Trademark

Question 1

Purposes of Trademark

Answer 1

Two Purposes –

Question 2

Abercrombie

Answer 2

No protection for generic marks or descriptive marks without secondary meaning

Question 3

Inherently Distinctive

Answer 3

Suggest, Arbitrary, Fanciful

Question 4

Descriptive

Answer 4

requires secondary meaning

Question 5

Suggestive

Answer 5

does not require secondary meaning

Question 6

Two Pesos v. Taco Cabana

Answer 6

The trade dress indicates a specific source
Only requires secondary meaning for descriptive, so it must follow there must be trade dress that may not require secondary meaning
No statutory justification for that distinction

Question 7

Qualitex Co. v. Jacobson Products

Question 8

Functionality Doctrine

Answer 8

Can’t be trademarked if it is essential to the product
A color for a type of medicine, green for farm machinery, blue for fertilizer with nitrogen
(Even if colors are in short supply, this will save trademark colors)

Question 9

Qualitex

Answer 9

Trade dress can be inherently distinctive, product packaging can be inherently distinctive, but product design must have secondary meaning, as well as color.

Question 10

Trademark v. Patent

Answer 10

Trademark protection is potentially infinite. If you give it to soemthing mechanically functional, then it can effectively extend the patent covering.
Cannot be given to something that’s aesthetically pleasing.
Orange soda - the color is aesthetically functional, so other orange soda distributers cannot
2 tests for functionality - mechanical

Question 11

Functionality - Mechanical

Answer 11

is the claimed TM to a use or purpose, or does it affect price or quality, if so is it functional

Question 12

Functionality - Aesthetic

Answer 12

Would protection of the feature as a TM result in a significant non-reputation related competitive disadvantage?

Question 13

Qualitex Co. v. Jacobson Products Co.

Answer 13

The color of the pad is not essential to the purpose, and does not effect the cost or quality, so therefore it can be afforded trademark protection

Question 14

Traffix Devices, Inc. v. Marketing Displays, inc.

Answer 14

If you use a mark for more than 5 years, it may become incontestable. If it becomes incontestable, then you can argue that it’s functionable and override the determination.

Question 15

Valu Engineering, Inc. v. Rexnord

Answer 15

Morton-Norwich factors: 1) the existence of a utility patent disclosing the utilitarian advantages of the design, 2) advertising materials in which the originator of the design touts the design’s utilitarian advantages, 3) the availability to competitors of functionally equivalent designs, and 4) facts indidicating that hte design results in a comparatively simple or cheap method of manufacturing the product

we want to preserve non-trademark competition

De Facto Fucntionality
De Jure Functionality - four factors

Question 16

Aesthetic Functionality

Answer 16

Features are aesthetically functional when exclusive use of those features would put competitors at a disadvantage

Question 17

Automotive Gold, Inc. v. Volkswagen of America

Answer 17

AutoGold has the burden because the marks are over 5 years aka incontestable (incontestable is not impossible)
Source identifying = Can be protected
Two Step Analysis: 1. Mechanical Functionality - is the claimed trademark essential to a use or purpose? Does it affect price or quality? No - not functional
2. Aesthetic Functionality - Would protection of the feature as a TM result in a significant non-reputation related competitive disadvantage? - It is a competitive disadvantage that is reputation related.

Question 18

Christian Louboutin v. YSL

Answer 18

Very fact specific analysis. Court weighs competitive benefits vs. the competitive cost from precluding others from using it.

Question 19

Functionality

Answer 19

Overcome incontestability
Test:
1) Utilitarian / Mechanical Functionality
a) is the claim trademark essential to a use or purpose or
b) does it affect price or quality?
c) de jure functionality factors: 1. existence of a utility patent, 2. advertising materials touting desigin’s utilitarian function, 3. availability to competitors of functionally equivalent designs, 4. facts indicating the design results in comparatively cheap or simple method of manufcaturing the product.
2) aesthetic functionality
a) would protection of the feature as a trademark result in significant non-reputation related competitive disadvantage?

Question 20

FIrst Use

Answer 20

Common Law: analyzes its first use in commerce and how it was used.
First use: Senior user, subsequent users: Junior users
Registration with the TM office creates nationwide rights

Question 21

Farah v. Blue Bell

Question 22

Hana Financial, Inc. v. Hana Bank

Question 23

Warnervision Ent. Co. v. Empire of Carolina

Question 24

Protectable as a descriptive mark?

Answer 24

Secondary meaning

Question 25

Healthcare / Healthcom case

Answer 25

(for note card) Market Penetration Test: a) value of sales at time later user entering market b) number of customers compared to state population c) relative and potential growth of sales d) lengh of time since significant sales

Question 26

Abandonment

Answer 26

EIther of the following occurs: Use has been discontinued with the intent not to resume and non-use for 3 consecutive years is prima facie evidence of abandonment or when any course of conduct of the owner, including acts of omission, as well as commission, causes the mark to become the generic name or otherwise lose significance as a mark

Question 27

Similarity of marks

Answer 27

analyze sight, sound, and meaning

Question 28

Virgin Case

Answer 28

Likelihood of Confusion test
Polaroid case
Prior use + ownership
WE USE sleekcraft factors in California

Question 29

Initial Interest Confusion

Answer 29

Where consumer is initially confused – infringement can be based upon confusion when it creates customer interest even if no sale is created as a result of that confusion

Question 30

1-800 Contacts, Inc. v. Lens.com

Answer 30

Initial-interest confusion is a valid basis for a trademark-infringement claim under the Lanham Act.

they have to say they have a protectable interest in the mark, that the D used an identical or similar mark in commerce, and that that use is likely to cause confusion to users
9th circuit: labeling the appearance of the ad and something on screen blah blah is important in finding if there’s a likelihood of confusion when finding a competitors mark as a _____.

Question 31

Multi-Time Machine, Inc. v. Amazon.com

Question 32

General Motors v. Keystone Automotive Industries

Answer 32

Post-sale confusion
This case is an example of post-sale confusion
8 factor test

Question 33

Initial Interest Confusion