Trademark Ownership 

• An original word, logo, slogan, phrase, color, design that identifies the owner’s product/services in the marketplace.

• Common Law Rights – Based solely on the use of the Trademark in a geographic area by the first user and the ™ symbol can be used next to it.

• Trademark Registration – Prima facie evidence of ownership of the Trademark.

• The ® symbol can be used next to it.

• Permanent ownership predicated on continuous use and renewable every 10 years.

Trademark Filing Basis 

• Use in commerce basis (Section 1(a)) – you are currently using your mark in commerce with your goods and/or services.

• Intent-to-use basis (Section 1(b)) – a bona fide intention to use your mark in commerce with your goods and/or services in the near future.

• Foreign registration basis (Section 44(e)) – you own a foreign registration of the same mark for the same goods and/or services from your country of origin.

• Foreign application basis (Section 44(d)) – you own an earlier-filed foreign application that was filed within six months of your U.S. application for the same mark and the same goods and/or services. This basis is also called a foreign priority basis” because you are requesting a “priority” filing date for your U.S. application that is the same date as that of the foreign application filing date.

Extension of Foreign Registration to the United States 

• Section 44(d) – an earlier-filed foreign application that was filed within six months of your U.S. application for the same mark and the same goods and/or services.

• Section 44(e) – a foreign registration of the same mark for the same goods and/or services from your country of origin.

• Section 66(a): where the owner already owns an International Registration through the World Intellectual Property Organization, they are allowed to have that registration extended so that they have trademark protection in the US.

Trademark Infringement – Meaning

• Unauthorized Use of a Trademark in Commerce
• Passing Off
• Economic Benefits
• Dilution
• Confusion
• Violation of Exclusive Rights

Trademark Infringement – Element

• Ownership of a Trademark
• Proximity of the goods
• Use In Commerce
• No Authorization
• Likelihood of Confusion
• Degree of Similarities
• Market Channels
• Actual Confusion
• Intentionality
• Public’s Reaction

Trademark Infringement – Defenses

• Priority
• Parody
• Fair Use
• Abandonment
• Collateral Use
• Laches
• Estoppel

Trademark Infringement – Remedies

• Injunctive Relief
• Monetary Compensation
• Accounting of Profits
• Attorney Fees

JACK DANIEL’S PROPERTIES, INC. V. VIP PRODUCTS LLC.

VIP Products LLC, produced a dog toy shaped similarly to the Jack Daniel’s whiskey bottle, but had the inscription “Bad Spaniels” instead of “Jack Daniel’s”, and “The Old No. 2 on your Tennessee Carpet” instead of “Old No. 7”, “Tennessee Sour Mash Whiskey” and ‘100% SMELLY” instead of “40% ALC. BY VOL”.

The Supreme court held in favor of Jack Daniels, stating that the Roger’s case does not apply and the Lanham’s Act of exclusion from liability for non-commercial use does not shield parody, criticism or commentary from a claim of Trademark dilution.

The Lanham Act 

The primary statute governing Trademark Law in the United States.

It provides for a national system of trademark registration and protect owners of federally registered marks against the use of similar marks that is likely to result in consumer confusion or trademark dilution.

ABITRON AUSTRIA GMBH V. HETRONIC INTERNATIONAL, INC.

In June, 2023, the U.S Supreme Court held that sections 1114(1)(a) and 11125(a)(1) of the Lanham Act that prohibit trademark infringement are not extraterritorial and extend only to claims where the alleged infringing “use in commerce” of a trademark is domestic.

The case concerns a trademark dispute between Hetronic (a U. S. company) and six foreign parties (collectively Abitron). Hetronic manufactures remote controls for construction equipment. Abitron, once a licensed distributor for Hetronic, claimed ownership of the rights to much of Hetronic’s intellectual property and began employing Hetronic’s marks on products it sold. Hetronic sued Abitron in the Western District of Oklahoma for trademark violations under two related provisions of the Lanham Act, both of which prohibit the unauthorized use in commerce of protected marks when, inter alia, that use is likely to cause confusion. Hetronic sought damages for Abitron’s infringing acts worldwide. Abitron argued that Hetronic sought an impermissible extraterritorial application of the Lanham Act. 

The District Court rejected Abitron’s argument, and a jury later awarded Hetronic approximately $96 million in damages related to Abitron’s global employment of Hetronic’s marks. The District Court also entered a permanent injunction preventing Abitron from using Hetronic’s marks anywhere in the world. On appeal, the Tenth Circuit narrowed the injunction, but otherwise affirmed the judgment, concluding that the Lanham Act extended to “all of [Abitron’s] foreign infringing product.

The Supreme Court applying the presumption against extraterritoriality, held that section1114(1)(a) and section 1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the infringing use in commerce is domestic.

Convention on the recognition and enforcements of foreign judgments in civil and commercial matters (The Hague Judgment Convention)

The United States signed the Hague Judgment Convention in March, 2022. This convention allows the recognition and enforcement of civil and commercial judgments in contracting states. This convention specifically excludes Intellectual Property Law because of the territorial nature of Intellectual Property.

Particularly, in the case of the United States, to mostly succeed in a claim of infringement, there must be “use in commerce” which has recently been decided by the Supreme Court in Abitron v. Hetronic to be limited to use in the United States.

Customs Enforcement – US Customs and Border Protections (CBP)

At the border, CBP is authorized to exclude, detain and/or seize imported merchandise that infringes federally registered and recorded trademarks and/or is covered by an exclusion order issued by the U.S. International Trade Commission.

To assist CBP rights owners are encouraged to take three steps:

• e-Recordation
  • Record with CBP their Trademarks that are registered with the U.S. Patent and Trademark Office.

• e-Allegations
  • Rights owners are encouraged to submit allegations of infringing shipments or conduct to CBP.

• Customs Enforcement – US Customs and Border Protections (CBP)
  • Information sharing 
  • Product Identification Guides 
  • Product Training Sessions

Federal Agencies responsible for enforcing Intellectual Property Rights in the United States

• The Office of Intellectual Property Rights (OIPR) of the U.S. Department of Commerce International Trade Administration works with U.S. firms to help them protect their intellectual property abroad.

• The U.S. International Trade Commission (USITC) investigates claims regarding intellectual property rights violations by imported goods, including allegations of patent and trademark infringement.

• The U.S Department of Justice (DOJ) prosecutes intellectual property rights crimes on behalf of the United States.

• The Federal Bureau of Investigation (FBI) investigates criminal counterfeiting, piracy, and other federal crimes. You can report suspicions concerning the manufacture or sale of counterfeit or pirated goods to the FBI by contacting your local FBI Office and asking to speak with the Duty Complaint Agent.

• The U.S Customs and Border Protection (CBP) keeps foreign pirated and counterfeit goods from being imported into the United States. Once a company has registered its trademark or copyright, it should record its registration with CBP.

• The National Intellectual Property Rights Coordination Center (IPR Center) works to deter, interdict, and investigate threats arising from the movement of illegal goods into and out of the United States.

REFERENCES

https://www.uspto.gov/trademarks/apply/basis

https:/www.supremecourt.gov/opinions/22pdf/21-1043_7648.pdf

http://www.uspto.gov/ip-policy/industrial-design-policy/hague-agreement

https://link.springer.com/article/10.1007/s40319-019-00862-5

https://tIblog.org/explaining-the-hague-judgments-convention-to-u-s-lawyers

https://ccbjournal.com/articles/brief-analysis-cross-border-ip-litigation-issues

https://www.stopfakes.gov/Enforcement-of-IPR-in-the-US

Moji Onabanjo, Esq.

GV Legal, PLLC.

New York