Article 6bis of the 1967 Paris Convention for the Protection of Industrial Property requires member countries, such as the United States, to afford certain protections to well-known marks, regardless of whether they are registered. Specifically, member countries must provide the means to refuse or cancel the registration, and prohibit the use, of a well-known mark when applied for or used by an unauthorized party for identical or similar goods, when its use or registration would likely cause confusion.
Article 16.2 of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), which came into force in 1995, extended Article 6bis of the Paris Convention to include services. It provided that members shall take into account that a mark is well known to a relevant sector of the public (not necessarily the entire country, or only consumers of the specific products) and the promotion of the mark (not just its use). Article 16.3 of the TRIPS Agreement extended the protections of Article 6bis to well-known marks when used on unrelated goods or services in cases where the well-known mark is registered, if such use indicates a connection to the owner and the owner of the well-known mark would likely be damaged.
The United States implements these standards by protecting registered as well as unregistered well-known marks, of both domestic and foreign origin, from use and/or registration by unauthorized parties under terms of the U.S. Lanham Act. The Act protects a mark against infringement or registration by another party's similar mark for goods or services that are the same, similar, related, or even unrelated if there is a likelihood of confusion, whether or not the senior mark is registered.
The owner of a well-known mark may bring an action in U.S. federal court for trademark infringement under Section 43(a) of the Lanham Act. The court will make a determination as to likelihood of confusion in deciding infringement. U.S. case law outlines a variety of non-exclusive and non-exhaustive factors that can be used in the analysis. These factors include:
- the similarity of the marks
- the relatedness or proximity of the goods and/or services
- the strength of the plaintiff's mark including the level of commercial recognition
- marketing channels used including the similarity or dissimilarity between the consumers of the parties' goods and/or services
- the degree of care likely to be exercised by purchasers in selecting goods and/or services, • the defendant's intent in selecting its mark
- the evidence of actual confusion
- the likelihood of expansion in product lines, etc.
In this analysis, while no one factor is determinative, a strong or well-known mark will receive broader protection than a weaker mark. A mark does not need to be registered to receive protection.
The United States Patent and Trademark Office (USPTO) uses these same factors in deciding whether to protect a well-known mark. There is no separate analysis, apart from the likelihood of confusion or deceptiveness, as to whether a mark is well-known or not.
The USPTO will refuse registration of, or a third party may seek to oppose or cancel, a mark that conflicts with registered or unregistered well-known marks, foreign or domestic, that meet the test under Sections 2(a) and (d) of the Lanham Act. Section 2(d) provides that a mark will be refused registration during examination if it is likely to be confused with a prior registered mark, or can be opposed or cancelled by an interested third party when its prior, confusingly similar mark is in use in commerce and not abandoned. Section 2(a) provides that a mark will be refused registration if, among other things, it is deceptive or falsely suggests a connection to persons, institutions, beliefs, or national symbols. It is not necessary for a mark to be registered to obtain protection under Section 2(a), but the mark must point uniquely to a known or unknown source, such that consumers would be deceived if the goods or services of the applicant did not emanate from that source. While the USPTO does not make a specific determination in its examination as to whether a mark is well known, it evaluates the strength of the mark in determining what protection to afford a previously registered or unregistered mark against a pending application.
In addition to these grounds, in certain cases the owner of a well-known mark that rises to the level of being "famous" may bring an action against another use of the mark in U.S. federal courts or may seek to oppose or cancel another's application or registration for the mark on the grounds of likelihood of dilution. “Dilution” is the lessening of the capacity of a famous mark to uniquely distinguish its goods, either by tarnishing (that is, weakening the mark through unsavory associations) or blurring (that is, chipping away at distinctiveness due to the unauthorized use of a mark on dissimilar products). However, dilution may only be applied in cases where a party's well-known mark is "famous," such that it is widely known among the U.S. consuming public.
For more information on well-known marks, contact the USPTO’s Office of Policy and International Affairs at (571) 272-9300.