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Can I protect a mark against infringement/dilution, or register it, if
the product/service is offered free, not sold?
Michael Hamm
See .sig in other usenet posts for my usual .sig info.
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On Wed, 18 May 2005 13:44:57 -0400 msh210 <msh210@math.wustl.edu> whittled these
words:
Can I protect a mark against infringement/dilution, or register it, if
the product/service is offered free, not sold?
Sometimes. The Trademark book by Nolo Press is quite readable and covers
servicemark issues (sorry I don't have the exact title). If you are
considering registration something as detailed as a book is usually a
worthwhile place to start.
--
Diane Blackman
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On Wed, 18 May 2005 13:44:57 -0400, "msh210" <msh210@math.wustl.edu>
wrote:
Can I protect a mark against infringement/dilution, or register it, if
the product/service is offered free, not sold?
An attorney would need to know a lot more about the product/service
and the circumstances to advise you, but more generally, federal
trademark law does not require that one sell goods either to have a
protectable trademark or to infringe one. Regarding protection, it
speaks of "goods, services, or commercial activities." Regarding
infringing activity, it speaks of "use in commerce." (See 15 USC
1125(a)(1) and following subparagraphs.)
There is ample precedent for finding that one can infringe a trademark
without selling anything. I have not researched this, but I can think
of no reason why the same should not apply to creating a trademark.
Indeed, a quick check of the USPTO registry shows that there is a live
registration for the trademark "S&H Green Stamps" (trading stamps),
which by definition are offered free, not sold!
My email address is LLM041103 at earthlink dot net.
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In article <vm1t81lc8dqmokmu0ukojvmdq0qm2c64kh@4ax.com>,
Jonathan Sachs <xxxxxxx@earthlink.not> wrote:
On Wed, 18 May 2005 13:44:57 -0400, "msh210" <msh210@math.wustl.edu>
wrote:
An attorney would need to know a lot more about the product/service
and the circumstances to advise you, but more generally, federal
trademark law does not require that one sell goods either to have a
protectable trademark or to infringe one. Regarding protection, it
speaks of "goods, services, or commercial activities." Regarding
infringing activity, it speaks of "use in commerce." (See 15 USC
1125(a)(1) and following subparagraphs.)
There is ample precedent for finding that one can infringe a trademark
without selling anything. I have not researched this, but I can think
of no reason why the same should not apply to creating a trademark.
Indeed, a quick check of the USPTO registry shows that there is a live
registration for the trademark "S&H Green Stamps" (trading stamps),
which by definition are offered free, not sold!
As for S&H Green Stamps, that is *NOT* true. The stores that 'give them
away' ("With Qualifying Purchase") have to _buy_ them from S&H. This is
a commercial transaction, obviously. <grin>
At the retail store level, it can be argued that all items sold are 'bundled'
products, consiting of the named item _and_ the corresponding quantity of
"Green Stamps", for the indicated price. If they were *truely* being
"offered free, not sold", you could go in and ask for a quantity (even
an _unlimited_ quantity) and get them _without_ making any purchase.
"*NOT*!" as a well-known character would say.
Trademark registration _application_ documents require that you show that
the mark _is_ "in use in commerce" for a period of at least 6 months (if
I recall correctly), *before* you can file.
This is difficult to show, for something that really is being 'offered free,
not sold', with no strings attached..
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On Sat, 21 May 2005 19:20:16 -0400, bonomi@host122.r-bonomi.com
(Robert Bonomi) wrote:
As for S&H Green Stamps, that is *NOT* true. The stores that 'give them
away' ("With Qualifying Purchase") have to _buy_ them from S&H....
That is correct. I didn't think of it.
Trademark registration _application_ documents require that you show that
the mark _is_ "in use in commerce" for a period of at least 6 months (if
I recall correctly), *before* you can file.
That is not correct. Since 1989, a trademark application may go right
up to registration before the mark must be used in commerce.
This is difficult to show, for something that really is being 'offered free,
not sold', with no strings attached..
I can offer several better examples of trademarks for goods and
services that are offered free. One example is PETA (the acronym for
People for the Ethical Treatment of Animals), which is registered in
several classes; some, such as "Promoting the public awareness of the
need to prevent animal cruelty and mistreatment of animals; promoting
public awareness of vegetarianism," clearly denotes services that are
"offered free."
Many other nonprofit organizations register their names or initials as
trademarks. Some of them sell things for fundraising or promotional
purposes, but their core functions are noncommercial by definition,
and are protected by the trademark.
Another example is Java, the programming language created by Sun
Microsystems. Sun sells products that support or incorporate Java, but
giving away Java itself for free is a basic part of Sun's marketing
strategy. Its purpose in obtaining the trademark was simply to prevent
others from applying the name "Java" to products that do not support
or incorporate true Sun Java. That is the essential function of a
trademark, whether the goods and services it identifies happen to be
sold or not.
If you look at case law, you'll find that trademark protection clearly
is not restricted to buying and selling. For example, see Planetary
Motion v. Techplosion, 261 F.3d 1188 (11th Cir. 2001), which affirmed
a verdict of trademark infringement on a piece of software that was
given away, not sold. The court said (p.1194):
The term "use in commerce" as used in the Lanham Act
"denotes Congress's authority under the Commerce Clause
rather than an intent to limit the Lanham Act's application to
profit making activity." [citations omitted] Because Congress's
authority under the Commerce Clause extends to activity that
"substantially affects" interstate commerce, [citation omitted]
the Lanham Act's definition of "commerce" is concomitantly
broad in scope: "all commerce which may lawfully be regulated
by Congress." ... The distribution of the Software for end-users
over the Internet satisfies the "use in commerce" jurisdictional
predicate.
My email address is LLM041103 at earthlink dot net.
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In article <b9j19159uq6uhhao75lncblqfv0lq4h5jl@4ax.com>,
Jonathan Sachs <xxxxxxx@earthlink.not> wrote:
On Sat, 21 May 2005 19:20:16 -0400, bonomi@host122.r-bonomi.com
(Robert Bonomi) wrote:
That is correct. I didn't think of it.
That is not correct. Since 1989, a trademark application may go right
up to registration before the mark must be used in commerce.
I can offer several better examples of trademarks for goods and
services that are offered free. One example is PETA (the acronym for
People for the Ethical Treatment of Animals), which is registered in
several classes; some, such as "Promoting the public awareness of the
need to prevent animal cruelty and mistreatment of animals; promoting
public awareness of vegetarianism," clearly denotes services that are
"offered free."
PETA is a 'service mark', not a 'trademark". Different rules apply.
from 15 USC 1127:
For purposes of this chapter, a mark shall be deemed to be in
use in commerce--
(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.
Note: for services, it is sufficient to be engaged in commerce "in connection
with" the services.
This is a really, *REALLY* big difference. <grin>
If you have something *you* do, _not_ using any 'outside' resources, and
for which you don't charge money, that 'service' is probably *NOT* protectable
via a service mark.
If, on the other hand, you *pay* people to perform that service _for_others_,
even though there is 'no charge' to the recipient, you _have_ met the
commerce requirement 'in connection with' rendering the services.
Many other nonprofit organizations register their names or initials as
trademarks. Some of them sell things for fundraising or promotional
purposes, but their core functions are noncommercial by definition,
and are protected by the trademark.
However, they do engage in business operations under that name. satisfying
'used in commerce'.
Another example is Java, the programming language created by Sun
Microsystems. Sun sells products that support or incorporate Java, but
giving away Java itself for free is a basic part of Sun's marketing
strategy. Its purpose in obtaining the trademark was simply to prevent
others from applying the name "Java" to products that do not support
or incorporate true Sun Java. That is the essential function of a
trademark, whether the goods and services it identifies happen to be
sold or not.
The "logical reasons" for having a trademark, and the legal requirements
for "registering" a trademark are not necessarily the same thing. <grin>
If you look at case law, you'll find that trademark protection clearly
is not restricted to buying and selling.
Nit: I didn't say it was 'restricted' to that scope. I said there are
"difficulties" involved if the only use 'given away, for free."
For example, see Planetary
Motion v. Techplosion, 261 F.3d 1188 (11th Cir. 2001), which affirmed
a verdict of trademark infringement on a piece of software that was
given away, not sold.
15 USC 1127 says:
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,
...
*IF* goods in question are not 'sold', then you have to show that they _are_
"transported in commerce".
This is by no means impossible, but there are pitfalls. For example, 'hired
carriage' does not necessarily mean "transported in commerce."
Any determination *will* be 'fact specific' to the particular situation --
an absolute answer of "yes, you can", or "no, you cannot" protect by trademark
the name for any good that is 'only given away', is guaranteed to be wrong.
<grin>
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On Mon, 23 May 2005 15:33:31 -0400, bonomi@host122.r-bonomi.com (Robert
Bonomi) wrote:
I can offer several better examples of trademarks for goods and
services that are offered free. One example is PETA (the acronym for
People for the Ethical Treatment of Animals), which is registered in
several classes; some, such as "Promoting the public awareness of the
need to prevent animal cruelty and mistreatment of animals; promoting
public awareness of vegetarianism," clearly denotes services that are
"offered free."
PETA is a 'service mark', not a 'trademark".
The US Government disagrees. According to www.uspto.gov in a search of the
Tess database, record serial number 76471457 states PETA is both a
Trademark and a Service Mark.
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On Mon, 23 May 2005 15:33:31 -0400, (Robert Bonomi) wrote:
PETA is a 'service mark', not a 'trademark". Different rules apply....
from 15 USC 1127...
You are reading something into 1127 that is not there. It defines
"use in commerce" differently for service marks because the definition
for trademarks requires that a mark be "placed in any manner on the
goods or their containers," which would be meaningless for a service
mark.
Apart from the inherent differences between goods and services, the
law applies identically to both. See 1053: "Subject to the provisions
relating to the registration of trademarks, so far as they are
applicable, service marks shall be registrable, in the same manner and
with the same effect as are trademarks, and when registered they shall
be entitled to the protection provided herein in the case of
trademarks."
Case law follows this principle. See, for example, Fotomat Corp. v
Photo Drive-Thru, Inc. 425 F Supp 693, 702 (D.C.N.J. 1977):
"Protection for service marks is provided for by section 3 of the
Lanham Act, 15 U.S.C. 1053 (1970), on generally the same terms as in
the case of trademarks. A service mark is used to identify the
services of the user and distinguish them from the services of others
in the same way that a trademark is used to identify and distinguish
the user's goods.... Service mark infringement is governed by the
general principles applicable to trademark infringement."
So far as I understand the rest of your argument, it appears to
conflate two different meanings of "use in commerce." 1127 refers to
use of the *mark* in commerce. The OP's question, whether goods or
services can be protected if they are given away rather than sold,
concerned the use of the *goods* in commerce. Thus the part of 1127
you are citing has nothing to do with the question.
My email address is LLM041103 at earthlink dot net.
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Many other nonprofit organizations register their names or initials as
trademarks.
Witness the sudden change from World Wrestling Federation to World Wrestling
Entertainment, a result of the WWF *losing* a trademark dispute with the
World Wildlife Federation.
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