Trademarks

Question 1

Advantages of Registering a Trademark

Answer 1

1. public notice
2. Legal presumption of ownership of the mark and exclusive right to use mark nationwide for the goods/services listed in the registration
3. Ability to bring an action concerning the mark in federal court with burden proved
4. Can use US registration as a basis to obtain registration in foreign countries
5. Ability to record trademark with US customs and border protection service to prevent importation of infringing foreign goods
6. Can use (R) symbol
7. Listing in USPTO’s online databases (deterrent to innocent infringers)

Question 2

Grounds for the USPTO refusing to register a mark:

Answer 2

1. likely to be confused with registered mark
2. merely descriptive or generic
3. Misdescriptive, or deceptively misdescriptive
4. Primarily geographically descriptive
5. Primarily merely a surname
6. Functional
7. Immoral, deceptive, scandalous or disparaging

Question 3

Priority in registration:

Answer 3

1. Constructive use priority - when filing an (intent to use) application, you get priority from the date you filed your intent to use application - this does not predate the application
2. Priority of examination - marks are examined in order they arrive at USPTO
3. Paris convention priority - treats applications to other countries (filed within six months of first country) as of the date the application in the other country was filed

Question 4

Can oppose a mark on the following basis:

Answer 4

1. descriptive
2. confusing
3. generic
4. immoral

Question 5

After five years a trademark can no longer be challenged on the basis of:

Answer 5

descriptiveness

Question 6

Classes of trademark in order of strength

Answer 6

1. arbitrary / fanciful
2. suggestive
3. descriptive
4. generic

Question 7

A trademark is:

Answer 7

1. any word, name, symbol, or device or any combination thereof –
2. used or intended to use in commerce
3. To identify and distinguish or indicate source of goods

Question 8

Descriptive Mark tests:

Answer 8

1. Dictionary test: does the ordinary meaning in the dictionary of the trademarked term(s) describe the goods?
2. Imagination test: Does it require imagination, thought and perception to reach a conclusion as to the nature of goods when reading or hearing the words?
3. Competitors’ Need: Do competitors need to use the words to effectively compete with mark owner?
4. Competitor’s use: are other companies actually using the same words to describe their products

Question 9

Can a descriptive mark still be a trademark?

Answer 9

Yes, if it acquires a “secondary meaning.”

Acquired distinctiveness is the mental association in buyers’ minds between the alleged mark and a single source of the product

Question 10

Can color be a trademark?

Answer 10

Color can be protected trademark if:

1. Color must have acquired secondary meaning AND
2. Color is not functional

Question 11

Can the design/packaging of a product be trademarked?

Answer 11

Yes, if

1. Not Functional
2. Product design must have acquired distinctiveness [err on the side of product design]
3. Product packaging can be distinctive

Question 12

Factors in finding secondary meaning:

Answer 12

Direct Evidence

(a) direct consumer testimony
(b) consumer surveys

Circumstantial Evidence

(c) exclusivity, length, and manner of use
(d) amount and manner of advertising
(e) amount of sales and number of customers
(f) established place in the market
(g) proof of intentional copying.

Question 13

Trade dress trademarkability analysis:

Answer 13

Courts consider whether:

(1) the design yields a utilitarian advantage;
(2) alternative designs are available;
(3) advertising touts the utilitarian advantages of the design; and
(4) the particular design results from a comparatively simple or inexpensive method of manufacture

Question 14

Types of functionality:

Answer 14

de facto - merely has a function, other ways of designing exist
de jure - trademark is a utilitarian function

Question 15

Factors in finding trade dress or packaging is de jure functional

Answer 15

1. expired utility patent disclosing utilitarian advantage of the design
2. Availability of other alternative designs
3. Design results from a comparatively cheap or simple method of manufacturing the article

Question 16

Trademark infringement elements:

Answer 16

1. Plaintiff owns a valid mark entitled to protection under the Lanham Act
2. Defendant used an identical or similar mark
3. Defendant used the mark in commerce”
4. Defendant used the mark “in connection with goods or services”
5. Without the Plaintiff’s consent
6. Defendant’s use of the mark is likely to cause consumer confusion

Question 17

Sleekcraft factors to determine likelihood of consumer confusion:

Answer 17

1. strength of the mark;
2. proximity of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. type of goods and the degree of care likely to be exercised by the purchaser;
7. defendant’s intent in selecting the mark; and
8. likelihood of expansion of the product lines.

Question 18

Forms of consumer confusion:

Answer 18

Source confusion
Sponsorship Confusion
Post-Sale Confusion
Reverse Confusion
Initial Interest Confusion

Question 19

Elements of injunction for trademark dilution:

Answer 19

1. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness,
   shall be entitled to an injunction against another person who,
2. at any time after the owner’s mark has become famous,
3. commences use of a mark or trade name in commerce that
4. is likely to cause dilution by blurring or dilution by tarnishment of the famous mark

Question 20

Dilution by tarnishment

Answer 20

Is association between a mark or trade name and a famous mark that harms the reputation of the mark

Question 21

Things that are not trademark dilution:

Answer 21

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—
(B) All forms of news reporting and news commentary.
(C) Any noncommercial use of a mark.

Question 22

What type of knowledge to be liable as an intermediary for trademark infringement?

Answer 22

Generalized knowledge that trademark infringement is occurring, is not enough to support liability. There must be specific instances of actual infringement

Question 23

In order to prevail on intermediary liability for trademark infringement, a plaintiff must establish:

Answer 23

that defendant continued to supply its services to one who it knew or had reason to know was engaging in trademark infringement

Question 24

What is the standard for intentional inducement of trademark infringement?

Answer 24

The standard for “intentional inducement” is fairly high. It requires that the contributory infringer do more than be able to “reasonably anticipate” the direct infringement.

Question 25

Defenses to trademark infringement

Answer 25

Classic Fair Use
Nominative Fair Use
First Amendment
Genericide
Abandonment

Question 26

Elements of classic fair use

Answer 26

1. Use other than as a mark
2. Descriptive of Defendant’s goods
3. Must be used in good faith to describe

Question 27

Elements of nominative fair use

Answer 27

1. the product or service in question must be one not readily identifiable without use of the trademark
2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service
3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder

Question 28

Balancing for first amendment defense:

Answer 28

Consider:

1. Does trademark have artistic relevance to the underlying work?
2. Does the title explicitly mislead as to the source of content of the work?

Question 29

Test for genericide:

Answer 29

Under the primary-significance test, a mark is not generic when “the primary significance of the term in the minds of the consuming public is not the product but the producer.”

Question 30

Ways to abandon a trademark

Answer 30

1. Non-use of the mark
2. Licensing mark without sufficient quality control - can abandon mark if fail to adequately supervise those who licese your mark and ensure consistent quality - causes the mark to “lose its significance as a mark”
3. Assignment in Gross of the Mark - assign mark without assigning tangible assets; can cause confusion regarding quality