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Trademark > Trademark Cards > Flashcards

Trademark Cards Flashcards

1
Q

Defenses to Dilution

A
  • Fair Use
  • Nominative AND/OR Classic Fair Use
  • Comparative advertising
  • Parodies/criticism/commentary
    News reporting/commentary Noncommercial use
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2
Q

Unregistered Trade Dress Dilution

A

Person who asserts trade dress protection has burden of proving:
A) Trade dress is NOT functional and is famous

B) The trade dress is famous separate and apart of any incorporated work

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3
Q

Registration Paths

A
  1. Current Use in Commerce (LA 1(a))
  2. Intent-to-Use (LA 1(b)) (since 1989, filing date is priority date)
  3. Foreign Applications (LA 44(d))
  • must file within 6 months of foreign application and foreign application is priority date
  • granted when a) use in commerce of b) foreign registration
  1. Foreign Registrations (LA 44(e))
  2. Madrid Protocol (LA 66(a))
  • Domestic application (priority date) – 6 mos international app in home country
  • No central attack
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4
Q

Benefits of Registration

A

1) Constructive Notice
2) Nationwide constructive use

3) Prima facie evidence of exclusive right (strong presumption of validity)
4) Federal jurisdiction
5) Customs service Aid
6) Remedies - treble/attorneys fees
7) Incontestability after 5 years

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5
Q

Dilution by Blurring

A

43(c)
1) P’s mark is famous (widely recognized by general consuming public)

2) P’s mark is distinctive
3) D uses its mark in commerce
4) D’s use began after P’s mark became famous
5) D’s use likely to cause dilution

  • Distinctiveness
  • Similarity
  • Actual confusion
  • Degree of Fame
  • Exclusivity of P’s use
  • D’s intent
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6
Q

Unregistered Marks

A
  • Common Law Protection

- Protected by LA 43(a)

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7
Q

Consumer Confusion Reforms

A

1) Require proof of actual confusion
2) Eliminate factors unrelated to likelihood of confusion (e.g. strength, good faith, quality)
3) Beebe: similarity, proximity, actual confusion, marketplace, strength of mark, purpose of infringer
4) Limit analysis to point-of-sale confusion

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8
Q

Grounds for Exclusion

A

1) Conflicts with existing marks (confusion/dilution)
2) Functionality (non-reputational disadvantage)

  • Utilitarian - cost/quality
  • Aesthetic - competitive necessity 3) Fraud - Knowing false material representation to TTAB

4) Deception
5) False suggestion of connection
6) Disparaging: LA 2(a) [reg.]; 43(a) [unreg.]
7) Immoral or Scandalous: LA 2(a) [reg.]; 43(c) [unreg]

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9
Q

Classic Fair Use

A
  • D uses P’s mark, not as a TM or SM (source indicator), but rather to describe fairly and in good faith D’s product
  • Some consumer confusion is OK

-“Fair” factors:

  • Likelihood of confusion
  • Strength of P’s mark
  • Descriptive nature of term
  • Available alternatives
  • Extent of use prior to registration
  • Different times and contexts of D’s use
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10
Q

Disparaging Marks

A

1) What is the likely meaning of the matter in question?
Lebanese: majority says from perspective of disparaged group, dissent says from perspective of general population

2) If that meaning refers to identifiable persons, is it disparaging to a substantial composite of the referenced group?

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11
Q

Likelihood of Confusion Test (2nd cir D friendly, 9th cir P friendly)

A

SQB PGS Sam

  • Similarity
  • Strength
  • Proximity of Products
  • Bridging the gap likelihod
  • Marketing environment (same stores? same shelves?)
  • Quality of D’s product
  • Good faith (some courts require proof of intent, others look to D’s knowledge of P’s mark)
  • Sophistication of buyers
  • Actual confusion
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12
Q

Types of Consumer Confusion

A
  • Point of sale (source or sponsorship confusion)
  • Initial interest
  • Post-sale
  • Store brands (often OK if Tm of store is highly visible)
  • Resales: purchaser of lawfully Tmd goods is free to sell them under original TM as long as no confusion as to authorization, goods not materially different, goods not repackaged
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13
Q

Immoral or Scandalous

A

Does the mark give offense to the conscience or moral feelings of a substantial portion of the public?

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14
Q

Deception

A

Deceptive marks cannot be registered

  • A) misdescribes good, and
  • B) consumers likely to believe, and
  • C) will likely effect purchasing decision

Deceptively misdescriptive marks may be registered IF its unlikely to affect purchasing decision

Geographically deceptive marks go through same analysis

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15
Q

Geographical Indications

A
  • Geographic term used to indicate region from which products supplied by various firms derive
  • US: certification marks
  • France: AOC system (e.g. Roquefort cheese)
  • International: Lisbon/TRIPS
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16
Q

Geographic Terms as TMs

A
  • Identify a particular supplier
  • Standard distinctiveness hierarchy applies
  • Standard grounds for exclusion
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17
Q

Consumer confusion Statutory Provisions

A

LA 32: Any person who w/o consent of registrant

  • uses in commerce any reproduction/copy/imitation in connection /w sale/distribution/advertisement of goods/services or
  • reproduces/copies/imitates a mark and applies it to packaging/tags/wrappers and such use will likely cause confusion/mistake/deceit IS LIABLE

LA 43

Any person who in connection /w goods/services

  • uses in commerce any word/name/term/symbol/device or false designation of original likely to cause confusion/mistake/deceit as to origin/affiliation/sponsorship OR
  • misrepresents the nature of his or another’s goods/services SHALL BE LIABLE
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18
Q

Misappropriation

A

1) INS: AP had quasi-property right* in the news that could be enforced against competitors

  • requires time, labor, money
  • news has market value
  • reporting requires inducement2) NBA: misappropriation mostly preempted by Copyright Act - “extra elements” survive preemption: 1) time sensitive, 2) free-riding, 3) threat to existence of product
    3) Board of Trade: Expands INS on policy grounds (finding for Dows Jones would spur creation of new indices)
    4) Fly on the wall: Constricts INS; brokers are creating news and Fly is reporting on it
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19
Q

Product Packaging

A

May be inherently distinctive (or may have acquired SM)

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20
Q

Unfair Competition

A

1) Passing off (D misleads consumers into thinking D’s products were produced by P - Murphy / Coca-Cola)
2) Reverse Passing Off (D misleads consumers into thinking P’s products were produced by D - drum case; limited by Dastar w/r/t 43(a)) - “origin” = producer
3) Misappropriation
4) Grab bag: e.g. publishing answers to questions in a test

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21
Q

Licenses

A
  • Licensing requires effective control over quality, otherwise –> abandonment
  • Range of views concerning necessary quality controls
  • Licensor was familiar /w and relied on licensees quality controls
  • Close working relationship
  • Effective policing
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22
Q

Product Configuration

A

Requires secondary meaning

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23
Q

Trade Dress

A

-The total image and overall appearance which may include size, shape, color, texture, graphics, or even particular sales techniques

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24
Q

Fictional Characters

A
  • Protectable if they come to designate a source (Mickey Mouse)
  • In rare cases treated as inherently distinctive
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25
Q

Colors

A

Require showing of secondary meaning

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26
Q

Assignments

A
  • TM’s may be assigned (but not abandoned marks or ITUs)
  • To be assignable, must be associated with ongoing business
  • MayNOT be assigned in gross (=abandonment)
  • May be assigned /w other assets
  • some courts require transfer of physical assets
  • Some courts allow transfer of “goodwill” (but may require reasonable controls)
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27
Q

Names as TMs

A

Lanham Act: surnames registerable /w SM; 2-part personal names registerable w/o SM

Common law: majority - personal names only protected by showing of SM, minority - personal names can be inherently distinctive

Names of other living persons - requires consent under L.A.

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28
Q

Doctrine of Foreign Equivalents

A

If the other language is common in the U.S., the English translation will be employed in categorizing the work

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29
Q

Fraud

A

Can be asserted to cancel any registration (even incontestable marks)

Standard: Applicant knowingly makes false, material representation to PTO /w intent to deceive

  • Scienter
  • Clear and convincing evidence
  • But intent may be inferred from objective evidence
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30
Q

Celebrity Likeness as TM

A
  • Registerable if and only if consistently used as source indicator
  • Protects face, voice, pose
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31
Q

Secondary Meaning in the Making

A
  • Courts used to allow X to sue Y when both used descriptive mark and X was a senior user close to acquiring secondary meaning
  • Largely discredited now
32
Q

Proving Secondary Meaning

A

Direct Evidence

  • Consumer Surveys
  • Consumer Testimony
  • Retailer Testimony Circumstantial Evidence
  • Exclusivity, duration, manner of use
  • Sales volume
  • Amount/manner of advertising
  • Unsolicited press coverage
  • Proof of intentional copying (even by 3d parties)
33
Q

Secondary Meaning under Lanham Act

A
  • 2(e) bars reg. of merely descriptive marks

- 2(f) permits reg. of marks /w SM

34
Q

Secondary Meaning

A
  • Consumers recognize mark as SOURCE indicator (primary significance of mark is not the product, but the producer)
  • Not essential that consumers know WHO the producer is
  • “Consumers” = usually the general public [but may be buyers of that type of good/service]
35
Q

Options for TM HOlder whose mark has become generic

A
  • No protection under 32 or 43(a)
  • Courts may craft tailored remedies (e.g. disclaimers - Thermos)
  • Some courts allow TM holder to rely on unfair competition (intentional passing off)
36
Q

Secondary Liability

A

Contributory Liability

  • D actively induces TM infringement
  • D sells products/services to a party that D knows or has reason to know is using them to infringe

Vicarious Liability
-D and direct infringer have apparent or actual partnership

37
Q

False Advertising

A

LA 43(a)(1)(B)

1) D made false/misleading description of fact in a commercial about his or another’s product
2) Actual deception of tendency to deceive (presumption of deception for literally false claims/intentional deception)
3) Material misrepresentation (likely to influence purchasing decision)
4) False statement put into interstate commerce
5) Causation of injury (diversion of sales/loss of goodwill) - only required for damages

38
Q

ACPA

A

1) Bad faith intent to profit

+(does D have Ip rights? Is DN D’s name? D’s prior use? Noncommercial/fair use)
-(Intent to divert business, D’s offer to sell / habit of doing so, D’s provision of false contact info, D’s acquisition of multiple similar DNs)

2) Identical or confusingly similar (or dilutive)
3) of mark that is distinctive at the time of registration

39
Q

Laches

A

No SOL for Lanham Act; instead courts use laches

D must show:
-P had knowledge of D’s use of the mark
P delayed INEXCUSABLY in taking action (excuses: good faith settlement negotiations, P was litigating against other infringers, “progressive encroachment”)
-D will be prejudiced by P’s delay

Laches may be trumped by interest of public not being confused

40
Q

Trademark use Defense

A

-Some scholars argue that TM liability should only apply when mark at issue is used to mark goods and services distributed in commerce

E.G. would exempt search engine / domain name registrar cases

-Support in case law? Popup ads case uses it; Rescue.com (adword case) says it does not exempt the conduct

41
Q

Nominative Fair Use

A

-When D (a commercial user) uses P’s mark to describe P’s product AND

1) P’s product is not readily identifiable w/o use of TM
2) Only so much of Ps mark as is necessary for identification is used
3) D in now ay suggests P’s sponsorship

42
Q

Circumstances that affect likelihood of genercide

A
  • Tm owner uses mark in denominative sense
  • Tm Owner uses mark as non or verb (instead of adjective)
  • Patented goods upon expiration may sometimes become generic (just one factor)
  • Efforts of TM holder may be taken into account
43
Q

Generecide

A
  • If the principal significance of a mark to the public is to indicate the nature or class of an article rather than its source, then it is generic
  • Loss of distinctiveness
  • Other producers must be allowed to use it
44
Q

Effect of changes in product/service on abandonment

A
  • Transferring mark to different product/service is OK if old/new versions are closely related (would consumers think new product is coming from same source)
  • Sudden/substantial change in quality or composition may result in abandonment
  • Gradual/incremental changes are ok
45
Q

Current Abandonment Rule

A
  • Nonuse
  • Absence of intention to continue or resume use
    • 3 years of non-use of federall reg. mark is prima facie evidence of abandonment
    • Can be rebutted by proof of intent to resume use
46
Q

Traditional Abandonment Rule

A
  • Nonuse
  • Intent to abandon
    • Lapse of time may support inference of intent to abandon, but intent to relinquish is required
    • As long as P is making efforts to keep business going, no intent to abandon
47
Q

Descriptive vs. Suggestive

A
  • Dictionary definition?
  • Must consumers use imaginations?
  • Do competitors need the term to describe products of would it be useful?
  • To what extent has the word been used by competitors?
48
Q

Distinctiveness Hierarchy

A
  • Arbitrary/Fanciful
  • Suggestive [suggest a quality of the good/service]
  • Descriptive [describes an ingredient, quality, or characteristic]
  • Generic [term is commonly used to denote the goods/services at issue]
49
Q

Certification Mark

A

Any word/name/symbol/device or combo thereof:

used to certify region, origin, material, mode of manufacture, quality, accuracy, or that goods or services are product of a certain union

50
Q

UDRP

A

1) Domain name is identical or misleadingly similar to someone else’s TMs (reg. and unreg.)
2) Holder of domain name has no rights or legit interest in the name (e.g. pre-dispute use/fair use)
3) Registered and being used in bad faith (main purpose was to sell, history of reg. & selling, registering to disrupt business, attempting to divert customers)

Remedies: Cancellation + Transfer

51
Q

Tacking in Priority Fights

A

Owner may “tack” an older form of a mark if the owner only made slight alterations to the original

52
Q

Innocent JR user

A

Majority rule: JR user is unaware of SR user’s use

Minority Rule: JR user must not have “designs inimical to the interest of the first user”

53
Q

Priority fights: priority based on registration

A
  • Constructive notice
  • Constructive nationwide use
  • Georgraphic scope includes entire country
  • Rights of pre-reg SR users: pervail over registrant, but possible concurrent reg. if no consumer confusion
  • Rights of pre-reg JR users: if continuous and in good faith, “limited area” protection is granted
  • Rights of post-reg JR users: innocent JR user may continue to use if consumer confusion unlikely; must stop when registrant expands to that area
54
Q

Collective Marks

A

A TM or service mark:

1) Used by members of a co-op/association/group, or
2) co-op/association/group has bona fide intent to use it in commerce and applies to register it

55
Q

Trademark Definition

A

Any word/name/symbol/device or combo thereof

1) used to identify and distinguish his or her goods from those of others
2) and to indicate source
3) even if source is unknown

56
Q

Community TM System

A
  • File app /w central office (OHIM)
  • Priority date of national TMs if already registered in that country; otherwise community TM priority date is the priority date
57
Q

WIPO TM Law Treat

A
  • Simple, harmonized

- 10yr initial term and renewals

58
Q

Lisbon Agreement

A
  • Member countries agree to set up AO (appellation of origin) system
  • AO’s registered /w WIPO
  • All member countries agree to grant expansive protection for AOs in their territory
  • Not US
59
Q

Priority Fights: priority based on use

A

ARTE

  • Zone of actual use
  • Zone where reputation is established
  • Zone of natural expansion (contested doctrine)
  • Zone in which D deliberately trades on P’s reputation
60
Q

Territoriality Exceptions

A

1) Extraterritoriality application of US TM LAW - CA’s differ on what is sufficient for extraterritorial reach
- D’s conduct has a “substantial effect” on us commerce
- D is US citizen
- extraterritorial reach would not conflict /w foreign TM law

2) 6-mo priority right uner Paris convention (get priority date of filing in foreign country)

3) Obligation to protect foreign “well-known” marks
- Paris convention, TRIPS

61
Q

Foreign Use

A
  • Usually use of mark outside US is insufficient even if advertising spills inot US
  • “Use in commcerce” may be broad enough to cover foreign services provided to US residents for some courts
  • Some courts recognize foreign use if it causes mark to become famous to US customers
62
Q

Use of mark in connection /w services

A
  • Mark must be used or displayed in advertising of services and the services rendered in commerce
  • Advertising for service not yet begun is NOT sufficient
  • Nonprofit use is acceptable
63
Q

Use of mark in connection /w goods

A
  • Must be placed on goods, containers, displays, or tags (or documents if infeasible)
  • Goods must be sold to customers or visibly transported in commerce (e.g. drug shipments for clinical trials)
  • Nonprofit use is acceptable
64
Q

Pre-1989 Reg. Reqs

A
  • No ITU

- Token use sufficient for registration (but how much use was contested)

65
Q

Nice Agreement

A
  • Standard set of classes for TM registrations

- US is a member

66
Q

Importation

A

International exhaustion (sale anywhere extinguishes all TM rights); national exhaustion (sale only exhausts rights in that country - favored)

-TM holder has right to prevent importation by unaffiliated D

-Importation is lawful if
1) US and foreign TM holders have common interest (parent/subsidiary/same), AND
2) goods bearing TM are the same
(modest differences suffice to make importation unlawful - different amounts of ingredients, difference in warranties, etc…)

67
Q

Paris Convention

A
  • No discrimination against foreigners w/r/t/ IP laws
  • 6 mo. priority filing date
  • Protects well-known marks
  • Protects against unfair competition
68
Q

Madrid Protocol

A
  • International TM based off of home application
  • No central attack
  • Adoption slow in US
  • 66(a) Lanham Act
69
Q

Madrid Agreement

A
  • International priority date if filed w/in 6 mos of reg.
  • Central attack: if home app is succesfully attacked, all other apps collapse
  • U.S. did not join [reg. takes longer, US stds make central attack easier]
70
Q

International Trends

A
  • Harmonization
  • Facilitation of filings/management in other countries
  • Expansion of coverage for regional marks
  • Expansion of TM entitlements
  • Expansion of exhaustion doctrine
71
Q

TRIPS

A
  • Forbids use of geographic TMs that conlict with GIs
  • Only applies to consumer confusion, not dilution
  • No GI registration system
  • Expansive protection for well-known marks
72
Q

Unregistered Marks use requirement

A
  • Common law standards apply
  • Advertising and promotion is sufficient if (a) occurs in commercially reasonable time prior to sale and (b) is sufficient to create association among mark/goods or services/users
73
Q

Territoriality

A

-TM rights are nation-specific
(Bourjois-acquiring US TM rights to French product allowed P to block arbitrager)

-Priority of use depends entirely on US use (earlier use in another country doesn’t count)

74
Q

Use requirement

A

Common law and 43(a): use in trade - bona fide use of the mark in connection /w offering goods/services to public [publicity or solicitation may be OK if in conjunction /w ITU]

Lanham act use in commerce: interstate commerce, intrastate commerce that affects interstate commerce, commerce /w indian tribes

75
Q

Dilution by Tarnishment

A

Association arising form the similarity between a mark and a famous mark that harms the reputation of the famous mrk

Trademark (1 decks)

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