Trademark

Question 1

trademark definition (3)

Answer 1

1. any word, name, symbol, or device or any combination thereof
2. use in commerce or bona fide intent to use
3. to identify and distinguish his or her goods from those manufactured or sold by others to indicate the source of goods

Question 2

levels of distinctiveness (4)

Answer 2

1. arbitrary/fanciful - bears no relationship to good or service, has no meaning prior to use
2. suggestive - suggests rather than describes some particular characteristic of the good/service. requires the customer to exercise their imagination
3. descriptive - identifies a characteristic or quality of a good or service - needs secondary meaning
4. generic - connotes basic nature of good/service - no tm protection

Question 3

test for distinctiveness - suggestive vs descriptive

Answer 3

dictionary definition, using imagination, likely use by competitor, actual use by competitor

Question 4

evidence for secondary meaning

Answer 4

duration of use, advertising/promotion, sales, survey evidence (most important)

Question 5

Types of trade dress

Answer 5

1. product packaging - no secondary meaning req
2. product design - secondary meaning req

Question 6

factors for trade dress distinctiveness (4)

Answer 6

1. whether a “common” basic shape or design
2. unique or unusual in a particular field
3. mere refinement of a commonly adopted ornamentation
4. capable of creating a commercial impression distinct from accompanying words

Question 7

factors for trade dress functionality (3)

Answer 7

1. feature is essential to use or purpose
2. affects cost or quality
3. exclusive use would put competitors at a significant non-reputation based disadvantage

Question 8

likelihood of confusion factors (8)

Answer 8

1. strength of mark (arbitrary/suggestive/descriptive)
2. proximity of goods (similarity of goods, substitutes)
3. similarity of mark (sight, sound, meaning)
4. evidence of actual confusion (not important)
5. marketing channels (overlap in audience)
6. type of goods/purchaser’s degree of care
7. defendant’s intent
8. likelihood of new product lines - planning expansion is in favor of likelihood of confusion

Question 9

types of confusion (5)

Answer 9

1. source confusion (most common)
2. sponsorship confusion
3. reverse confusion (junior and senior producers)
4. initial interest confusion
5. post-sale confusion (confusion by nonpurchasers)

Question 10

trademark defenses (6)

Answer 10

1. genericide
2. abandonment
3. descriptive fair use
4. nominative fair use
5. functionality (not affirmative)
6. immoral, deceptive, or scandalous matter (not affirmative)

Question 11

abandonment definition

Answer 11

1. use has been discontinued with intent to to resume use - nonuse for 3 consecutive years is prima facie for abandonment
2. owner of mark causes mark to lose its significance

Question 12

elements of nominative fair use (2)

Answer 12

1. only word reasonably available to describe the particular thing
2. use of the trademark does not attempt to capitalize on consumer confusion or appropriate the cachet of one

Question 13

aesthetic functionality elements (3)

Answer 13

1. design feature is essential to use or purpose
2. design feature affects the cost or quality
3. protecting the design feature would significantly undermine a competitors ability to compete

Question 14

famous mark definition & factors

Answer 14

def - widely recognized by general consuming public as designation of source of goods or services
factors - advertising, sales, actual recognition, registration of mark

Question 15

exclusions to trademark dilution (3)

Answer 15

1. fair use - advertising for purposes of comparison; parody, criticism, commentary
2. news reporting and commentary
3. noncommercial use - any use of the mark which is not meant to indicate source of origin

Question 16

dilution by blurring factors (6)

Answer 16

1. degree of similarity of the marks
2. degree of distinctiveness of the famous mark
3. extent of exclusive use by famous mark (licensing)
4. degree of recognition of famous mark
5. bad intent
6. any actual association between mark and famous mark

Question 17

categories of geographic marks

Answer 17

1. primarily geographically descriptive - geographic mark, need secondary meaning
2. primarily geographically deceptively misdescriptive - using the reputation of a specific location to indicate quality

Question 18

right of publicity CA statute requirements

Answer 18

1. use of name, voice, signature, photograph, or likeness in merchandise or good without consent
2. not an exception - news, public affairs, sports, political campaign
3. not incidental use