Loss of rights through non use

Question 1

what are the 4 ways an owner can lose right through non use?

Answer 1

1. mark becomes generic
2. mark is abandoned
3. assignment w/ no goodwill
4. licensed in gross

Question 2

what is the definition of an abandoned mark?

Answer 2

a mark whose use has been discontinued w/ no intent to resume use

Question 3

what happens if a mark has not been used for 3 consecutive years?

Answer 3

• presumption that mark is abandoned

- rebut by showing intent to resume use in the reasonably foreseeable future or actual use

Question 4

T/F: sometimes a mark owner can defeat an abandonment challenge by stating that the mark still has residual good will

Answer 4

True, still have to be using the mark albeit in a small degree

Question 5

what is an assignment of a mark?

Answer 5

an outright sale and transfer of the mark

Question 6

can marks be assigned (sold)?

Answer 6

yes, so long as the mark is used in connection w/ goods or services that are the same or substantially similar to the original goods/services (maintain goodwill)

Question 7

does good will transfer when a mark is sold (assigned) and then used w/ different good/services than the original goods/services

Answer 7

no

Question 8

is assignment and license back OK?

Answer 8

yes b/c does not disrupt the continuous good will

Question 9

can the owner of a mark license the mark to another user?

Answer 9

yes, so long as the owner retains actual control over the mark

Question 10

what is a naked license?

Answer 10

where the owner licenses a trademark to be used by another user, but retains no control over the trademark

Question 11

if there is no agreement in place regarding the licensing of a trademark to another user, what can signal that the ™ owner still has control over the ™?

Answer 11

1. special close relationship w/ licensor and licensee
2. common ownership, management
3. long term business arrangement
4. family relationship

Question 12

what happens if an owner fails to file the affidavit of continued use in commerce?

Answer 12

automatic cancellation

Question 13

when does a registered own have to file an affidavit of continued used in commerce?

Answer 13

b/t years 5 and 6

Question 14

when does a registered owner have to file a renewal application?

Answer 14

every 10 years

Question 15

what are the benefits of registering a mark?

Answer 15

1. constructive use
2. constructive notice
3. prima facie evidence mark is valid and the registered owner is the owner of the mark
4. can use ® and profits and damages are available
5. mark becomes incontestable after 5 years
6. if it’s a registered trade dress, owner does not have burden to prove non functionality

Question 16

what is an opposition proceeding?

Answer 16

a proceeding where interest members of the public can challenge the PTO’s decision to register a mark before mark is registered (should this mark be registered)

Question 17

what is a cancellation proceeding?

Answer 17

like an opposition proceeding only happens after registration and the issue is should this mark be cancelled

Question 18

on what grounds can a challenger challenge a mark w/in 5 years of registration?

Answer 18

any ground that would have prevented registration

Question 19

on what grounds can a challenger challenge a mark after 5 years of registration?

Answer 19

everything except that the mark is merely descriptive and the mark conflicts w/ prior marks

Question 20

what does it mean when a mark becomes incontestable?

Answer 20

• limit attacks/defenses

- conclusive evidence of P’s validity and ownership of the mark

Question 21

what is the test for whether scandalous marks can be registered?

Answer 21

after determining the meaning of the mark in question, whether the mark is scandalous to a substantial composite of the general public

Question 22

what is the test for whether a disparaging mark can be registered?

Answer 22

after determining the meaning of the mark in question, whether the mark may be disparaging to a substantial composite of the referenced group

Question 23

when is scandalousness and/or may be disparaging determined?

Answer 23

at the time the marks were registered

Question 24

what is my acronym for the abercrombie spectrum of distinctiveness?

Answer 24

Fake A Smile Do Good

1. fanciful
2. arbitrary
3. Suggestive
4. descriptive
5. Generic

Question 25

what is my acronym for secondary meaning?

Answer 25

All Very Long Caterpillars Idolize short inchworms

1. amount and manner of advertising
2. volume of sales
3. length and manner of use
4. concurrent use by competitors
5. if used in magazines, newspapers, dictionaries
6. significance in trade
7. intentional copying by competitors

Question 26

what is my acronym for the test for infringement?

Answer 26

Plaintiffs make Defendants Lie

1. P owns the mark
2. mark is valid and legally protectable
3. D actually using P’s mark in commerce
4. LOC

Question 27

what is my acronym for LOC factors?

Answer 27

DBQ-GASP!

1. degree of similarity b/t the 2 marks
2. bridge the gap (likelihood)
3. quality of D’s products
4. good faith of junior user in adopting mark
5. actual confusion
6. strength of senior user’s mark
7. proximity of the products
8. sophistication of buyers