Scale of Distinctiveness/Elements of Cause of Action Flashcards
Order of Plaintiff’s argument that the defendant infringed
1) My mark is distinctive or acquired distinctiveness
2) My mark is non-functional
3) The defendant’s use of my mark creates a likelihood of confusion
4) I am entitled to priority over the defendant
What are the defendant’s defenses if the plaintiff argues he infringed?
1) your mark is not distinctive
2) your mark is functional
3) my use does not cause a likelihood of confusion
4) I am entitled to priority over the plaintiff
on the scale of distinctiveness what is considered inherently distinctive from most to least?
1) Fanciful/Imaginary
2) Arbitrary
3) suggestive
on the scale of distinctiveness what is considered not inherently distinctive?
1) descriptive
2) generic (not a trademark)
Fanciful/Imaginary
1) has no dictionary definition
2) inherently distinctive
3) Example: KODAK
4) makes no difference on goods/services
arbitrary
1) has a dictionary definition but tells the viewer nothing about the goods or services in connection in which the mark will be used
2) inherently distinctive
3) example: SALTY Product: Refrigerators
suggestive
1) has a dictionary definition but would take a “leap of imagination” to connect it to the goods or services
2) inherently distinctive
3) example: SALTY product: Sailboats
Descriptive
1) has a dictionary definition that tells the viewer something about the product
2) not inherently distinctive
3) example: SALTY product: pretzels
Generic
1) has a dictionary definition that is a common name for the goods
2) not inherently distinctive, not even a trademark
3) example: SALT product: SALT
what is acquired distinctiveness?
when the name may not relate to the goods but the public associates the product with the goods (Kleenex, jello, etc.)
what is strong evidence of functionality?
if it was ever subject to a utility patent
what are the first 3 polaroid factors?
1) strength of the party’s mark on the scale of distinctiveness (stronger the mark, greater likelihood of confusion)
2) similarity between the two marks (sight, sound, meaning)
3) competitive proximity of products (are they directly in competition with each other)(greater the proximity, the greater likelihood of confusion)
what are polaroid factors 4-6?
4) likelihood that the claiming party will “bridge the gap” into the infringer’s product (sells paper towels, infringer sells toilet paper, may start selling toilet paper eventually)
5) actual confusion
6) the alleged infringer’s good or bad faith in adopting the mark (bad faith leans toward a likelihood of confusion)
what are the last polaroid factors?
7) quality of alleged infringer’s product (if the product is cheaply made, then the likely damage to the claiming party is greater and leans towards finding a likelihood of confusion)
8) sophistication of buyers (the closer to an impulse purchase, the more likely confusion will be)
if neither party has a US principal registration, what do you consider when deciding priority?
1) which geographic area the plaintiff is known under the mark before the defendant started doing business there.
2) what geographic area was the defendant known under the mark before the plaintiff started doing business there
if one of the parties has a US principal registration, what do you have to establish?
1) what the registrant’s “nationwide constructive use” date is? (the filing date of the application that resulted in the registration)
2) which is earlier, the registrant’s “nationwide constructive use date” or the other party’s ACTUAL date of first use?
if the non-registered party’s actual use date is earlier than the registered party’s nationwide constructive use date, what do you have to establish next?
in what geographic area the non-registered mark was known on the registrant’s nationwide constructive use date
what are two ways to federally register?
1) use in commerce
2) intent to use in commerce
on the 5th anniversary of a registered mark what do you have to do?
file a statement (affidavit/declaration) of continued use
what does filing a statement of continued use on the 5th anniversary of the mark do?
prevents those who aren’t using their trademark from benefitting from trademark protection and should file for a declaration of incontestability
what is the first thing that happen when you apply to register your mark?
there’s about a 3 month gov’t delay followed by an office action (examiner)
what happens after the office action?
you have 6 months to respond and must respond to everything at once
what happens after you respond to the office action?
publication which opens up a 30 day opposition period (put the trademark in a magazine etc.)
what happens after the publication?
if nobody opposes it, you can file a use application
what is the constructive use date?
the date of the application once the trademark is registered
once awarded declaration of incontestability what can no longer occur?
Petitions to cancel registration
are you incontestable after the 5 year period?
yes
once a mark is assigned, what happens?
the entity receives the rights to the mark and stands in the shoes of the assignor
is an unregistered mark assignable?
yes
are federally registered trademarks assignable?
NO
when assignment in gross occurs, does the assignor have priority?
no, the mark belongs to the assignee but good will is no longer there and gone forever
what are the 4 types of abandonment?
1) assignment in gross
2) assignment with good will appurtenant
3) intentional
4) unintentional
what is dilution by tarnishment?
when the defendant’s use of the mark is taking away the distinctiveness of the mark (pregnant girl in Girl Scout uniform, the association with the mark is enough to cause damage)
what is dilution by blurring?
diminution of distinctiveness
in order to succeed on a cause of action regarding dilution, what does the plaintiff need to demonstrate?
the strength of the scale of distinctiveness, the mark was FAMOUS, the mark was FAMOUS before the defendant’s use
what is the difference between dilution and trademark infringement?
the likelihood of confusion as the source of the plaintiff and defendant’s goods because the goal is to protect the trademark not the public.
can a parody be a defense for trademark dilution?
yes
how do you sell good will?
ENSURE quality control of the original owner
how does one consciously relinquish their property right?
typically through non-use
