Loss of rights through non use Flashcards
what are the 4 ways an owner can lose right through non use?
- mark becomes generic
- mark is abandoned
- assignment w/ no goodwill
- licensed in gross
what is the definition of an abandoned mark?
a mark whose use has been discontinued w/ no intent to resume use
what happens if a mark has not been used for 3 consecutive years?
- presumption that mark is abandoned
- rebut by showing intent to resume use in the reasonably foreseeable future or actual use
T/F: sometimes a mark owner can defeat an abandonment challenge by stating that the mark still has residual good will
True, still have to be using the mark albeit in a small degree
what is an assignment of a mark?
an outright sale and transfer of the mark
can marks be assigned (sold)?
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)
does good will transfer when a mark is sold (assigned) and then used w/ different good/services than the original goods/services
no
is assignment and license back OK?
yes b/c does not disrupt the continuous good will
can the owner of a mark license the mark to another user?
yes, so long as the owner retains actual control over the mark
what is a naked license?
where the owner licenses a trademark to be used by another user, but retains no control over the trademark
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 ™?
- special close relationship w/ licensor and licensee
- common ownership, management
- long term business arrangement
- family relationship
what happens if an owner fails to file the affidavit of continued use in commerce?
automatic cancellation
when does a registered own have to file an affidavit of continued used in commerce?
b/t years 5 and 6
when does a registered owner have to file a renewal application?
every 10 years
what are the benefits of registering a mark?
- constructive use
- constructive notice
- prima facie evidence mark is valid and the registered owner is the owner of the mark
- can use ® and profits and damages are available
- mark becomes incontestable after 5 years
- if it’s a registered trade dress, owner does not have burden to prove non functionality
what is an opposition proceeding?
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)
what is a cancellation proceeding?
like an opposition proceeding only happens after registration and the issue is should this mark be cancelled
on what grounds can a challenger challenge a mark w/in 5 years of registration?
any ground that would have prevented registration
on what grounds can a challenger challenge a mark after 5 years of registration?
everything except that the mark is merely descriptive and the mark conflicts w/ prior marks
what does it mean when a mark becomes incontestable?
- limit attacks/defenses
- conclusive evidence of P’s validity and ownership of the mark
what is the test for whether scandalous marks can be registered?
after determining the meaning of the mark in question, whether the mark is scandalous to a substantial composite of the general public
what is the test for whether a disparaging mark can be registered?
after determining the meaning of the mark in question, whether the mark may be disparaging to a substantial composite of the referenced group
when is scandalousness and/or may be disparaging determined?
at the time the marks were registered
what is my acronym for the abercrombie spectrum of distinctiveness?
Fake A Smile Do Good
- fanciful
- arbitrary
- Suggestive
- descriptive
- Generic
