What is a trademark?
How do I register a trademark?
How can I protect my trademark?
What is Initial Interest Confusion?

What is a trademark?

A trademark is a word, name, symbol, device, or any combination thereof, which is used to distinguish the goods of one person or company from goods manufactured or sold by others, and to indicate the source of the goods, even if the source is unknown.

Examples of Trademark words: Ben and Jerry's Xerox Rice Krispies Netscape Chevrolet Phrases or taglines can also become trademarks: "Never leave home without it"--American Express "Just do it"--Nike

The range of things that are capable of serving as trademarks is great and includes not just words but also such things as drawings and abstract designs; slogans; distinctive features of the product's packaging; and distinctive, nonfunctional features of the product itself.  Even sounds and smells have been registered trademarks.  For example, the manufacturer of a soft drink might claim as trademarks not only the brand name of the drink, but also the art work on the label, the distinctive shape of the bottle in which the drink is sold, and the slogan used on the label in the advertising.
15 U.S.C. § 1127 (2001).

How do I register a trademark?

In the United States, the establishment of ownership rights in trademarks and service marks requires either the:

1) filing of intent to use applications to register with the United States Patent and Trademark Office ("PTO"); or

2) actual use of the mark in commerce.
To perfect rights initiated under "intent to use" filing, use of a mark must be made and demonstrated to the Patent and Trademark Office within six months of the filing.

After filing, the PTO will undertake an initial examination of the mark to determine if the mark complies with statutory requirements and if there are any apparent grounds for rejecting the mark.  Once approved, the mark is published for opposition, or where people who believe they may be injured by the registration may challenge the registration as inappropriate under the provisions of the Lanham Act.  If the PTO ultimately determines that the registration is appropriate, it will issue a certificate of registration
15 U.S.C. § 1051 (2001).

How can I protect my trademark?

(1) Trademark Infringement
Pursuant to Section 32 of the Lanham Act, a party will be liable for infringement of a federally registered mark if that party "uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."  To establish a trademark infringement claim, the plaintiff must demonstrate that the defendant is using a mark in commerce that is confusingly similar to the plaintiff's own mark.
15 U.S.C. § 1114(a)(1)  (2001).

(2) Trademark Dilution
In addition to a trademark infringement claim, a plaintiff may bring a cause of action for trademark dilution.  Under the Federal Trademark Dilution Act ("FTDA"), dilution refers to the decreased capacity of a famous mark to identify and distinguish goods or services, regardless of competition between the parties or likelihood of confusion.  Dilution usually occcurs from the "blurring" or "tarnishment" of the mark.  Blurring occurs where the consumers mistakenly associate the famous mark with goods and services of another's mark, thereby weakening the power of the famous mark owner to identify and distinguish its goods and services.  Examples of blurring include Kodak pianos or Buick aspirin tablets.  Tarnishment occurs where a mark is used on unwholesome or inferior goods or services that may create a negative association with the goods or services protected by the famous mark.
Tarnishment often takes place in a context of pornographic or sexually oriented sites or mockery of the marks.
15 U.S.C. § 1125(c) (2001).
See 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:67 (4th ed. 2001).

(3) Unfair Competition
It is not necessary to register a mark federally in order to enjoy the protection of the Lanham Act.  Section 43(a), the federal unfair competition statute, allows for enforcement of unregistered marks, as well as protects against related types of unfair competition. 
Section 43(a) provides:

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which;

a.   Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

b.   In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

Shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 
15 U.S.C. § 1125(a) (2001).

(4) Anticybersquatting Consumer Protection Act (“ACPA”)

The ACPA prohibits the registration of an internet domain name that is identical, confusingly similar, or dilutive of a trademark with bad faith intent. Congress approved this amendment in order to prevent cybersquatting--the practice of registering domain names containing trademarks, then profiting from selling these domain names to the trademark holders.

The ACPA provides:
A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person --

(i) has a bad faith intent to profit from that mark, including a personal name which is a protected mark under this section; and
(ii) registers, traffics in, or uses a domain name that --

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to such mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of such mark; or

(III) is a trademark, word, or name protected by 706 of title 18, United States Code, or section 220506 of title 36, United States Code.

ACPA's trademark provisions pertain to cybersquatters who register domain names with a bad faith intent to profit from the good will of another's trademarks. The statute sets forth nine factors that courts may consider when evaluating a person's bad faith intent to profit.
15 U.S.C. § 1125(d) (2001).

What is Initial Interest Confusion?

Initial interest confusion occurs when a customer seeking a particular trademark holder’s product is instead lured away to the product of a competitor because of the competitor’s use of a similar mark, even though the consumer is not actually confused about the source of the products or services at the time of actual purchase.  This doctrine was first recognized in Brookfield Communications, Inc. v. West Coast Enter. Corp., 174 F.3d 1036, 1043 (9th Cir. 1999).  In Brookfield, the Federal Court of Appeals for the Ninth Circuit concluded that the defendant’s use of terms confusingly similar to the plaintiff’s trademarked term “MovieBuff,” in metatags placed in the defendant’s website, would result in what it phrased “initial interest confusion.”  The court concluded that initial interest confusion would result “in the sense that, by using ‘moviebuff.com’ or ‘MovieBuff’ to divert people looking for the ‘MovieBuff’ to its website, the defendant improperly benefited from the goodwill that the plaintiff developed in its mark.”  However, even if the initial confusion is dispelled and the misdirected customers do not make a purchase, the act of purposefully generating pre-sale confusion by attracting or diverting potential customers by using another’s trademark is sufficient to constitute trademark infringement. Thus, the Ninth Circuit concluded that the sole act of generating initial interest confusion is a sufficient cause of action for trademark infringement in the use of a competitor’s trademark as a metatag.