User:Skyfaller/Trademark

Roughly corresponding to the syllabus for my Trademark Law class.

@#$% I need to know

 * 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
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

 * Lanham Act

Distinctive, Descriptive & Geographic Terms, Surnames, Color
Hierarchy of trademark distinctiveness! 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

Infringement of Trademark Rights
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

Dilution & Domain name misuse

 * 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

 * Nominative fair use, descriptive fair use,
 * comparative advertising
 * parody, criticism, commentary
 * news reporting/commentary
 * noncommercial use

Misrepresentation

 * 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

 * NBA v Motorola -
 * Ebay v Bidder's Edge - cyber trespass to chattels

Advertising, Merchandising, and right of publicity

 * White v Samsung - Vanna White robot / wheel of fortune case

Domain name practice

 * 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
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