If trademarks are ultimately enforced by who used it first and not who registered it first then what is the real point of registering? From all that I've read, trademark disputes are ultimately decided by which entity was the first to use the trademark and not which entity was the first to register it. The word &quot;use&quot; can be interpreted in a number of ways but that's tangential to this question anyway so I will ignore it. Therefore, if this is indeed the case, that trademarks are enforced by a first-to-use rule, then what is the real point of registering? Isn't it, in the most practical sense, just a legal formality that businesses take mostly because lawyers have convinced them they must? Because in terms of actual legal protection, an approved trademark itself doesn't guarantee any real immunity if someone else started using it first and can prove it in a courtroom.
Under united-states law there are several advantages to registration. In some countries there is no protection without registration. Short Answer A principal register trademark makes it much easier to prove one's infringement case in court and can conclusively prove some points in one's infringement case after five years if the mark is declared incontestable. Lesser levels of trademark protection above a mere common law trademark primarily provide third-party evidence of latest possible date of first use and eliminates the need to prove geographic scope within the relevant jurisdiction from the date of filing. Long Answer There are about four levels of trademark protection. A common law trademark protects you in the geographic area and economic market where the mark has acquired a secondary meaning, and the existence and scope of the mark, the time that it was established, and it priority in time over the alleged infringer must be established by proof at trial, with the burden of proof completely on the alleged mark holder. The validity of the mark as something that can be trademarked must also be established as a matter of law. A state trademark registration provides a presumption that the registered mark was used in the geographic area of the entire state in the market categories claimed from not later than the date of filing. Other elements of a common law trademark factually, including the existence of a secondary meaning, and its legal validity must still be established as a matter of law. A secondary register federal trademark is basically the same in effect as a state trademark registration but without national geographic application, rather than state geographic application. Basically, these first three are slight variations on a theme that don't prove a whole lot, but some sort of registration still proves something that might otherwise be hard to prove at an infringement trial. A principal register federal trademark carried with it a presumption of use in a geographic area that is national in the claimed category, a date of first use in interstate commerce stated, a presumption of priority over all infringing marks, a presumption of legal validity (i.e. it is the kind of mark that can be trademarked), and a presumption that it has a secondary meaning. Essentially, a principal register federal trademark under the Lanham Act pre-proves all elements of the the prima facie case of infringement except damages, the conflict between the infringing mark and the principal register mark, and the facts related to use of the infringing mark. The presumption basically means that principal register trademark holder, once the other side files an answer to the complaint or fails to do so on time, can usually walk into court with a single public record proving registration, and a very brief affidavit regarding the nature of the allegedly infringing mark and its use (perhaps supported by photographs from shop shelves or online store webpages where the infringing goods are sold) and win default judgment on liability (if no answer is filed) or partial summary judgment on liability if the side can present an affidavit contradicting the facts that are presumed. Moreover, after five years of continuous use of a principal register trademark the mark becomes &quot;incontestable&quot; if a declaration of incontestability is filed pursuant to 15 USC § 1065 which states that: No final legal decision has issued against the mark. No challenge to the mark is pending. A Section 15 Declaration describing the mark's use was filed on a timely basis, and The mark is not and has not become generic. If the plaintiff can establish that the mark is incontestable, the mark will be presumed valid unless the defendant can establish one or more of the following: The registration or the incontestable right to use the mark was obtained by fraud. The registrant has abandoned the mark. The mark is used to misrepresent the source of its goods or services (for instance, use of the mark involves palming off). The infringing mark is an individual's name used in his or her own business, or is otherwise prohibited or reserved under the Lanham Act. The infringing mark was used in commerce first—before the incontestable mark's registration. The infringing mark was registered first. The mark is being used to violate the antitrust laws of the United States. Even though an incontestable mark can still be challenged on these grounds, it is safe from attack on the otherwise common ground that it lacks distinctiveness. Park'N Fly v. Dollar Park and Fly, 469 U.S. 189 (1985). The presumptions means that in the absence of other credible evidence, the mark registrant wins on that issue, and in the case of incontestability affirmatively shifts the burden of proof to the allegedly infringing defendant. If the infringing mark is exactly identical, used commercially, and used on identical or similar goods, the infringing goods are counterfeits and the principal register mark entitled to mark owner to addition remedies such as punitive damages, criminal penalties, and ex parte seizure of infringing good upon import by customs official, with the goods that are seized being destroyed if a timely and successful defense is not offered in court. Even short of a counterfeit goods claim, obtaining a temporary restraining order or preliminary injunction against the sale, distribution or importing of infringing goods is much easier if you have a principal register trademark (denoted by a circle R mark), and easier still if the mark is incontestable, since most of the case is presumed true and so the probability of success on the merits is much greater. Either federal trademark registration also provides federal court jurisdiction over infringement lawsuits under federal question jurisdiction which is not subject to a $75,000 threshold or to the gamesmanship that can defeat complete diversity in diversity jurisdiction cases. This is convenient when filing suit in many states over the same mark because uniform federal rules make the pleadings in one state possible to recycle in other states.
Summary from comments. (Hat tip @jqning) Daniel Nathan Ballard writes here: [It] is not only improper it is UNLAWFUL and may result in serious repercussions... Such a misuse may constitute false advertising... (“It is no doubt true” that affixing the ‘Trade Mark Registered U.S. Patent Office” notice on goods that are not protected by a federally registered trademark creates “a prima facie case of fraud against the public… .”). ... Such use is also a form of “unclean hands” that can bar the user’s registration of the mark. ... Such a use may also bar the maintenance of an infringement case. ... And the fraudulent use of the trademark registration symbol DOES provide other marketplace participants with standing to oppose the user’s registration of the mark. http://www.avvo.com/legal-answers/use-of---symbol-but-not-federally-registered-1125746.html
Anyone seriously planning on doing this or anything like it would be well advised to consult a good trademark lawyer with the specifics. Specifics will matter in such a case. That said: Under US trademark law, the key question is whether a reasonable person would be confused into assuming that there is some connection, and that the new firm could be relied on based on the reputation of the old one. if so, this is a trademark infringement unless permission is obtained from the trademark holder (not likely to be granted). Since "orbitz" is a coined term its protection is stronger, there is no natural object or concept this can refer to. "AppleMoving" is less likely to be confused with "Apple Computers" because apples are real things and need not refer to computers. The likelihood of confusion depends on the specific facts of an individual case. Note also that trademark protection is a matter of private civil lawsuits. If orbitz didn't choose to sue for whatever reason, nothing would have stopped OrbitzMoving.
Yes, but... Trademarks generally have a particular class of goods or services they apply to. For a common word such as &quot;sky&quot;, a trademark will only be granted for a very narrow set; there's no chance of getting an &quot;all purposes&quot; trademark like you could for a made-up word. For example, VuongGiaNghi Nguyen holds a trademark to &quot;Sky&quot; in the United States when describing &quot;Eyelash Glue, Eyelash Extension Glue, False eyelashes, False eyelash perm kit, Lash Extensions&quot;, while Strange Loop, LLC, holds a trademark to it when describing &quot;Downloadable software featuring conversational agents to facilitate communication between humans and machines in an electronic messaging platform for use in the healthcare and medical fields&quot;. I'm guessing that British Sky Broadcasting's trademark has a &quot;goods and services&quot; that overlaps or is very similar to Microsoft's use of &quot;sky&quot;.
A phrase which is too generic or in too wide currnt use to be a valid trademark, may nevertheless be used as a business name or slogan. For example &quot;Good Pizza&quot; is so generic that I am reasonably sure that it could not be registered as a trademark, but a business could use that as a name or slogan. A business that did so would forgo any of the advantages of trademark protection or of having a clearly unique name, but as no one else owns trademark rights to the phrase either, no one could sue such a business over its choice of name, or not with any hope of success. Similarly, if a phrase taken from a meme cannot be registered, no one else can have it as a trademark, and so no one can sue successfully. As to copyright, names, titles, and short phrases are simply not protectable by copyright at all. See the US Copyright office circular 01 &quot;Copyright Basics&quot; which says on page 2; Copyright does not protect ... Titles, names, short phrases, and slogans Circular 33 &quot;Works Not Protected by Copyright&quot; says on pages 2-3: Names, Titles, Short Phrases Words and short phrases, such as names, titles, and slogans, are uncopyrightable because they contain an insufficient amount of authorship. The Office will not register individual words or brief combinations of words, even if the word or short phrase is novel, distinctive, or lends itself to a play on words. Examples of names, titles, or short phrases that do not contain a sufficient amount of creativity to support a claim in copyright include: The name of an individual (including pseudonyms, pen names, or stage names) The title or subtitle of a work, such as a book, a song, or a pictorial, graphic, or sculptural work The name of a business or organization The name of a band or performing group The name of a product or service A domain name or URL The name of a character Catchwords or catchphrases Mottos, slogans, or other short expressions As for ... if we can be sued outside of trademark or copyright reasons Trademark and copyright are basically the only kinds of suit likely to be brought over a business name, logo or similar identification, particularly in the fact patter discussed in the question. (However, see the section on &quot;fraud&quot; below.) Things that are in the public domain are free for anyone to use, not protected against anyone's use. What is not permitted is trying to claim an exclusive right to PD items., by a copyright or trademark claim. The one exception I can think of is that if someone had established a phrase as a trademark, and it later became a meme, then perhaps the trademark owner could sue over uses of it. But with the phrase having become generic, it might well lose any trademark protection. The first thing a plaintiff must do in presenting a trademark suit is establish that the mark is a currently valid trademark, owned by the plaintiff. If the mark is not a valid tm, the suit is over because it has no protection. Fraud A comment states: ... Intentionally misleading others to believe you are a particular party using a non-protectable name, when in fact you are a different party, seems like fraud, and it very much hinges on the name/similar identification. In the fact patter from this comment, the name is derived from a meme, and so there is no other particular person. In that case one cannot plausibly be deceiving anyone into thinking that a business is actually a different business, because there is no business which is uniquely identified by the name. Still, it is possible for fraud to occur in a fact pattern similar to this. Say a local store calls itself &quot;good pizza&quot;, a name not protect able as a trademark, because it is too generic. But it is popular and has a good reputation. Another store, hoping to confuse customers, calls itself &quot;Goode Pizza&quot;. A customer calls &quot;Goode Pizza&quot; and aks &quot;Are you the Good Pizza on George Street?&quot; (which is the location of the first store. An employee answers &quot;Yes&quot; (falsely) and the customer then places a delivery order. That might be fraud. For a fraud case, in most jurisdictions, it must be proved that: A person knowingly made a false statement (or in some jurisdictions an intentionally misleading statement&quot;); with the intention of getting a financial advantage, or depriving another of an advantage or benefit; The statement was material to the transaction (meaning that the other party might well have not agreed to the transaction, or demanded different terms, in the absence of the fraudulent statement); The other party relied on the fraudulent statement; it was reasonable for the other party to rely on the fraudulent statement; and harm was done to the other party as a result of this reliance. Some jurisdictions omit or modify some of these elements. In the Good Pizza / Goode Pizza scenario above, ther is a knowingly false statement. Since the customer asked about the identity of the store, it can be assumed that it was material to the transaction. The imitation of the other store's name suggests an intention to mislead, although more proof might be needed. There was reliance, and it was probably reasonable. What is not clear is the harm done -- additional evidence might be needed on that element. This scenario is, however, rather different from the situation discussed in the question. Note that in the US, trademarks can be protected from mere use, without registration, if they otherwise qualify. In general there will be a preference to frame such a case as one of trademark infringement, rather than fraud, if possible, because fraud is usually harder to prove (trademark infringement dose notr require proof of intention to mislead nor of knowing falsehood), and statutory damages may be available in a trademark infringement case, without any need to prove actual damages. Also, the competing store would generally not be able to bring a fraud case, only the customer who was mislead. could do so
The question is always, would a reasonable customer be confused into thinking that the two are the same, or that there is some relation or sponsorship or attribute to one product or firm the rightful reputation of another. That is always dependent on the specific facts and the specific market involved. So-called &quot;famous&quot; marks get extra protection. The exact markets involved will matter. Any stylizations such as colors and typefaces may matter. Logos may matter. I can't say if one of those specific names would be found to infringe on the other.
Yes. The First Amendment permits you to use the seal of a government agency to illustrate a story about that government agency. The government can no more prohibit you from displaying its seals for expressive purposes than it can prohibit you from displaying its flag. The questions raised about possible trademark violations and implied endorsement are red herrings. Section 2(b) of the Lanham Act prohibits registering a trademark that &quot;consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality,&quot; so the government therefore may not trademark its seals. In re City of Houston, 731 F.3d 1326, 1331 (Fed. Cir. 2013) (&quot;As the nature of the mark is not disputed in this appeal — Houston admits that its city seal is an insignia under § 2(b) of the Lanham Act — the Board properly affirmed the examining attorney's refusal to register Houston's city seal.&quot;) Even if the seal were a protected trademark, the context of its use -- in an editorial setting rather than for commercial purposes -- is protected by the First Amendment. For instance, in Renna v. Cty. of Union, N.J., 88 F. Supp. 3d 310, 323 (D.N.J. 2014), a county tried to stop a television host from using its seal in advertisements for a show about community affairs. The court noted first that the seal was not protected by trademark law, and that even if it was, the county's efforts to limit the host's expression would run afoul of the First Amendment: Consider that the First Amendment prohibits a State from criminalizing the desecration of the United States flag as a form of political protest. ... Should a county, by means of an artful extension of trademark law, be permitted to quash political expression that uses its Seal? I think such an extension would be both unwarranted and Constitutionally risky. The same is true of implied endorsements. The First Amendment does not permit the government to limit your expression because it thinks people might mistake it for government speech. For instance, Rothamel v. Fluvanna Cty., 810 F. Supp. 2d 771 (W.D. Va. 2011), a county government adopted a law &quot;prohibiting the display of the Fluvanna County seal unless expressly authorized by the Fluvanna County Board of Supervisors.&quot; The law was prompted by concerns about a blogger who had been using the county's seal in stories about county government, and there were reports that some people thought the seal indicated that the stories were official county publications. When a blogger challenged the law, the federal court entered a permanent injunction against enforcing it: The County takes the position that the showing of the seal by private citizens is not a form of expression at all; rather, the seal is government property, like a government vehicle or other form of personal property. ... While the County is correct that Rothamel does not have the right to take possession of a physical seal owned by the County, the County cannot control all privately-owned images or representations of the seal simply by declaring an interest in managing its own property. The First Amendment requires a more specific and substantial interest in restricting speech than the broad desire to safeguard government property.
It is certainly possible to incorporate companies with the same name in two different states. If neither company does business in the other person's state under that name, it isn't actionable for either company. If one company was already doing business under its name in a state where another company is formed under that name, it would usually be possible to force the new company to cease and desist from using that name, either with an action directed at the infringer and the Secretary of State (or other official charged with business incorporations in a state) of that state, or in an action directly against the infringer alone. Also, even if a trademark isn't formally registered, it can arise at common law simply through use of a name in a particular market in a particular place. This is harder to prove and the remedies for violating a common law trademark a more limited, but it is not entirely unenforceable.