Trademark Defenses

• First Use – use in commerce prior to registration by owner of the mark AND prior to first use in commerce by owner of mark.
  • USPTO will allow concurrent use of the mark by both parties as long as the non-registrants use is in their own small geographic area.
• Satire/Parody of the mark.
• Mark is too generic/descriptive of a common product.
• Mark is being used in sale a different class of products and unlikely to cause confusion in the industry. (Not a valid defense in a dilution of famous mark context).

Nuisances

• Almost impossible to trade a slogan until the slogan becomes infamously known to represent your business. (Just do it, I’m lovin’ it).
• It is possible to trade multiple Generic/Descriptive terms combined together as long as a statement is made that no claim is made to the exclusive use of either of the Generic/Descriptive terms (Domestic Records).
• It is possible to trade name a title of a book but only after a series of books have been published under the same title.
• USPTO charges an application fee based on number of classes you want to protect your mark, so the more exclusivity you want with the mark, the more expensive it gets.

International

• Paris Convention
  • Recognized the need of international protection of trademarks.
• Nice Agreement
  • Establishes 45 classification categories to be used by member countries to make simplify international trademark searches.
• Madrid Convention
  • Can register in multiple international countries with a single international application administrated by World Intellectual Property Organization (WIPO).