Trademarks Final

Question 1

SLEEKCRAFT FACTORS

Answer 1

1. Strength of the trademark
2. Proximity of the goods/services (related? direct competition?)
3. Similarity of the trademarks
4. Evidence of actual confusion
5. Marketing channels used
6. Customer degree of care
7. Intent of defendant (attempt to confuse)
8. Likelihood of market expansion

Question 2

3. Similarity of the trademarks (sleekcraft)

Answer 2

Are there actual similarities between the trademarks: sight, sound, and meaning.

Look to:
1. Overall impression created by the respective designations including respective goods or services or in identifying respective business
2. pronunciation of designations
3. Translation of foreign words in the designations
4. Verbal translation of any pictures or designs
5. Suggestions, connotations, and meanings of the designations

Question 3

1. Strength of the trademark (sleekcraft)

Answer 3

Has the senior trademark established strength in the market? Is it fanciful, arbitrary, suggestive or descriptive?

Question 4

2. Proximity of the goods/services (sleekcraft)

Answer 4

Are the trademarks in use on competing products? Are the products related but not in direct competition?

Question 5

4. Evidence of actual confusion (sleekcraft)

Answer 5

Does evidence exist that consumers have actually confused the products?

Question 6

5. Marketing channels used (sleekcraft)

Answer 6

Do the products share similar channels of trade? Courts could even take into account each products’ placement in stores.

Question 7

6. Customer degree of care (sleekcraft)

Answer 7

How much caution do ordinary consumers exercise in making purchasing decisions?

Courts frequently use the price of goods as a proxy for the level of prudence a buyer will use in any given case.

Question 8

7. Intent of defendant (sleekcraft)

Answer 8

Does is appear that the alleged infringer was trying to create a likelihood of confusion?

Question 9

8. Likelihood of market expansion (sleekcraft)

Answer 9

Could the brands in question expand into overlapping markets? An eventual expansion could create new competition and result in consumer confusion.

Question 10

Strength or Distinctiveness of Trademark

Answer 10

1. Generic
2. Descriptive
3. Suggestive
4. Arbitrary
5. Fanciful

Generic and Descriptive are Not Distinctive
Suggestive, Arbitrary, and Fanciful terms are Inherently Distinctive

When you use your surname, it is likely descriptive

Question 11

Descriptive trademarks

Answer 11

A descriptive term generally is not trademarkable unless it has achieved a secondary meaning in the market.

Question 12

Domain names

Answer 12

A domain name that consists of a generic word plus .com is generic and thus unregistrable as a trademark only if consumers generally perceive the domain name as generic.

Therefore, a domain name consisting of a generic word plus .com is not unregistrable as a trademark per se, and whether such a domain name is registrable depends largely on public perception

Could be compound word like booking.com though

Question 13

Genericide

Answer 13

the process by which a brand name loses its distinctive identity as a result of being used to refer to any product or service of its kind.

Question 14

Seabrook foods test: A non-word or symbol mark is inherently distinctive if it is:

Answer 14

(1) an uncommon shape or design,
(2) unique in the industry,
(3) not just an adaptation of a commonly-used ornament for a class of goods, or
(4) commercially significant even if considered separately from any accompanying words.

Question 15

Generic term test

Answer 15

“Who are you/what are you” test for generic terms
Real determination: primary significance of the word in a consumer’s mind

Mark answers “who are you/what are you/where do you come from/who vouches for you”

whereas generic term only answers “what are you”

Question 16

Factors for if mark is descriptive

Answer 16

1. the dictionary definition; (dictionary test)
2. whether the term conveys the characteristics of the product through simple observation, rather than exercise of the imagination (imagination test);
3. whether competitors are likely to need to use the term to describe their own, similar product;
4. and whether competitors actually do use the term to describe their own product.

Question 17

Unregistered marks

Answer 17

An unregistered mark is entitled to protection under the Lanham Act if it would qualify for registration as a trademark.

To qualify for registration a mark must be sufficiently “distinctive” to distinguish the registrant’s goods from those of others. Such distinctiveness may be demonstrated in either of two ways. The mark may be: (1) “inherently distinctive” if its intrinsic nature serves to identify its particular source. (2) the mark may be distinctive by virtue of having acquired a “secondary meaning” in the minds of consumers.

Question 18

Crowded field means

Answer 18

even if Abercrombie test finds it inherently distinctive, other sources do use it too commonly

Question 19

Trade dress

Answer 19

total image and overall appearance

Question 20

Test to find Secondary meaning

Answer 20

1. Length and manner of use of mark or trade dress
2. Volume of sales
3. Amount and manner of advertising
4. Nature of use of the mark or trade dress in newspapers and magazines
5. Consumer survey evidence
6. Direct consumer testimony
7. Defendant’s intent in copying the trade dress.

Question 21

Colors and trademark

Answer 21

Color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design. Inherent distinctiveness turns on whether consumers would be predisposed to equate the color feature with the source. While it is true that color is usually perceived as ornamentation, a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.

Question 22

Confusion of source of goods

Answer 22

The Lanham Act permits a civil action against any person who uses any word, term, name, symbol, or device in connection with any goods or services in a manner which is likely to cause confusion as to the source of those goods or services.

Question 23

Functional and Trade Dress

Answer 23

a feature is functional if it is useful for a purpose other than identifying the source of a product. Functionality is evaluated by looking at the usefulness of a specific design feature itself, such as a particular product’s shape or size, and not by assessing the usefulness of the product as a whole or the usefulness of the design feature in general.

(ie. Pocky stick design = useful, not protected)

Question 24

aesthetic functionality

Answer 24

Having aesthetic functionality disqualifies the mark from trademark protection. The test for aesthetic functionality is:

whether protecting the aesthetic feature would impose a significant competitive disadvantage on anyone who cannot use the functional feature. However, the competitive disadvantage must be unrelated to the recognition or reputation of the trademark owner.

Question 25

How do you establish trademark rights?

Answer 25

1.Use
2. Intention to Use (ITU)

Question 26

Constructive use

Answer 26

getting an intention to use

Question 27

Tacking

Answer 27

Changing a trademark still gives trademark rights in old version, question for jury

Question 28

Trademark abandonment

Answer 28

Can lose mark through:

1. non-use (with no showing of intent to resume),
2. Failure to control use

Question 29

Residual goodwill

Answer 29

No abandonment if the residual goodwill of the mark still exists

Question 30

Assignments in Gross

Answer 30

Assigning mark to another must continue the goodwill associated with the previous mark?

Question 31

Incontestability

Answer 31

To obtain incontestable status for a mark, the owner must file an affidavit with the PTO stating that the mark has been registered and in continuous use for at least five years, that there has been no final decision questioning the owner’s claim of ownership, and that there are no pending proceedings questioning such ownership.

An action to enjoin the infringement of an incontestable trade or service mark may be defended on the grounds that the mark has become generic, has been abandoned, or is used for misrepresentation or fraud. Such an action may not be defended, however, on the grounds that the mark is merely descriptive. (Park n Fly)

Question 32

Geographic marks

Answer 32

Can’t be registered.

The courts have devised a three-pronged test to determine if a particular mark is geographic:

(1) Is a generally known geographical location central to the mark’s content?
(2) Are consumers likely to believe that the location suggested in the mark is the actual origin of the goods when the goods actually come from a different location?
(3) Was the geographical misrepresentation a material consideration in consumers’ decisions to purchase the associated goods?

Question 33

Geographic Marks Flowchart

Answer 33

Question 34

Name marks

Answer 34

Under the Lanham Act, marks that are primarily merely a surname may not be registered as trademarks without secondary meaning

Question 35

Geographic limits on common law rights

Answer 35

A trademark owner does not have territorial rights for a mark in geographic areas where the owner does not yet do business.

Question 36

Geographic limits on registered marks

Answer 36

The owner of a trademark may not enjoin another’s unauthorized use of the mark in a geographically separate market where there is no likelihood of public confusion.

That said, the Act provides constructive notice of the owner’s trademark across the country, and the owner can enjoin the unauthorized use if it moves into the area. Section 1072 of the Act eliminated the defenses of good faith and lack of knowledge. An owner only abandons a trademark if he or she stops using the mark anywhere in the nation.

Question 37

Foreign trademarks in US

Answer 37

The use of a mark in a foreign county, without any presence in United States commerce, will have no bearing on United States trademark law and will not serve to establish priority for the foreign user in the United States.

BUT: if a foreign trademark holder has acquired sufficient fame within the United States, that holder will have priority of trademark rights in the United States.

Question 38

Unfair competition with non-similar goods

Answer 38

Claims of unfair competition may only be supported upon actual competition between the original trademark holder and the alleged infringer through the sale of similar goods. (Bordens ice cream vs condensed milk, secondary meaning didn’t help)

But, trademark infringement may be established if the allegedly infringing use of the mark is likely to cause confusion among consumers, even if the products are not in direct competition.

Question 39

Confusion generally

Answer 39

Under § 32(1)(a) of the Lanham Act , trademark infringement occurs when the defendant’s use of an allegedly infringing mark is likely to cause the average consumer to be misled or confused as to the origin of the mark.

A finding of trademark infringement based upon a likelihood of confusion must be supported by evidence establishing that confusion is likely to occur.

Virgin case
McDentist case
Libman case (no confusion likely)

Question 40

Weak marks

Answer 40

Restricted range of protection, only infringement if marks are quite similar and the goods closely related

Question 41

Salient parts of a mark

Answer 41

Confusion between Cup-O-Gold and Bag-O-Gold, but not Rockwood Bag-O-Gold.

Ie, the housemark addition can be assumed as part of the mark and less confusing

Question 42

Private Label Goods

Answer 42

ie. Store versions of brand products

Case by case, but less likelihood of confusion than regular as people knew what store brand was and the housemark

Question 43

Post-Sale Confusion

Answer 43

A party does not need to prove customer confusion at the point of sale to bring a successful trademark-infringement claim.This section has also been interpreted to enable claims for infringement based on an unregistered trade dress that has achieved secondary meaning in the relevant market. (Ferrari body kits)

The purpose of allowing confusion after a sale to support an infringement claim is to protect the reputation of genuine goods.

Question 44

Initial-interest confusion

Answer 44

a plaintiff may bring a trademark infringement claim against a defendant for creating consumer confusion prior to the point of sale, even if the consumer confusion is resolved before the sale goes through. (Multi time machine v amazon)

Question 45

Evaluating the likelihood of online-sale confusion factors

Answer 45

the key factors are:

(1) identifying the relevant consumer, and
(2) determining what that consumer would believe based on what he saw on the screen.

Question 46

Reverse Confusion

Answer 46

Situation where consumer believes that the senior mark holders originate with the junior mark user.

Factors contributing to a likelihood of reverse confusion include:
(1) degree of similarity between the senior and junior user’s marks,
(2) the conceptual strength or uniqueness of the senior user’s mark and the commercial strength or public awareness of the junior user’s mark, (3) consumer attentiveness to care related to the product,
(4) the length of time junior user has used the mark without causing confusion,
(5) junior user intent to cause confusion,
(6) evidence of actual confusion,
(7) trade and advertising channels for the competing products,
(8) the similarity of the manufacturers’ sales efforts,
(9) the competing products’ similarity in the minds of consumers, and
(10) facts suggesting that consumers would expect the junior user to manufacture both products or expand into the senior user’s market.

Question 47

Indirect & Vicarious Theories of Infringement

Answer 47

A manufacturer may be liable for a subsequent seller’s trademark infringement if the manufacturer induces the seller to infringe the trademark, or continues to supply its products to a seller that it knows or has reason to know is infringing. (drug capsules)

In order to be liable for contributory infringement, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. (eBay)

A generalized suspicion that infringing activity is occurring is not enough to trigger an obligation that the service provider affirmatively act.

Question 48

Dilution generally

Answer 48

(ie. Nike swoosh on a violin) Unlikely to be confusing, but still weakens the trademark

To show dilution, you do NOT need to show confusion. NO NEED TO TALK ABOUT CONFUSION.

Mark must be famous

Question 49

Dilution by Tarnishment

Answer 49

Association arising from similarity between challenged mark and
famous mark that harms the reputation of the famous mark (Adults “R” Us)