the ^{TM
or SM} symbols. However, use of the © symbol requires a federal registration.

Token Use
This term refers to use of a mark in order to secure rights in it. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark become associated with the source of the goods. If a mark becomes challenged on the grounds of abandonment, the mark owner will need to prove use in commerce, and token uses will not suffice. Such token uses were more common prior to the 1988 revision of the Trademark Act in which the Intent to Use procedure eliminated the need to secure an early priority date in a mark without actually using it. However, token uses still continue in an effort by some to avoid the result of abandonment.4.8

Top level domain name
A top level domain (tld) is that portion of a domain name that comes after the second level domain, such as com, org, net, uk, ca, etc. For example, in Pliam Law Group, PA's URL, http://www.pliam.com, "pliam.com" is the domain name, "pliam" is the second level domain, and "com" is the top level domain. The US Patent and Trademark Office (USPTO) has published a memorandum stating that it is unnecessary to include the top level domain when seeking federal registration of domain names. However, at least one trademark legal scholar has suggested that for maximum protection, a company may wish to do so anyway, since the USPTO has been known to be wrong before, and a court has not yet heard this issue. If you search for ".com" in any federal trademark database, it is clear that not everyone is relying upon the advice of the USPTO (after all, it is not their job to advise on any matter other than the requirements of registration). However, if you apply for a trademark using your domain name with the top level domain as part of the trademark, your registration may only provide protection for infringement of the entire domain, and not merely for infringement of the second level domain. Thus, if you intend to register the ".com" portion of a domain, it is advisable that you also file a separate application for the second level domain alone.

Trade dress (Product design)
Trade dress consists of the variety of elements in which a product is packaged or a service is presented. The elements that are protected may include the shape, color or overall packaging of goods, the displays attending goods, and even the decor or environment in which a service is provided. However, only those elements that were designed specifically to promote the product are protected; not the functional features of trade dress that have a utilitarian purpose.

Trade name
Also known as an assumed name or corporate name, it is the name under which a company conducts its business. Whereas a trade name identifies the business itself, trademarks identify goods or services. A trade name can also serve as a trademark if it meets the requirements of a trademark. If so, the trade name also merits protection under state and federal trademark and dilution laws. However, a trade name has no exclusive trademark rights unless it is used as a trademark. This is so, even if the name is registered with the appropriate state body regulating business names, usually the Secretary of State.

Trademark
A trademark can be a word, name, symbol, device or any combination thereof which is used to identify and distinguish the goods or services of one company from goods or services of another. In order to qualify as a trademark, the mark must be used in federally regulated commerce, and the mark must be distinctive. In a nutshell, the distinctiveness requirement means that a mark cannot describe the underlying product, or if it does describe the product, the mark must have been used extensively enough in commerce to acquire a certain level of market recognition (i.e. secondary meaning). Moreover, some marks will not be protected as trademarks, even if they are well recognized by consumers as trademarks (forbidden marks).

Trademark Act (Lanham Act)
The Trademark Act of 1946 is a federal statute governing registration and maintenance of trademarks and provides a cause of action for dilution and unfair competition. 15 U.S.C. §§ 1051 et seq.

Trademark Causes of Action
When there is a conflict between marks, there are several types of lawsuits which could be brought including: Trademark infringement in violation of section 32 of the Lanham Act, 15 U.S.C. § 1114; False designation or description in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); Trademark dilution in violation of section 43(c) of the Lanham Act, 15 U.S.C. §1125(c); Violation of state trademark infringement statutes; Common law trademark infringement; Violation of state unfair competition and deceptive practices statutes; Common law unfair competition; and Common law or state statutory violations of the right of publicity.

Trademark Misuse
A theoretical basis for canceling a trademark. Although purely speculative at this point, some legal scholars have suggested that a trademark registrant should lose their rights if they engage in abusive tactics that violate the boundaries of fair competition. (Citation). Such a doctrine has been applied in the area of patents and copyrights, and is proposed by some in the trademark area. Specifically, it has been suggested that a trademark registrant who submits their registration to Internic in order to implement Internic's domain name dispute policy has misused their trademark registration and should have the registration canceled, if there exists no plausible argument for trademark infringement.

Trademark Trial and Appeal Board (TTAB)
The administrative hearing board operating under the auspices of the U.S. Patent and Trademark Office. The TTAB hears matters concerning federal registration of a mark and the cancellation of federal registrations. Trademark attorneys do not need any special license or certification to practice in front of the TTAB as they do when practicing patent law before the USPTO.

Trafficking
To transport, transfer, or otherwise dispose of, to another, as consideration for anything of value, or make or obtain control of with intent so to transport, transfer, or dispose of. Trafficking in products with counterfeit marks is a crime under 18 U.S.C. § 2320.

Transferee
The party who acquires rights in an assignment or transfer of trademark rights.

Transfer of ownership (assignment)
An assignment is the legal transfer of ownership of any property such as a trademark or copyright from the owner to another party, who then becomes the new owner. The transferee or "assignee" is the person who acquires ownership, and transferor or "assignor" is the person who transfers ownership rights. To be effective, a trademark assignment must include the transfer of the goodwill accrued in the assigned mark beyond mere assignment of the mark itself. Traditionally, courts have required the transfer of tangible assets along with the mark such as plant inventory, or product formula or know-how. However, more recently some courts have taken a more liberal view of assignments and do not require the transfer of such tangible assets. However, the assignee must continue to sell goods or services of the same quality and nature as the assignor to ensure that goodwill has indeed passed with the mark. See PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1969). When a registered trademark is assigned, it is a good idea to record the assignment with the U.S. Patent and Trademark Office.

Transferor
The party who conveys rights to the transferee in the transfer or assignment of trademarks.

Treaties
Agreements with other nations. There are several treaties that govern trademark rights, 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.

Treble damages 16.4
Treble damages means three times the amount of provable, actual damages. The Trademark Act authorizes courts to exercise their own discretion in awarding up to three times the amount of actual damages for any willful violations of the Act. However, any increases over provable, actual damages have to be for the purpose of compensation, and not designed as a penalty.

TRIPs Agreement
Otherwise known as the Trade-Related aspects of Intellectual Property, TRIPs is a new agreement within the GATT that addresses intellectual property concerns. TRIPs marks the first serious involvement of the GATT into intellectual property issues. Because of TRIPs, the Lanham Act. 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.

Types of marks
The words "trademark" or "mark" are used in a general manner to denote any kind of mark such as a certification mark, collective mark, service mark or trademark. Typically, "service mark" is used in association with the sale of services, while "trademark" is used in association with the sale of goods. Certification marks are used to identify a certain level of quality or that specific standards have been met, and Collective marks are used to identify associations of companies or organizations. Any such mark can consist of a symbol, smell, sound, phrase, packaging as long as it is used to identify the thing it is supposed to distinguish.

Typewritten drawing
A drawing required of most lingual (text) marks in which the mark is depicted on the drawing page in all uppercase, typewritten letters. If the applicant is claiming stylized text, a more graphic drawing of the mark is required.

United States Customs Bureau
U.S. Customs officials can demand disclosure of the identity of any trademark on imported goods, and under certain circumstances, seize goods bearing infringing marks. Congress has authorized Customs Bureau involvement in preventing the importation of counterfeit goods, gray-market goods and goods bearing infringing trademarks. Such goods can be seized at the border. However, what happens to them after seizure depends on which category they fit into. Counterfeit goods will be destroyed or given to charity after removal of the trademark. Infringing marks will be sent back to the place of origin, or enter the U.S. after removal of the mark. Or, upon consent of the U.S. trademark owner, counterfeit goods or goods bearing infringing marks may enter the U.S. In order for the Customs Bureau to take action at the border, the U.S. trademark owner will have to record with Customs their federally registered mark (or trade name if used for six months). Additionally, trademark owners typically have to alert Customs of specific counterfeit or infringing activity, just as a practical matter, since Customs has far too many trademarks to effectively monitor without such assistance.

United States Patent and Trademark Office (USPTO)
The federal agency presiding over the registration and maintenance of patents and federal trademarks. While attorneys must have an additional license to practice patent law before the USPTO, no such requirement exists for the practice of trademark law before this body. Trademark applications and all other correspondence should be addressed to "The Assistant Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-3513." Initial trademark applications should be directed to "Box NEW APP / FEE," while amendments to allege use should be directed to "Attn. AAU," and statements alleging use or requests for an extension of time to file a statement of use should be directed to "Box ITU / FEE." On the Internet, you can find the USPTO at http://www.uspto.gov .

Use as establishing priority 4.5, 4.11
In the United States, the first to use a mark generally has priority, and can exclude all subsequent users of identical or confusingly similar marks. This is in contrast to most other countries which grant priority based on the first to register a mark. The implications for those starting their businesses in the U.S. and expanding later into other countries. Sometimes the first to use in the U.S. is thwarted by another company in a different country who had the foresight to register the mark first. When this happens, the U.S. trademark owner may have to pay a licensing fee just to use its U.S. mark in another country. Worse yet, the U.S. trademark owner may be entirely prevented from using the mark in that country.

Use in commerce
The "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. For federal registration purposes, using a mark in interstate commerce is required whether applying for a trademark under an actual use application, filing an Intent to Use application, or filing a renewal application. Whereas use in commerce refers merely commercial use in trade, Interstate commerce occurs only when the commercial use in trade affects either directly or indirectly commerce that occurs across state lines. Typically, the trademark applicant engages in interstate commerce by using the mark on goods that are sold and transported across state lines, or by selling or advertising to sell services to customers from other states or countries.

Use, proper 4.12
To use a mark properly, the trademark owner should: (1) always use the mark as an adjective of the underlying product rather than as a noun, as in "people prefer CLUB HOUSE brand steaks" rather than "people prefer CLUB HOUSE;" (2) Italicize, underline, capitalize or boldface the mark when it appears in text, in order to set it out from the generic word for the product (3) affix the mark to the goods or services; (3) provide proper notice of trademark rights.

Use requirement
In order to qualify for protection a trademark must be used in commerce. For the purposes of federal registration, use in commerce alone is insufficient, and use in interstate commerce is required.

Utilitarian functionality
According to this doctrine, the functional features of a trademark, or those features having primarily a utilitarian purpose, are not granted protection. Where product elements such as shape, color or design are necessary to improve the saleability of a product, or because the product requires the trademarked element to function optimally, then that feature is not protected by trademark law.

Validity of trademark 15.3
The validity of a trademark is judged primarily by its ability to identify for consumers the source of a good or service and distinguish it from other brands. However, there are some instances where a mark serves this function perfectly well, but is still invalid as a trademark. This occurs when the mark itself is forbidden.

Verification
An affidavit required on many submissions to the U.S. Patent and Trademark Office in which the affiant declares the truth and accuracy of statements made therein.

Warehousing of trademarks
Preservation of rights in a mark by making periodic, "token use" over time, with no present intent to commercially exploit the mark. Prior to the 1988 revision of the Trademark Act in which Intent to Use applications became available, warehousing was used to secure early priority rights in a mark without actually using the mark. Currently, warehousing is still used to circumvent the law of trademark abandonment which states that a mark is abandoned, and thus no longer protectable, when the owner discontinues its use with no intent to resume use in the reasonably foreseeable future.

Willful infringement
Trademark infringement that occurs the user of a mark knows or should have known that the mark was already being used. The consequence of willful infringement is that the defendant is liable for monetary damages, whereas an innocent infringer can only be forced to stop using the mark. However, willful infringement is presumed (though can be rebutted) when the mark that is infringed is federally registered. Furthermore, recent court decisions suggest that a user of a mark may be deemed to be a willful infringer if they fail to conduct a reasonable search of existing similar trademarks prior to adopting a mark.

Words, trademark protection of
Words are the most common type of trademark, and receive protection as long as they meet the requirements of a trademark. Depending on the meaning of the word or phrase, these marks have more or less legal strength.

X-Z

Zone of natural expansion
An exception to the rule that one acquires rights in a trademark by using it, or by obtaining nationwide priority by virtue of a federal trademark registration. The exception is invoked when a company is already using their trademark in one area, and can demonstrate that it planned to expand its operations, and therefore its use of the mark, into the claimed area.

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