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39 Cards in this Set
- Front
- Back
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Trademark
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Any Name, Word, Symbol, Device, or any combination thereof:
(1) Used by a person (can be Intent to Use); (2) To identify and distinguish the goods from those of others (3) to indicate the source of the goods. |
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Section 2(a)
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Cannot be registered if:
• A) Immoral, deceptive, scandalous matter; or matter which may disparage or falsely suggest a connection with persons … institutions, beliefs or national symbols, or bring them into contempt, or disrepute |
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Section 2(b)
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Cannot be registered if:
B) Flag or other insignia of the US or any state, or foreign nation |
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Section 2(c)
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Cannot be registered if:
C) Name, portrait or signature identifying a particular living individual o Name of President cannot be used during the life of his widow, if any o Any 2(c) can be used with written consent |
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Section 2(d)
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Cannot be registered if:
D) Consists of a mark that is likely to be confused with a registered mark |
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Section 2(e)
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Cannot be registered if:
E)Consists of a mark which: o E)(1): Is merely descriptive or deceptively misdescriptive of them o E)(2): Is primarily geographically descriptive o E)(3): Is primarily geographically deceptively misdescriptive o E)(4): Is primarily merely a surname o E)(5): Is functional |
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Section 2(f)
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Descriptive is registrable if it has become distinctive of the applicant’s goods in commerce (secondary meaning) unless:
(a) Immoral, deceptive, scandalous… (b) Flag, etc. (d) Likely to be confused with a registered mark (e)(3) Primarily geographically deceptively misdescriptive (e)(5) Functional |
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Likelihood of Confusion
(2nd Circuit) |
Polaroid
Strength of the Mark Similarity of the marks Proximity of the products or services Evidence of Actual Confusion Defendant’s Intent Sophistication of the buyers Likelihood that the prior owner will bridge the gap Quality of the junior user’s product Relative harm to the parties if an injunction is granted |
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Likelihood of Confusion
(4th Circuit) |
Pizzeria Uno
Strength of the Marks Similarity of the marks Similarity of the goods or services Evidence of Actual Confusion Defendant’s Intent Similarity of Advertising Similarity of the facilities used by the parties in conducting their businesses |
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Likelihood of Confusion
(8th Circuit) |
SquirtCo
Strength of the trademark Similarity of the Marks Evidence of Actual Confusion Defendant’s Intent Proximity of the Marks Degree of care likely to be exercised by potential customers |
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Likelihood of Confusion
(9th Circuit) |
Sleekcraft
Strength of the Mark Similarity of the marks Similarity of goods or services Evidence of Actual Confusion Defendant’s Intent Similarity of Marketing channels Degree of Care Exercised by Purchasers |
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Secondary Meaning
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acquired when in the minds of the public, the primary significance of a product feature… is to identify the source of the product rather than the product itself
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Functional
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If it is essential to the use or purpose of the article or if it affects the cost or quality of the article
Factors: 1) The existence of a utility patent disclosing the utilitarian advantages of the design • Includes expired utility patents 2) Advertising materials in which the originator of the design touts the design’s utilitarian advantages 3) The availability to competitors of functionally equivalent designs 4) Facts indicating that the design results in a comparatively simple or cheap method of mfging the product |
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Trademark Classifications
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Generic - The word identifies the article and serves as the common descriptive name.
Descriptive - Identifies a significant characteristic. Suggestive - requires imagination, thought, and perception to reach a conclusion as to the nature of the goods. Arbitrary or Fanciful - A common word applied in an unfamiliar way or Words invented solely for use as trademarks |
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Factors that show Secondary Meaning
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Amount and manner of advertising, volume of sales, length and manner of use, direct consumer testimony, and consumer surveys
Best: Consumer surveys and direct testimony |
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Secondary Meaning from the Restatements
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• Secondary meaning exists only if a significant number of prospective purchasers understand the term, when used in connection with a particular kind of good, service, or business, not merely in its lexicographic sense, but also as an indication of association with a particular, even anonymous, entity.
o Secondary meaning allows a person to distinguish descriptive terms and apply them to a specific business o Secondary meaning extends only to the meaning attached to the designation – not to its original, lexicographic sense |
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Ownership
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Ownership of mark is settled by priority of appropriation. Not conception, but USE!
Joint Endeavors:The party that controls the nature and quality of the good/service owns the mark. 1. If a party leaves a joint endeavor, those remaining retain ownership because they control the quality. (Robi v. Reed) So, they retain the right to use the mark |
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Use
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Mark must be used in a way that indicates the sources (single, consistent, and regular way).
Not sporadic or casual (P&G). Registration is irrelevant. |
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Priority of Use
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Ownership = Appropriation and Use in commerce. (Blue Bell)
Date of ownership - Use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public’s mind" Today's Trend - Public can ID and Distinguish. |
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Concurrent Use
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Concurrent use of the same or similar mark in limited regional areas is allowed in certain situations. (Lanham Act provides for registration under 2(d))
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Limited Area Exception
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§33(b)(5)
Confers upon a junior user the right to continued use of an otherwise infringing mark in a remote geographical area if that use was established prior to the other party’s federal registration. Elements: 1. Junior User, Before Registration of Senior, uses in good faith 2. Separate limited Localities 3. Continuous Use |
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Bars to Registration
(Section 2(a)) |
May not register a mark that consists or comprises
• Immoral, deceptive, or scandalous matter; or • Matter which may ••Disparage or falsely suggest a connection with a person, living or dead …, or •• Bring [the person] into contempt or disrepute |
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Immoral or Scandalous Marks
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No real standards apply.
Standard: A mark is considered immoral or scandalous if a “substantial composite of the general public” would regard it as offensive. We don't really know what is scandalous. |
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Disparaging Marks
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Offensiveness aimed at a group.
What is the likely meaning? Does meaning refer to identifiable persons, institutions, beliefs, or national symbols? If yes, barred by 2(a). |
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Difference between Immoral and Scandalous Marks, and Disparaging Marks
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• Scandalous and Immoral: Perception of a substantial composite of the general public
• Disparaging: If a mark is allegedly disparaging to a particular group, it is viewed through the lens of a substantial composite of the group. |
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Deceptive Marks
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1) Is the term misdescriptive of the character, quality, function, composition or use of the goods/services?
2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods/services? 3) If so, is the misdescription likely to affect the decision to purchase? |
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Difference btw 2(a) deceptive and 2(e)(1) deceptively misdescriptive
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2(a) – Deceptive
• Absolute Bar – Even to the supplemental register or through secondary meaning 2(e)(1) – Deceptively Misdescriptive • Partial bar – May be registered upon a showing of secondary meaning under 2(f) |
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Interpretation of Deceptive Test
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• Meets 1 only: Mark is arbitrary or suggestive
• Meets 1 and 2: Mark is “merely … deceptively misdescriptive • Meets all three: Mark is deceptive |
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False Associate of Mark
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1) mark is the same as, or a close approximation of, the name or identity previously used by another person or institution
2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution 3) The person or institution named by the mark is not connected with the activities performed by applicant under the mark •Connection must be a commercial one (ownership interest, sponsorship, endorsement, etc.) •Open advancement of the commercial activities of the applicant is also sufficient (LAPD Case) •Cannot be just a general connection (membership in the tribe) 4) The fame or reputation of the person or institution is such that when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed |
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Likelihood of Confusion for Registration (section 2(d))
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o The use of similar marks on closely related or complementary items would likely result in confusion of source (Nutrasweet)
Low-cost, impulse items in the same section of the grocery Unique part of nutrasweet and nutrasalt is ‘nutra’ – which is shared o The presence of a strong mark reduces the likelihood of confusion (Mrs. Field’s Cookies) o Cannot just add something to a strong mark and dodge likelihood of confusion o Housemarks may reduce likelihood of confusion, but will not prevent it by simply attaching to a previously registered mark |
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Primarily Geographically Descriptive
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1) The term in the mark sought to be registered is the name of a place known generally to the public
2) The public would make a goods/place association |
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Primarily Geographically deceptively Misdescriptive
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1) the primary significance of the mark is a generally known geographic location
2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place 3) The misrepresentation was a material factor in the consumer’s decision |
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Surnames
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Test: What is the primary significance to the purchasing public?
If a surname - Barred Factors: 1) The degree of surname rareness 2) Whether anyone connected with the applicant has the surname 3) Whether the term has any recognized meaning other than that of a surname 4) The structure and pronunciation or “look and sound” of the surname |
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Generic Terms
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A generic name of a product can never function as a trademark to indicate origin.
•The terms “generic” and “trademark” are mutually exclusive A mark answers the buyer’s questions: • Who are you?, Where do you come from?, Who vouches for you? But the generic name of the product answers the question: • What are you? |
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De Facto Secondary Meaning
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1) The public does not recognize the term as a brand name, but knows there is only one source (maybe patented). May be because the term has not been used in the proper trademark fashion
2) A producer selects as a trademark a term that is deemed to have been already the commonly recognized (generic) name of the goods, but advertising, use, and market dominance has established public trademark recognition |
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Loss of Trademark Rights
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(1) When Mark has been abandoned or
(2) When any course of conduct of the owner … causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. |
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Abandonment Elements
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1) Non-use
• 3 years provides a rebuttable presumption of abandonment (prima-facie) • Use in commerce is required (infringement actions and limited licensing may be insufficient if only minor activities) • "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 2) Intent not to resume use • Time horizon: Reasonably foreseeable future |
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Reverse Confusion
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Reverse confusion arises when a larger, more powerful entity adopts the trademark of a smaller, less powerful trademark user and thereby causes confusion as to the origin of the senior trademark user’s goods or services
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Similarity of the Marks
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Sight, sound, meaning
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