Trademarks Flashcards
What is a trademark
Symbol, word or feature which identifies the source of a good or service. Key word is that it must act as an identifier.
Types of Tradermarks
- Service Mark- A mark that identifies a service as opposed to a product
- Trade Name= name that has the status of a trademark
- Trade tress= Total image of a product. (size, shape, color, texutures, graphics
Categories that are protected and not protected for trademarks
Four categories of protection:
- Fanciful (completely invented word)—Exxon, THQ (Toy Headquarters)
- Arbitrary (take word w/ known meaning but w/ no connection to your product/service)—Apple Computers
- Suggestive: Requiring consumers to exercise imagination to connect the mark with the product. (Requires thinking/imaginative leap to get there)—Copper Tone, Electronic Arts
- Descriptive Marks w/ secondary meaning (Describes product/service & has acquired a consumer connection b/w the product/service and a single, identifiable source)—see Frosty Treats case, Rock Band
Not Protectable:
- Descriptive Marks w/o secondary meaning
- Generic Marks (common name or nature of an article)—Yo-Yo, Zipper
What is the number one concern in a trademark issue
Likelihood of confusion by public. Game over if strong. Look at Sullivan.
Do you need to register a trademark to bring suit?
What do you need to have a trademark
No, but prima facie evidence of validity.
Need to be active use of the mark in commerce. (If two people came up with the makr whoever makes use of it will get it)
Trademark Infringement/passing off Elements?
- Mark is owned or asssociated w/ particula P and
- D’s used of the mark is likely to cause confusion/mistake among the public as to the origings of the good
8 factor test to determine likelihood of confusion
SDPLADQS
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Strength of P’s TM à The stronger the mark, the more likely that consumer’s seeing the allegedly similar mark will be confused
- Arbitrary and facnciful more strenght
- Recognition in the marketplace
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Degree of similarity between P’s and D’s mark
- Similarity of Appearance – overall appearance
- Similarity of Sound – sounds of words, for example S.O. and Esso
- Similarity of Meaning – Mental image evoked by TM may overpower any differences between them
- Proximity of goods or services à Goods likely to be sold in the same or same kind of store/area
- Likelihood that P will bridge the gap à How likely P is to begin selling the stuff that D is trying to sell. Even if no immediate plans, the court might still consider P’s right to reserve that option in the future.
- Actual confusion à Not necessary, but highly persuasive. Like lenght of time that D has used without actual confusion.
- D’s good faith in adopting the TM à Did D intentionally copy just to cash in on P’s goodwill?
- Quality of D’s product or services / channels à If use their ®s in same or related services, then there is a greater likelihood of confusion.
- Sophistication of the buyers à The more sophisticated, and the more costly the services, the more careful and exacting the purchasers will be, and less likely to be confused
Do you have another cause of action for other than trademark infringement
Yes, Dilution.
More specifically Dilution by tarnishmenr or dultuion by blurring.
Dilution Elements
- Mark is famous
- D is making Commercial use of Mark
- D’s use began after mark became famous
4 A. It will suffer Negative associations through D’s use of the Mark (Dilution by Tarnishment) Note: Means disparagement of the mark)
- B. Diminish the mental association between a mark and a product. Note: This is the loss of uniqueness/distinctiveness of the mark.
Defenses to trademark
- Classic Fair Use
- Nominative Fair Use
- Cancellation/genericide
Nominative Fair Use Trademark Defense Elements
nominative = applies where a defendant has used a plaintiff’s mark to describe plaintiff’s product, even if defendant’s ultimate goal is to describe his own product. To prove nominative fair use, a defendant must satisfy three requirements:
- the plaintiff’s product or service in question must be one not readily identifiable without use of the trademark;
- only so much of the mark or marks may be used as is reasonably necessary to identify the plaintiff’s product or service; and
- the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
Classic Fair use Elements (defense for trademark)
classic = where defendant has used plaintiff’s mark only to describe his own product not @ all too describe plaintiff’s product. Applies only to marks that possess both primary & secondary meaning & only when mark is used in its primary descriptive sense rather than its secondary trademark sense. To prevail, defendant must show:
- it has not utilized the term in dispute as a trademark or service mark;
- it has used the term fairly and in good faith; and
- Use it only to describe its produce
Cancellation/Genericide defense to trademark infringement
A registered mark is to be cancelled if it has become the common descriptive name of an article
Who has jurisdiction for a trademark
Both Fed and States
How long can a tradermak last
Infinite Duration
