TRADEMARKS by Shanna K. Sanders, Esq. Heslin Rothenberg ...
Transcript of TRADEMARKS by Shanna K. Sanders, Esq. Heslin Rothenberg ...
TRADEMARKS
by
Shanna K. Sanders, Esq. Heslin Rothenberg Farley & Mesiti P.C.
Albany, New York
11/12/2014
1
Shanna K. Sanders, Esq.
TRADEMARKS
R TM
SM
November 21, 2014
Trademarks
A trademark is a word, symbol, or phrase, used to
identify a particular manufacturer or seller's
products and distinguish them from the products of
another. 15 U.S.C.�§1127.
Serve two primary purposes:
Protect consumers from being misled; and
Protect the goodwill of the entity that owns the mark.
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
11/12/2014
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What is the Purpose of Trademark Law?
The U.S. Supreme Court said it best. The basic objectives of trademark law are as follows:
"[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost‘s of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that the this item - - the item with this mark -- is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it(and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product." Qualitex Co. v. Jacobson Products Co, 514 U.S. 159 (1995).
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
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Types of Marks
Trademark vs. Service Mark
Word
Slogan
Logo
Sound
Color
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Slogan Marks
A slogan or any other combination of words is
capable of trademark significance, if used in such a
way as to identify and distinguish the seller’s goods
and services from others. Allstate Ins. Co. v. Allstate
Inc., 307 F.Supp. 1161 (N.D.Tex. 1969).
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
11/12/2014
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Examples of Slogan Marks
New York State Division
of the Lottery
U.S. Reg. 3,751,899
All you need is a
dollar and a
dream
McDonald’s Corp.
U.S. Reg. 2,978,887
I’m
lovin’ it
So easy a
caveman can do it
Melts in your
mouth, not in
your hand
Mars, Inc. U. S. Reg. 1,596,711
Just do it
Nike, Inc.
U.S. Reg. 1,875,307
GEICO
U.S. Reg. 3,193,689
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Sound Marks3
A sound mark identifies and distinguishes a product or service through audio rather than visual means. TMEP §1202.15.
Sounds are protectable when they are arbitrary, unique or distinctive and create in the hearer’s mind an association of the sound with a good or service. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).
The fact that sounds and musical compositions are protected by the copyright laws is not incompatible with their also qualifying for protection as trademarks. Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61 (2d Cir. 2001).
As with any designation alleged to be a mark, a sound cannot qualify as a mark if it is “functional.”
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
11/12/2014
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Oliveira v. Frito-Lay, Inc. (2d Cir. 2001)
Recording artist, Astrud Gilberto, brought action
against potato chip seller, Frito Lay, claiming that
Frito Lay’s use of recording of artist singing her
“signature song” in a television commercial infringed
artist’s trademark rights.
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Oliveira v. Frito-Lay, Inc. (2d Cir. 2001)
As a result of the huge success of the 1964 recording of “Ipanema,” Gilberto claimed to have earned trademark rights in the 1964 recording, which the public recognizes as a mark designating her as a singer.
Second Circuit clarified that a musical composition can serve a trademark entitled to protection under the Lanham Act.
However, the Court held that a performing artist cannot acquire a trademark signifying herself in a recording of her own famous performance.
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
11/12/2014
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Examples of Sound Marks
U.S. Registration No. 916,522 (July 13, 1971)
U.S. Registration No. 1,395,550 (June 3, 1986)
U.S. Registration No. 2,692,077 (March 4, 2003)
U.S. Registration No. 3,411,881 (April 15, 2008)
U.S. Registration No. 2,821,863 (March 16, 2004)
U.S. Registration No. 2,442,140 (April 10, 2001)
U.S. Registration No. 2450525 (May 15, 2001)
U.S. Registration No. 2519203 (December 18, 2001)
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Color Marks
In 1995, the Supreme Court held that a single color
of a product is capable of being registered and
protected as a trademark. Qualitex Co. v. Jacobson
Prods. Co., 513 U.S. 159 (1995).
Single color requires proof of secondary meaning.
Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205 (2000)
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Examples of Color Marks
Canary Yellow
Robin Egg Blue
Brown
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Evaluating Strength of Trademarks
Strongest.…….….………….Weakest……….....Not Protectable
Coined/Arbitrary Suggestive Descriptive Generic •Kodak
•Exxon
•Prilosec
•Centrium
•Advair
•Igloo
•Southern Comfort
•Nautica
•Manhattan Bagel
•General Motors
•Sonoma Valley Wine
•International Business
Machines (IBM)
•Aspirin
•Advil
•Thermos
•Kleenex
** The More Distinctive the Mark, The Stronger The Mark will Be**
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(Secondary Meaning Required)
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Secondary Meaning
a/k/a Acquired Distinctiveness
A mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product.
When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Christian Louboutin S.A. v. Yves Saint Laurent (2d Cir. 2012)
“Louboutin’s trademark, consisting of a red lacquered outsole
on a high fashion women’s shoe, has acquired limited
‘secondary meaning’ as a distinctive symbol that identifies the
Louboutin brand.”
Louboutin’s trademark was limited to uses in which the red
outsole contrasts with the color of the remainder of the shoe.
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Generic = Unprotectable
Examples: Convenient Food Mart, Supermarket
Once were trademark, now generic:
Aspirin, Escalator, Thermos, Yo-Yo, and Bikini
Famous marks risk becoming generic:
Scotch Tape
Kleenex
Xerox
Grave Yard of Generic Marks Dictionary
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
How are Trademark Rights Acquired?
Common Law Trademark: use of the mark in
commerce (registration not required)
Federal Registration: use of the mark in
commerce OR a bonafide “intent-to-use” (U.S.
Patent and Trademark Office)
State Registration
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Best Practices
Use TM or SM designation NOW
Obtain Federal registration – use ®
Do not use as noun, but as an adjective
Band-Aid® Brand adhesive strips
Visa® Credit Card
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Protecting your Trademark Rights
The rights to a trademark can be lost through:
Abandonment
Discontinue use with an intent not to resume
Presumption after three consecutive years of non-use
Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993).
Improper Licensing or Assignment
License without adequate quality control or supervision by the trademark owner
Assignment without the corresponding sale of any assets
Rationale: The trademark no longer serves its purpose of identifying the goods of a particular provider. Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959).
Genericide
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“Trade Dress” – What is it?
“… the total image and overall
appearance” of a product, package, style of doing business etc. “as defined by its overall composition and design, including size, shape, color texture, and graphics”
It is a WORDLESS TRADEMARK....but certainly not worthless!
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The Power of a Famous Look
This is Trade Dress in a package
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Product Shapes as Trademarks
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Functionality Doctrine
A product feature is considered functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995).
The doctrine prevents the use of a product feature as a trademark where such use would put competitors at a significant non-reputation-related disadvantage.
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
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Benefits of Federal Registration
Public notice of your claim of ownership of the mark;
A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
The ability to bring an action concerning the mark in federal court;
The use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol ®; and
Listing in the United States Patent and Trademark Office’s online databases.
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Federal Trademark Application Process
Two Types of Applications:
Use
Intent-to-use
Information Required:
Name and Address of Applicant
Identification of Mark
Designation of International Class(es)
Identification of Goods or Services
USE
Date of First Use
Specimen
INTENT-TO-USE
Declaration
Filing Fee ($275-375 per International Class)
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Federal Trademark Examination Process
Examination Compliance with applicable rules and statutes
Search for conflicting marks
Excluded Categories Scandalous or immoral
Generic name
Insignia of government entities
Identifies, without consent, a living individual
Merely descriptive or misdescriptive
Primarily a surname
Publication
Allowance (Intent-to-Use Only)
Registration
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Maintenance of Registered Mark
Continued use in commerce
Declaration of use filed between 5th and 6th
anniversary date
Renewal every 10 years
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If properly maintained, term is INDEFINITE
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Trademarks in the News
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TM Application: Blue Ivy Carter
January 7, 2012 – Blue Ivy Carter born
January 26, 2012 – BGK Trademark Holdings, LLC
files broad Intent-to-Use Application
February 7, 2012 – USPTO issues Office Action
Section 2(d) Likelihood of Confusion
Section 2(a) False Connection
Section 2(c) Name of a Living Individual
October 24, 2012 – Approved for Publication
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Trademark Infringement
Trademark infringement is the unauthorized use of an identical or similar trademark or service mark on competing or related goods and services.
The success of a lawsuit alleging infringement turns on whether the accused infringer's use causes a likelihood of confusion in the average consumer.
Lanham Act,15 U.S.C. § 1114 (registered mark)15 U.S.C. § 1125(a) (unregistered mark).
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Elements of Trademark Infringement Claim
To prevail on a claim of trademark infringement, a plaintiff must establish:
Ownership of a valid mark entitled to protection;
Use of the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff's consent; and
Likelihood of confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant's goods, services or commercial activities by plaintiff.
1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005).
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Likelihood of Confusion:
The Polaroid Factors
Strength of the senior user’s mark
Similarity of the marks
Similarity of the products or services
Likelihood that the senior user will bridge the gap
The junior user’s intent in adopting the mark
Evidence of actual confusion
Sophistication of the buyers
Quality of the junior user’s products or services
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
Defenses
Fair Use
Laches, Unclean Hands and Estoppel
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Remedies
The remedies for infringement under the Lanham Act
are statutory and consist of:
Injunctive relief
Accounting for profits
Damages
Attorney's fees in "exceptional cases" and costs.
15 U.S.C. § 1117.
©2014 Heslin Rothenberg Farley & Mesiti P.C. All Rights Reserved
CASE STUDIES
11/12/2014
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Thank You
Shanna K. Sanders, Esq.
Heslin Rothenberg Farley & Mesiti P.C.
Intellectual Property Law
5 Columbia Circle
Albany, New York 12203
518-452-5600
www.hrfmlaw.com
TRADEMARKS
Shanna K. Sanders, Esq.
Heslin Rothenberg Farley & Mesiti P.C.
November 21, 2014
• What is a trademark?
o A trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller's products and distinguish them from the products of another. 15 U.S.C. §1127.
o Serves two primary purposes:
Protect consumers from being misled; and
Protect the goodwill of the entity that owns the mark.
• What is the purpose of trademark law?
o The U.S. Supreme Court said it best. The basic objectives of trademark law are as follows:
"[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost‘s of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that the this item -- the item with this mark -- is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product." Qualitex Co. v. Jacobson Products Co, 514 U.S. 159 (1995).
• Types of marks
o Trademarks vs. Service Marks
Word
Slogan
Logo
Sound
Color
Page 1 of 8
• Slogan Marks
o A slogan or any other combination of words is capable of trademark significance, if used in such a way as to identify and distinguish the seller’s goods and services from others. Allstate Ins. Co. v. Allstate Inc., 307 F.Supp. 1161 (N.D.Tex. 1969).
• Examples of Slogan Marks
o “So easy a caveman can do it.” Geico, U.S. Reg. 3,193,689.
o “I’m lovin’ it.” McDonald’s Corp., U.S. Reg. 2,978,887.
o “Just do it.” Nike, Inc., U.S. Reg. 1,875,307.
o “All you need is a dollar and a dream.” New York State Division 0f the Lottery, U.S. Reg. 3,751,899
o “Melts in your mouth, not in your hand.” Mars, Inc., U.S. Reg. 1,596,711
• Sound Marks
o A sound mark identifies and distinguishes a product or service through audio rather than visual means. TMEP §1202.15.
o Sounds are protectable when they are arbitrary, unique or distinctive and create in the hearer’s mind an association of the sound with a good or service. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009); In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978).
o The fact that sounds and musical compositions are protected by the copyright laws is not incompatible with their also qualifying for protection as trademarks. Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 61 (2d Cir. 2001).
o As with any designation alleged to be a mark, a sound cannot qualify as a mark if it is “functional.”
• Case Study: Olivera v. Frito Lay, Inc., 251 F.3d 56 (2d Cir. 2011)
o Recording artist, Astrud Gilberto, brought action against potato chip seller, Frito Lay, claiming that Frito Lay’s use of recording of artist singing her “signature song” in a television commercial infringed artist’s trademark rights. \
o As a result of the huge success of the 1964 recording of “Ipanema,” Gilberto claimed to have earned trademark rights in the 1964 recording, which the public recognizes as a mark designating her as a singer.
o Second Circuit clarified that a musical composition can serve a trademark entitled to protection under the Lanham Act.
Page 2 of 8
o However, the Court held that a performing artist cannot acquire a trademark signifying herself in a recording of her own famous performance.
• Color Marks
o In 1995, the Supreme Court held that a single color of a product is capable of being registered and protected as a trademark. Qualitex Co. v. Jacobson Prods. Co., 513 U.S. 159 (1995).
o Single color requires proof of secondary meaning. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000)
• Evaluating the Strength of Trademarks
o Coined/Arbitrary
Kodak
Exxon Strongest
Prilosec
Centrium
o Suggestive
Advair
Igloo
Southern Comfort
Nautica Weakest
o Descriptive*
Manhattan Bagel
General Motors
Sonoma Valley Wine
International Business Machines (IBM)
o Generic
Aspirin
Advil
Thermos Not Protectable
Kleenex
• The more distinctive the mark, the stronger the mark will be.
• *NOTE: Descriptive marks are not protectable absent a showing of secondary meaning. (See, infra).
Page 3 of 8
• Secondary Meaning
o a/k/a Acquired Distinctiveness
o A mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product.
o When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).
• Generic = Unprotectable
o Examples: Convenient Food Mart, Supermarket
o Once were trademarks, now generic:
Aspirin, Escalator, Thermos, Yo-Yo, and Bikini
o Famous marks risk becoming generic:
Scotch Tape
Kleenex
Xerox
• Grave yard of Generic Marks Dictionary
• How are Trademarks Rights Acquired?
o Common Law Trademark: use of the mark in commerce (registration not required)
o Federal Registration: use of the mark in commerce OR a bonafide “intent-to-use” (U.S. Patent and Trademark Office, www.uspto.gov)
o State Registration
• Best Practice
o Use TM or SM designation NOW
o Obtain Federal registration – use ®
o Do Not use as noun, but as an adjective, e.g.:
Band-Aid® Brand adhesive strips
Visa® Credit Card
Page 4 of 8
• Protecting your Trademark Rights
o The rights to a trademark can be lost through:
Abandonment
• Discontinue use with an intent not resume
• Presumption after three consecutive years of non-use
• Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993).
Improper Licensing or Assignment
• License without adequate quality control or supervision by the trademark owner
• Assignment without the corresponding sale of any assets
• Rationale: The trademark no longer serves its purpose of identifying the goods of a particular provider. Dawn Donut Co., Inc. v. Hart's Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959).
• Genericide
• “Trade Dress” What is it?
o “… the total image and overall appearance” of a product, package, style of doing business etc. “as defined by its overall composition and design, including size, shape, color texture, and graphics”
o It is a WORDLESS TRADEMARK....but certainly not worthless!
o Example of trade dress: shape of Coca-Cola® bottle
• Product Shapes as Trademarks
o Volkswagen Beetle
• Functionality Doctrine
o A product feature is considered functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. Qualitex Co. v. Jacobsen Products Co., Inc., 514 U.S. 159 (1995).
o The doctrine prevents the use of a product feature as a trademark where such use would put competitors at a significant non-reputation-related disadvantage.
Page 5 of 8
• Benefits of Federal Registration
o Public notice of your claim of ownership of the mark;
o A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
o The ability to bring an action concerning the mark in federal court;
o The use of the U.S. registration as a basis to obtain registration in foreign countries;
o The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
o The right to use the federal registration symbol ®; and
o Listing in the United States Patent and Trademark Office’s online databases.
• Federal Trademark Application Process
o Two Types of Applications
Use
Intent-to-use
o Information required
Name and Address of Applicant
Identification of Mark
Designation of International Class(es)
Identification of Goods or Services
USE
• Date of First Use
• Specimen
Intent-to-use
Declaration
o Filing Fee ($275-375 per International Class)
Page 6 of 8
• Federal Trademark Examination Process
o Examination
o Compliance with applicable rules and statutes
o Search for conflicting marks
o Excluded Categories
Scandalous or immoral
Generic name
Insignia of government entities
Identifies, without consent, a living individual
Merely descriptive or misdescriptive
Primarily a surname
o Publication
o Allowance (Intent-to-Use Only)
o Registration
• Maintenance of Registered Mark
o Continued use in commerce
o Declaration of use filed between 5th and 6th anniversary date
o Renewal every 10 years
o If properly maintained, term is INDEFINITE*
• Trademark Infringement
o Trademark infringement is the unauthorized use of an identical or similar trademark or service mark on competing or related goods and services. 15 U.S.C. §1114, 1125.
o The success of a lawsuit alleging infringement turns on whether the accused infringer's use causes a likelihood of confusion in the average consumer.
• Likelihood of Confusion
o In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), the Second Circuit provided eight factors to consider in determining whether a likelihood of confusion exists:
1. the strength of his mark.
Page 7 of 8
2. the degree of similarity between the two marks.
3. the proximity of the products/services.
4. the likelihood that the prior owner will bridge the gap.
5. actual confusion.
6. the defendant's good faith in adopting its own mark.
7. the quality of the defendant's product.
8. the sophistication of the buyers.
• Defenses to Trademark Infringement
o Fair Use
"Classic" Fair Use exists where another's trademark is being usedfor its ordinary, descriptive meaning to describe a product orservice.
"Nominative" Fair Use exists when a third party uses another'strademark not to describe its own products or services but to referto the actual trademark owner or identify a product or service of thetrademark owner.
o Equitable Defenses of Laches, Estoppel and Unclean Hands
• Remedies for Trademark Infringement
o Injunctive relief
o Accounting for profits
o Damages
o Attorney's fees in "exceptional cases" and costs. 15 U.S.C. § 1117.
Page 8 of 8