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A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.
A "counterfeit" is a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.
Section 32 prohibits "the unauthorized use of any reproduction, counterfeit, copy or colorable imitation of a registered mark in a way that is likely to cause confusion in the marketplace concerning the source of the different products" or services.
In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action.
Section 32, codified at 15 U.S.C. § 1114, similarly imposes liability on one who "without the consent of the registrant- a) use[s] in commeregistrant- aduse[sn... [or] copy... of a regintered mark... in commerceon with which such use is likely to canye confusion, oreproductionistake, or to deceive" (emphasis added).
Section 1114 of the Lanham Act forbids a party to "use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive". (Emphasis added).
Similar(53)
1-800's chief legal claims were that Lens.com had infringed on its 1800CONTACTS mark under § 32 of the Lanham Act, 15 U.S.C. § 1114(1), which provides a cause of action for the infringement of a federally registered mark, and § 43(a), 15 U.S.C. § 1125(a), which provides a cause of action for the infringement of unregistered as well as registered marks.
You may only use the symbol with a federally registered mark and as applied to the goods and/or services listed in the registration.
Observing that an impression for Lens.com might result just as easily from a Google search for an unprotected, generic term like "contacts" as from a search for the registered mark 1800CONTACTS, the court explained that a Google user confronted with a screenshot of search results would be unable to tell from those results alone which keyword had been purchased.
A registered trade mark does have to be distinctive, and a trade mark which simply describes what a business does may not be registered.
L. 100 667, § 128(a), inserted "the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the" after "facie evidence of", inserted "or in connection with" after "in commerce on", substituted "another person" for "an opposing party", and inserted ", including those set forth in subsection (b)," after "or defect".
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Justyna Jupowicz-Kozak
CEO of Professional Science Editing for Scientists @ prosciediting.com