National K-9, Inc. Accuses National Canine Association, Inc. of Trademark Infringement.

COLUMBUS, July 17, 2009 -- A lawsuit filed with the U.S. District Court for the Southern District of Ohio has pitted the National K-9 Learning Center against the National Canine Center.

According to the complaint, the National K-9 Center was founded in Columbus, Ohio in 1975 and has since become an industry leader in the fields of dog training, behavior modification, and dog trainer education and has been using the trademark NATIONAL K-9 since 1976.

National K-9 argues in their complaint that the National Canine Association's trademark NATIONAL CANINS as used in connection with dog shows, breed registries, and on-line forums for dog enthusiasts is so similar as to cause confusion in the marketplace. As such, National K-9's complaint contains counts based on trademark infringement, false designation on origin, and unfair competition.

The United States Patent & Trademark Office (USPTO) issued a trademark certificate of registration for NATIONAL K-9 in connection with the "training of dogs and educational services, namely, providing courses of instruction dealing with dogs and the training of dogs" in 1988.

The primary purpose of trademark infringement laws is to prevent consumer confusion regarding the source of goods and services. The first party to use a trademark has the superior claim of ownership. as such, they may prohibit other parties from using a mark subsequently on connection with similar goods or services. The marks do no have to be identical, but merely similar enough that they are likely to cause confusion.

The records maintained by the Delaware Department of State indicate the National Canine Association was incorporated July 15, 1997.

The National Canine Association may argue that the services offered by the respective companies are sufficiently different enough that confusion is unlikely.

The USPTO divides goods and services into various classes and registers trademarks within the appropriate classes. The benefits of registration only apply to the goods and services actually used in connection with the trademark; however, some consideration is given to other classes that a trademark owner could reasonably, foreseeably expand into offering in connection with a trademark. Under the federal guideline, training services are in a different class from dog shows and breed registries.

Another argument that may surface is that NATIONAL CANINE is merely descriptive and therefore not entitled to protection unless a showing of secondary meaning can be proven. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. It is not necessary that a term describes all of the purposes, functions, characteristics or features of a product to be deemed merely descriptive. It is enough if the trademark describes one significant function, attribute or property. A mark is also considered merely descriptive when it chiefly identifies the “customers” to whom the owner targets its goods/services.

Descriptive trademarks can be protected in a court of law but typically do not qualify for federal registration unless the applicant can demonstrate continuous use for at least five years during which time the mark achieved secondary meaning within the consuming public. Secondary meaning is established when a mark or identifying devise become associated with the source for goods or services above and beyond the literal meaning of the mark. Even when a descriptive mark has been registered, the registration may be challenged and cancelled by an interested party in the first five years. At the end of the initial five year period, the owner of a registration may obtain incontestable status which precluded cancellation for descriptiveness. Incontestable status does not preclude cancellation for genericness.

If National K-9, Inc. is successful in proving infringement of the federally registered trademark, they could recover defendants' profits and any damages sustained by the plaintiff. In assessing damages the court may enter judgment for any sum above the amount found as actual damages, up to three times. When a court finds a defendant intentionally counterfeited a registered trademark, the court must, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever is greater, together with a reasonable attorney’s fee unless the Plaintiff elects for statutory damages up to $1,000,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed.

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