User:Skyfaller/Trademark
Roughly corresponding to the syllabus for my Trademark Law class.
@#$% I need to know[edit]
- Causes of action
- infringement - confusing similarity, trade dress
- unfair competition
- state trademark, unfair competition
- counterfeiting
- rights of publicity
- Defenses
- fraud
- abandonment
- misrepresentation
- prior use
- functional (in trade dress)
- rebut likelihood of confusion
- fair use
- laches and acquiescence
- unclean hands
- Remedies
- Actual damages / lost profits
- Treble damages at discretion
- defendant's profits
- costs of the action
- in extreme cases, attorney's fees
- reasonable royalties
- Factors / tests
- how to register or oppose a mark
opposition to registration
- merely descriptive
- geographically misdescriptive
- merely a surname
- functional (that's trade dress)
- live people without their written permission
- dead presidents (during the life of their widow)
- obscene
- fraud - Bose falsely claimed to be selling tape decks when they hadn't for 10 years
Principles of Trademark and Unfair Competition Law[edit]
Unfair competition - you can pursue this without being registered
- 43(a) - civil action for infringement - consumers have no standing under the trademark act, you have to be a competitor
- 43(b) - importation
- 43(c) - dilution
- 43(d) - cybersquatting
Federal TM Legislation & the Constitution, Adoption & Use, Priority[edit]
Distinctive, Descriptive & Geographic Terms, Surnames, Color[edit]
Hierarchy of trademark distinctiveness![1] From best to worst
- Coined / fanciful - you made the word up
- arbitrary - Apple for computers
- suggestive - mustang for cars
- descriptive - computerworld for computer store
- generic - fish market for a fish market ... you're losing your mark
Trademarks in danger of being lost
- XEROX for photocopies
- KLEENEX for facial tissues
- GOOGLE for Internet searches and search engines
TM registration and administrative proceedings, generic terms[edit]
Abandonment, Assignment without Goodwill, Licensing & Franchising[edit]
Trade dress protection[edit]
Infringement of Trademark Rights[edit]
Du Pont test for likelihood of confusion - similarities weigh more than differences, may be dispositive on their own
- similarity of the marks - appearance, sound, connotation, commercial impression
- similarity of goods or services
- similarity of trade channels
- conditions in which sales are made - impulse vs. sophisticated purchasing
- fame of prior mark
- how many people use similar marks used on similar goods
- actual confusion
- potential confusion
- concurrent use w/o evidence of actual confusion
- variety of goods on which a mark is used - house mark, family mark, product mark
- if the mark was transferred between users, whether that was done correctly - assignment in gross
- extent of distinctiveness / ability to exclude others
Defenses and Limitations[edit]
Concurrent use / concurrent rights and grey market goods[edit]
Permitted use[edit]
Dilution & Domain name misuse[edit]
- Blurring
- similarity of marks
- distinctiveness of famous mark
- engaging in exclusive use of the mark
- recognition of famous mark
- intent to associate with the famous mark
- Tarnishment
- only for famous marks
- reach of advertising/publicity
- extent of sales
- actual recognition
- how long has it been registered, on principal register?
Fair use in statute[edit]
- Nominative fair use, descriptive fair use,
- comparative advertising
- parody, criticism, commentary
- news reporting/commentary
- noncommercial use
Misrepresentation[edit]
- Monty python
- misrepresentative advertising - talking trash about the other fashion boutique (competitor) - has to be sufficiently disseminated
- misleading survey results - inaccurately presenting results of the survey in advertising, false advertising
- split in the courts on false advertising - either has to be literally false on its face, or false by necessary implication
- Time warner v. direct tv - false by necessary implication, creates impression with consumers that conflicts with reality
- you can recover profits, actual damages (or up to 3 times the actual at court's discretion), cost of the action
Misappropriation[edit]
- NBA v Motorola -
- Ebay v Bidder's Edge - cyber trespass to chattels
Advertising, Merchandising, and right of publicity[edit]
- White v Samsung - Vanna White robot / wheel of fortune case
Domain name practice[edit]
- UDRP
- Anticybersquatting Consumer Protection Act
- Gripe sites are allowed with a confusingly similar name as long as it's not a commercial use - adding "sucks" to the domain name helps but isn't always necessary - hinges on bad faith, legit commercial interest
TTAB Practice[edit]
only for registrations, you can't get injunctions from TTAB
- you can file opposition against a pending registration
- concurrent use but nobody does that anymore