Creation of ™ Rights: distinctiveness Flashcards
what does it mean that a mark is distinctive?
when a mark is distinctive it means that the mark has taken on a source identifying function
what is the general rule regarding distinctiveness?
a mark can only be protected if it is distinctive (i.e. has a source identifying function)
what 2 types of marks do not get protection?
- descriptive marks
2. generic marks
what is the key to analyzing a mark under the abercrombie spectrum of distinctiveness?
assessing the mark in terms of the good/service it references
what is the abercrombie spectrum of distinctiveness relevant to?
the scope of protection and likelihood of confusion
what is a fanciful mark?
a mark that is a coined or that has no meaning outside of a trademark meaning; the consumer would only think of that specific product when they saw the mark
how much strength does a fanciful mark have?
it is the strongest type of mark
what is an arbitrary mark?
a word in common linguistic use but does not suggest or describe the good at issue
which 3 types of marks on the abercrombie spectrum are inherently distinctive?
- fanciful marks
- arbitrary marks
- suggestive marks
what is a suggestive mark
a mark that suggests what the product is w/o describing it
what is the difference b/t suggestive mark and descriptive mark?
- if mark imparts info directly = descriptive
- if mark stands for idea requiring some operation of imagination to connect it w/ the goods = suggestive
on the abercrombie spectrum, what is the weakest type of mark?
descriptive mark
definition of a descriptive mark
a mark that draws attention to ingredients, quality, or nature of the product
can a descriptive mark be protected?
yes, but only when the mark gains secondary meaning or acquired distinctiveness
what does it mean to say a mark has secondary meaning?
it means that it has both a literal meaning and a trade mark meaning (identifies the source of the good/service)
do secondary meaning and distinctiveness meaning the same thing?
yes
what is a generic mark?
a mark that is the language name for the product
which mark has the lowest level of distinctiveness
generic marks
do generic marks get protection?
no
can generic marks be registered?
no
what is the anti-dissection rule?
-rule that marks should not be dissected but rather analyzed as a whole when determining whether the mark is or is not protectable
does adding a “.com” to a mark make an unregistrable mark registrable?
no, top level domain indicators have no source identifying function
what are the 4 tests courts use to determine whether a mark is descriptive under the abercrombie spectrum?
- dictionary definitional test
- imagination test
- competitors needs
- use by others
(DICU)
what is the acronym for the 4 tests courts use to test whether a mark is descriptive?
DICU
- dictionary definitional test
- imagination test
- competitors needs
- use by others
if a company has been using a mark for 5+ years, what does this mean?
means there is prima facie evidence that the mark has secondary meaning and is protectable
what 7 things are considered when determine whether a descriptive mark has gained secondary meaning?
- amount and manner of advertising
- volume of sales
- length and manner of use
- concurrent use by competitors
- use in newspapers, magazines, dictionaries
- significance in trade
- intentional copying by competitors
(AVLCUSI)–> VISUAL-C
what are surveys very helpful for?
determining whether a descriptive mark has gained secondary meaning
at what point is secondary meaning determined?
at the time of the alleged infringement (i.e. at this time was there secondary meaning in the infringed mark)
if a mark is unregistered and generic, who has the burden to prove what?
P has burden to prove mark is not generic
if a mark is registered and generic, who has burden to prove what?
D has burden to prove the mark is not generic
what test is used to show a term is generic?
- look at how the term is understood by the consuming public
- apply who are you/what are you test
- if answers who are you = mark
- if answers what are you = generic
T/F: a word doesn’t have to be used in a common manner in order to still be found generic
true
who has the burden to prove a mark is generic when the mark is unregistered and has been created by the mark owner?
the defendant (if not created specifically by the mark owner, then the burden is on P to prove the mark is not generic)
what are some remedies a court can suggest if a term is found to be generic but the D still can’t pass itself off as the D?
- require disclaimers
- require modification of the name in some way
- require specific placement
- require company to use additional marks
why doesn’t ™ law protect generic marks?
b/c it would hurt competitors if they couldn’t use the generic terms and it would hurt consumers if they are confused
what can the court do if a term is generic in one market but not another?
craft an injunction permitting the use by the D of the term in one market but not the other
are abbreviations considered generic?
if consumers see the abbreviation mark in a generic manner
T/F: using “diet” for a class of soda is a generic term
true
what are the 2 tests for determining whether a mark is generic?
- who are you/what are you
- who = mark; what = generic - primary significance test: what is the primary significance of the registered mark to the relevant public
are composite marks composed of more than one generic term considered generic?
only if the consuming public sees the word in a generic manner
what can surveys be used for in trademark cases?
- used to determine whether there is secondary meaning
- used to determine whether a term is viewed as generic
- used to measure the LOC among consumers
- can speak to ™ dilution
what are the 2 types of surveys?
- Teflon survey: educates first, then asks to categorize
2. Thermon survey: asks consumer how he/she would ask for the product (if by name = generic)
what test for distinctiveness should be used when the mark is not a word mark?
seabrook
what is the Seabrook test?
-test used to determine whether a non word mark is distinctive (ex. logo)
- was a common basic shape/design OR
- unique or unusual in a particular field OR
- mere refinement of a commonly adopted and well known form of ornamentation for the goods OR
- was capable of creating a commercial impression distinct from the accompanying words
would a soccer logo using shields and black and white soccer balls be protectable under sea brook?
no b/c it is a common basic shape and is not unique in a particular field
under Taco Cabana, when is trade dress inherently distinctive?
when it is not functional and there is no LOC
under Taco Cabana, when is trade dress not inherently distinctive and need proof of secondary meaning?
when the trade dress is functional and there is LOC
can the abercrombie test be used for color?
no
is color inherently distinctive?
no
when does color get ™ protection?
when secondary meaning can be proven
how does functionality factor into the protect ability of color?
can’t trademark a color if the color is functional (i.e. would disadvantage a competitor, affect the cost/quality or color is central to the use/purpose of the article)
what type of thing does the Lanham act qualify a color as?
a symbol or device
when is product design trade dress protectable?
when can show secondary meaning
what is the difference in standards for packaging design trade dress vs. product design trade dress?
Product design trade dress is protectable only if there is secondary meaning while packaging design trade dress is inherently distinctive
difference b/t product design trade dress and packaging design trade dress (in definitions)
product design trade dress relates to the product’s configuration and usually does not indicate the source whereas packaging design indicates the source some way and consumers see it as a source identifier
what is the test if there is a family trade dress (i.e. a line of products w/ identical source-identifying design features?)
(1) P must demonstrate that series or line has a recognizable and consistent overall look AND (2) after proving that, the court can look at whether the TD is distinctive, whether TD is nonfunctional, and whether the D’s use of Ps TD is more likely to cause consumer confusion
which 2 cases speak to product design?
In re Slovakage (slutty jeans) and Yankee candle
what must be proven for product design trade dress to be protectable?
- secondary meaning
- non functionality of design features and
- LOC
for color, when does the functionality doctrine prevent ™ protection?
When protecting the color would:
- disadvatange the competitor
- affect the cost/quality or
- color is essential to the user/purpose of the article
how does functionality factor into the equation?
it is a defense to why a mark should not be registered
what are the 2 test for general functionality?
- Traditional test: A product feature is functional and cannot serve as a trademark:
- if it is essential to the use or purpose of the article OR
- if it affects the cost or quality of the article - competitive necessity test
- functional feature = one that if protected would disadvantage competitors
what is aesthetic functionality?
where consumers purchase something b/c of how it looks (heart shaped box of chocolates)
what is the test for whether something is aesthetically functional?
- item purchased for aesthetic look
- product or package design used by P has significant aesthetic appeal
- limited ways of viable design alternatives that would have similar aesthetic appeal to consumers
