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36 Cards in this Set

  • Front
  • Back
Types of Trademarks 15 U.S.C. §1127
1. Trademark
2. Service Mark
3. Certification Mark
4. Collective Mark
5. Trade Dress 15 U.S.C. §1125
Elements of a Valid Mark
15 U.S.C. §1127 (or § 1125 for Trade Dress)
1. A symbol (or color, sound, configuration Qualitex Co. v. Jacobson Products Co., Inc.)
2. Used in commerce or bona fide intent to use on commerce
3. To identify and distinguish the seller's goods from goods made or sold by others
4. It cannot be functional
Establishing Trademark Protection
1. Distinctiveness
2. Priority
3. Registration (optional)
Categories of Distinctiveness
1. inherently distinctive (arbitrary, fanciful, suggestive)
2. capable of acquiring distinctiveness (descriptive)
3. generic
Genericness
1. Born generic (generic ab initio)
2. “Genericide” (become generic over time) [The Murphy Door Bed Co., Inc. v. Interior Sleep Systems, Inc.]
Determining Level of Distinctiveness
Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc.
1. DICTIONARY - dictionary def. is a relevant indication of the ordinary significance and meaning of words to the public
2. IMAGINATION TEST - If a term requires imagination, thought and perception to reach a conclusion as to the nature of goods, it is considered a suggestive term. Alternatively, a term is descriptive if, standing alone, it conveys information as to the characteristics of the product.
3. COMPETITORS NEED THE TERMS IN THE TRADEMARK TO DESCRIBE THEIR PRODUCTS? - the fact that a term is not the only or even the most common name for a product is not determinative, for there is no legal foundation that a product can be described in only one fashion.
4. USE BY OTHERS - how much actual use by others in the marketplace?
Determining Secondary Meaning (for descriptive marks)
Wal-Mart v. Samara Brothers
in order to establish a secondary meaning for a term, a plaintiff must show that the primary significance of the term in the minds of the consuming public is not the product but the producer
a. direct evidence (direct testimony, consumer survey)
b. circumstantial evidence
i. Exclusivity
ii. length, and manner of use
iii. amount and manner of advertising
iv. amount of sales and number of customers
v. established place in the market
vi proof of intentional copying
Priority (who is the first to identify goods)
§ 1 of the Lanham Act
Have to use the mark in commerce or you apply to use the mark with an intention to use the mark in commerce (constructive priority)
Benefits of Registration on Principle Register
1. nationwide constructive use (15 U.S.C. § 1072) and notice (15 U.S.C. § 1057(c))
2. Constitutes prima facie evidence of validity
3. Possibility to attain “incontestable” statues after 5 years (15 U.S.C. § 1065)
4. Enhanced remedies
5. Right to being federal cause of action
6. U.S. Customs recordation and opportunity to stop importation of articles bearing infringing mark
Registering on the Principal Registry
Lanham Act § 1(a)
1. Design mark
2. Conduct a trademark search
3. Use commercially interstate
4. Apply for trademark
5. Examination
6. Publication in Official Gazette for Opposition
Supplemental Registry
Lanham Act § 1(a)
to enable persons in this country to domestically register trademarks so that they might obtain registration under the laws of foreign countries
Grounds for Refusing Registration
Lanham Act § 2
1. Immoral, deceptive or scandalous matter
2. Flag or coat of arms or other insignia of the U.S., State, foreign nation
3. Name, portrait, or signature identifying a living person w/o his/her consent
4. Consists of or comprises a mark which too closely resembles a mark registered in the PTO or a mark/trade name previously used in the U.S. by another and not abandoned
5. Is merely descriptive or deceptively misdescriptive of the goods
6. Primarily geographically descriptive (some exceptions)
7. Primarily geographically deceptively misdescriptive of goods
8. Is primarily a surname
9. Comprises any matter that, as a whole, is functional
Functionality: Elements
1. It's essential to the use or purpose of the article (Two Pesos, Inc. v. Taco Cabana, Inc.
if a design is one of a limited number of equally efficient options available to competitors that would be unduly hinder them by according the design trademark protection then the design is considered functional and unprotectable)
2. It affects the cost or quality of the article
Aesthetic Functionality
If a design's aesthetic value lies in its ability to confer a significant benefit that cannot practically be duplicated by the alternative designs then the design is functional
Opposition
Lanham Act §13(a)
1. standing to oppose if they have a likelihood of damage by the registration of the mark
2. must give notice of opposition
3. plaintiff must prove likely to be damaged by mark
4. there are valid legal grounds why the applicant is not entitled to register its claimed mark (one of the enumerated examples in Lanham Act § 2)
Cancellation
Lanham Act § 18
1. standing to try and cancel a mark if they have a likelihood of damage by the registration of the mark
2. plaintiff must prove likely to be damaged by mark
3. there are valid legal grounds why the applicant is not entitled to register its claimed mark (one of the enumerated
4. cancellation of a mark, a mark may still enjoy common law rights
Concurrent Registration
Lanham Act § 2(d)
1. Must have two or persons who have become entitled to use marks as a result of concurrent lawful use in commerce prior to the earliest of the filing date
2. Initiated by an applicant seeking a limited territory of use
3. If no confusion senior user obtains registration to the entire nation subject to junior user’s actual areas of use or zones or natural expansion
4. Exceptions:
a. parties agree to leave an area open
b. junior user first to register: junior user obtains nationwide rights subject to territorial claims of senior user
c. area of mutual nonuse maintained if only way to avoid likelihood of confusion
Incontestability
Lanham § 15
1. must be registered for at least five years
2. cannot argue no secondary meaning
Types of Infringement
1. registered marks (Lanham Act §32)
2. unregistered marks (Lanham Act §43)
3. false advertising (Lanham Act §43)
4. dilution (Lanham Act §43)
5. cybersquatting (Lanham Act §43)
Elements Infringement
plaintiff must establish (Lanham Act §§ 32, 43)
1. valid protected mark
2. the defendant “used” the mark
3. in commerce “in connection with the sale … or advertising of goods or services
4. without the plaintiff’s consent
5. defendant’s use is “likely to cause confusion” OR cause mistake or deceive as to affiliation, origin, sponsorship, or approval of his or her goods or services by another person
Trademark Use
1-800 Contacts, Inc. v. WhenU.com
If defendants are only using plaintiff's trademark in a "non-trademark" way - that is, in a way that does not identify the source of a product - then trademark infringement and false designation of origin laws do not
Use in Commerce
23 U.S.C. § 1127
a mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce
Likely to Cause Confusion: Levels of Competition
AMF Incorporated v. Sleekcraft Boats
1. Direct Competitors – infringement usually found if the marks are sufficiently similar that confusion can be expected.
2. Related But Not Competitive – several other factors are added to the calculus.
3. Unrelated – no infringement because confusion is unlikely.
Likely to Cause Confusion: Factors
AMF Incorporated v. Sleekcraft Boats
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 good
8. Likelihood of expansion of the product lines
Types of Confusion
1. Confusion as to sponsorship
2. Initial Interest Confusion
3. Post-Sale Confusion
4. Reverse Confusion
5. Passing off
6. Reverse passing off
Dilution: Two Types
1. Blurring (impairs distinctiveness of the famous mark)
2. Tarnishment (harms reputation of the famous mark)
Dilution: Elements
Lanham Act § 43(c)
Plaintiff must show:
1. That the plaintiff owns a famous mark that is distinctive
2. That the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark
3. That a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and
4. That the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark
Blurring: Factors
Lanham Act § 43(c)(2)(B)
1. The degree of similarity between the mark or trade name and the famous mark
2. The degree of inherent or acquired distinctiveness of the famous mark
3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark
4. The degree of recognition of the famous mark
5. Whether the user of the mark or trade name intended to create an association with the famous mark
6. Any actual association between the mark or trade name and the famous mark
Defenses
1. Abandonment
2. Fair Use
Abandonment
15 U.S.C. §1127
1.When its use has been discontinued with intent not to resume such use.
a. Intent not to resume may be inferred from circumstances
b. Nonuse for three consecutive years shall be prima facie abandonment [before 1994, as in this case, it was two years, but now it's three]
c. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark [no warehousing]
2. When any course of conduct of the owner, including acts of omission as commission, causes the mark to lose its significance as a mark.
Fair Use (Nominative Use)
1. Classic Use
2. Nominative Use
a. Comparative Advertisement
b. First Amendment
i. News Reporting
ii. Parody
Nominative Use
New Kids on the Bock v. News America Pub.
1. Is the product of service of the trademark owner one which is readily identifiable without use of the trademark?
2. Has the mark been used by the defendant more than is reasonably necessary to identify the plaintiff?
3. Has the defendant done acts that would falsely suggest sponsorship or endorsement by the trademark holder?
Remedies
1. Injunctive Relief
2. Damages
3. Counterfeiting Remedies
Injunctive Relief: Types
1. injunctive relief – including corrective changes to infringing article (Lanham Act § 34)
2. destruction of infringing articles (Lanham Act § 36)
3. cancellation of registration (Lanham Act § 37)
Injunctive Relief: Elements
1. plaintiff has suffered irreparable injury
2. remedies available at law, such as monetary damages, are inadequate to compensate for that injury
3. considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted
4. public interest would not be disserved by a permanent injunction.
Damages
1. Require actual or constructive notice (Lanham Act § 29)
2. Profits, money damages, attorney’s fees (Lanham Act § 35(a))
Counterfeiting Remedies
1. Fines & imprisonment (18 U.S.C. § 2320)
2. Seizure (Lanham Act § 34(b))
3. Destruction (Lanham Act § 36)
4. Treble Damages (Lanham Act § 29)