Sources of trademark law

Question 1

why was the act of 1870 found to be unconstitutional?

Answer 1

• because it got its power from the commerce clause but applied to all trademarks, not just those in interstate commerce
• didn’t fit in art 1. §8 c. 8 (patent & (c) clause)
• ultimately the wrong power source

Question 2

when was the Lanham Act enacted

Answer 2

1946

Question 3

which part of the constitution gives the current Lanham Act its power?

Answer 3

the commerce clause

Question 4

what is the most significant amendment to the Lanham Act?

Answer 4

trademark law revision act of 1988

Question 5

what did 2 things did the trademark law revision act of 1988 change?

Answer 5

1. added ITU applications

2. changed the trademark term from 20 years to 10 years

Question 6

is the Lanham Act codified in the CFR?

Answer 6

yes (37 CFR part 2)

Question 7

what are the 3 sources of trademark law?

Answer 7

1. federal law (Lanham Act)
2. state law
3. common law

Question 8

T/F: federal law pre-empts common law and state law?

Answer 8

false

Question 9

definition of a trademark

Answer 9

• 15 USC §1127
  (1) any word, name, symbol, or device, or any combination thereof
  (2) used by a person or entity to identify and distinguish its goods and
  (3) to indicate the source of the goods

Question 10

what is the key to the definition of a trademark?

Answer 10

the mark identifies the source of the goods or services

Question 11

T/F: sound can be a trademark?

Answer 11

true (example: MGM lion’s roar)

Question 12

what does ® do?

Answer 12

give notice of federal registration

Question 13

what is the benefit of federal registration?

Answer 13

allows profits and damages w/o requiring actual notice

Question 14

what are the 2 trademark symbols and what are the differences b/t them?

Answer 14

® and ™

• use ® when the trademark is federal registered
• use ™ when mark is unregistered (has no official affect, may indicate mark holder intends to assert rights or that registration is pending)

Question 15

what is the purpose of using ™ if it has no official effect?

Answer 15

warn and discourage potential users

Question 16

generally, what type of thing gets ™ protection?

Answer 16

any symbol or device that is capable of identifying the source of goods

Question 17

what is the primary threshold for protection of a trademark?

Answer 17

distinctiveness

Question 18

generally, what types of marks are not protected?

Answer 18

1. functional marks

2. generic terms

Question 19

generally (according to overview chart) how does one acquire ™ rights?

Answer 19

use the mark in commerce

Question 20

what is the duration of a trademark

Answer 20

as long as the mark is used and distinctive

Question 21

what does the scope of the principal rights acquired in a trademark entail?

Answer 21

the right to stop the unauthorized use of the same or similar mark in ways that are likely to cause consumer confusion

Question 22

what are the 2 major types of unfair competition laws?

Answer 22

1. source based (trade identity unfair completion based on source confusion) and
2. non source based (misappropriation, misrepresentation, dilution, trade disparagement, false or deceptive advertising, anti-cybersquatting)

Question 23

what are the factors of misappropriation?

Answer 23

1. effort, investment to create
2. commercial use
3. freeloading; for D’s advantage
4. hurt P’s business, could prevent future efforts

Question 24

what is misappropriation?

Answer 24

a non source based theory of unfair competition where D is lying about their own product or someone else’s product

Question 25

what is dilution?

Answer 25

weakening the strength of a well known mark by using mark on goods not manufactured by the mark’s owner

Question 26

what is cybersquatting?

Answer 26

where someone takes a ™ and puts it in a domain name and holds it to prevent the company from using it and wants money from the company

Question 27

what is the main purpose of a trademark?

Answer 27

identify the source of goods or services

Question 28

what makes a trademark valuable?

Answer 28

the value and good will communicated to the consumer

Question 29

what is the touchstone of ™ protection?

Answer 29

consumer confusion

Question 30

what is the triadic structure of a trademark?

Answer 30

you have (1) a mark (tangible symbol) that signifies (2) the goodwill and source of the (3) referent product or services

Question 31

T/F: you have to register your trademark to get protection?

Answer 31

False, you have common law protection

Question 32

in an action challenging the PTO’s decision to register a mark, what is the difference b/t appealing to the district court or appealing to the court of appeals for the federal circuit (CAFC)?

Answer 32

• district court will hear new evidence

- CAFC will go off the record but have the benefit of trademarks being their area of expertise

Question 33

what is the court hierarchy for an infringement action?

Answer 33

1. district court
2. regional circuit court
3. us supreme court

Question 34

what does the R3d say about the difference b/t a trademark and a service mark?

Answer 34

that a service mark is a type of trademark (but otherwise the distinction is not that important)

Question 35

definition of a certification mark

Answer 35

a mark used by someone other than its owner to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics, of such person’s goods or services or that the work on labor on the goods or services was performed by members of a union/other organization

Question 36

does a certification mark tells us anything about the source of the goods?

Answer 36

no, just tells us about certain characteristics of the goods

Question 37

what is a collective mark?

Answer 37

a mark used by members of a cooperative, association, or other collective group or organization indicating membership

Question 38

can certification and collective marks be registered?

Answer 38

yes