International Business Law: the Purpose of Trademarks - Case Study Example

Order 196747 International Business Law A trademark is a mark used in relation to goods or services so as to indicate a connection in the of trade between goods and some person having a right to use the mark (Abbott 2000) The commercial purpose of a trademark is to distinguish the goods or services of a company, indicate quality and induce customers to buy the goods. The legal purpose of a trademark is to prevent others from using the mark and thus benefiting from the goodwill attached to the mark. Trademarks constitute industrial property. They are concerned with commercial features and sales, rather than the technical features which are crucial to patents. While life of a patent is limited to 20 years a trademark can be renewed indefinitely. Another difference is that the cost of registering, renewing and enforcing trade rights is much less expensive than for patents. Looking at the facts in the scenario where Shady McDodgy is being sued by FedEx for dilution of the trademark, he (McDodgy) has various defenses as provided by the Lanham Act. Trademark dilution occurs when a famous trademark is used by another or non-competing goods even when there is no likelihood of confusion between the uses of the marks. The standard of trademark dilution is the "likelihood of dilution" under the Lanham Act. Under the amendment to the federal to the federal statute enacted in 2006, the trademark Revision Act provides that dilution occurs when someone uses a mark that is likely to cause dilution by blurring or tarnishing a famous mark regardless of presence or absence of actual likely confusion, competition, or actual economic injury to the owner of the In this regard McDodgy has various defenses as stipulated by the law. McDodgy established his business as SpuEx which is different from FedEx. The two companies deal with totally different issues. FedEx being an international deal with freight issues while SpudEx was to provide delicious hot French fries. Therefore there is likely to be no confusion caused to both customers as they deal with different business. This is evident from Victoria case where the court held, " The record in this case establishes that an army officer who saw the advertisement of the opening of a store named "Victor's Secret" did make the mental association with "Victoria's Secret," but it also shows that he did not therefore form any different impression of the store that his wife and daughter had patronized. There is a complete absence of evidence of any lessening of the capacity of the Victoria's Secret mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs. The officer was offended by the ad, but it did not change his conception of Victoria's Secret. His offense was directed entirely at petitioners, not at respondents. Moreover, the expert retained by respondents had nothing to say about the impact of petitioners' name on the strength of respondents' mark. (Wardman 2002) Section 1055 of the Lanham Act clearly specifies that "where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall there to the benefit of the registrant or applicant for registration and such use shall not affect the validity of such mark or its registration, provided such mark is not used in such manner as to deceive the public. If for first use of a mark by a person is controlled by the registrant or applicant for registration of the mark will respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be" (www.bitlaw .com) McDodgy can rely on the fact that the trademark in contention is not famous and that the clients of FedEx will not be deceived by the use of such trademark by him. Given the nature of goods and services provided by McDodgy's business and that of FedEx then clients of FedEx are unlikely to be confused. The point however, is McDodgy's use of trademark is not an intention to deceive the public. Further in his defense McDodgy shall hold that the fame of the logo of FedEx has already been diluted and it is no longer famous. This is evident from the fact that speedEx has been using the logo of FedEx and yet they have been doing similar business. Therefore it is hard for FedEx to claim that there is fame in their logo. It has been diluted by the use speedEx and not SpudEx Therefore SpudEx has not diluted or tarnished the mark. It had already been tarnished earlier. (A very Dennison corporation V. Jerry simpton & others (1999). In his defense McDodgy can argue that he should not be liable for trademark dilution when the FedEx trademark has already been diluted prior to his use. 2. The Alien Tort claims Act (ATCA) of 1789 grants jurisdiction to us federal courts over any civil action by an alien for a fort only committed in violation of the law of nations or a treaty of the united Nations. Under the Alien Tort and claims Act, McDodgy is likely to succeed, given the fact that the act provides for original jurisdiction of any civil action by an alien for a tort only committed in violation of the law of nations or a treaty of the United States. Therefore this Act prevents Aliens from suing other persons or individuals. The Act only provides for a civil action involving national or a treaty of the United States. i.e. Tel - oven v. Libyan Arab Republic, 726 F2d 774 (D.C) 1984, claims against Libya based on armed attack upon civilian bus in Israel, Filartia case 630 F.2d 876, in which a Paraguayan man successfully used ATCA to sue the policeman who had furthered his son to death in Paraguay. In this regard McDodgy can rely on the provisions of the Act which clearly specifies that no civil action can be brought against an American individual by a foreigner as an individual. The Act prohibits nationals of other countries suing other individuals. The courts have jurisdiction to listen to cases brought against other nations and treaty of United States. Further McDodgy who intends to be sued under foreign corrupt practices Act of 1977, is not subject to the law since the Act clearly states that it prohibits both united states and foreign corporations and nationals from offering or paying, or authorizing the offer or payment of anything of value to a foreign government official, foreign political party, or candidate for foreign public office or to an official of a public international organization in order to obtain or retain business. In this case McDodgy has not paid any form of income to any person so as to acquire or retain his business will case. Therefore case stands to proof beyond unreasonable doubt that McDodgy had given any form of bribe to secure business with him. 3. McDodgy has a claim to make against Au Gratin. Even though Au Gratin was elusive and didn't want to face McDodgy they in one way or the other communicated and agreed about the delivery of potato an weekly basis. However, then did not agree on the price, but Au Gratin gave out an offer which was accepted by McDodgy. This in the real sense shows that there was offer. Further the 10 cents per spud proposed by Au Gratin and accepted by McDodgy forms part of consideration. Frequent communication via email conducted on behalf of Spartan Spuds by Au Gratin and McDodgy for SpuEx Inc. forms part of contract. Therefore even though they did not meet face to face the shape of a contract exist. However with due course of time AU Gratin refused to honor the contract on the agreed terms In this regard McDodgy as a plaintiff can sue for damages due from Spartan Spuds. the abrupt increase of price by AU Gratin is founded on bad taste since he did not give reasonable time to SpudEx limited to look for another supplier. Therefore McDodgy has cause of action to bring against AU Gratin and recover damages. Further to proof the existence of the contract is part performance of the contract where AU Gratin had supplied 3 shipments to McDodgy initially. Finally regarding SpudEx, McDodgy should take every care to ensure that his employees who are college students are treated fairly just like any other employees. Failure to adhere to this will amount to legal actions being brought up against any form of negligence putting up a banner reading "safety first" doesn't exclude him from responsibility. It is assertion that students can afford lawyers is foundered on bad taste. Bibliography 1. K. Abbott, P. Norman, International Business Law, Oxford University Press 2002. Read More