Über die Autorin bzw. den Autor

DANA SHILLING is the author of more than twenty books, including Lawyer's Desk Book, Eleventh Edition, 60 Minute Financial Planner, The Complete Guide to Human Resources and the Law, and Financial Planning for the Older Client, Fifth Edition. Her articles on legal and financial issues have appeared in such magazines as Vogue, CFO, Working Woman, Cosmopolitan, Aging Today, Estate Planning Studies, and others.

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ESSENTIALS OF TRADEMARKS AND UNFAIR COMPETITION

Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and technologies in trademarks and unfair competition.

"This is an extremely well-conceived, clearly written, and authoritative presentation of several related intellectual property disciplines. It will be valuable both to business executives and nonspecialized lawyers. Serious readers should get up to speed rapidly because Ms. Shilling focuses on the real issues in an effective, user-friendly manner."
- Robert Goldscheider, Chairman, The International Licensing Network

"Dana Shilling has written a work that should be the new, first stop for junior associates or experienced general practitioners alike delving into their first serious engagement with the law of trademark and unfair competition. In a terse but accessible style she has touched on most of the major issues in these developing areas and has done so with a minimum of jargon, 'inside baseball,' and bias in an area rife with vested litigation and economic interests. No other book presently available fits quite this niche."
-Ronald D. Coleman, Partner, Intellectual Property Department, Gibney, Anthony & Flaherty LLP

The Wiley Essentials Series-because the business world is always changing...and so should you.

Aus dem Klappentext

ESSENTIALS OF TRADEMARKS AND UNFAIR COMPETITION

Full of valuable tips, techniques, illustrative real-world examples, exhibits, and best practices, this handy and concise paperback will help you stay up to date on the newest thinking, strategies, developments, and technologies in trademarks and unfair competition.

"This is an extremely well-conceived, clearly written, and authoritative presentation of several related intellectual property disciplines. It will be valuable both to business executives and nonspecialized lawyers. Serious readers should get up to speed rapidly because Ms. Shilling focuses on the real issues in an effective, user-friendly manner." - Robert Goldscheider, Chairman, The International Licensing Network

"Dana Shilling has written a work that should be the new, first stop for junior associates or experienced general practitioners alike delving into their first serious engagement with the law of trademark and unfair competition. In a terse but accessible style she has touched on most of the major issues in these developing areas and has done so with a minimum of jargon, 'inside baseball,' and bias in an area rife with vested litigation and economic interests. No other book presently available fits quite this niche." -Ronald D. Coleman, Partner, Intellectual Property Department, Gibney, Anthony & Flaherty LLP

The Wiley Essentials Series-because the business world is always changing...and so should you.

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Essentials of Trademarks and Unfair Competition

John Wiley & Sons

Chapter One

After reading this chapter you will be able to

Understand why the legal system protects trademarks

Identify trademarks

Understand the scope of state and federal trademark laws

Know how to use trademarks in commerce

Compare trademarks to utility patents, design patents, and copyrights

Trademarks have been used for centuries-probably as long as there has been more than one person carrying out a particular trade, or selling merchandise of a particular type, at the same market, or in the same town. An important part of business is developing a reputation for selling unusual merchandise, or for quality or variety of products, or for high value.

A business can succeed only if customers buy its products or use its services. One of the most important functions of marketing and advertising is to create demand, not just for a particular type of product, but for the advertiser's or marketer's own goods. Trademarks (words, pictures, combinations of words and images, even sounds or fragrances) are important tools in identifying the business that provides the goods or services. A good trademark makes the product stand out.

Because trademarks are such a key part of doing business, federal and state law protect a business's right to identify its own merchandise and to keep other people from counterfeiting merchandise or using confusingly similar trademarks. However, the legal rules for trademarks (and the related concept of trade dress-the appearance and packaging of merchandise) are complicated and sometimes counterintuitive: they are not necessarily what a person in business would assume, based on experience in selling products. This book is designed to make confusing rules easier to understand.

Focus of the Book

This book covers a spectrum of related topics. Following the introduction of trademarks and trademark law in Chapters 1 and 2, the main concentration is on trademarks themselves. In addition, Chapter 2 touches on a large and growing group of issues: the difficult relationship between trademarks and the Internet, including but not limited to when trademarks can be used as URLs and when a cybersquatter can be punished for misuse of domain name registration. Note: Trademarks will be referred to in capital letter, such as COCA-COLA or NIKE.

In many ways, the concepts of brand and trademark are closely related, although brand is a more modern and trademark a more traditional idea. But even though they are similar, they are not identical. Both of them involve product image and goodwill, but the concept of trademark focuses on the source of the goods.

A consumer might have very high awareness of brand-might, for instance, have a shopping list that contains JIF peanut butter, ARRID EXTRA-DRY deodorant, DEL MONTE canned vegetables, CAMPBELL's canned soups, CREST toothpaste, and so on. This consumer might have a strong preference for these brands, based on a belief in their superior quality and attractiveness, and might take a rain check rather than purchase a competing brand, yet have no knowledge or interest in who manufactured the preferred brands. In fact, in today's business climate, where mergers and product divestitures are common, a brand might have been owned by several companies. Thus, the brand does not provide proof of source. In this book, we focus on the concepts of trademark.

Chapter 3 covers how to search to see if a desired trademark is available, and how to register a trademark. Chapter 4 discusses what to do in case of an allegation of trademark infringement or if the trademark owner believes that the trademark has been infringed. The subjects of service marks and trade dress are addressed in Chapter 5.

Chapter 6 covers threats to trademarks. However, a trademark is only one form of intellectual property. In the current business climate, businesses are becoming more and more aware of the importance of trademarks, trade secrets, patents and design patents, copyrights, and digital media assets to business success. The rules affecting these forms of intellectual property can be complex and overlapping. Inventing, manufacturing, and marketing a product can involve multiple forms of intellectual property, each with its own legal consequences. These issues are addressed in Chapter 7.

In addition to trademarks and related subjects, this book also covers the law of unfair competition in business, because other forms of unfair business practice can overlap with trademark infringement. Chapter 8 tackles this subject.

For your convenience, the book closes with several appendices and legal forms. When used in conjuction with the information presented in this text, the end material should equip you with the essential concepts you need in handling trademark issues.

Sources of Trademark Law

Trademark law was already in existence in England when the American Revolution occurred, and many of those concepts were adopted as U.S. law evolved. Merely using a trademark in commerce creates some protectable rights against unfair competition and imitation of the trademark. This is known as a common law trademark; the rights that arise are limited to the geographic area in which the mark is being used.

However, as described in detail in this book, registering a trademark (with the state, the federal Patent and Trademark Office, or both) is often worthwhile because it increases the rights of the registrant against a trademark infringer. Remedies for trademark infringement can include injunctions, seizure of infringing or counterfeit merchandise, and money damages: see Chapter 4.

Once a trademark is registered, it will become part of a large standard database that is open to the public. The practical effect is that businesses that are contemplating the use of a new trademark can search the database (see page 53) and discover if it is already in use, or if it might be considered confusingly similar to a trademark already in existence. The legal effect is that once a trademark is registered, or even published for objections (see page 70), everyone is deemed to have knowledge of it, and can be held responsible for the knowledge.

Once a trademark is registered with the federal Patent and Trademark Office (PTO), the symbol (r) can be used in connection with the trademark. Any registered trademark, on either the Principal or the Supplemental Register, can use this symbol.

Any trademark, registered or not, can be identified with the symbol (tm). This symbol just indicates that trademark rights have been asserted in the mark, not that any government agency has approved or registered the mark.

Another advantage of registering a trademark is that, five years after a trademark has been registered, the general rule is that it will become incontestable-that is, no one will be allowed to bring a legal challenge to the validity of the trademark.

However, the law contains a list of exceptions. A trademark can be challenged even after five years if it was obtained fraudulently, if the trademark owner has abandoned it (has stopped using it in commerce), and if the trademark has become generic-that is, if it is used to identify a whole class of products rather than the products of a specific company.

State Trademark Law

All of the states have some trademark and unfair competition laws of their own. In other words,...