To the People of Mexico: We, the men and women, full and free, are conscious that the war that we have declared is our last resort, but also a just one. The dictators are applying an undeclared genocidal war against our people for many years. Therefore we ask for your participation, your decision to support this plan that struggles for work, land, housing, food, health care, education, independence, freedom, democracy, justice and peace. We declare that we will not stop fighting until the basic demands of our people have been met by forming a government of our country that is free and democratic. - EZLN, "Primera Declaración de la Selva Lacandona"

PREMIUM LEGAL RESOURCES LEGAL FORMS ASK A LAWYER

TRADEMARK OR MARK

A word, a name, a symbol, a device, or a combination of them that indicates the source of goods or services. Distinguishes the products or services of one business from those of others in the same field. The owner/assignee/licensee of a trademark/mark has the right to exclude others from using that trademark/mark by being the first to use it in the marketplace. Rights in a trademark/mark are obtained only through commercial use of the mark. The owner of a trademark/mark has the right to exclude others unless the trademark/mark has been abandoned.

Signs, writings or tickets put upon manufactured goods, to distinguish them from others.

It seems at one time to have been thought that no man acquired a right in a particular mark or stamp. But it was afterwards considered that for one man to use as his own another's name or mark, would be a fraud for which an action would lie. A court of equity will restrain a party from, using the marks of another.

The principle to be extracted, after an examination of these cases, appear to be the following: First, that the first producer or vendor of any article gains no right of property in that article so as to prevent others from manufacturing, producing or vending it.

Secondly, that although any other person may manufacture, produce, and sell any such article, yet he must not, in manner, either by using the same or similar marks, wrappers, labels, or devices, or colorable imitations thereof, or otherwise, hold out to the public that he is manufacturing, producing, or selling the identical article, prepared, manufactured, produced, or sold by the other; that is to say, he may not make use of the name or reputation of the other in order to sell his own preparation.

Thirdly, the right to use or restrain others from using any mark or name of a firm, is in the nature of goodwill, and therefore goes to the surviving or continuing partner in such firm, and the personal representative of a deceased partner has an interest in it.

Fourthly, that courts of equity in these cases only act as auxiliary to the legal right, and to prevent injury, and give a relief by account, when damages at law would be inadequate to the injury received; and they will not interfere by injunction in the first instance, unless a good legal title is shown, and even then they never preclude the parties from trying the right at law, if desired.

Fifthly, if the legal title be so doubtful as not to induce the court to grant the injunction, yet it will put the parties in a position to try the legal right at law, notwithstanding the suit.

Sixthly, that before the party is entitled to relief in equity, he must truly represent his title, and the mode in which he became possessed of the article for the vending of which he claims protection; it being a clear rule of courts of equity not to extend their protection to persons whose case is not founded on truth.

In various countries the law regulates the rights of merchants and manufacturers as to their trade marks with great minuteness.

INVALIDITY OF TRADE NAMES AND MARKS

Implicit in the concept of a trade mark "is a requirement that there be direct association between the mark . . . and the services specified in the application, i.e. that it be used in such a manner that it would be readily perceived as identifying such services." In re Moody's Investor Serv., Inc., 13 U.S.P.Q.2d 2043, 2047 (T.T.A.B. 1989); see 15 U.S.C. S 1127; In re Advertising & Marketing Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987). mark invalid if it did not create a direct association between xxx products bearing the mark and xxx.

Generic terms are invalid. See Roux Laboratories, Inc. v. Clairol, Inc., 427 F.2d 823, 829 (C.C.P.A. 1970). A ground for reconsideration is evidence that the terms are suggestive, or perhaps descriptive, but not generic. A descriptive term is not necessarily invalid, and a suggestive term is automatically valid. See Bristol-Myers Squibb Co. v. McNeilP.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir. 1992).

Genericness of Trade Name

"The terms `generic' and`trademark' are mutually exclusive." 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition S 12.01[1], at 12-3 (3rd ed., Release #3, 1994). A term is a generic name, not a trade name, if it "merely identifies the genus of which the particular [business] is a species." Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986).

A competitors' usage of a term is evidence of whether it is generic. 1 McCarthy S 12.02[7][b][i], at 12-23 to -24. evidence that plaintiff uses a term in a generic manner is strong evidence that the term is generic. id. [b](2), at 12-24.

One term may have different meanings to different groups of listeners. See Surgicenters of Am., 601 F.2d at 1019; Abercrombie & Fitch Co., 537 F.2d at 9. the way to determine whether a term is generic is to determine whether consumers of products & services think it is generic. Annheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 638 (8th Cir. 1984) ("What do the buyers understand by the word for whose use the parties are contending.").

Descriptiveness of Trademark

A trademark that is descriptive and lacks secondary meaning is invalid. Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir. 1970). A trademark is descriptive if it describes the product to which it refers or its purpose. Bristol-Meyers Squibb Co. v. McNeil-P.P.C. Inc., 973 F.2d 1033, 1040 (2d Cir. 1992).

"Although the distinction between descriptive and suggestive marks may be inarticulable, several criteria offer guidance. The primary criterion is the imaginativeness involved in the suggestion, that is, how immediate and direct is the thought process from the mark to the particular product." AMF Inc., 599 F.2d at 349 (citations and quotations omitted). "If the mental leap between the word and the product's attribute is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness." 1 McCarthy S 11.21[1], at 11-108 to -109 (citing Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519 (11th Cir. 1991)).

Elizabeth Taylor Cosmetics Co. v. Annick Goutal, 673 F. Supp. 1238 (S.D.N.Y. 1987) illustrates the difference between suggestiveness and descriptiveness. Both parties manufactured perfumes called "Passion." The court ruled that the term was suggestive, not descriptive. Id. at 1243-44. The most obvious way to describe a perfume is by its scent: "Musky," for instance. It takes a mental leap to imagine that the scent evokes a particular emotion, like "Passion."

Recovery, Inc. had applied to register the term "Recovery" as a service mark for its training, conferences, and publications. The company's products and services were all designed to teach lay leaders to provide aftercare self-help to people who had completed psychiatric counseling. Id. at 831. The Trademark Trial and Appeal Board, finding that "Recovery" was suggestive in context, reversed a finding that the term was descriptive and a registration denial. In re Recovery, Inc., 196 U.S.P.Q. 830 at 832(T.T.A.B. 1977). The Trademark Trial and Appeal Board admitted that this case illustrated how difficult it can be to distinguish between descriptiveness and suggestiveness. Id. However, Recovery, Inc.'s use of the term was one step removed--"Recovery" products and services were services to teach informal counselors to teach ex-patients to help themselves. This extra step constitutes the difference between descriptiveness and suggestiveness

Descriptive marks have to have secondary meaning to be valid. "The basic element of secondary meaning is a mental recognition in buyers' and potential buyers' minds that products connected with the [mark] are associated with the same source." Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 820 (9th Cir. 1980).

SEPARATE DISPOSITIONS OF NAMES AND MARKS

Trade names and marks might require separate analyses."[A] term that is in one category for a particular product may be in quite a different one for another." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976); accord Surgicenters of Am., Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011, 1019 (9th Cir. 1979). It is equally likely that a term may be in one category when used as a trade name but quite another for a trade mark. A trademark represents the mark holder on "the vendible commodity to which it is affixed," while a trade name symbolizes "a business and its goodwill." American Steel Foundries v. Robertson, 269 U.S. 372, 380 (1926).

The facts of Sunbeam Furniture Corp. v. Sunbeam Corp. offer an example of a case in which one term fell in different categories when used in a trade name and a trade mark. 191 F.2d 141 (9th Cir. 1951). Sunbeam manufactured appliances, including lamps. Sunbeam Furniture sold an electric lamp made by Expert Lamps, Inc. with a label saying,"This is a genuine SUNBEAM LAMP." Sunbeam sued Sunbeam Furniture for using the word "Sunbeam" in its name and its products. Id. at 143. "Sunbeam" merited protection as a mark but not a name. Sunbeam deserved protection of the word as part of a service mark for its lamps, because it successfully showed that customers confused the two brands of lamps. Id. at 144. However, Sunbeam Furniture should not be enjoined from using the word "Sunbeam" in its name because the word was common and the two companies were in separate lines of business. Id. at 144-45.

A trade name and mark holder may bring analogous actions for name and mark infringement. Accuride International, Inc. v. Accuride Corp., 871 F.2d 1531, 1534 (9th Cir. 1989)

POSSIBLE VALIDITY OF COMPOSITE NAMES AND MARKS

Words that cannot be registered individually, may sometimes become a trademark when taken together.

"[T]he validity and distinctiveness of a composite trademark is determined by viewing the trademark as a whole, as it appears in the marketplace." Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th Cir. 1993). A court may not review the validity of a composite-term trademark by "dissecting" the term and reviewing the validity of its component parts individually. See id.

Composite marks' "validity [are] not judged by an examination of [their] parts." California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir. 1985).

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