1. Explain whether or not the fact that Gabby’s surname is Rally gives her the right to use it any way she wishes.

Ownership rights to the name are protected by Federal trade mark law, through The Lanham Trademark Act (1946) and the Federal Trademark Dilution Act of 1995 (Halbert & Ingulli, 2011). Both Rally Motors and Rally Pizza have economic interest in the mark that they have created, Rally Motors created its mark associated to the automobile competition and Rally Pizza simple used the owner’s last name. Rally Motors wants to maintain its mark because the company has invested a lot in advertisements and Rally Pizza wants maintain its mark because it is recognized as good and fast delivery pizza and also because of the family’s name. However, the law does not grant any advantage to companies owned by people who have the mark as their surname. The Federal trademark law protects the company’s ownership rights for the company that first registered the mark.

2. Explain whether or not it matters that Rally is associated with pizza.

The Federal trademark law prevents competitors from using the registered mark for their own benefit or in ways that would harm its rightful owner. However, even a non competitor can be considered guilty of dilution through an unauthorized use. Nevertheless, not every use can be considered an infringement or dilution of another’s trademark (Halbert & Ingulli, 2011). Finally, in accordance with the Federal law trademark, multiple parties may use the same mark only where the goods or services of the parties are not as similar as to cause confusion among consumers. The law will not forbid two unrelated businesses from using the same trade name so long as their coexistence creates no substantial risk of confusion among the public. Where a mark is protected only under common law trademark rights, the same marks can be used where there is no geographic overlap in the use of the marks (Beck & Tysver, 2008). By analyzing the case study, Herman’s and Gabby’s businesses are not related because car dealers are not threatening by pizza parlors. However, the mark is causing confusion among the consumers, since Rally Motors is receiving a lot of calls asking for pizza delivery. In conclusion, by analyzing this aspect, it does not matter that Rally is associated with pizza and Rally Motors is a car dealer. Since Herman’s company is suffering the damage of answering calls not related to its business, even unwittingly, Gabby’s company is causing confusion among the consumers.

3. Explain how important the fact is that Herman started to use the name Rally first in that particular geographical area.

The rights to a trademark can be acquired in one of two ways: by being the first to use the mark in commerce; or by being the first to register the mark with the U.S. Patent and Trademark Office (Overview of Trademark Law, Harvard). The generally accepted rule on how to determine ownership of trademark rights is by the "first use date." Specifically, the priority of use standard dictates that the first to actually use a mark in the sale of goods or services gains exclusive rights to the mark in the geographic area in which the mark is actually used. Regardless who first registered the mark in the U.S. Patent and Trademark Office (PTO), the use of the mark in the commerce in a specific geographic area is granted to whom has used the mark first (Lombard & Geliebter). The owners of a trademark or trade name can lose the rights if they discontinue the use of the trademark or trade name for three consecutive years. Also, when the use of a trademark is licensed without adequate quality control or supervision by the trademark owner, that trademark will be canceled. Similarly, where the rights to a trademark are assigned to another party in gross, without the corresponding sale of any assets, the trademark will be canceled (Overview of Trademark Law, Harvard).

4. Explain what rights you have in your trade name.

There is a difference between a trade name and a trade mark. A trade name is the name under which a company is recognized by the consumers and the under by the companies do business. The trade name may be used by the company for banking, billing, identification advertisement, and tax purposes (Danny Bronski, 2007). A trade name may be the actual name of a business that is registered with the government, or it may be an assumed name under which a business operates and holds itself out to the public. Trademark is defined as a distinctive name, symbols, logos, design, and other devices that legally identify a company or its products and services, and sometimes prevents others from using identical or similar marks (Investorwords.com). When having a trade name, a company has the right to the protection of its economic, intellectual, and creative investments made by the company in distinguishing its trades; the preservation of the good will and reputation associated with the trade name; clarity and stability promotion of the trade name in the marketplace, encouraging consumers to rely on the company’s trade name when evaluating the quality of its merchandise; association of the trade with the value and quality of its goods and services; and the right to protect the trade name against its use by others.
The right of a trade name is granted to the first business to use it (Gerald N. Hill and Kathleen T. Hill, 2005). Infringement from trade name upon the trademark is not always obvious, thus companies that use their trade name to identify their products or services, a trademark registration is recommendable in order to avoid any kind of trouble with other trademarks (Danny Bronski, 2007).

5. Explain what remedies you have if someone else infringes upon your trade name.

By moving a law suit against someone else who has infringed upon a trade name and being a successful in the suit, Lanham Act enforces the company that has infringed upon the trade mark to stop infringing and the destruction of the infringing goods. Also the plaintiff has the right to financial compensation for losses and costs such as profits, damages sustained by the plaintiff, and the costs of the action (Overview of Trademark Law, Harvard). The trade name holder will need to sue under theories of unfair competition to be monetarily compensated for any damage to their business reputation (Joseph S. Beckman). However, under the subsection (b) of the section § 32 (15 U.S.C. § 1114) of the Federal law, the plaintiff shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive (U. S. TRADEMARK LAW, 2010). In addition to infringement suits, dilution suits can take place. Dilution suits occur when someone else dilute the distinctiveness of the company name or trademark, even in the absence of any likelihood of confusion or competition. However, damages are available only if the defendant willfully traded on the plaintiff's goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief (Overview of Trademark Law, Harvard).

References:

Halbert & Ingulli, 2010, Ownership and Creativity, Law and Ethics in the Business Environment, 314 – 355, ISBN -13: 978-1-111-21958-1

Overview of Trademark Law, retrieved in August 30 from http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#4

Joseph S. Beckman, Trademark or Trade Name?, retrieved in August 29 from http://www.intellectlawgroup.com/articles/trademarkortradename.html

Trademark definition, retrieved in August 29 from http://www.investorwords.com/5023/trademark.html

Danny Bronski, 2007, The Difference Between a Trade Name and a Trademark and Why You Should Care, retrieved in August, 31 from http://biznik.com/articles/the-difference- between-a-trade-name-and-a-trademark-and-why-you-should-care

Lombard & Geliebter, The Concurrent Use of Trademarks in Different Geographical Locations, retrieved in August, 31 from http://www.lgtrademark.com/UserFiles/File/Concurrent%20Use%20of%20Trademarks% 20in%20Different%20Geographical%20Locations.pdf

S. TRADEMARK LAW RULES OF PRACTICE & FEDERAL STATUTES, U. S. PATENT & OFFICE June 24, 2010, retrieved in August 29, 2011 from http://www.uspto.gov/trademarks/law/tmlaw.pdf