Use

Question 1

how are CL trademark rights established?

Answer 1

by actual use

Question 2

when is a mark on goods deemed to be used in commerce?

Answer 2

when the mark is placed in a bona fide manner on the goods, their contains or displays, or if such placement is impracticable, then on documents associated w/ the goods or their sale AND the goods are sold or transported in commerce

Question 3

when is a mark on services deemed to be used in commerce?

Answer 3

when it is used or displayed in the sale or advertising of the service AND the services are rendered in commerce, rendered in more than one State AND the person rendering the services is engaged in commerce in connection w/ the services

Question 4

what 2 things trigger abandonment?

Answer 4

1. non use

2. lack of owner’s actual control in a license

Question 5

under the CL, how are ™ rights established?

Answer 5

by use and by use only

Question 6

what are the elements for analogous use?

Answer 6

1. open and notorious public use
2. direct to specific segment of purchasing public
3. manner sufficient to inform or apprise prospective purchaser of the present or future availability of the adopter’s service of the mark

Question 7

what is analogous use?

Answer 7

a use that would not by itself be a technical trademark use, may nonetheless be sufficient to establish which party is the senior user of the mark

Question 8

what must analogous use become?

Answer 8

actual use

Question 9

are plans to use the mark enough to show use of the mark?

Answer 9

no

Question 10

does a mark have to be physically affixed to an item to demonstrate use?

Answer 10

no, OK if mark doesn’t physically touch goods, can use on POS displays, price, lists, menus, mail solicitations or other advertising that informs prospective purchasers of the association b/t the designation and the use or the user’s goods and services

Question 11

do the goods using the mark have to actually be sold for a profit to constitute use?

Answer 11

no, can show through widespread distribution

Question 12

when will a holder get to claim priority back to the use of a prior mark through tacking?

Answer 12

when the mark is very similar to the new mark and the secondary meaning continues

Question 13

what are the 4 types of use?

Answer 13

1. analogous
2. actual
3. constructive
4. surrogate

Question 14

is token use enough to establish trademark rights?

Answer 14

no, it either has to be actual use or constructive use

Question 15

what are the 3 requirements of an ITU application?

Answer 15

1. bona fide intent to use in commerce
2. right to use mark (no other person has right to use mark)
3. actual use happens w/in 6 months (or longer w/ extensions)

Question 16

what is the acronym for the 3 requirements of an ITU application?

Answer 16

B: bona fide intent to use in commerce
R: right to use
A: actual use w/in 6 months or longer w/ extensions

Question 17

if someone has filed an ITU, when do they get actual enforceable rights?

Answer 17

when they actually use the mark

Question 18

after using the mark, what date will be the priority date for an ITU application?

Answer 18

when the application was filed

Question 19

1. A filed ITU
2. Z files use based application
3. Z’s application is published
4. A opposes

Who will win?

Answer 19

Depends on when Z actually used

-if Z used before A filed ITU, Z will win
if Z used after A filed ITU, A will win

Question 20

1. A files ITU application
2. Z makes actual use
3. A filed trademark infringement suit in fed district court against Z, seeking to enjoin Z from further use.

Can A prevent Z from using the mark?

Answer 20

Yes, this is exactly what ITU applications were designed to do

Question 21

what is a surrogate use?

Answer 21

a trademark use by someone other than the mark owner that inure’s to the owner’s benefit

Question 22

what are the 2 types of surrogate uses?

Answer 22

1. use by affiliates

2. use by public

Question 23

to have surrogate use by affiliates, what is required?

Answer 23

1. using entity is control by the registrant/applicant

2. there is a substantial relationship b/t using entity and registrant/applicant

Question 24

what is public as surrogate user?

Answer 24

where the public begins using a trademark in a certain way and the registrant/applicant can take advantage of this use for priority even if they initially tried to stop the use of the trademark in this fashion