Ch7. Trademark & Design Law — Registration, Infringement, and Protection

Trademark Law

Trademark:
A mark used to distinguish one party's goods/services from another's
Includes words, symbols, logos, colors, sounds, and scents
(15 USC § 1127; Lanham Act)

Registration Requirements:
Must be distinctive
Must not fall under absolute or relative bars to registration

Absolute Bars to Registration (15 USC § 1052):
Merely descriptive, generic, or deceptively misdescriptive marks
Marks comprising the flag or coat of arms of the US or any state/nation

Relative Bars to Registration:
Confusingly similar to a prior registered or used mark
Dilution of a famous mark (TDRA — 15 USC § 1125(c))

Trademark Registration Procedure and Rights

Filing Basis (USPTO):
Use-based application (§ 1(a)): mark already in use in commerce
Intent-to-Use application (§ 1(b)): bona fide intent to use
Foreign Priority (§ 44(d)): 6-month Paris Convention window

Examination:
USPTO examines for distinctiveness and conflicting marks
Office Actions issued; applicant has 3 months to respond (extendable)

Registration:
Registration fee paid → rights arise (nationwide constructive use)
Term: 10 years from registration date (renewable indefinitely)

Non-Use Cancellation:
3 consecutive years of non-use → prima facie abandonment
Owner bears burden to rebut (15 USC § 1127)

Trademark Infringement and Remedies

Infringement Standard:
Use of a confusingly similar mark for related goods/services
Likelihood of confusion (not actual confusion required)
Multi-factor Polaroid/DuPont test

Remedies (15 USC § 1114, § 1117):
Injunctive relief
Actual damages or disgorgement of defendant's profits
Treble damages for willful infringement
Attorney's fees in exceptional cases

Criminal Penalties (18 USC § 2320):
Trafficking in counterfeit goods: up to 10 years imprisonment / $2M fine
(Equivalent Korean penalty: ≤7 years or ≤₩100M → ~$75K)

Design Patent Law

Design Patent (35 USC § 171):
Protects the ornamental appearance of an article of manufacture
Covers shape, configuration, or surface ornamentation

Requirements:
Novel, original, and ornamental
No prior art identical or substantially similar in overall appearance

Secrecy / Deferred Publication:
Design applications are not published before grant
Confidentiality maintained until grant (comparable to Korean secret-design system)

Term:
15 years from grant date (AIA, for applications filed after May 13, 2015)

Related Designs:
Continuation applications cover variations of the same overall design concept

Key Concept Cards

Trademark Term = 10 Years + Unlimited Renewal ★★★★★ : Registered trademarks last 10 years; can be renewed indefinitely. Memory hook: Trademark = 10 years × forever

Non-Use Abandonment = 3 Years ★★★★★ : Three consecutive years of non-use creates a presumption of abandonment. Memory hook: 3 years unused = abandoned

Design Patent Term = 15 Years (US) ★★★★☆ : US design patents last 15 years from grant; utility patents last 20 years from filing. Memory hook: Design = 15 yrs from grant; utility = 20 yrs from filing

Practice Questions

Q. What is the difference between use-based and registration-based trademark systems?

The US operates a use-based system: rights arise from use in commerce, not merely registration (§ 1(a) basis). Registration provides nationwide constructive notice and the right to sue in federal court, but common-law rights exist without registration. By contrast, most countries (including Korea) follow a first-to-file registration system — prior use without registration does not establish rights. Famous marks may receive protection even without registration under dilution doctrine (TDRA). Strategy: file early, use consistently.

Q. Why is the design patent “secrecy” feature strategically valuable?

Design patent applications in the US are not published before grant, providing inherent confidentiality during pendency. This prevents competitors from copying the design before launch — similar to the Korean “secret design” system. Once the patent issues, the patentee gains enforceable rights retroactive to the filing date. This is especially valuable in fast-moving industries like consumer electronics or fashion where product lifecycles are short.