Cyber Flashcards
4 types of tm
- Generic
- Descriptive (Can acquire distinctiveness thru secondary meaning)
- Suggestive (Inherently distinctive)
- Arbitrary/fanciful (Inherently distinctive)
Importance of secondary meaning
Descriptive mark that acquires distinctiveness
- Only the secondary meaning is protected
- Need it to be placed on Principal Register
What are the elements for trademark infringement claim
- Valid + legally protectable marks
- marks are owned by P; and
- D use of marks is likely to create
confusion concerning the origin of the goods/services
Likelihood of confusion factors
- Degree of similarity
- Strength of owners mark
- Price + other factors indicative of care/attention expected
of consumers when making a purchase - Length of time D has used mark w/o evidence of actual confusion arising
- Intent of D in adopting the mark
- Evidence of actual confusion
- Whether the goods, though not competing, are marketed thru same
channels of trade + advertised thru same media - Extent to which the targets of the parties sale efforts are the same
- Relationship of goods in minds of the public bc of the similarity of function
- Other facts suggesting that consuming public might expect prior
owner to manufacture a product in Ds market
What is initial interest confusion
Customer would realize immediately whether they were on the wrong site but find that is similar enough to what they were looking for and just use it instead
Types of trademark dilution
- Blurring (Consumer search costs will rise if a TM becomes associated w variety of unrelated products. efficacy of mark as an identifier of a product will be diminished)
- Tarnishment (when famous mark is improperly associated w an
inferior/offensive product)
Federal trademark dilution act - what is a famous mark?
- national fame; duration, extent, geographical reach of
advertising + publicity of mark, whether advertised by owner or 3rd
parties - amount, volume, and geographic extent of sales offered under the mark
- extent of actual recognition of the mark
- Likelihood of harm is enough
Federal trademark dilution act exclusions
- Comparative ad/promotion
• Identifying + parodying, criticizing, or commenting upon the famous mark
• All forms of news reporting/commentary
• Any non-commercial use
Federal trademark dilution act remedies
Generally no damages, only injunctive relief
o Exception: willful dilution
Trademark nominative fair use defense
- Product not readily identified w/o mark – no other reasonable
way to refer to the product - Use is no more than necessary to make ID
- no suggestion of sponsorship or endorsement
–
if all 3 = absolute nominative fair use defense
Trademark preliminary injunction analysis
- probability of success on the merits (likelihood of confusion)
- threat of irreparable harm - 8 cir. has held district ct can presume irreparable injury from finding of probable success on merits
- state of balance between this harm and injury that granting injunction will inflict on other parties
- Public interest
Anti-cybersquatting consumer protection act. Creates a civil claim against a person who:
- bad faith intent to profit from mark (at time of registration) AND
- Registers, traffics in or uses a DN that is:
- identical, confusingly similar to a distinctive mark;
- dilutive of famous mark; or
- has special protection (Olympics)
Uniform dispute resolution policy allows you to…
Bring in rem action against DN to have it ceased/given to you.
Need to show: distinctive mark, use in the DN, and bad faith.
Bad faith is registration and use.
- Cheap + 30 day resolution.
- Remedies: only get the DN
“Traditional” TM fair use
Using a competitors mark truthfully to identify competitors goods or in comparative advertisements
Registering Domain Names as Trademarks - Important points to remember:
- Registration of DN is not a TM “use”; must be used on site
- Site must provide a service; advertising them is not sufficient
- “Advertising one’s own products or services is not a service.”
- TM classes for products/services in “real world” generally diff from TM class for web site
What are shrinkwrap licenses
- Effort to bind license agt w/o signature
- Usually refers to a license agt, governing a purchaser’s use of software of digitized data, that is presented to the purchaser AFTER payment
Are Shrinkwrap Licenses Enforceable?
Majority view: tends toward enforcement
Clickwrap agts generally enforceable if:
- Require that the user read the agreement first.
- Require that the user consent; provide means for refusal
- Don’t process order until after consent.
What are Browsewrap Agreements?
- Nothing more than a link on the website; you don’t have to click on it before using the site (ex: terms of use/service)
- only enforceable when users have actual or constructive notice of terms before using site
What is a “signature”?
UCC provides for “any symbol executed or adopted by a party with present intention to authenticate a writing.
6 Key Issues to Enforceability of Electronic Contracts
- Authorization: Does the law authorize the transaction to be done electronically?
- Consent: Have the parties consented to electronic contracting?
- Signature: Is the electronic record signed?
- Authentication: Is the doc accurate, prepared by party to be held liable?
- Retention: Can it be retained?
- Record keeping and proof – Does it satisfy evidence law reqt’s?
What is procedural and substantive unconscionability?
- Procedural- involves impropriety during the process of forming a K.
- Substantive - where a clause in a K is allegedly one-sided or overly harsh.
e-contracts: choice of law and forum
- Choice of Law – generally OK, unless unconscionable + jdx bears no reasonable relationship to transaction
- Choice of Forum -presumptively valid
Works of authorship
- literary works (software; sometimes databases)
- musical works
- dramatic works
- pantomime and choreographic works
- pictorial, graphic; other sculptural works
- motion pictures and other audiovisual works
- sound recordings
