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TRADEMARK

A trademark is a sign or any combination of signs, capable of distinguishing a product or service

from other products or services on the market.

It is a distinctive sign or indicator used by an individual, business organization, or other legalentity to identify that the products or services to consumers with which the trademark appears

originate from a unique source, and to distinguish its products or services from those of other

entities.

  It identifies the goods / or services and its origin.

  It guarantees its unchanged quality

  It advertises the goods/services

  It creates an image for the goods/ services.

A trademark may be designated by the following symbols:

  TM (for an unregistered trade mark, that is, a mark used to promote or brand goods).

  SM (for an unregistered service mark, that is, a mark used to promote or brand services).

  ® (for a registered trademark)

Examples

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Case Summaries of trademark infringement

1) Starbucks in trademark battle with Indian company

The Seattle-based company filed a complaint with India's Controller-General of Patents,Designs and Trademarks, claiming the “Starstruck  “ name is "deceptively similar" to its own

brand. Husain is the founder and chief executive officer of the Shahnaz Husain Group of 

Companies, a New Delhi-based conglomerate that specializes in Ayurvedic medicine, natural

beauty and anti-aging treatments. She plans to open 25 Starstruck stores across India.Accordingly, the shops will feature a glamour theme, complete with posters of Hollywood

movie stars.

According to Starbucks spokeswoman T. May Kulthol, the company feels the names are too

similar. She said Starbucks has long owned the rights to its name and logo in India, and thatHusain is infringing on its trademark there. Kulthol said Starbucks prefers to solve the dispute

amicably, but is prepared to take Husain to court if she refuses to acquiesce to the company'srequest that she choose another name.

"On August 31, 2006, Starbucks filed oppositions with the Government of India Trade Marks

Registry, against Shahnaz Husain's applications to register the trademark Starstruck for coffee,

coffee-related products and printed materials related to coffee shops," Kulthol said in an e-mail

to the IndUS Business Journal. "Starbucks applications and registrations for similar productsdate back to 1995 and 2001.

"Starbucks Corp. prefers to resolve trademark infringement disputes informally and amicablywhenever possible. However, we will take legal steps to protect the value of our trademark, and

protect the public from confusion and deception, when we are unable to resolve a matter

through alternate means," she said.

Starbucks is currently awaiting permission from the Indian government to open 25 coffee shops

on the subcontinent in a joint venture with New Horizons Retail Pvt. Ltd., a newly-formedcompany that is 51-percent owned by V.P. Sharma, the CEO of Indonesian specialty retailer PT

Mitra Adiperkasa Tbk. The remainder of New Horizons is owned by Kishore Biyani, managing

director of Pantaloon Retail India Ltd, India's largest publicly traded retailer.

2) Columbia Insurance v. Seescandy.com, 185 F.R.D. 573 (N.D. Ca. 3/8/99)

The holder of the See's Candy and See's Candies trademark sued the registrants of seescandies.com and seescandy.com. The registrants of these domain names had not provided

sufficient contact information for the trademark holder to find them in order to serve thecomplaint. The court denied the trademark holder's request for a temporary restraining order, but

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granted the trademark holder the right to conduct discovery to determine the identity of the

defendant in order to make service of process possible. The court acknowledged a generalinterest in allowing innocent parties to participate online without fear that someone will attempt

to discover their identity. The court concluded, however, that where a plaintiff can show that its

claim would survive a motion to dismiss, then the plaintiff can establish a right to determine the

identify of the party causing the harm.

3) HQM Ltd. and Hatfield, Inc. v. William Hatfield, 1999 U.S. Dist. LEXIS 18598 (D. Md.

Dec. 2, 1999)

Defendant William Hatfield registered the domain name hatfield.com for email purposes.Plaintiff - HQM - owns a trademark in Hatfield in connection with meat products. Defendant

filed a Rule 12(b)(6) motion to dismiss. Although many domain name cases are determined in

summary judgment, the use of a 12(b)(6) motion is not common. Nonetheless, the court granted

defendant's motion. Citing several prior cases including Lockheed v. NSI and Panavision, thecourt emphasized that mere registration of a domain name without more does nt constitute use of 

the name as a trademark. Additionally, the court held that the .com designation alone does notestablish commercial use. Thus the court held that simply registering and activating the domainname under the .com designation does not constitute commercial use. In this case the defendant

had not responded to letters by the trademark holder, but the court indicates that such failure to

respond does not constitute commercial use and thus does not impact the decision. The plaintiff also alleged that its inability to use its trademark as a domain name constituted blurring because

potential customers might fail to find their web site. The court held that such facts are not

sufficient to satisfy dilution.

TRADE DRESS

Trade dress is a legal term of art that generally refers to characteristics of the visual appearance

of a product or its packaging (or even the design of a building) that signify the source of the

product to consumers. Trade dress is a form of intellectual property. The basic feature of trade

dress include that it must identify the product and its makers to the consumers.Also a Trade dress

must be nonfunctional in order to be legally protected; otherwise it is the subject matter of patent

law.

It refers to the total image of the product. It encompasses the overall image created by the

product or package.It includes feature such as size, shape,package,colour or colour combinations,

textures, graphics or even particular sale techniques. It refers to the overall get up of the product.

Case Summaries of trade dress infringement 

1)Walmart Stores Vs Samara Brothers (2000)

The dress of Samara Brothers Inc.consisted of a line of spring/ summer one piece seersucker

outfits decorated with flower, fruits .The court Held that Walmart was guilty of infringement and

that an unregisterd product design is protected as trade dress if it is inherently distinctive or has

acquired a secondary meaning.

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2) Hooters Vs Ker’s Winghouse (2003) 

In 2003 Hooters sued Ker’s Winghouse, a Florida restaurant chain, alleging that the”Winghouse

Girls”outfits were confusingly similar to those of the”Hooters Girls.”A federal trial court judge

in Orlando ruled against Hooters, stating that the Winghouse Girls outfits weren’t

a”knockoff”because the Winghouse Girls wear black tank tops and black running shorts while

the Hooters Girls sport white shirt and orange shorts.Also, reasoned the trial court judge,

the”Hooters Girl”is”the very essence of Hooters’ business,”whose”predominant function is to

provide vicarious sexual recreation, to titillate, entice, and arouse male customers’

fantasies.”Therefore, it had a”primarily functional”purpose and was not entitled to trade dress

protection.

3)Logo criticism with DC's New 52 and X-Men brand identity with Jared K. Fletcher, 

Taking a cue from DC Comics' All-Star line, which was also ostensibly designed to appeal to a

broader audience than that of the publisher's existing line, the "Season One" logos are white and

angled in a sort of "flying" fashion. On his Guttersniper blog, Dylan Todd identifies the main

font as Gothic Narrow, which as he notes will be familiar to readers of comics writer (and

graphic designer) Jonathan Hickman's work.