Final Spring 2014 Flashcards
A letter from the owner of a trade secret or copyright, patent or trademark that requests that alleged illegal activity be stopped immediately
cease and desist letter
a method of developing proprietary material in which an isolated development team is monitored. the purpose is to provide evidence that similarities to others works or products are due to legitimate constraints and not copying (paper trail)
clean room
information of any type organized in a manner to facilitate its retrieval
database
*a law making it a federal crime to steal a trade secret or to receive or possess trade secret information knowing that it is stolen
economic espionage act
*a contract in which one party promises to submit an idea and the other party promises to evaluate it. after, the evaluator will either enter into an agreement to exploit the idea or promise not to use or disclose the idea
evaluation agreement
when one person stands in a special relationship of trust, confidence or responsibility to another
fiduciary relationship
*information is __________ if it has been published or publicly displayed or is commonly used within an industry
generally known
*the illegal acquisition of trade secrets through theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means
improper means
under this court-made rule, adopted by only a few courts, a court can stop an ex employee from working for a competitor if the former employer shows that the employee will inevitably disclose trade secures of the former employer
inevitable disclosure doctrine
a particular kind of technical knowledge that may not be confidential but that is needed to accomplish a task. this is separate from agreement and something different often separately licensed
know-how
a contract giving written permission to use an invention, creative work, trade secret or trademark, in return for payment
license
the theft or illegal disclosure of trade secrets
misappropriation
a contract in which a person or company agrees not to compete with the business of another company for a period of time. (different enforcement in all states)
noncompetition agreement
an agreement that restricts an ex employees ability to solicit clients or employees of the ex employer
nonsolicitation provision
an agreement in which one party pays the other for the opportunity to later exploit an innovation, idea, or product
option agreement
information is readily ascertainable if it can be obtained legally within an industry, at a library or through publicly available reference sources
readily ascertainable
disassembly and examination of products that are available to the public
reverse engineering
any word, symbol, design, device, slogan or combination that identifies and distinguishes goods
trademark
any formula, pattern, device or compilation of information that is used in business, that is not generally known, and that gives the owner of the secret an opportunity to obtain an advantages over competitors who do not know or use it
trade secret
a mark is considered abandoned when its use in commerce has been discontinued with intent not to resume such use. duration of nonuse depends on the individual country or jurisdiction
abandonment
failure to take action against infringing parties, or other actions indicating either implicitly or explicitly that nothing will be done about infringing activities. can lead to loss of trademark rights
acquiescence
a mark that is not inherently distinctive (for example, those that are merely descriptive, surnames or geographic indicators) may nevertheless become capable of serving as a trademark by becoming associated in the mind of the relevant public with a particular source of goods and services as a result of extensive advertising and widespread use in commerce
acquired distinctiveness
when a consumer is intact confused as to the source of goods or services because of similarity between two marks
actual confusion
aspect of the functionality doctrine. product or packaging features that are not purely utilitarian, but are aesthetically pleasing and are an important ingredient in the commercial success of a product, may be considered de jure functional and therefore not eligible for trade dress or trademark protection
aesthetic functionality
weakening the distinctiveness of a famous mark: one form of dilution
blurring
the commercial “persona” of a particular product or service, established by marketing and advertising: often captured via one or more marks
brand
an assessment of the value a particular trademark holds for its owner: often considering the nature and history of use, length, and volume of sales and advertising, number of licenses granted and other factors
brand valuation
a letter sent by a trademark owner demanding that another immediately stop using its mark, typically accompanied by at least the implicit threat of a lawsuit (a warning, point which damages start to run)
cease and desist letter
any word, name, symbol, or device, or any combination theorem used by a person other than its owner ro certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of the goods or services of that person , in accordance with standards defined by the owner. Also used to indicate that the work or labor on the goods or services was performed by members of a union or other organization.
Certification Mark
The media in which the goods and/or services associated with the trademark are advertised; the vehicles used to market and/or sell them; and/or the target market to which they are sold. One of the polariod factors used to analyze likelihood of confusion between two marks.
Channels of Trade
Legal name under which a corporation conduits business, also known as a trade name. may or may not be used to identify a trademark
Corporate name
a spurious mark that is identical with, or substantially indistinguishable from, a registered mark. Also an inauthentic copy or imitation of a product, made to resemble the original, often marketed or sold under a spurious mark.
Counterfeit
Manufacture and/or sale of inauthentic products under spurious marks, both made to resemble the original.
counterfeiting
Registration of another’s mark as a domain name with bad-faith intent to profit from it.
cybersquatting
Serving primarily to describe the qualities, features, ingredients, purpose or characteristics of a product or service. Descriptive terms are not inherently distinctive, and are ineligible for trademark protection unless they are shown to have acquired distinctiveness or secondary meaning.
descriptive
The lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or of likelihood of confusion. Typically occurs as the result of blurring or tarnishment of the famous mark.
dilution
A statement in an application that a certain word or portion of a mark is not protected (e.g., because it is merely descriptive).
disclaimer
Marks that present a unique commercial impression.
distinctive
The level of prudence, activity, or care properly to be expected from a reasonable and prudent person under particular circumstances, not measured by an absolute standard but determined under the facts of the situation. When adopting a new mark, the purpose of carrying out a due diligence exercise is to avoid infringing the rights of others.
due diligence
Good faith use of another’s mark to describe one’s own goods or services. Affirmative defense to a claim of trademark infringement.
fair use
The advertising or promotion of products or services through the use of false, inaccurate, misleading or otherwise deceptive statements or practices; the boundaries vary from country to country, but generally it is considered a form of unfair competition subject to civil, and sometimes criminal, sanctions.
false advertising
A number of marks possessing a common feature, such as a common prefix (e.g., “Mc”), owned by the same party. A mark owner may be able to establish that another party’s mark that incorporates the common feature violates its rights, not in any one particular mark, but in the entire family of marks.
Family of Marks
Mark that enjoys a certain degree of reputation or recognition. Special protection is given to famous marks. Also, under U.S. law, a mark that is entitled to protection against dilution.
Famous Marks
A word or term that has no built-in meaning and is made up for the sole purpose of serving as a mark (e.g., KODAK for cameras; EXXON for petroleum).
Fanciful Mark
Section 43(c) of the Lanham Act, creating a cause of action in the U.S. that enables the owner of a famous mark to prevent third-party uses of the mark that might tarnish the mark or blur its distinctiveness.
Federal Anti-Dilution Act (FTDA)
Rule establishing that rights in a mark belong to the party that first uses a mark for particular goods or services, rather than to a party that later files an application to register the mark for those goods or services.
First to Use Rule
Doctrine providing that legal protection cannot be given to a product configuration or packaging trade dress that is primarily utilitarian if doing so would unduly restrict the ability of others to compete in the marketplace
Functionality
A word or phrase that is the common term associated with or known as a particular category of goods or services to which it relates, thereby ceasing to function as an indicator of origin. A term can either be generic from the outset, or can become generic usually through improper use over a long period of time.
Generic Term
Process by which a mark loses its distinctiveness, and hence its ability to function and be legally protected as a trademark. Usually occurs when a mark is used improperly, and over a long period of time, as the common name for a type or category of goods or services, rather than as an identifier for the goods or services of a particular party.
Genericide
Indicating or suggesting that goods come from a country, city or other location that is known as a source of products with certain characteristics caused by the geographic conditions of that location (e.g., “Champagne” for sparkling wines from the Champagne region of France).
Geographically Descriptive
Products identified by a trademark.
Goods
An intangible asset of a company that provides added value to a company’s worth (such as a recognizable brand). Protection of goodwill is one of the main purposes of trademark law.
Goodwill
Goods produced or sold abroad with the consent of the owner of the applicable intellectual property rights - copyright, patent or trademark - that are subsequently imported into the domestic market without the consent of the owner of the right(s).
Gray Market Goods
A mark or a portion thereof is considered “immoral” or “scandalous” if it consists of a word, phrase, picture, or the like, that is considered to be shocking to the sense of propriety, offensive to conscience or moral feelings or calling out for condemnation.
Immoral or Scandalous Matter
Benefit that may be granted to a U.S. federal trademark registration, after a certain time and under certain conditions, protecting it from challenge on grounds that the mark is confusingly similar to another mark, is functional or lacks secondary meaning.
Incontestability
Interference with or violation of trademark rights through unauthorized use of a mark.
Infringement
Marks that communicate to the consumer, when encountered for the first time, that they are identifying the source of goods and/or services rather than merely describing the goods and/or services themselves. Inherently distinctive word marks can be further classified as suggestive, fanciful or arbitrary. Word marks that consist of generic or merely descriptive terms are not inherently distinctive.
Inherently Distinctive
Party that has adopted and used a mark later in time than another party (the “senior user”). Anyone subsequent to the first user. Must have a paper trail to show Sr. user.
Junior User
Unauthorized copy or imitation of a product, marketed or sold under a spurious mark. See Counterfeit.
Knock off
Equitable doctrine whereby a party is prevented by his own delay or inaction from claiming a right or entitlement, to the detriment of some other party that was entitled to, and did, rely on that delay or inaction.
Laches
Common name for the U.S. Trademark Act of 1946. The federal statute governing the registration and maintenance of marks in the United States, and providing a cause of action for infringement, unfair competition, dilution, and cybersquatting. 15 U.S.C. 1051
Lanham Act
The means by which the proprietor of a mark (the “licensor”) gives permission to another party (the “licensee”) to carry out an action, such as to use its trademark under specified conditions, that would otherwise constitute infringement.
License
The prospect that consumers might be confused as to the sources of goods or services represented by two similar marks; the basic standard for trademark infringement. Basic Standard: Would typical consumer be confused
Likelihood of Confusion
The prospect that a famous mark might be tarnished, or its distinctiveness blurred, by another mark. Recently rejected by the U.S. Supreme Court as a basis for liability under the Federal Trademark Dilution Act.
Likelihood of Dilution
Connection between the content of two different files (or different parts of a single file), either on the same or another website.
Link
Any word, name, symbol, or device, or any combination thereof, used to identify the goods or services of one party and distinguish them from the goods or services of other parties, and to indicate the source of the goods or services. Encompasses trademarks, service marks, certification marks and collective marks.
Mark
Indication on goods, or in connection with services, that a mark is registered or that rights are claimed in the mark either by the international � (symbol) (for registered marks) or by other symbols or wording permitted or required by the law of a country.
Marking
Serving primarily to describe the qualities, features, ingredients, purpose or characteristics of a product or service. Merely descriptive terms are not inherently distinctive, and are ineligible for trademark protection unless they are shown to have acquired distinctiveness or secondary meaning.
Merely Descriptive
Mark designed to be confusingly similar to an existing mark, for the purpose of passing off one’s goods or services as those of another.
Mismark
Pretence by one person that his goods or services are those of another.
Passing Off
Factors typically analyzed by courts to determine whether a likelihood of confusion exists between two marks (named after the famous case, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961), in which they were articulated). They include: (a) the strength of the plaintiff’s mark; (b) similarity of the marks; (c) relatedness of the goods or services; (d) overlap in marketing channels for the goods and services; (e) likelihood that the plaintiff might enter the market for the defendant’s goods and services; (f) evidence of actual confusion; (g) the defendant’s intent in adopting its mark; (h) the sophistication of the target market, i.e., the degree of care consumers are likely to exercise in distinguishing between goods and services from different sources.
Polaroid Factors
Monitoring the marketplace for unauthorized or improper uses of a mark, and pursuing enforcement of one’s rights accordingly.
Policing
Statutory presumption that a party that has not used its mark for two years has abandoned its rights in the mark, i.e., has discontinued use with intent not to resume use.
Presumption of Abandonment
Marks consisting of a person’s last name are generally refused registration unless the applicant can demonstrate that the mark is not perceived primarily as a surname or has, at least as to the applicant’s goods or services, achieved secondary meaning.
Primarily a Surname
Use of a mark that occurs before a confusingly similar use of the same mark. The first person to use a mark has prior rights and may exclude all subsequent users of the mark in the relevant territory.
Prior Use
Proof that a mark has been used in commerce in connection with the identified goods and/or services - usually, a specimen of the mark as used in commerce and a signed declaration from the applicant attesting to the date of first use. May be filed in conjunction with an application based on use in commerce, or as part of a Statement of Use or Amendment to Allege Use in conjunction with an Intent-to-Use (ITU) Application.
Proof of Use
Obligation to ensure that goods and services sold under one’s mark conform to consistent standards of quality. Vital in a trademark license because unfettered use of a mark by a licensee can cause loss of trademark rights.
Quality Assurance
Mistaken belief that the senior user of a mark is copying or imitating the mark of a junior user. Usually occurs when the junior user is bigger or more widely known than the senior user, or when the junior user launches its mark with a massive advertising campaign while the senior user’s mark has not become known.
Reverse Confusion
Doctrine under which an individual can prevent others from exploiting the commercial value of his or her identity without permission.
Right of Publicity
Payment made by a licensee in return for permission to use another’s mark.
Royalty
A word, design, etc., that is not inherently distinctive (for example, those that are merely descriptive, surnames or geographic indicators) may nevertheless become capable of serving as a mark as a result of widespread use and extensive advertising, such that it becomes associated in the mind of the relevant public with a particular source of goods and services.
Secondary Meaning
Any word, name, symbol, or device, or any combination thereof, used to identify the services of one party and distinguish them from the services of other parties, and to indicate the source of the services.
Service Mark
Symbol indicating that a word, design, etc., is being used as a service mark, notwithstanding that it has not been registered.
SM Symbol
Sounds (including musical compositions) are protectable as marks provided they are capable of distinguishing the goods or services of one party from those of other parties.
Sound Mark
An actual article (or photograph of such article) showing a mark as used on or in connection with the goods or services claimed in an application or registration.
Specimen
The ability of a mark to distinguish the goods and services of one party from those of other parties. Arises from inherent distinctiveness or from acquired distinctiveness, as well from other factors such as length of use, extent of advertising penetration, etc.
Strength of Mark
Word or term calling to mind some attribute or benefit from the goods or services, but not directly describing them (e.g., COPPERTONE for tanning lotion; WHIRLPOOL for washing machines).
Suggestive Mark
Market research for determining people’s knowledge or opinion about a subject. E.g., can be used to establish a mark’s notoriety in a certain market or within a certain group of people.
Survey
Legal principle whereby an owner may make slight alterations in a mark without abandoning rights in the original.
Tacking
Weakening the distinctiveness of a famous mark, usually through inappropriate or unflattering associations; one form of dilution.
Tarnishment
The overall commercial image of a product or service; may include the design or configuration of a product; the packaging of goods; and/or the d�cor or environment in which services are provided. Can consist of such elements as size, shape, color, etc., to the extent such elements are not functional.
Trade Dress
The name used by a company in its business activities. Also known as “commercial name.” A company’s trade name may also be its corporate name, and it may or may not also be used as a mark.
Trade Name
Any word, name, symbol, or device, or any combination thereof, used to identify the goods of one party and distinguish them from the goods of other parties, and to indicate the source of the goods. Often used interchangeably with mark to identify either a trademark or a service mark.
Trademark
Common law cause of action encompassing trademark infringement as well as other unfair business practices such as false advertising and passing-off.
Unfair Competition
The marketing or sale of goods or services under a trademark.
Use
The bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. A trademark is deemed to be in use in commerce when it is placed in any manner on goods, or on their containers or packaging, or on tags or labels affixed to them, or on documents associated with the goods or their sale; and when the goods are transported or sold in commerce. A service mark is deemed to be in use in commerce when it is used or displayed in the sale or advertising of services, and the services are rendered in commerce.
Use in Commerce
Mark that in view of its widespread reputation may enjoy broader protection than ordinary marks.
Well-Known Mark
Mark created from existing words but have no meaning in relation to the goods or services. EX: Apple, Tide
Arbitrary Marks
marks that suggest, rather than describe, the goods or services or some characteristic thereof. The consumer must use imagination to understand the connection. Ex: Coppertone, Burger King.
Suggestive Marks
marks that describe either the goods or services or a characteristic or quality thereof. Ex: American Airlines. 1) laudatory words that attribute superiority to the goods (Gold Medal), 2) geographic terms, and 3) surnames. Marks are difficult to enforce unless the owner can show that the mark has become distinctive as applied to the goods are services.
Descriptive Marks
Marks consist of the common name of the goods or services to which they are applied. Not capable of acquiring secondary meaning when used in their generic sense, and thus are not protectable as marks when so used. Ex: computer, automobile, shuttle.
Generic Term
Name the 8 factors for likelihood of confusion
1) strength of mark, 2) proximity of goods, 3) similarity of the marks, 4) evidence of actual confusion, 5) marketing channels used, 6) type of goods and the degree of care likely to be exercised by the purchaser, 7) def intent in selecting the mark, 8) likelihood of expansion
Case that defines trade secret, where evidence to keep something secret helps P, involves furnace modifications
Metallurgical v. Fourtek
6 Rest. Factors for Trade Secret
1) extent known outside, 2) extent known by employees, 3) measures taken to guard, 4) value of information, 5) $ spent to develop, 6) ease/difficulty others can acquire or duplicate
Case where entity gives drawings of paper making parts out to vendors and Def acquires drawings to make P’s part. P wins b/c they took reasonable efforts to maintain secret
Rockwell Graphics v. DEV
Case: PC manual given out with each PC but is to be kept with purchaser. D acquires manual from a purchaser and uses it. P wins, P had non-disclosure language in sheet as sufficient precaution. Widespread Disclosure didn’t compromise secret
Data General v. Digital Computer
case where photographers fly over construction site to take pictures in order to acquire trade secrets via improper means
Dupont v. Rolfe
Case where the Def violated a position of trust by having an implied limitation in accessing shipping container blueprints
Smith v. Dravo
Case where Def reverse engineered paper making machine. P failed to meet burden to demonstrate misappropriation
Kedant v. Seeley Machine
Trademarks law was common law in the US until….
1870: first statute
The first US ™ statute was struck down by the Supreme Ct in
1879
Congress enacted a new law via the Commerce Clause for Trademarks, after the supreme court struck down the first one in….
1881
Year congress amended trademark law to add likelihood of confusion language
1905
Amendment to trademark law in the US before Lanham Act
1920
What section of the Lanham Act is the federal common law protection for Trademarks
43a
Case determining that color of pads for dry cleaning equipment can qualify for a ™ (so can shapes, sounds, and scents)
Qualitex v. Jacobsen
Case deciding that term had become generic and another term was descriptive with no secondary use thus not entitled to a trademark
Zatarans v. Oak Grove Smokehouse. Burden of proof always with the plaintiff in these cases.
What 2 categories require secondary meaning for a TM
personal name or geographic mark
Case deciding that if trade dress is inherently distinctive, secondary meaning isn’t required
Two pesos v. Taco cabana
Case determining that item at issue was Product Design, which requires secondary meaning to be trademarked. (Product packaging can be inherently distinctive but product design cannot). Note also: “tertium quid” means undefined)
Walmart v. Samara Bro.
case which found “primarily geographically deceptively misdescriptive” did not exist, b/c buyers wouldn’t be deceived and the mark was okay
In re Nantucket
International exception to prohibition on geo. desc marks. allowing use of certification marks
Appellations of Origin (GATT 1994)
Case where Google is infringing by using a company trademark name in its sales
Rescuecom v. Google
Case where there is a likelihood of confusion due to similarities between 2 boat design names
AMF v. Sleekcraft Boats
Portion of Lanham Act on Dilution
43c
High end purse as chew toy would not lead to consumer confusion and is fair use parody of mark
Louis vitton v. Haute Diggity Daug
Case where name became a generic use. The burden is on the D to prove that the alleged mark generic if the term at issue is claimed to be generic by reason of common usage or by reason of expropriation.
Murphy Door Bed v. Interior Sleep
Case deciding there is no trade dress for functional features (functional: essential for use or purpose of the article). Utilty patent is strong evidence of functionality. One who seeks protection has burden ℗. Once functionality established, secondary meaning N?A
Traffix devices v. marketing displays inc.
Case where auto company used famous singers voice and was found to be violating singers rights
Midler v. Ford. violating right of publicity
Case where apparently a talk show host had her right of publicity infringed, but a strong dissenting opinion would have held that it was satire.
White v. Samsung
trademarks in the 18th century were only protected by the common law of….
fraud
time when first state law was passed in US to prevent fraud, trademark legislation
late 1840s
no trademark case in the us was decided before . . . and the first injunction for trademark infringement was granted in . . .
1825 and 1844
Trademarks on goods date back…
as much as 4000 years
mark used by members of a cooperative, association, or other group or org.
collective mark
trade secret protection dates back to…
the roman empire
laws that protected trade secrets in european states date back to…
the renaissance
English and AMerican courts first recognized a cause of action for misappropriation of trade secrets in….
1817 and 1837
In the 20th century , the primp cal doc setting forth the law of trade secrets was the…
rest. of torts, published in 1939, sections 757 and 758.
US is required to have trade secrets laws per the international…
GATT TRIPS in 1994, article 39, paragraph 2, requires member nations to protect trade secrets
The model statute for trade secret law is called the _____ , began in ____ and is enacted by ____ states
Uniform Trade Secrets Act, 1979, 44 states and DC. Amended in 1985.
3 essential elements of trade secret…
1) not generally known to all, 2) p took reasonable precautions to prevent disclosure, 3) the defendant misappropriated the trade secret.
2 theories of trade secret
utilitarian property/incentive approach (encourage investment), tort theory (deterrence for wrongful acts); supreme court adopted tort based duty theory.
4 key factors to maintain trade secret
1) selective, 2) consistent, 3) verification, 4) longetivity
what year was the federal trademark dilution act passed and what section is it in the lanham act
1996; 43c
what year to congress amend and broaden the dilution act to include “likely dilution” not just actual dilution
2006
What three defenses are listed under the Trademark Dilution Revision Act of 2006 (TDRA)
1) fair use, 2) news reporting and commentary, 3) noncommercial use
To state a dilution under the Trademark Dilution REvision ACt of 2006 (TDRA), a plaintiff must show what 4 factors
1) P owns famous mark that is distinctive, 2) D has commenced using mark in comers that is diluting famous mark, 3) the similarity between the 2 uses gives rise to an association between the 2 marks, 4) the association is likely to impair the distinctiveness of the famous mark or harm the reputation
FActors for a court to consider in a dilution claim per the TDRA
1) degree of similarity between marks, 2) inherent or acquired distinctiveness of the famous mark, 3) extent to which famous owner has exclusive use of mark, 4) degree of recognition of famous mark, 5) whether association intended, 6) any actual association between the marks.
True or false: patent expiration does not automatically end trademark protection
True
true or false: only when the name itself is “essentially necessary” to sales of the product, when the name has become generic, the trademark protection will not survive the expiration of the patent.
true
_____ trade dress can be protected if it is (1) inherently distinctive or 2) has acquired secondary meaning
Product Packaging
when classifying the type of trade dress, courts should err on the side of causation and classify as _____
product design
_______ trade dress requires a showing of secondary meaning to be registered and protected under trademark law
product design
name the four sea brook factors used to determine if product packaging is inherently distinctive
1) common basic shape or design, 2) unique or unusual, 3) mere refinement of well known good, 4) capable of creating a commercial impression. the more distinct design is from designs of others, more capable design can indicate the source.
the federal statute governing computer hacking
Computer Fraud and Abuse Act
Amendment that expands Economic Esponiage Act to products intended for use in commerce (expands so no longer requires actual use in commerce)
Theft of Trade Secrets Clarification Act of 2012
Amendment that expands Economic Esponiage Act to increasing fines for foreign entities
Foreign and Economic Espionage Penalty Enhancement Act of 2012
