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Chrysler’s “Imported from Detroit” slogan and design

Does a clothing company, named Pure Detroit, offering T-shirts emblazoned with IMPORTED FROM DETROIT and a flying fist-like design bringing to mind the Chrysler logo, violate trademark rights Chrysler claims in that combination?  It was featured in a Chrysler 2011 Super Bowl commercial. Check it out. 

Federal trademark registration is no assurance the registrant’s use will not be successfully challenged.

     Notwithstanding favorable examination of a federal trademark application by the United States Patent and Trademark Office, it is possible that someone may object to registration of the applied-for mark and or its use.  Generally, this would be based on a likelihood of confusion claim.
     In the Office, objection to registration can be in the form of an opposition or cancellation proceeding.  The Office’s jurisdiction concerning marks is limited to the issue of registration.  It has no authority regarding infringement claims, which concern the right to use a mark and is something that courts decide.  Accordingly, in court, objection to use would take the form of an infringement lawsuit. 
     An infringement claim may initially be made by means of a cease and desist letter that demands cessation of use of a mark alleged to be infringing.  In addition, in cases where the mark is the subject of a pending application or registration, the objecting person seeks abandonment of the application or cancellation of the registration.  Alternatively, rather than sending a cease and desist letter, an objecting person can challenge the later user by filing a state or federal district court lawsuit. 
     Regardless whether a letter is sent, or suit is filed without first sending a letter, the objecting person’s goal usually wants an application withdrawn, a registration cancelled, and use of the later used mark discontinued.  Sometimes the objecting person wants this to happen immediately.  When a lawsuit is filed the objecting person’s goal is usually an injunction prohibiting continuing use and oftentimes a court award of damages plus the objecting person’s attorney fees.  Damages claimed can be the amount of money lost by the objecting person and or the infringer’s profits.
     If a lawsuit is filed the objecting person must show it has superior rights in its mark (i.e., an earlier priority date) and a likelihood of confusion between the marks in question.  Should this occur, each side in the lawsuit can expect to incur significant legal costs. 
     In many cases, if a lawsuit is filed it can take up to a year or more before a trial is held.  If the objecting person is successful, the later user will be required to discontinue using the challenged mark, at a minimum.  Should the later user prevail that person will have a right to continue using the mark, but it is unlikely the user will be able to recoup legal costs and expenses.  Both parties have a right to appeal, which means each side would incur additional costs and fees, if that happens.
Sometimes, infringement claims can be resolved whereby the later user stops using the challenged mark, either immediately after the claim is made or at expiration of an agreed period of time. 
     From the later user’s standpoint, whether use ceases voluntarily or as because of a court decision, a result can be loss of the time, money, and effort that person expended in using the mark to identify the products and or services it identified.  In addition, that person would lose the goodwill associated with the mark developed during the time it was used.  Ordinarily, the later user can continue offering the product and or service the mark identified, but not use the mark in question to identify it. 

More to come on how rights are acquired and what can happen if an infringement claim is asserted.

Ways to avoid a United States Patent and Trademark Office action concerning a product and service description before filing a trademark application.

One of the most common actions issued by the United States Patent and Trademark Office (“Office”) concerning a trademark application has to do with the product or service description given by the applicant (i.e., the identification of goods or services).  Typically, the action says the identification is unacceptable as indefinite and requires clarification.  In many cases this happens because an applicant broadly describes the products or services and or uses such words as “including,” “such as,” “comprising,” “and the like,” “and similar goods,” “products,” “concepts,” “like services” and other indefinite terms and phrases, in contrast to using  “namely,” “consisting of,” “particularly,” and “in particular” that are usually acceptable.  For example, an application that indicates the products are “computer programs” or “computer programs comprising software for use by doctors” is likely to result in an action because the description is too broad.  In response, an examiner would typically request the applicant to specify the particular nature of the program and give guidance to the applicant by indicating that a description such as “computer programs for use to measure the hearing abilities of patients” would be acceptable, if accurate insofar as the applicant’s products are concerned.  Keeping these thoughts in mind, to avoid this type of action, an approach to take is to carefully describe the products or services using the common commercial name for them.  Looking at descriptions in the Office’s Acceptable Identification of Goods and Services Manual can be a good way to find acceptable descriptions that correspond to an applicant’s goods and or services.  It is available for viewing at the Office’s website.  Look here.  

Future blogs will add to this discussion.