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Trademark: Maintaining & Enforcing Rights

    Trademarks, unlike copyright, must be used and maintained in order to retain the "bundle of rights" associated with them. This section discusses trademark  "use" and the enforcement of trademark rights.

    The Requirement of Proper Use

    Section 1127 defines "use in commerce" as follows:

    § 1127. Construction and definitions; intent of chapter

    The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

    (1) on goods when—
    (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
    (B) the goods are sold or transported in commerce, and
    (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

    Comments: Not only is "use in commerce" required for registration, but the mark must remain in continuous use or there is risk that it may be deemed "abandoned." As indicated below, "non use for 3 consecutive years shall be prima facie evidence of abandonment." Section 1127 defines "abandonment" as:

    § 1127. Construction and definitions; intent of chapter

    A mark shall be deemed to be “abandoned” if either of the following occurs:

    (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
    (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

    Comments: It should also be clear from the definitions above that there is a particular kind of use that the statute requires. In the case of products, the mark must be "affixed" on displays, or containers or on tags and labels. For services, the mark must be used in advertising or sale of said services. In other words, on artifacts delivered (e.g. work product) or in media used to "get the word out." In addition, sellers must take precautionary measures that the mark (i.e. in the case of a word mark) be used as an adjective that identifies a "source" as opposed to a noun (or verb) that is used to describe a product/service category in general (or an "action" that is disassociated from the seller). In short, there is a requirement of "specific acts" on the part of the seller in order to maintain the bundle of rights. This does not imply that every minor inappropriate use need be litigated, but rather, that there is evidence that the seller intends to enforce its rights to have the mark continue to represent the specific brand in question.

    Enforcement of Trademark Rights

    Section 1125 provides the various "theories" that can be used to bring an action under the statute. For example, section 1125(a) provides for the following general theory under which a civil action may be brought:

    § 1125. False designations of origin, false descriptions, and dilution forbidden

    (a) Civil action
    (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
    (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
    (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

    Comments: Section 1125(b) provides a trademark holder a theory under which an action can be brought to prevent the importation of goods that are in contravention of the statute. Section 1125(c) provides "remedies for the dilution of famous marks" and 1125(d) provides liability in the case of specified "cyberpiracy" (also see section 1129 "Cyberpiracy protections for individuals"). The Infringement section discusses the concept of "confusion" and the factors that pertain to its analysis.

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