Trademarks

Question 1

Two types of marks

Answer 1

trademarks and service marks

Question 2

what are trademarks and service marks

Answer 2

principle of specificity

Question 3

What is a trademark

Answer 3

sign, phrase, word, symbol, or design that denotes ownership of a particular product or service and legally differentiates it from all others of its kind

Question 4

what does a mark do

Answer 4

it is a sign with distinguishing features and is used in activities of trade

Question 5

Characteristics of TMs

Answer 5

Distinctiveness and Novelty

Question 6

How is distinctiveness assessed

Answer 6

goods/services, laws, average consumer

Question 7

How is novelty assessed

Answer 7

identical or similar signs, identical or similar goods or services

Question 8

Criteria for assessing similarity in TMs

Answer 8

conceptual, visual, phonetical

Question 9

Mark cannot be

Answer 9

descriptive, generic, misleading, violate public order/morality

Question 10

Registration methods for protection of TM

Answer 10

national, regional, international

Question 11

Regional EUIPO protection

Answer 11

applications applied for and granted in the EU are enforceable in the EU

Question 12

(Madrid Protocol) WIPO TM application/registration procedure

Answer 12

1. application sent to WIPO, 2. WIPO sends it back to State, 3. Union countries have 18 months to object to registration

Question 13

WIPO: what happens if a mark is rejected in one Union country within 18 months

Answer 13

mark is invalidated in that country, but will remain valid in all other countries

Question 14

WIPO: what if mark is rejected/invalidated in the first registration country

Answer 14

mark is invalid in all other countries

Question 15

WIPO Priority deadline for TMs

Answer 15

6 months

Question 16

TM lifetime

Answer 16

10 years initial registration plus renewal for every 10 years after

Question 17

Judicial procedures for TMs not litigation

Answer 17

deletion, cancelation

Question 18

What is deletion/abandonment of a mark

Answer 18

may be total or partial, or for lack of use for 3 years (under TRIPS) / 5 years (national level)

Question 19

What is cancellation of a mark

Answer 19

if TM is contrary to absolute requirements, contrary to relative requirements (novelty), registration in bad faith, contrary to public order/morality, or

Question 20

Criteria for assessing similarity of marks

Answer 20

appearance, sound, connotation, and commercial impression. May also include phonetics, rhyming.

Question 21

What can’t trademarks be

Answer 21

can’t be descriptive, generic, mislead, violate public morality

Question 22

Trademark must be

Answer 22

novel and distinct

Question 23

how to assess similarity

Answer 23

conceptually, phonetically, visually

Question 24

Administrative procedures before TM office

Answer 24

Opposition, Re-examination, and Decision of examiner can be appealed with: Admin. Appeal or Courts

Question 25

A TM can be cancelled if

Answer 25

Mark is: Contrary to absolute requirements; Contrary to relative requirements; Registration in bad faith, contrary to public order/ morality of religion

Question 26

Mark may be considered abandoned

Answer 26

expressly abandon it, stop using the mark for 3 TRIPS / 5 (EU) years

Question 27

TM can’t be registered if it is

Answer 27

the same or confusingly similar to another mark in the same or similar good/service

Question 28

Novelty for TM

Answer 28

it must be novel in the sense that it is not identical or confusingly similar to any existing trademarks.

Question 29

Distinctive

Answer 29

It should be capable of clearly distinguishing the goods or services of one company from those of others. how well it identifies the source of the good or service.