Use Flashcards
how are CL trademark rights established?
by actual use
when is a mark on goods deemed to be used in commerce?
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
when is a mark on services deemed to be used in commerce?
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
what 2 things trigger abandonment?
- non use
2. lack of owner’s actual control in a license
under the CL, how are ™ rights established?
by use and by use only
what are the elements for analogous use?
- open and notorious public use
- direct to specific segment of purchasing public
- manner sufficient to inform or apprise prospective purchaser of the present or future availability of the adopter’s service of the mark
what is analogous use?
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
what must analogous use become?
actual use
are plans to use the mark enough to show use of the mark?
no
does a mark have to be physically affixed to an item to demonstrate use?
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
do the goods using the mark have to actually be sold for a profit to constitute use?
no, can show through widespread distribution
when will a holder get to claim priority back to the use of a prior mark through tacking?
when the mark is very similar to the new mark and the secondary meaning continues
what are the 4 types of use?
- analogous
- actual
- constructive
- surrogate
is token use enough to establish trademark rights?
no, it either has to be actual use or constructive use
what are the 3 requirements of an ITU application?
- bona fide intent to use in commerce
- right to use mark (no other person has right to use mark)
- actual use happens w/in 6 months (or longer w/ extensions)
what is the acronym for the 3 requirements of an ITU application?
B: bona fide intent to use in commerce
R: right to use
A: actual use w/in 6 months or longer w/ extensions
if someone has filed an ITU, when do they get actual enforceable rights?
when they actually use the mark
after using the mark, what date will be the priority date for an ITU application?
when the application was filed
- A filed ITU
- Z files use based application
- Z’s application is published
- A opposes
Who will win?
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
- A files ITU application
- Z makes actual use
- 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?
Yes, this is exactly what ITU applications were designed to do
what is a surrogate use?
a trademark use by someone other than the mark owner that inure’s to the owner’s benefit
what are the 2 types of surrogate uses?
- use by affiliates
2. use by public
to have surrogate use by affiliates, what is required?
- using entity is control by the registrant/applicant
2. there is a substantial relationship b/t using entity and registrant/applicant
what is public as surrogate user?
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
