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ESSENTIALSof Trademarks andUnfair Competition
Dana Shilling
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ESSENTIALSof Trademarks andUnfair Competition
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To keep up with rapid business changes today, professionals today need
to get up to speed quickly with reliable and clear information.Wileys
Essentials series introduces the first concise guidelines to key topics in
finance, accounting, performance improvement, operations, technology,
and information management. These books provide in-depth coverage,
tips, techniques, and illustrative real-world examples, exhibits, and best
practices. The Wiley Essentials Seriesbecause the business world is
always changing. . .and so should you.
Other books in the series include:
Essentials of Accounts Payable
Essentials of Capacity Management
Essentials of Cash Flow
Essentials of Corporate Performance Management
Essentials of Credit, Collection, and Accounts Receivable
Essentials of CRM:A Guide to Customer RelationshipManagement
Essentials of Intellectual Property
Essentials of Trademarks and Unfair Competition
Essentials of XBRL
For more information and to receive periodic e-mail notices regarding
forthcoming publications, please visit us at www.wiley.com
Essentials Series
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ESSENTIALSof Trademarks andUnfair Competition
Dana Shilling
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Copyright 2002 by John Wiley & Sons, Inc., New York. All rights reserved.
No part of this publication may be reproduced, stored in a retrieval system ortransmitted in any form or by any means, electronic, mechanical, photocopying,recording, scanning or otherwise, except as permitted under Sections 107 or 108 of the 1976 United States Copyright Act, without either the prior writtenpermission of the Publisher, or authorization through payment of the appropriateper-copy fee to the Copyright Clearance Center, 222 Rosewood Drive, Danvers,MA 01923, (978) 750-8400, fax (978) 750-4744. Requests to the Publisher forpermission should be addressed to the Permissions Department, John Wiley &Sons, Inc., 605 Third Avenue, New York, NY 10158-0012, (212) 850-6011, fax(212) 850-6008, E-Mail: [email protected].
This publication is designed to provide accurate and authoritative information in regard to the subject matter covered. It is sold with the understanding that thepublisher is not engaged in rendering legal, accounting, or other professionalservices. If legal advice or other expert assistance is required, the services of acompetent professional person should be sought.
This title is also available in print as ISBN 0-471-20941-4. Some content thatappears in the print version of this book may not be available in this electronicedition.
For more information about Wiley products, visit our web site atwww.Wiley.com
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http://www.Wiley.com
DANA SHILLING, ESQ., is the author of more than 20 books,
including Lawyers Desk Book, 11th ed. (Prentice Hall, 1988), The
60-Minute Financial Planner (Prentice Hall, 1997), The Complete
Guide to Human Resources and the Law (Prentice Hall, 1998), and
Financial Planning for the Older Client, 5th ed. (National Underwriter,
2001). She has written many articles dealing with legal and financial
issues that have appeared in such magazines as Vogue, CFO, Working
Woman, Cosmopolitan, Aging Today, Estate Planning Studies, Brown
University Long-Term Care Letter, Elder Law Advisory, Journal of American
Society, CLU/ChFC, Senior Market Advisor, and others.
In addition, she has been a featured speaker at many conferences
and seminars, for the following organizations: the New York County
Lawyers Association; MANULIFE Insurance, United Methodist Church;
NEFE/CFP; NAHU (two programs), Health Underwriters, Conference
of Financial Trust Officers; American Society of CLU/ChFC, Estate
Planning Council of NJ, Prudential (two programs), Estate Planning
Councils of Pennsylvania and Ohio, Brokers Choice, and the Society
of Financial Services Professionals.
Shilling has also produced The Elements of Elder Law (3-1/2 hour
instructional tape on basic elder law issues (1993); Carry Me Back
(screenplay, 1993; unproduced); and Financial Planning for the Older
Client (Bisk/Totaltape video 1999). She is a National Merit Scholar;
and graduated magna cum laude, Phi Beta Kappa from Goucher College
(AB). She received her law degree from Harvard Law School. She was
admitted to the New York Bar in 1976.
v
About the Author
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1 Trademark BasicsOverview 1
2 Trademark Types 21
3 Establishing, Registering, and Defending a Trademark 49
4 Handling Trademark Disputes 99
5 Trade Dress 123
6 Threats to the Trademark 137
7 Other Issues in Trademark Law 153
8 Unfair Competition 191
Appendices 207
Forms 223
Bibliography 269
Index 271
vii
Contents
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1
After read ing th is chapter you wi l l be ab le 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 centuriesprobably as long as there has
been more than one person carrying out a particular trade, or selling mer-
chandise 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 advertis-
ing is to create demand, not just for a particular type of product, but for
the advertisers or marketers own goods. Trademarks (words, pictures,
combinations of words and images, even sounds or fragrances) are impor-
tant tools in identifying the business that provides the goods or services.
A good trademark makes the product stand out.
CHAPTER 1
Trademark BasicsOverview
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Because trademarks are such a key part of doing business, federal
and state law protect a businesss 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 dressthe 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 BookThis book covers a spectrum of related topics. Following the introduction
of trademarks and trademark law in Chapters 1 and 2, the main con-
centration 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 trade-
marks 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 relat-
ed, 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 brandmight,
for instance, have a shopping list that contains JIF peanut butter,
ARRID EXTRA-DRY deodorant, DEL MONTE canned vegetables,
CAMPBELLs canned soups, CREST toothpaste, and so on. This con-
sumer might have a strong preference for these brands, based on a belief
in their superior quality and attractiveness, and might take a rain check
2
E S S E N T I A L S o f T r a d e m a r k s a n d U n f a i r C o m p e t i t i o n
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rather than purchase a competing brand, yet have no knowledge or
interest in who manufactured the preferred brands. In fact, in todays
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 avail-
able, 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.