Definitions

Question 1

Distinctiveness

Answer 1

A mark’s meaning must be distinct from the meaning of the good with which it is associated. The distinctiveness of a mark signals to consumers that the mark identifies the source of a good.

Question 2

Abercrombie Categories

Answer 2

Wordmarks may be categorized according to their distinctiveness in relation to the good that they represent. Words that are arbitrary, fanciful, or suggestive are inherently distinct. Words that are merely descriptive cannot be trademarked unless the secondary meaning is shown. Words that are generic cannot be trademarked.

Question 3

Arbitrary

Answer 3

An arbitrary mark has a meaning that does not relate to the meaning of the good that it identifies. It is inherently distinctive.

Question 4

Fanciful

Answer 4

A fanciful mark is a word that has been created for its purpose of identifying source. It is inherently distinctive.

Question 5

Suggestive

Answer 5

A suggestive mark suggests some sort of characteristic or attribute about the good or service it represents. Although it is inherently distinctive, a suggestive mark does not indicate source as strong as an arbitrary or fanciful mark.

Question 6

Merely Descriptive

Answer 6

A merely descriptive mark immediately conveys a characteristic, attribute, or quality of the good without any mental inference by the consumer. It requires secondary meaning to gain trademark protection.

Question 7

Generic

Answer 7

A generic term has a meaning that refers to a general class of goods. The term identifies the entire class rather than a specific characteristic. Generic terms receive no trademark protection (regardless of whether they have gained secondary meaning).

Question 8

Secondary Meaning

Answer 8

Secondary meaning is the source-identification meaning of a mark that develops over time. For a mark to gain secondary meaning, that source-identification meaning must become more prominent than the original descriptive meaning.

Question 9

Genericide

Answer 9

When a distinctive mark loses its source-identifying meaning in the minds of the public, it becomes generic and cannot receive trademark protection.

Question 10

Two-Dimensional Symbols

Answer 10

Two-dimensional symbols are protectable as indicators of source. Some courts do not classify them in the Abercrombie spectrum of distinctiveness. Instead, those courts examine whether the symbol is so unique, unusual, or unexpected in the particular market that consumers will automatically perceive the symbol as indicating source and if consumers would not, the courts examine whether the symbol has gained secondary meaning.

Question 11

Distinct from Other Marks

Answer 11

A mark must not be similar to marks that are already used in commerce. If a mark is likely to cause consumer confusion, the mark will not receive federal trademark protection. Courts consider a variety of factors when making this determination, including:

(1) The similarity of the marks.
(2) The similarity of the goods or services.
(3) The similarity of the trade channels.
(4) The likelihood that buyers exercise care so that they carefully note the brand when purchasing the good.
(5) The fame of the prior mark.
(6) The presence of similar marks in use on similar goods.
(7) The nature and extent of any actual confusion.

Question 12

Trade Dress

Answer 12

Trade dress is the overall appearance and total image of a product or service. It may include features such as size, shape, color, texture, graphics, or even particular sales techniques. When those aspects of a product or service serve to identity source, the trade dress may receive protection.

Question 13

Secondary Meaning & Trade Dress

Answer 13

Trade dress protection is possible without establishing secondary meaning if the trade dress is inherently distinctive (Two Pesos). However, the specific attributes of color (Qualitex) and product design (Wal-Mart) may not receive trade dress protection without establishing secondary meaning.

Question 14

Functionality

Answer 14

A functional feature of a product or service may not receive trade dress protection. Functionality may be utilitarian or aesthetic.

Question 15

Utilitarian Functionality

Answer 15

Utilitarian functionality exists where features or designs derive from practical, engineering-type decisions.

Question 16

Aesthetic Functionality

Answer 16

Aesthetic functionality exists where an aesthetic feature or design leads consumers to prefer the product or service, unrelated to the reputation of the source. The feature or design places competitors at a significant non-reputation-related disadvantage.

Question 17

Test for Functionality

Answer 17

Courts consider the following factors in determining whether a feature is functional:

(1) whether the feature is essential to the use or purpose of the article;
(2) whether the feature affects the cost or quality of the article; and
(3) whether the exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.

Question 18

Use in Commerce

Answer 18

To gain and maintain trademark protection, a mark owner must use the mark in commerce.

Question 19

Actual Use in Commerce

Answer 19

The use must be the bona fide use that the mark owner intends to make with the mark in the ordinary course of trade. The mark must be used in the actual sale, offer to sell, or renting of the good or service for which the mark will represent source. Goods must actually be sold or transported in commerce; services must actually be rendered in commerce. Planning and preparing to use the mark is not a use in commerce. A token use that is made to reserve a right in a mark is not a use in commerce.

Question 20

Source-Identifying & Interstate Use

Answer 20

The use must serve to identify the source of the good rather than the good itself. The good must affect interstate commerce.

Question 21

Physical Placement

Answer 21

For goods, the mark must be placed on the good, its container, displays, or labels on the good. If those options are impracticable, the mark must be placed on documents associated with the good. For services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

Question 22

Abandonment

Answer 22

Failure to use a mark may result in relinquishment of rights to the mark — abandonment. Two elements are necessary for abandonment:

(1) intent not to resume use of the mark; and
(2) non-use of the mark in commerce.

Question 23

Presumption of Abandonment

Answer 23

Non-use for three consecutive years is prima facie evidence of abandonment. To rebut the presumption of abandonment, the mark owner must prove that he did not intend to abandon the mark or that he did actually make use in commerce during the period in question. On intent, the mark owner must show that he had an intent to resume use within the reasonably foreseeable future.

Question 24

Registration

Answer 24

Registering a mark with the PTO provides the mark owner priority of use everywhere in the United States where someone else has not yet used the mark. Registration creates a presumption that the mark is valid.

Question 25

Incontestability

Answer 25

A mark becomes incontestable if the mark is in “continuous use” for five years from the registration date. Incontestable marks may not be challenged for lacking secondary meaning. Challenges may be made against an incontestable mark on the following grounds: that the mark was obtained fraudulently; that the mark has become generic; that the mark is functional; and that the mark owner abandoned the mark.

Question 26

Intent-to-Use Application (ITU)

Answer 26

An ITU (if granted) enables an applicant to use a mark in commerce without anyone interfering with that use. The ITU reserves the applicant’s right to use the mark for six months from the filing date.

Question 27

Notice of Allowance (NOA)

Answer 27

If the PTO grants an ITU, the PTO issues an NOA. The NOA provides an applicant six months to file a statement verifying actual commercial use of the mark. Up to five six-month extensions may be granted.

Question 28

Publication & Opposition

Answer 28

If the PTO decides that a mark is eligible for protection, it publishes the mark in the Official Gazette of the USPTO. Members of the public who believe that they may be damaged by the registration of the mark may file an opposition to the registration.

Question 29

Maintenance

Answer 29

Five years after registration, a mark owner must file an affidavit demonstrating his continued use of the mark (or explain a reason for non-use). The mark is then registered for ten additional years. A mark owner may renew his registration for additional ten-year terms. The trademark term may continue indefinitely.

Question 30

Cancellation

Answer 30

Members of the public may challenge the validity of a mark that has been registered through a cancellation proceeding.

Question 31

Senior & Junior Users

Answer 31

A senior user is the first person in the United States to actually use the mark in commerce. A junior user is a person who uses the mark in commerce (in the United States) subsequent to the senior user. A senior user and a junior user may or may not be using the mark in the same geographic area.

Question 32

Competing-Use Scenarios

Answer 32

Registration affects the rights of senior and junior users. Three scenarios may arise between two users of the same mark:

(1) If neither the senior user nor the junior user registers the mark, then either user may continue to use the mark in his respective area to the extent that the other user has not yet entered that area.
(2) If the junior user registers first, the senior user is frozen in his area. The senior user may continue to use his mark in the geographic area that he has already used the mark as of the registration date.
(3) If the senior user registers first, the junior user is frozen in his area. The junior user may continue to use his mark in the geographic area that he has already used the mark as of the registration date. If the junior user had not used the mark prior to the senior user’s registration date, the senior user has priority to use the mark in all areas.

Question 33

Extension of Frozen Areas

Answer 33

In assessing the area that the frozen user may continue to use the mark, courts recognize that the area may extend slightly beyond that which captures actual uses in commerce by the frozen users. They recognize either a zone of natural expansion or a zone of reputation.

Question 34

Zone of Natural Expansion

Answer 34

A zone of natural expansion represents the geographic area that captures the likely future expansion at the relevant time (i.e., the registration date).

Question 35

Zone of Reputation

Answer 35

A zone of reputation represents the geographic area that captures the user’s established reputation.

Question 36

Infringement

Answer 36

Trademark infringement occurs when a defendant uses a mark in commerce in a way that is likely to result in consumer confusion. Consumer confusion may occur before, at, or after the point of sale. Infringement may occur directly or indirectly.

Question 37

Use in Commerce

Answer 37

For infringement to occur, a defendant must have used the mark owner’s mark in commerce. In particular, a defendant must have used the mark in the ordinary course of trade with respect to the sale of a good or the rendering of a service.

Question 38

Consumer Confusion Factors

Answer 38

Courts have developed factors to assess the likelihood of consumer confusion. Those factors include:

1. strength of the mark (inherent distinctiveness and acquired distinctiveness);
2. degree of similarity (sight, sound, and meaning);
3. proximity of products and distribution channels;
4. likelihood of bridging the gap (consumer perception that mark owner might enter the market of defendant);
5. degree of customer care (less expensive products imply less customer care, which implies a greater likelihood of confusion);
6. actual confusion;
7. bad faith & quality of the defendant’s product (this factor matters little if no bad faith is present or if not bad quality).

Question 39

Initial Interest Confusion

Answer 39

This confusion occurs prior to the point of sale: a defendant uses the mark owner’s mark in a way that is likely to lure consumers into exploring more about the defendant’s good. Consumers are initially likely to believe that the mark owner is the source of the defendant’s good.

Question 40

Post Sale Confusion

Answer 40

This confusion occurs subsequent to the point of sale: a defendant uses the mark owner’s mark in a way that is likely to cause members of the public — who are not yet actual purchasers of the defendant’s good — to mistakenly believe that the mark owner is the source of the defendant’s good.

Question 41

Reverse Confusion

Answer 41

This confusion occurs when consumers mistakenly believe that a mark owner’s good derives from the defendant, as opposed to forward confusion (the normal case) where consumers mistakenly believe that a defendant’s good derives from the mark owner. Reverse confusion usually occurs where a defendant (junior user) is so large that its market share causes consumers to believe that it is the mark owner (senior user).

Question 42

Contributory Infringement

Answer 42

Contributory infringement occurs where a manufacturer or distributor intentionally induces another to infringe a trademark, or where a manufacturer or distributor continues to supply a product to one whom it knows (or has reason to know) is committing trademark infringement. There must be an underlying act of direct infringement for there to be contributory infringement.

Question 43

Vicarious Infringement

Answer 43

Vicarious infringement occurs where an agent actor directly infringes a trademark on behalf of a principal.

Question 44

Dilution

Answer 44

Owners of famous marks have a right to prevent anyone from using their mark in a way that would dilute it. Dilution is the lessening of the capacity of the mark to identify and distinguish the mark owner’s good. Dilution can occur through blurring or tarnishment.

Question 45

Blurring

Answer 45

Blurring occurs where a defendant uses the mark in a way that is likely to result in a mental association by the consumer between the defendant and the mark owner.

Question 46

Tarnishment

Answer 46

Tarnishment occurs where a defendant uses another’s mark in a way that results in degrading, inappropriate, or unflattering associations with the famous mark.

Question 47

Fame

Answer 47

The dilution right applies only to famous marks. To be famous, the mark must be widely recognized by the general consuming public of the United States.

Question 48

Exclusions

Answer 48

The following uses of a mark are not actionable as dilution:

(1) a fair use in connection with comparative advertising or with parodying, criticizing, commenting, or identifying the famous mark owner;
(2) news reporting and news commentary; and
(3) non-commercial use.

Question 49

Defenses

Answer 49

As a defense, a defendant may challenge the validity of a mark or the allegation of infringement or dilution. A defendant may also assert any number of affirmative defenses, including laches, unclean hands, fraud in obtaining the mark, and fair use.

Question 50

First Sale

Answer 50

A purchaser who does no more than “stock, display, and resell” a trademarked product (under the producer’s trademark) does not violate any right of the mark owner. However, this doctrine does not protect a purchaser who materially alters the product prior to re-selling.

Question 51

Descriptive Fair Use

Answer 51

Descriptive fair use occurs where a defendant uses a mark in a descriptive sense to identify the defendant’s own good. This may apply to a defendant’s use of any sort of distinctive mark — not only descriptive marks. Courts examine three elements:

(1) Defendant does not use the term as a trademark;
(2) Defendant uses the term “fairly and in good faith”; and
(3) Defendant uses the term “only to describe” its own product.

Question 52

Nominative Fair Use

Answer 52

Nominative fair use occurs where a defendant uses a mark to identify the mark owner’s good. Courts examine three elements:

(1) The good of the mark owner is one that may not be readily identified without use of the trademark.
(2) The defendant uses only so much of the mark as reasonably necessary to identify the good.
(3) The defendant is not doing anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the mark owner.

Question 53

Remedies

Answer 53

Injunctive and monetary relief are both available to a prevailing mark owner. Principles of equity govern both types of relief, which means a court has great discretion in fashioning the remedy. Injunctions are limited to geographic boundaries of mark use. Monetary relief may include profits of the defendant, damages sustained by the mark owner, and costs of the legal action.

Question 54

Passing Off

Answer 54

Passing off (or palming off) occurs when a producer of a good misrepresents his own good as someone else’s. It is a common law doctrine that is also enforceable under the Lanham Act as a “false designation or representation.”

Question 55

Reverse Passing Off

Answer 55

Reverse passing off occurs when a producer misrepresents someone else’s goods as his own. It is a common law doctrine that is also enforceable under the Lanham Act.

Question 56

Right of Publicity

Answer 56

States protect some combination of the name, image, and likeness of a celebrity.

Question 57

Requirements for Protection

Answer 57

A work must be original and fixed in a tangible medium to receive copyright protection. The IP Clause requires both elements.

Question 58

Originality

Answer 58

To be original, an author must create the work independently and the work must exhibit a minimal degree of creativity.

Question 59

Non-Discrimination Principle

Answer 59

Judges should not evaluate the aesthetic merit of a work in determining whether the work is eligible for copyright protection.

Question 60

Facts

Answer 60

Facts that do not owe their origin to human authorship lack originality. Facts that derive from human authorship are sufficiently original to receive copyright protection.

Question 61

Compilation of Facts

Answer 61

Compilation of facts can be copyrighted if there is sufficient creativity manifested in the selection and arrangement of the facts within the compilation. Copyrights in compilations are inherently thin.

Question 62

Sweat of the Brow

Answer 62

Efforts at creating a work do not give rise to originality.

Question 63

Fixation

Answer 63

A work is fixed when its embodiment is in a tangible medium that permits it to be perceived for more than transitory duration.

Question 64

Categories of Works

Answer 64

There are eight categories of works that may be copyrighted:

(1) literary;
(2) musical;
(3) dramatic;
(4) pantomimes and choreographic;
(5) pictorial, graphic, and sculptural;
(6) motion pictures and other audiovisual;
(7) sound recordings; and
(8) architectural.

Question 65

Idea-Expression Dichotomy

Answer 65

Ideas that underlie expression may not be copyrighted. Ideas include the subject matter of expression that consists of a process, system, method of operation, concept, principle, or discovery. They also include an abstraction of the actual expression. The line between unprotected ideas and the actual expression is determined on a case-by-case basis. An expression that is creative and unique is given greater protection.

Question 66

Scènes à Faire

Answer 66

The scènes à faire doctrine examines the practicality of copyrighting incidents, characters, or settings in treating a particular topic. If such aspects of a topic are practically indispensable to its treatment, they are not copyrightable.

Question 67

Merger Doctrine

Answer 67

Where an idea can be expressed in only one way, the idea merges in the expression. As a result, that expression of the idea cannot be copyrighted.

Question 68

Copyrightable Characters

Answer 68

A fictional character of a story may constitute copyrightable expression (as opposed to an unprotected idea), depending on the distinctive nature of identifiable traits of the character.

Question 69

Useful Articles

Answer 69

Useful articles are objects that do not have a primary function of portraying their own appearance or conveying information. Useful articles cannot be copyrighted if their aesthetic features cannot be identified separately from their utilitarian aspects.

Question 70

Conceptual Separability

Answer 70

In applying the useful article doctrine, courts examine the conceptual separability of a work: are the aesthetic features conceptually separable from its utilitarian aspects? The Court has introduced a two-part test for assessing conceptual separability: a design feature of a useful article is conceptually separable if the feature

(1) can be perceived as a two or three-dimensional work of art separate from the useful article

and

(2) would qualify as a protectable work — either on its own or fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.

Question 71

Assistants (or Helpers)

Answer 71

A person who merely acts under an author’s authority to place the copyrighted work in a tangible medium does not have an interest in the copyright.

Question 72

Joint Work

Answer 72

Where more than one person has created a work, each person is a joint author in a joint work. Each author holds an equal ownership interest in the whole of the work, regardless of whether each author contributed an equal amount of effort or content to the work.

Question 73

Statutory Test for Joint Work

Answer 73

The Copyright Act requires three elements for a joint work to exist:

(1) there are at least two authors;
(2) there is an intent by the authors that their contributions be merged; and
(3) the merger of contributions results in inseparable or interdependent parts of a whole.

Question 74

Judicial Tests for Joint Work

Answer 74

Courts examine a variety of factors to determine whether a collaborator is a joint author, including:

• whether a contract clarifies authorial rights;
• whether a collaborator exercises control over a work;
• whether there is mutual intent to be joint authors;
• whether audience appeal turns on a contribution; and
• whether a contribution is independently copyrightable.

Question 75

Work Made for Hire

Answer 75

A work made for hire vests authorship rights with the employer of the person who created the work. A work made for hire may exist if and only if one of two situations arises:

(1) an employee prepares the work within the scope of an employment relationship; or
(2) the hiring party and the creator agree in a written instrument that a specially-ordered or commissioned work is a work made for hire, and the work falls within one of the eight designated categories.

Question 76

Employment Relationship

Answer 76

Courts employ the common-law agency test to determine whether an employment relationship exists between a creator and the hiring party. That test examines a multiplicity of factors.

Question 77

Scope of Employment

Answer 77

Courts apply the common-law test to determine whether a creator made a work within the scope of her employment:

(1) the work was of the type for which the employee was hired to perform;
(2) the employee’s creation of the program occurred substantially within the authorized time and space limits of her job; and
(3) the work was actuated by a purpose to serve the employer’s interests.

Question 78

Transferability & Divisibility

Answer 78

A copyright initially vests with the author of a work. The copyright may then be transferred, either as an assignment (transfer of the entire copyright) or as a license (transfer of something less than the entire copyright). Copyrights may be divided by rights, time, and place.

Question 79

Exclusive and Non-Exclusive Transfers

Answer 79

Transfers may be exclusive, where the author does not retain for himself or anyone else the copyright right that he transfers. Alternatively, the transfer may be non-exclusive, where the author does retain for himself or someone else the right that he transfers.

Question 80

Writing Requirement for Exclusive Transfer

Answer 80

To effectuate an exclusive transfer of rights, a copyright owner must sign a writing that manifests her intent to transfer rights.

Question 81

No Writing Requirement for Non-Exclusive Transfer

Answer 81

Oral or circumstantial evidence is sufficient to effectuate a non-exclusive transfer of rights. An implied transfer is possible.

Question 82

Termination Right

Answer 82

An author may terminate an assignment or license thirty-five years after the transfer date.

Question 83

Five Exclusive Rights (in Copyright)

Answer 83

There are five rights in copyright:

(1) reproduction;
(2) derivative works;
(3) public distribution;
(4) public performance; and
(5) public display.

Question 84

Reproduction Right (in copyright)

Answer 84

A copyright owner has a right to reproduce the work in copies or phonorecords.

Question 85

Infringement of Reproduction Right

Answer 85

Infringement occurs when a defendant makes an unauthorized copy. Two elements must be established:

(1) copying in fact;
(2) improper appropriation.

Question 86

Copying in Fact

Answer 86

Direct or circumstantial evidence may establish this element. Circumstantial evidence requires proof of access and similarity.