Scale of Distinctiveness/Elements of Cause of Action

Question 1

Order of Plaintiff’s argument that the defendant infringed

Answer 1

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

Question 2

What are the defendant’s defenses if the plaintiff argues he infringed?

Answer 2

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

Question 3

on the scale of distinctiveness what is considered inherently distinctive from most to least?

Answer 3

1) Fanciful/Imaginary
2) Arbitrary
3) suggestive

Question 4

on the scale of distinctiveness what is considered not inherently distinctive?

Answer 4

1) descriptive

2) generic (not a trademark)

Question 5

Fanciful/Imaginary

Answer 5

1) has no dictionary definition
2) inherently distinctive
3) Example: KODAK
4) makes no difference on goods/services

Question 6

arbitrary

Answer 6

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

Question 7

suggestive

Answer 7

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

Question 8

Descriptive

Answer 8

1) has a dictionary definition that tells the viewer something about the product
2) not inherently distinctive
3) example: SALTY product: pretzels

Question 9

Generic

Answer 9

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

Question 10

what is acquired distinctiveness?

Answer 10

when the name may not relate to the goods but the public associates the product with the goods (Kleenex, jello, etc.)

Question 11

what is strong evidence of functionality?

Answer 11

if it was ever subject to a utility patent

Question 12

what are the first 3 polaroid factors?

Answer 12

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)

Question 13

what are polaroid factors 4-6?

Answer 13

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)

Question 14

what are the last polaroid factors?

Answer 14

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)

Question 15

if neither party has a US principal registration, what do you consider when deciding priority?

Answer 15

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

Question 16

if one of the parties has a US principal registration, what do you have to establish?

Answer 16

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?

Question 17

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?

Answer 17

in what geographic area the non-registered mark was known on the registrant’s nationwide constructive use date

Question 18

what are two ways to federally register?

Answer 18

1) use in commerce

2) intent to use in commerce

Question 19

on the 5th anniversary of a registered mark what do you have to do?

Answer 19

file a statement (affidavit/declaration) of continued use

Question 20

what does filing a statement of continued use on the 5th anniversary of the mark do?

Answer 20

prevents those who aren’t using their trademark from benefitting from trademark protection and should file for a declaration of incontestability

Question 21

what is the first thing that happen when you apply to register your mark?

Answer 21

there’s about a 3 month gov’t delay followed by an office action (examiner)

Question 22

what happens after the office action?

Answer 22

you have 6 months to respond and must respond to everything at once

Question 23

what happens after you respond to the office action?

Answer 23

publication which opens up a 30 day opposition period (put the trademark in a magazine etc.)

Question 24

what happens after the publication?

Answer 24

if nobody opposes it, you can file a use application

Question 25

what is the constructive use date?

Answer 25

the date of the application once the trademark is registered

Question 26

once awarded declaration of incontestability what can no longer occur?

Answer 26

Petitions to cancel registration

Question 27

are you incontestable after the 5 year period?

Answer 27

yes

Question 28

once a mark is assigned, what happens?

Answer 28

the entity receives the rights to the mark and stands in the shoes of the assignor

Question 29

is an unregistered mark assignable?

Answer 29

yes

Question 30

are federally registered trademarks assignable?

Answer 30

NO

Question 31

when assignment in gross occurs, does the assignor have priority?

Answer 31

no, the mark belongs to the assignee but good will is no longer there and gone forever

Question 32

what are the 4 types of abandonment?

Answer 32

1) assignment in gross
2) assignment with good will appurtenant
3) intentional
4) unintentional

Question 33

what is dilution by tarnishment?

Answer 33

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)

Question 34

what is dilution by blurring?

Answer 34

diminution of distinctiveness

Question 35

in order to succeed on a cause of action regarding dilution, what does the plaintiff need to demonstrate?

Answer 35

the strength of the scale of distinctiveness, the mark was FAMOUS, the mark was FAMOUS before the defendant’s use

Question 36

what is the difference between dilution and trademark infringement?

Answer 36

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.

Question 37

can a parody be a defense for trademark dilution?

Answer 37

yes

Question 38

how do you sell good will?

Answer 38

ENSURE quality control of the original owner

Question 39

how does one consciously relinquish their property right?

Answer 39

typically through non-use