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Trademark & Unfair Competition > Final Exam > Flashcards

Final Exam Flashcards

Trademarks and Unfair Competition Blattner, Spring 2014 Distinctiveness: Significant number of purchasers (secondary meaning...) More on Infringement?

1
Q

Definition of Trademark

3 Types, Purpose, and 5 Examples

A

SOURCE IDENTIFICATION

Word, Logo, or Package Design used to identify and distinguish one’s goods or services.

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2
Q

Landes & Posner

Trademark Theory & 3 Points

A

Economic Efficiency

  1. Encourages Consistent Quality
  2. Lowers Search Costs
  3. Rejects Rent-Seeking/Economic Deadweight Argument
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3
Q

Subject Matter

Non-Trademarkable

A
  1. Generic Terms
    - Kellogg’s Shredded Wheat
  2. Functional (Traffix Devices Inc.)
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4
Q

Subject Matter

Trademarkable with Secondary Meaning

A
  1. Surnames (First Names in Peaceable Planet v. Ty, Inc.)
  2. Color (Qualitex & LSU) (Never ID) (Possibly Functional: Sweet N’ Low Case)
  3. Product Configuration
  4. Location (Waltham Watches)
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5
Q

Distinctiveness

Four Degrees & Requirements

A
  1. Arbitrary/Fanciful (Inherently Distinctive)
  2. Suggestive (Inherently Distinctive)
  3. Descriptive (Needs Secondary Meaning)
  4. Generic (Unprotectable)
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6
Q

Suggestive Marks

Definition & Conceptual Test

A

Imagination, Thought, or Perception required to reach a conclusion on the nature of Goods or Services

Abstraction Necessary

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7
Q

Descriptive Marks

A

Immediately convey knowledge of Ingredients, Qualities, or Characteristics of Goods or Services

No Abstraction (e.g., Quik-Print)

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8
Q

Suggestive vs. Descriptive

Two (Non-Exclusive) Tests

A

Imagination Test: Is Imagination or a Mental Leap necessary to reach a conclusion as to nature of the G/S?

Competitors’ Need Test: Extent to which competitors need mark to identify their own G/S.
-Less likely to be needed the more Fanciful the mark.

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9
Q

Subject Matter

Fanciful Issues

A
  1. Sounds: If Unique/Distinctive (Unexpected Sound: Vortex & Nextel)
  2. Architecture: If Used as a Source Identifier (Continuously)
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10
Q

Establishing Distinctiveness

Two Methods

A
  1. Inherently Distinctive (Fanciful)

2. Secondary Meaning (Descriptive)

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11
Q

Trade Dress: Distinctiveness

Two Types & Requirements & Citation

A

Trade Dress - Product Packaging: Inherently Distinctive

Trade Dress - Product Configuration: Secondary Meaning
-Never Inherently Distinctive

Wal-Mar v. Samara (SCOTUS, Scalia)

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12
Q

Inherently Distinctive
Restatement’s Definition
4 Part Framework

A
  1. Nature of designation and context in which it’s used,
  2. prospective purchasers are
  3. likely to perceive it (word, symbol, etc.) as a
  4. source designator.
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13
Q

Secondary Meaning

7 Test Factors

A
  1. Duration (Cannot be Established instantly, see Chrysler)
  2. Volume of Sales
  3. Amount/Manner of Advertising
  4. Nature of Use
  5. Survey Evidence
  6. Direct Testimony
  7. Defendant’s Intent
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14
Q

Collective Trade/Service or Membership Mark

A

Indicates product or corporation belongs to a group of products or members not owned by users.

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15
Q

Certification Mark

Purpose, 2 Requirements, 4 Methods to Lose/Forfeit

A

Certifies origin, quality, etc.

  1. Requires Owner’s Permission
  2. Mark’s Registration

Loss of Certification Mark:

  1. No Legitimate Use
  2. Owner Engages in Production of G/S Marked
  3. Permits Use other than for Certification
  4. Discriminates
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16
Q

Trademark Ownership

2 Determinative Factors & Example

A
  1. Control: Whoever Affects the Trademark’s Image
  2. Priority: First Usage

Example: Streetwise (“New Edition” band): members, not producer, controlled image.

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17
Q

Use in Commerce

2 Part Rule & 2 Non-Uses

A
  1. Bona Fide (Not Token)
  2. Public Distribution

Internal Use = Insufficient (Blue Bell slacks)
Token Use = Insufficient (P&G Usage in Remote Areas)

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18
Q

Limited Area Defense

Pre-Registration 5 Part Rule

A

Protects Junior User if:

  1. Likelihood of Confusion
  2. Used Pre-Plaintiff’s Registration
  3. Continuous Use in Area
  4. Good Faith without Notice of Infringing Use
  5. No (Later) Junior Expansion

Thrift Cars Case

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19
Q

Limited Area Defense

Post-Registration 3-Part Rule

A
  1. Separate Regions
  2. Infringing Use May Continue
  3. Until Registrant Enters Region
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20
Q

Bona Fide Intent to Use

A

Objective Good Faith Standard

  • Picking out name, designed product, etc. with outstanding requirements = Likely BF
  • Registering Multiple Marks = Probably BF
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21
Q

Trademark Registration
(Principal Registry)
7 Main Advantages

A
  1. Nationwide Protection from Date of Application
  2. Incontestability (After 5 Years)
  3. Constructive Notice (& Searchability)
  4. Commercial Exploitation (eg, Franchising)
  5. Preemption of State Regulations
  6. Evidentiary Advantages
  7. Use of ®
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22
Q

Trademark Registration
(Supplemental Registry)
Requirement & 2 Advantages

A

Must be CAPABLE of Distinguishing G/S

  1. Detterance Factor
  2. Use of ®
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23
Q

Priority

A

Priority

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24
Q

Priority

A

Priority

25
Q

8 Bars to Registration

A
  1. Immoral, Scandalous, or Disparing Marks
  2. Deceptive Terms
  3. False Suggestion of Connection
  4. Flags, Presidents, & Living Individuals
  5. Likelihood of Confusion
  6. Geographic Terms
  7. Surnames
  8. Functionality
26
Q

Deceptively Misdescriptive

Two Part Test & Effect

A
  1. Misdescriptive of Character, Quality, Function, Composition, or Use of Goods?
  2. Are Prospective Purchasers Likely to believe description ACTUALLY describes goods?

Bar to Registration UNTIL Secondary Meaning Acquired
(“Organic” Bayer = Deceptive)

27
Q

Deceptive

Three Part Test & Effect

A

Deceptively Misdescriptive Parts:

  1. Misdescriptive of Character, Quality, Function, Composition, or Use of Goods?
  2. Are Prospective Purchasers Likely to believe description ACTUALLY describes goods?
  3. Misdescription Likely affects a Significant Portion of the Relevant Consumers’ Decisions to Purchase

Permanent Bar to Registration
(“Organic” Bayer Case)

28
Q

False Suggestion of Connection

A
  1. Same or Close Approximation of Plaintiff’s previously used Name or Identity
  2. Mark would be recognized as such (unique to Plaintiff)
  3. Lack of Connection to Defendant’s Activities
  4. Plaintiff’s Name has Sufficient Fame or Reputation that its Use creates a Presumed Connection to Plaintiff
    (Twiggy Case = Use Barred)
29
Q

Surname Bar: Definition

Case & Rationale

A

Act Prohibits a Mark which is Primarily Merely a Surname

Quadrillion: Bramley = Surname: Remote Village & Apple Name = Insufficient

30
Q

Surname Bar

Test & 4 Factors

A

Test: Significance to Purchasing Public

  1. Surname Rareness
  2. Whether Anyone connected with Applicant has Surname
  3. Whether It has Recognized Meaning Beyond Surname
  4. Structure & Pronunciation (Look & Sound)
31
Q

Geographic Bar:
Definition & 2 Part Test
(Case & Rationale)

A

Primarily Geographically Descriptive
1. Place known Generally to RELEVANT Public
2. Public would make a Good-Place Association
Exception: If Place is SO Remote as to be Unknown

(Baik: Russian speaking vodka drinkers = Relevant Public and they would make association)

32
Q

Number Bar

A

Trademarkable if Used as a Source Designator, not Gradation (747 jets)

33
Q

Likelihood of Confusion Bar

Registration vs. Infringement

A

Registration (PTO): Similarity in Sight, Sound, and Meaning

Infringement (Court): Actual Confusion

34
Q

Loss of Trademark: Overview

Four Methods

A
  1. Genericism
  2. Abandonment
  3. Assignment in Gross
  4. Naked Licensing
35
Q

Genericism
Two Features & Exception
(Two Cases)

A
  1. Public conflates trademark name with product.
  2. Competitors are unable to describe product without using that name.

Exception: Competitor may NOT use trademark in an effort to make it generic (Stix: “Contact Paper” case)

Bayer’s Aspirin & Kellogg’s Shredded Wheat

36
Q

Abandonment

Two Part Test

A
  1. Non-Use, AND
  2. No Intent to Resume (presumed after 3 years)

Intent = Reasonably Foreseeable Future (CBS’s TV show case with a 20 year lapse)

37
Q

Two Abandonment Issues

Three Cases

A

Residual Significance: Adopter must take reasonable precautions to prevent confusion during this time
(Exxon’s rebranding of a purchased company & American Lawyers name change)

Sports Relocation: Dodger’s restaurant upheld, but team adopting Colts’s name rejected.

38
Q

Assignment in Gross

Effect, Rule, & Case

A

Transfers mark without accompanying goodwill or priority.

If Good are not Substantially Similar (in Nature & Quality) = Assignment in Gross

Heartland Shoes Case: Sears made women’s pixie boots, and assignee made men’s boots = Not Substantially Similar

39
Q

Naked Licensing

A

Allowing another to use mark without exercising Reasonable Control over G/S or business.

(Eva Bridal: No Agreement or Oversight = Naked. Quality is NOT relevant. Customer’s Expectations are relevant.)

40
Q

Infringement of ® Trademark

Five Elements

A
  1. Valid Registered Mark
  2. Defendants Used Mark
  3. In Commerce
  4. In Connection with Sale or Advertisement
  5. Without Consent
41
Q

Infringement Cases

Use in Commerce

A

Naked Cowboy: A similar character appeared in a show and was posted on YouTube with Adwords & Tags (sparely, not as a single term)
=Insufficient “Use In Commerce”

1-800 Contacts: Using competitor’s name for Adwords = “Use or Display”

Rescuecom: Google’s recommendation of another’s trademark = Use (& Infringement)

42
Q

Infringement Case

Repair/Modifications Test

A

Karl Storz Endoscopy
Extensive Repair = Reconstruction (only using branded part in repair with new parts) was Potentially Misleading.

  1. Whether End-Users (not one requesting repair) are Likely to be Mislead
  2. Nature & Extent of Alterations
  3. Nature of Device & Design (Useful Life of Components)
  4. Market for Service or Spare Parts?
43
Q

Likelihood of Confusion

The 9 Polaroid Factors

A
  1. Strength of Mark
  2. Similarity between Marks
  3. Proximity of Products
  4. Likelihood that Prior Owner will Bridge Gaps)
  5. Actual Confusion
  6. Good Faith in Adoption
  7. Quality of Products
  8. Sophistication of Buyers
  9. Marketing Channels
44
Q

Similarity of Marks

Three Factors

A
  1. Sight
  2. Sound
  3. Meaning
45
Q

Bridging the Gap

A

Objective Evidence of Intent

-Possibility or Unsurprising expansion is usually not enough

46
Q

Strength of Mark

A
  1. Conceptual Strength (Relative to other Marks)
  2. Commercial Strength (Marketplace Recognition)

Inherent Distinctiveness isn’t enough, but powerfully supportive (Maker’s Mark)

47
Q

Likelihood of Confusion

Customers & Timing & Note

A
  1. Relevant Customer (Specific Audience): Sophistication is Important (Wines Cases v. ActiveBatch Case)
  2. Either at Point of Sale or in Advertising/Attracting Customers (Blockbuster v. Video Buster)

Mental Association (alone) is Not Sufficient (Louis Vuitton)

48
Q

Contributory Infringement
Two Liability Methods
(Two Cases)

A
  1. Induced Infringement
  2. Allowed Infringement to Happen (Aid/Abet with Constructive Knowledge)

Inwood Labs: Pharma Companies knew pharmacists were selling Generic as Brand (changing color capsules) = Contributorily Liable.

Ebay v. Tiffany: Counterfeit listings existed (general knowledge) NOT enough to incur Liability.
-User Complaints are sufficient incentive to take down (which Ebay did)

49
Q

Trade Dress Analysis

A
  1. Functional (Packaging or Design/Configuration)?
  2. Packaging or Design/Configuration?
    PACKAGING = May be Inherently Distinctive (Seabrook Test)
    CONFIGURATION = Never Inherently Distinctive (Need Secondary Meaning)
  3. Confusing Similarity?
50
Q

Tertium Quid

Relative Position/Meaning & Two Cases

A

Trade Dress:

  1. Packaging (Possibly Inherently Distinctive)
  2. Design/Configuration (Never Inherently Distinctive)
  3. Tertium Quid - Something other than above two (Possibly Inherently Distinctive)

Two Tacos (Scalia): Inherently Distinctive when referring to look and feel of restaurant.

WalMart v. Samara Bros (Scalia): Clothes were Product Design or Configuration and needed Secondary Meaning (unless Two Tacos).
-Rule: If not clearly packaging, assume Configuration/Design.

51
Q

Functionality Analysis

Effect & 3 Factors

A

Functional = Non-Trademarkable (even with Secondary Meaning)

  1. Essential to Use or Purpose of Article
  2. Affects Cost or Quality
  3. Non-Reputation related Disadvantage if Unusable
52
Q 
Unfair Competition (§43(a)(1)(a))
Three Covered Instances
A
  1. False Advertising (Origin or Fact or Sponsorship, etc.)
  2. Dilution
  3. Cyber Squatting

Covers Unregistered Marks

53
Q

Incontestability

Requirement & 9 Exceptions & Note

A

5 Years of Continuous Use (§15)

  1. Fraudulent Acquisition
  2. Abandonment
  3. Use of Mark to Misrepresent Source
  4. Fair Use Defense
  5. Limited Territory Defense
  6. Prior Registration by Defendant
  7. Use of Mark to Violate Anti-Trust Laws
  8. Functionality
  9. Equitable Principles

Arguing Mark = Merely Descriptive is INSUFFICIENT

54
Q

Equitable Principles Defense

Three Instances

A
  1. Laches
  2. Estoppel
  3. Acquiesce
55
Q

Overcoming First Amendment Defense
Test (2 Prongs) & 2 Exceptions
(Case)

A

Public Interest in Confusion Outweights Artistic Expression:

  1. NO Artistic Relevance, or
  2. Explicitly Misleading (as to Sponsorship or Source)

Potential Confusion must be realistic (Strip Club vs. Rock Star Games)

56
Q

Parody Defense
Conceptual Analysis
3 Points & Case

A

Likelihood of Confusion

  • Artistic Relevance Presumed
  • Some Similarity is Necessary
  • More Likely to be Parody is Less Commercial

Cliff’s Notes vs. Spy Notes: Spy explicitly referenced its “satire” nature.

57
Q

The Barbie Cases

Trademark as Speech

A

Barbie Girl Song: Used First Amendment Test and upheld usage of Trademark in song.

  • Not Self-Promoting (like Cat in the Hat)
  • Discussing BARBIE

Barbie Photo Shoot: Court used Nominative Fair Use (Lanham Act, instead of First Amendment).

  1. Had to Use Barbie to make statement
  2. Only Used as much as necessary
  3. No Suggestion of Sponsorship or Endorsement (critical photos clearly not good for Mattel)
58
Q

Classic Fair Use Defense

Protection & 2 Cases

A

USE of Mark ONLY to DESCRIBE Defendant’s OWN product and NOT AT ALL to describe Plaintiff’s.
-Fair Use is not limited to Descriptive terms only…

Sneakers Case & Pine-Tree Car Freshener Case

59
Q

Nominative Fair Use Defense

Protection & 3 Cases

A

Use of Plaintiff’s Mark to Describe Plaintiff’s Product, EVEN IF the Defendant’s Ultimate Goal is to Describe His Own Product.

Discussion of Plaintiff’s Mark can simply be a Non-Trademark Use (not subject to Infringement)

  • New Kids on the Block Survey
  • Former Steppenwolf Member

+Abercrombie’s Surfer Photo

Trademark & Unfair Competition (2 decks)

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