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Meaning of "trade" / "commerce" in trademark law, and some other stuff

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krnlg

Junior Member
Meaning of "trade" / "commerce" in trademark law, and some other stuff

Some questions, probably as a result of taking things too literally:

In trademark law, if you use a trademark in commerce without authorisation, etc. and its suggesting sponsership that doesn't exist or whatever, etc. etc. etc. then you are in violation and the usage is illegal.
But what does "commerce" actually mean in this siutuation? I mean, commerce/trade involves making profits, but couldn't those profits be non material things like "satisfaction", etc? (yes I'm taking things very literally here)

Also, most computer software is copyrighted and licensed. But it also contains logos, etc. that are trademarks. If you possesed some software illegally that contained trademarks, would it also be infringing those trademarks?

Thank you very much for your help :)
 


divgradcurl

Senior Member
In trademark law, if you use a trademark in commerce without authorisation, etc. and its suggesting sponsership that doesn't exist or whatever, etc. etc. etc. then you are in violation and the usage is illegal.
Almost right. Only thing is, you don't have to be using the trademark "in commerce" to be in violation of the trademark holder's rights. The primary test for infringment is "confusion" -- if a consumer is "confused" as to whether or not what I am doing or selling is authorized by the mark holder, then I am infringing.

Clearly selling a counterfeit item, say an unlicensed Lakers jersey (not worth as much today as yesterday, though!), would be a trademark infringement. However, creating a "fan site" on the web, and using the term "Lakers" in the metatags, could also be infringement, because a surfer could be "confused" as to whether or not your site is licensed or otherwise authorized by the Lakers. And this is true even if you are not selling anything, although trademark holders USUALLY go after people selling products, and not fan sites...

Also, most computer software is copyrighted and licensed. But it also contains logos, etc. that are trademarks. If you possesed some software illegally that contained trademarks, would it also be infringing those trademarks?
If you simply possess it, no. Nobody is being "confused" by the trademarks, so there is no infringement. I can sit at home and draw Microsoft logos all over my desk, and there is no infringement until I try and convince people that it IS a Microsoft-authorized desk, then maybe I would be infringing.

But if you were to try and resell it, then yes, IF it is an illegal copy (i.e., pirated). If it is a LEGAL copy, then you COULD resell it without worrying about trademarks or copyrights -- this is the "first sale" doctrine.
 

krnlg

Junior Member
But surely whether or not something is "likely" to cause confusion is open to interpretation.
For example, if I printed out a colour Windows logo and stick it on a door in(side) my house because I like windows :eek: , a friend could come into the house and think I use windows, when actually I use Macs and just *like* Windows. Then thats confusion, and its likely to happen. So that would be infringement? (although obviously the trademark holder would never know)
Because if it is, that seems a bit.. harsh :confused:
 

divgradcurl

Senior Member
But surely whether or not something is "likely" to cause confusion is open to interpretation.
Of course -- that's why we have lawyers and go to court!

But seriously, that's just the way our legal system is set up. We let each side argue the facts, and then decide -- but its not completely arbitrary, we have a lot of cases that have been decided in the past to guide us. So, in order to determine if a court is likely to find that a particular use of a trademark is likely to cause confusion, we need to look at ALL of the facts and compare them with existing case law.

For example, if I printed out a colour Windows logo and stick it on a door in(side) my house because I like windows , a friend could come into the house and think I use windows, when actually I use Macs and just *like* Windows. Then thats confusion, and its likely to happen. So that would be infringement? (although obviously the trademark holder would never know)
Well, probably not in your case. "Confusion" has a very specific meaning -- is a person "confused," even for an instance, about the source of the object (who made it), or whether it is licensed or authorized, that kind of stuff. More general confusion, like "Dude, I thought you used a Mac" is NOT actionable confusion, unless there is a question of sponsorship, etc.

It can get pretty confusing. But, as you correctly point out, Microsoft is unlikely to come into your house to get you. Although trademark law is NOT strictly limited to commercial transactions -- that is, you can be an infringer even if you are not selling anything -- very few cases of non-commercial infringement come up.

If the rules seem harsh, remember that the purpose of the rules is to provide incentive for a manufacturer or retailer to develop a brand -- its good for the economy -- so, by protecting the time and money and effort it takes to develop a brand and a mark, the government provides an incentive to commercial interests. Part of the protection is to keep freeloaders from taking advantage of other's time, money and effort...

But, not everything is infringement, and the trademark holders have some responsibilities as well, so it's not all one-sided!

I notice that you spelled "color" in a, well, non-American way -- these rules are American rules -- if you are outside of the U.S., the rules will vary, although virtually ALL developed countries protect trademarks in one way or another.
 

krnlg

Junior Member
Ok thanks.

One last question :p :
I've been reading through this , and from what I can gather if you've violated a trademark, any items you possess (whether legal or not) "bearing the registered mark" can be "delivered up and destroyed". Am I right im this? Or does this only apply to items that have the trademark illegally?
Basically, if you stick a trademarked logo on something and try to sell it, does that mean that stuff you already have that is actually produced by the trademark holder can be destroyed?
 
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divgradcurl

Senior Member
Basically, if you stick a trademarked logo on something and try to sell it, does that mean that stuff you already have that is actually produced by the trademark holder can be destroyed?
Not necessarily. If the trademark holder were able to prove (in court) that you were infringing on their trademark, and get the judge to order confiscation and destruction of the infringing goods, then the burden would shift to YOU to show that a particular good was legal.

So, if you had a big pile of illegal Windows XP, all boxed up and ready to ship, and the one box that you purchased legally, you would have to come up with some pretty strong evidence that the one legal copy actually WAS purchased legally before they would let you keep it.

If the "legal" materials were kept completely seperate from the "illegal" materials, and never the two did meet, then it might be a bit easier to prove that some of the works were legal, and be able to keep them. Of course, if the trademark owner were able to prove that the only reason you had legal copies in the first place was to copy them, then they would be siezed as well as instrumentalities of the infringement...
 

krnlg

Junior Member
Is what you have said covered by what I linked to? Because I could'nt see anything there that differentiated between legal and illegal goods :confused:
 

divgradcurl

Senior Member
Well, it's obviously not spelled out in that statute, but in general, if you look at the case law, IF you could prove that some of your stuff was legal AND was acquired SOLELY for legal uses, then you could probably keep it. But the burden to prove that is on you.

Are you in trouble or something?
 
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krnlg

Junior Member
Heh, no I'm not im trouble (not that me saying that is necessarily believable :D ) its mainly a case of satisfying a very unhealthy obsession with 'correctness' and fine detail. I'm strange like that.
Thanks for the help :)
 

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