I hope your not an IP lawyer Art. The general premise of US trademark law is that registration of a trademark under the Lanham Act merely recognizes the trademark rights that exist at common law. The US system is called a “use-based system”. In most other countries trademark rights are acquired through registration (“registration-based systems”). Certain advantages are gained through trademark registration under the Lanham Act, but registration is not a prerequisite to bringing an action for trademark infringement in the US.
The use “in commerce” requirement ensures that the federal trademark regime remains within Congress’s Commerce Clause powers. Use determines who initially owns federal trademark rights. As a general rule, actual trademark use is a prerequisite for obtaining federal common law trademark rights. Either actual or constructive trademark use is a prerequisite for applying for rights under a federal registration. However, first use is not the only factor that is determinative of a trademark infringement action, there are several other factors and test that would be involved depending upon the jurisdiction in which the action is brought.
hmmm....i didnt know it was going to be a battle of IP Law outlines.....and no, I'm not a practicing IP attorney, but I am a young fledging law student with IP experience
.....so, please, when you return, continue with your lecture.........but until then.......let me continue with actual ways to try and protect the mark.
anyways, while registration may not be a "requirement" before bringing suit for trademark use....with a case like Verte v. Verde...the actual "use" of the mark for Verte is so small that it is unlikely that Verte could provide enough evidence to stop Verde from continuing with their clothing line. So, it would be to Verte's advantage to register its mark, if not only to bolster the strength of its mark, but also to automatically confer nationwide protection of the mark. Registrations is never a bad idea.
Seriously, how can you hate on registration? It's been established that there is use (or at least an intent to use) the Verde mark, so there's nothing stopping registration. Registration is prima facie evidence of validity and grants to owner the exclusive right to use the mark.......which would help in case where there is a weak showing of evidence under 43(a) and Section and section 32 of the Lanham Act.
However, Verde does have some support in the case law. Just look at AMF v. Sleekcraft (case where P used name Slickcraft, and D used Sleekcraft, in which the court found likelihood of confusion). Or look at Death Cig v. Black Death Vodka, in which the court found likelihood of confusion b/c of relatedness and similarity of consumers. That would be the best arugment to push.....the fact that Volcom is basically poaching consumers away from Verte....but, again, Verte would have to show that there were actually consumers who were purchasing their product to begin with (and not just giving shirts away to your "bros").
The most likely argument that would prevail would be reverse-confusion.....basically you'd argue exactly what's in the "angry internet message" and claim that Volcom swooped in with their Verde line and as a result is causing people to think that Verte is the infringer.
but hey.....blackacre obviously has it covered
Topic: Volcom: youth against independent business! (Read 5819 times)