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
