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148 Cards in this Set

  • Front
  • Back
What are the five types of inherently distinctive marks?
Arbitrary, Fanciful, Coined, Suggestive, Trade Dress
What does inherently distinctive mean?
It means that no secondary meaning is required.
What are the 6 marks that are non-inherently distinctive?
Merely Descriptive, Deceptively Misdescriptive, Primarily Geographically a Surname, Color, Product's Design
What are the marks that have no distinctiveness and no trademark significance?
Generic, Deceptive, Primarily Geographically Deceptively Misdescriptive, Functionality
What does non-inherently distinctive mean?
It means that secondary meaning is required.
What are the 5 rules of Trademarks?
(1) TM's are proper adjectives and should be followed by generic terms

(2) Trademarks should not be pluralized

(3) Trademarks should not be used in the possessive form.

(4) Trademarks are never verbs

(5) Trade Names and Trademarks are Not the same
Trademarks and Trade Names are not the same; why?
Trademarks should not be confused with trade names, which are corporate or business names. Trade names are proper nouns. Trade names can be used in the possessive form and do not require a generic term. It is not appropriate to use a trademark symbol. Many companies use their trade names as trademarks.

Trade Name: Reebok's newest line of athletic shoes is for children.

Trademark: Are you wearing Reebok athletic shoes or another brand?
Trademarks are not nouns....
Since trademarks are not nouns, they should not be used in the plural form. Instead, pluralize the common nouns they describe:

YES: Two Sanka decaffeinated coffees

NO: Two Sankas
When was the Lanham Act passed?
1946
Which part of the Constitution does the Commerce Clause come from?
Art. 1, Section 8, Clause 3
Which part of the Constitution does the Patent and Copyright Clause come from?
Art. 1, Section 8, Clause 8
What are the three elements needed for a mark to be a trademark?
(1) Identifies (use): Does the mark identify the goods or service?

(2) Distinguishes: Does the mark distinguish the good or service from other goods/services?

(3) Indicates Source
What is a trademark?
The term trademark includes any word, name, symbol, device, or any combination thereof used by a person or which a person has a bona fide intention to use in commerce, and applies to register on the principle register established by this Act, to identify and distinguish his or her goods.
What does commerce mean?
The word commerce means all commerce which may lawfully be regulated by Congress, and the only way Congress can do that is under the commerce clause.
What is the date of the most important Lanham Act Amendment?
Nov. 16, 1989
What does first in right mean?
It means first in the trading territory.
What does Section 1057(c) do and when was it added to the Lanham Act?
1057(c) is Application to Register Mark considered for Constructive Use. Constructive use rights are nationwide in effect and this was added on Nov. 16, 1989.
What does constructive rights do for a TM owner?
Gives the TM owner nationwide rights over that trademark, except for if there was a common law user in a territory before you registered for the mark. But anyone that tried to claim TM rights under the common law after the registration would lose.
What must you actually do with a TM?
You must actually put the mark on the goods, sell them, and if needed, establish a secondary meaning.
What are the two ways to file a TM?
Common law rights or Filing an application on the Register on the Principal Registry
What are the 4 bases for filing an application under the Lanham Act?
Bases for filing: 1(a) or (1)(b), 44(d), 44(e), 66(d)

1(a): you are using the mark in commerce that Congress can regulate, meaning you have already engaged in the use of the mark in commerce.

1(b): If you have a bona fide intent to use the mark in commerce. This means that if you have a business that is going to open and initially you are only going to be engaged in intrastate commerce, and you have no way of beginning to use the mark under the common law rule, can you still file an application and get super common law rights? Yes! Under this part of the act you can.

Section 44(d): (under 1126) if a foreign national files a registration, the applicant will be given a corresponding application in the U.S.

44(e) International can file for TM registration here solely b/c they used it in their country, and don’t have to show use prior to registration. Two ways that someone can obtain a registration in the U.S. prior to the requirements

66(a)-amended to apply the Madrid Protocol

(don't know if this is right)
What is a coined word?
a coined word is an artificial word which has no language meaning except as a TM (inherently distinctive)
What is a fanciful word?
A fanciful word is like a coined word that it is invested for the sole purpose of functioning as a TM and it differed from the coined word only in that it may bear a relationship to another word or it may be an obsolete word. (inherently distinctive)
What is an arbitrary word?
An arbitrary word is one which is in common linguistic use but when used with other goods in issue it neither suggests nor describes any ingredient, quality, or characteristic of that good. (inherently distinctive)
What is a suggestive word?
A suggestive word is one which suggests what the product is without actually being descriptive of it. (Playboy, Orange Crush) (inherently distinctive)
What is a merely descriptive word?
A merely descriptive word is one which draws attention to the ingredients, characteristics, quality or nature of the product. (Yellow Pages, After Tan)
What is a generic word?
A generic word is one which is the language name for the product. (No distinctiveness) (Butter). There can be no TM rights in a generic terms and they remain in the public domain as part of our language.
If a mark is merely descriptive of the ingredients, characteristics, or qualities of the good or service, is that mark protectable?
No. Usually if the mark imparts information directly, it is descriptive.
What are some elements of proof that your mark has acquired secondary meaning?
The amount and manner of advertising; volume of sales; length and manner of use; Direct consumer testimony; consumer surveys
Under 1052(e), no trademark by which the goods or services of the applicant may be distinguished from the goods of others shall be refused registration on the PR on the account of its nature unless:
it consists of a mark which
(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them;
(2) when used on or in connection with goods or services the applicant is primarily geographically descriptive of them;
(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them;
(4) is primarily merely a surname;
(5) comprises any matter that, as a whole, is function
What does a director need to accept as prima facie evidence that a mark has become distinctive?
The Mark must have acquired secondary meaning, the mark must be used in commerce, and proof of substantially exclusive and continuous use thereof as a mark by the applicant for 5 years before the date on which the claim of distinctiveness is made.

**If you have been using your mark under common law for 5 years and that use has been substantially exclusive and continuous, you can file an affidavit attesting to the fact that you have used your mark and the TM Board will accept it as prima facie evidence that the mark has moved from primary language meaning to secondary meaning.
When is a deception found?
Found when an essential and material element is misrepresented is distinctively false, and is the very element upon which the customer reasonably relies in purchasing one product over another.
What is primarily geographically deceptively misdescriptive?
This is when consumers think that the products/goods/services came from a particular geographic location, but they really did not.
Are primarily geographic descriptive terms protectable?
Yes, but they need secondary meaning
Can surnames have TM protection?
Yes, there is some deference to allow people to use surnames if they can use something else attached to it to give it secondary meaning.
What is the critical question in a case of secondary meaning?
The critical question is always whether the public is moved in any degree to buy the article because of its source and what are the features by which it distinguishes the source.
What does Section 2(a) and 2(c) of the Lanham Act state?
Section 2(a) of the Lanham act prohibits registration of a mark which may disparage or falsely suggest a connection with persons living or dead and 2(c) prohibits registration of a mark identifying a particular living person except by written consent. So 2(a) and 2(c) are not registerable under any circumstance unless there is written consent by the owner of the name.
Is color inherently distinctive?
No, it is non-inherently distinctive and requires proof of secondary meaning. But, like any other mark, color alone can be a source identifying symbol.
What is aesthetic functionality?
If a designs aesthetic value lies in its ability to confer a significant benefit that cannot practically be duplicated by the use of alternate designs, then the design is functional. The ultimate test of aesthetic functionality is whether the recognition of TM rights would significantly hinder competition.
What is the functionality doctrine?
In general terms, a product feature is function and cannot serve as a TM if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.
What are the seven principle benefits of federal registration?
1. Constructive notice of the registrant's claim of ownership of the mark.

2. Nationwide constructive use as of the date of application.

3. Prima facie evidence of the registration's validity, of ownership of the mark, and of registrants exclusive right to use the mark in commerce in connection the goods or services specified in the registration certificate.

4. The right to institute a TM action in federal court without regard to diversity of citizenship or amount in controversy.

5. The right to request customs officials to bar the importation of goods bearing infringing TMs.

6. Provision for treble damages, attorney's fees, and other remedies in civil actions for infringement.

7. The right, after continuous use of the mark for 5 years after registration, to have the right to use become incontestable and thereby constitute conclusive evidence of registrant's exclusive right to use the mark in commerce for the identifiable goods or services.
After 5 years of the right to use a mark, the mark in commerce can become incontestable, meaning it is only attackable on these specific defenses:
Fraud, abandonment, genericness, functionality, misrepresentation, prior use, use in violation of anti-trust laws, fair use, equitable defenses such as laches.
If you rely solely on common law, your rights are purely territorial, but...
if you have a mark only used in Marion County and you are engaged in commerce congress can regulate, from the moment of filing you are granted constructive use rights giving you the right of priority.
Can product design ever be inherently distinctive?
No, it always requires secondary meaning.
Can packaging trade dress be inherently distinctive?
Yes!
When has a mark acquired distinctiveness?
A mark has acquired distinctiveness even if it is not inherently distinctive if it has developed secondary meaning which occurs when in the minds of the public, the primary significance of a mark is to identify the source of the product rather then the product itself.
What did Qualitex say?
The Supreme Court in Qualitex said that color could be protected as a TM but only upon showing of secondary meaning.
What did Two Pesos unquestionably establish?
The legal principle that trade dress can be inherently distinctive
What does 15 U.S.C. 1065 say?
Incontestability of the right to USE the mark under certain conditions NOT the mark itself.
What is the Fair Use Defense?
That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such a party or their geographic origin.
What does collective mark mean?
Collective Mark: The term “collective mark” means a TM or service mark-
i. (1) used by members of a cooperative, an association, or other collective groups or organization, or
ii. (2) which such cooperative, association, or other collective group or organization has bona fide intention to use in commerce and applies to register on the principal register established by this Act, and includes marks indicating membership in a union, an association, or other organization.
What does certification mark mean?
Certification Mark: The term “certification mark” means any word, name, symbol, or device, or any combination thereof-
i. (1) used by a person other than its owner, or
ii. (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce & files an application to register on the principal register established by this Act, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
What does service mark mean?
Service Mark: The term “service mark” means any word, symbol, name, or device, or any combination thereof
i. (1) used by a person, or
ii. (2) which a person has a bona fide intention to use in commerce & applies to register on the principal register established by this Act, to identify & distinguish the services of one person, including a unique service, from the services of others & to indicate the source of the services, even if that source is unknown. Titles, character names, & other distinctive features of radio or television programs may be registered as service marks notwithstanding that they, or the programs, may advertise the goods of the sponsor.
After the mark has become incontestable, where are the only defenses available under the Lanham Act?
The only defenses available against a mark that has become incontestable are those set forth in section 33b of the lanham act. The fact that a mark started as a merely descriptive mark does not matter now.
Is mere descriptiveness recognized as a basis for challenging an incontestable mark?
No; mere descriptiveness is not recognized by either Section 15 or Section 33(b) as a basis for challenging an incontestable mark.
Who must file for a TM?
Only the owner of a TM used in commerce can register for the TM.
What does 1057(c) say about bona fide intent?
Added Nov. 16, 1989, 1057(c)(2) said that if you start your business and have at least 3 years plus the application filing date and application registration (1 year to 18 months) there might be as much as 4 years from the filing date before the mark has to be put in use in commerce. This is a very powerful provision.
What are some of the benefits afforded a person that is on the Supplemental Registry?
The registration may use the R circle symbol; the registration is protected against registration of confusingly similar marks under Section 2(d), or 1052(d); the registrant may bring suit for infringement in federal court; and the registrant must serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
Can TM cases be brought both state and federal court?
Yes; but most TM cases are brought in federal court and even those that are in state court can be removed to federal, but TM disputes can still be litigated in state court.
What section of the Lanham Act gives injunctive relief?
Section 34, 1116
Describe TM injunctive relief.
Injunctive relief can take a variety of forms. A defendant simply may be enjoined from any further infringing or deceptive activity. Section 37 of the Lanham Act proves that in any civil action involving a registered TM the court may order the cancellation of the registration. This power in the courts to rectify the register provides an important additional remedy in a TM infringement action.
Are penalty or punitive damages available in a TM action?
NO
What does Section 32, 1114, of the Lanham act deal with?
It deals with registered marks and protection for registered marks.
What does Section 43(a), 1125, of the Lanham Act deal with?
This is where we find protection for unregistered marks dealing with infringements.

Any person, who on, or in connection with any goods or services, or any contained for goods, uses in commerce any word, name, term, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods or services or commercial activies of another person shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such an act.
What is the touchstone of TM infringement?
likelihood of consumer confusion
What is the best way to see how consumers are thinking?
Consumer survey.
Why can't you offer surveys as evidence in a TM infringement case?
Because surveys are hearsay.
Who has the burden of proving likelihood of consumer confusion?
The burden rests with the plaintiff.
What is the Polaroid Test?
Where the products are different, the prior owners chance of success is a function of many variables:

1. the strength of his mark: the strength of the mark is a big factor because the court can weigh whether the mark itself was weak or strong.

2. the degree of similarity between the marks: similarities of sight, sound, and or meaning.

3. the proximity of the products.
What is bridging the gap?
If goods are similar or closely related or not competitive what is the likelihood that consumers would look at the two different products and think one product is now being offered by the source of the original product? Bridging the gap is that the original manufacturer is now offering another service or good.
When are TM rights lost?
TM Rights are lost when the TM no longer signifies the source of the goods or services it identifies b/c:

i. The TM has come to signify or denominate the product or service itself (GENERIC)
ii. The Use of the TM has been discontinued with intent not to resume use (ABANDONED)
iii. The TM is assigned w/o goodwill
iv. The TM is licensed “in gross”
When is a term generic?
A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source= flip to the brand rule!!!
Intent is not an element of section 32 or 43(a), but...
it can be used as a factor for determining likelihood of confusion.
What doctrines are these: initial interest confusion, reverse confusion, post-sale confusion, confusion test.
Judicially created doctrines.
When is the inference of intent particularly strong?
When the parties have had a prior relationship. Such relationship provides evidence of the allege infringer's intent to trade on the plaintiffs goodwill.
Are there punitive damages available under the Lanham Act?
NO. Penalty damages are NOT allowed under the Lanham Act.
What does a plaintiff need to show for actual damages?
To recover actual damages, plaintiff must show actual injury, proximately arising from the alleged infringement or deception.
What do some courts require before awarding actual damages?
Proof of actual confusion or deception
When does the court allow attorneys fees?
Section 35 of the Lanham Act authorizes courts to award attorney's fees in exceptional cases, usually where the defendant has acted in bad faith.
Can a TM owner that forgets to put the circle R on its product barred from getting profits for TM infringement?
Yes, you will be precluded from requiring profits and damages if there is no register mark to give someone notice that the good or service is registered. MAKE SURE the Circle R is on your product!
Would laches and acquiescence bar monetary relief for a plaintiff?
Yes, it could.
What are the traditional remedies in TM and unfair competition cases?
Injunctions, damages, profits, attorney's fees
What does a registrant need who has a registration covering the entire U.S. in order to sue for likelihood of consumer confusion, mistake, or deception?
a common set of consumers that know about the two marks. If there is not a common set of consumers that would see both marks by definition there can't be likelihood of confusion, which means the registrant can not have a remedy until they move into that trading area or the mark becomes famous
Unless you can prove likelihood of confusion....
you have no remedy
Does mere knowledge of the senior user equate to bad faith?
No
Can a junior user's bad faith be based on simple knowledge that the TM existed from the senior user?
as long as they can say with a straight face no.
To establish common law rights in a particular area you have to be the first to ...
adopt, affix, and establish secondary meaning (if your mark isn't inherently distinctive)
Used in commerce also means
bona fide use of the mark in the ordinary course of trade (shipping to a single relative wouldn't count)
IN common law you must use the mark to get TM rights.
TMs are never property rights, they are only rights that identify, distinguish, and indicate source.
What does 44(d) state?
If an applicant from a foreign country files a registration in someplace other then the U.S., then files a corresponding application in the U.S. that applicant will be given the date of filing from the foreign country.
Does a service TM count if a company is using the mark to provide a service for its employees?
No a service mark has to be in the ordinary course of trade, so a service has to be performed for the benefit of others other then the applicant, and a company can't provide services for its employees, it has to be performed for the benefit of the public.
What are the two principle ways in which you can establish common law rights?
1. Common law- first in time to affix with a secondary meaning is the first in right.

2. Super Common Law: 1057(c) added on Nov. 16, 1989 that gave, upon the filing of an application, constructive use rights national wide in effect. It gives you priority against other filers.
What does distinctiveness indicate?
Secondary Meaning
If the primary language has nothing to do with the product or service, what does that mean the law will presume?
IF the primary language meaning has nothing to do with product or service, that means that law will presume that consumers will not look at it and think primary language, they will think of the mark as a SOURCE IDENTIFIER
What will the Director of the USPTO accept as prima facie evidence that a mark has become distinctive?
Proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for 5 years before the date on which the claim of distinctiveness is made.
Right to use and registration are totally separate....
if you lose the right to registration that does not mean that you lose the common law rights that you have established.
Can competitors used your TM in a primary language meaning?
Yes.

(Think of his Waffle Example)
A mark is not protectable if it is merely descriptive of the...
ingredients, qualities, or characteristics
Usually if a mark stands for an idea which requires some operation of the imagination to connect it with goods, it is...
suggestive
Indianapolis Colts
This is primarily geographically descriptive, so it needs secondary meaning. The goods or services must be believed by consumers to come from that location.
In principle...
TM law, by preventing others from copying a source identifying mark, reduces the customer's cost of shopping and making purchasing decisions.
What do marks on goods do?
Marks on goods helps consumers make purchasing decisions quickly, and they place a certain amount of trust in the mark that is equitable to the consumer goodwill and the law protects that goodwill and encourages the production of quality goods and allowing the protection of quality goods and punishes those who make an inferior mark to trick consumers into thinking they are buying the superior mark.
The first in right is...
The first in time to affix a mark and acquire secondary meaning.
What is Congress trying to promote with the Lanham Act?
The production of quality goods.
Can protection by common law rights be received by use alone?
Yes!
Can the USPTO cancel the entire registration if you have not been using the mark on all the products and services listed?
Yes
Abandonment:
The use the the TM has been discontinued with intent not to resume use.
Abandonment, how many years for a prima facie showing of abandonment?
3 years, or if the mark becomes generic, at which point that burden of proof moves to the mark owner. Use means bona fide use for ordinary course of business and not just trying to keep the mark when it really isn't being used in commerce anymore.
Licensing in Gross
To avoid an argument that there are two sources, which would cause the mark to fail because it is not a single source, the licensee must be a related company and to be a related company the TM owner must control the nature and quality of the goods or services in relation to the mark.

Only if that language is there will the license be safe from collateral attack by someone looking to seek to cancel the mark or registration and cause the mark to be abandoned. Because the argument would be that there were two sources and not one source and that would defeat the single source requirement.
If a TM is licensed in gross, meaning not a related company, then the TM rights are lost.
This is statutory, so not a lot of wiggle room. You must state on a contract that the licensor has the right to control the TM. You have to have some mechanism in place by which that control is actually undertaken by the TM owner. A licensee must become a related company of the licensor and must follow the statutory language.
What is trade dress?
Trade Dress is a category that originally included only the packaging or dressing of a product, but in recent years has been expanded to encompass the design of a product.
What is packaging trade dress
Those things which present by way of packaging to the consumer.
What is product configuration trade dress.
The product itself just by its overall appearance.
What does the Supreme Court say about copying?
Copying is OK if you don't have protection like a copyright, TM, or patent, then everyone is free to copy the uncopyrighted article. If the product is not patented/copyrighted then everyone is free to copy it exactly under this decision except that the copier cannot copy the packing trade dress and cannot copy it in a way that would deceive consumers into thinking the copier is the original manufacturer. You also cannot market the product in a way that would deceive consumers into thinking the copier is the original manufacturer.
What happens when a patent expires?
It passes to the public
What would a design patent do that a product configuration TM could not do?
Even under the common law we would be told by TM lawyers that product configuration trade dress is not going to be protectable until the owner can establish secondary meaning, it is not going to be inherently distinctive or protectable. So there would be a race to secondary meaning under product configuration trade dress. But if you filed a design patent, that could get your 14-20 years of protection and then in the course of time you could also acquire secondary meaning, and when the design patent expires you file for TM rights additionally. You have basically extended the life of the patent beyond the terms of TM rights.
Product configuration trade dress passes to the public when a patent expires, but...
the packaging trade dress can be extended by a TM by showing secondary meaning.
TM configurations that have functional aspects to them or whose shape is dictated by function cannot be protected as TMs
Section 2(e)(5) comprises any matter as a whole that is functional, and 2(f) says that no matter how much secondary meaning you have for the functional aspect of your product, the functionality kills your TM significance.
Section 32

Section 43(a)
Section 32 allows a person to sue for infringement of a REGISTERED TM

Section 43(a) allows a person to sue for infringement of an UNREGISTERED TM.
REMEMBER that
It is a race to secondary meaning. This means that there is no "set" amount of time to acquire secondary meaning. Not like 5 years or anything, it simply is just when does the public identify the source of the product rather then the product itself.
a product design always gets secondary meaning, it is not inherently distinctive.
Product design always gets secondary meaning, it is not inherently distinctive
How can you have likelihood of consumer confusion?
Likleihood of consumer or potential consumer confusion, mistake, or deception can occur:
1. as to the source, sponsorship, or affiliation
2. as the result of similarities of sight, sound, and/or meaning
3. within a given marketing environment
4. giving consideration to the similarity of the goods and/or services
The problem with infringement tests is how do you, as a lawyer, prove that consumers are confused, mistaken, or deceived from another mark in commerce?
Best way to see how consumers are thinking is a consumer survey. The only problem is that you can't hardly ever offer it into evidence because it is hearsay. Only if it is scientifically based will a judge allow it in as an exception to the hearsay rule.
Where does the burden of proving likelihood of consumer confusion lie?
It lies with the plaintiff
Which test functions on the strength of the mark, the degree of similarity between the marks, and the proximity of the products?
The Polaroid test for likelihood of consumer confusion.
What is intent to confuse?
A trump card! Remember you don't need actual confusion, only likelihood of consumer confusion. If there was actual confusion or intent to confuse it makes the case a lot easier.
Why do you want to visualize the TM in the marketplace?
Because for consumer confusion it is how the mark appears in the marketplace. Don't divide up the TM, it is how it appears in the marketplace as a WHOLE.
What is the Du Pont factors?
The Du Pont factors are different because its Section 2(d), or how the mark appears on the application, not in the marketplace. It is how those goods would normally be traded and now how they might appear in use in commerce.

1. At least one person has to see these goods together in the same area, otherwise no confusion can exist.

2. Trade channels; if the goods are not going to cross channels there is unlikely going to be consumer confusion.

3. Super famous marks can show likelihood of confusion even with noncompetitive goods. like coke.

4. Nature and extent of actual confusion; length and time during and conditions under which there has been concurrent use without evidence of actual confusion. The longer two marks are in use in commerce without there being a single incidence of actual confusion the less likely there is a possibility of likelihood of confusion.

When you go out into practice you MUST start with the multi-factor test because if not you might be committing non-reversible error.
Intent is not an element of 32 or 43(a)...
but it can be used as a factor for determining likelihood of consumer confusion.
In the order of priority, appearance is more important then sound, and sound is more important than connotation.
Sound: advertised by spoken word, even though they don't look the same, they are spoken with the same tone or inflection and consumer when they hear them might think that they are the same.

Connotation: The two marks have similar connotations, even if they are dissimilar in sight and sound. Even foreign words may give rise to confusion with an American word.
Marketing Environment
Courts tend to presume that consumers are unlikely to assume that dissimilar products come from the same source.

This is true for marks that are not famous, but marks that are really famous the more likely they are going to believe the famous mark is going to be seen by the wide variety and goods and services.
Explain complementary goods and services
Sometimes there are goods and services that are so close that even though consumer presumption might suggest that there is no likelihood of confusion, but bread and cheese can be complementary uses, so when goods and services are complementary to each other consumers might be more prone to believe that they are coming from the same source.

Also, bread and cheese are subject to frequent replacement. There is a lesser standard of purchasing care, unlike buying a car where there is infrequent replacement and a higher standard of care.
There cannot be consumer confusion id consumers don't see...
the product or service in the marketplace.
Retail v. Wholesale
The wholesale customer and retail customer are different sets of consumers. If you cannot establish that the advertising and the use of the mark comes to the attention of the other, you are not going to be able to say that there is a common set of consumers to see both marks.
Similarity of Goods and Services
Courts tend to presume that where goods sold under the same or similar marks are themselves similar, the same, or in some way closely related, the likelihood that they may be attributed to the same or a related source is enhanced.
What is reverse Trademark confusion?
Reverse confusion is another type of confusion that occurs when, because of the strength of the junior users mark or its marketing power, the legitimate prior user's goods or services are likeley to be perceived as those of the junior user.

So basically the senior user is mistaken for the junior user.
Natural area of expansion
Some courts have recognized enforceable TM rights for a TM owner in a natural area of expansion. The TM owner needs to prove that indeed you were about to march or about to bridge the gap/expand into that area covered by the defendant as a matter of natural progression to business or by business plan.
A family or group of marks
McDonalds, McNuggest

There must be recognition among the purchasing public that common characteristics is indicative of a common origin of goods. Recognition of the family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family.
Why is actual confusion a double edged sword?
Proof of actual confusion is not necessary for injunctive relief; however, some courts require such proof as basis for awarding monetary damages.

While proof of actual confusion is not requisite to proving likelihood of confusion, when such evidence exists it is often given great weight.
What must a survey contain?
a proper universe, a fair and representative sample of that universe and must contain unbiased questions, proper security, and proper tabulation, verified, and interpreted by an expect.

Surveys afford a basis for determining likelihood of confusion by ascertaining scientifically the mental associations and reactions of consumers and potential consumer to the marks involved.
i. The Price of getting a registration is eternal diligence to that trademark. Such defects in ∏s TM rights or infringement claim may include factors such as the following:
a. ∏ has not used its mark in commerce
b. ∏s mark lacks priority over ∆s mark
c. ∏s mark is generic or was abandoned
d. ∏s mark is descriptive and lacks secondary meaning
e. ∆s conduct does not create a likelihood of confusion
What are the equitable defenses
Equitable defenses: the equitable powers, or “country justice”; laches, acquiescence, unclean hands....
What type of assent is laches?
Passive Assent
What type of assent is acquiescence?
Active Assent
What is laches and who uses it?
b. Laches- USED BY DEFENDANTS WHEN SUED (Passive Assent)

(a) ∏s has actual or constructive knowledge of ∆s use of its mark(s)

(b) ∏ inexcusably delayed in taking action; and

(c) ∆s detrimentally relied upon ∏s inaction or otherwise be inequitably prejudiced if ∏ were permitted to assert its right at the time of filing suit.
What is acquiescence?
c. Acquiescence- (Active Assent)

(a) ∏s conduct amounts to an express or implied assurance that ∏ will not assert TM rights against the ∆

(b) the delay b/w the conduct and the assertion of right is inexcusable; and

(c) ∆ detrimentally relief upon ∏s inaction or otherwise would be inequitably prejudiced if ∏ were permitted to assert its rights at the time of filing suit.
Laches
Linked to the SOL; is SOL run or going to run? ∆ has the burden of proof that laches is an applicable defense. But if SOL close to the case has run, it might shift the burden to the ∏. This is the defense that scares him the most, b/c that means a client that takes a PR registration and never again thinks again of minor infractions of his mark that comes to his attention, and if ∆ can prove he detrimentally relied on ∏s inaction, then your clients rights might be restricted. It may not lose its right to injunctive relief, but one thing that can occur is that if there is an inevitable confusion occurring, a rick above likelihood of confusion, laches defense may bar recovering money but it may not bar imposition of injunction because the courts ultimate is to protect the public, the public’s freedom from likelihood of confusion from marks in commerce
Laches usually bars monetary relief, but not...
injunction