User:Skyfaller/Trademark

Roughly corresponding to the syllabus for my Trademark Law class.

@#$% I need to know

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

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

Hierarchy of trademark distinctiveness![1] From best to worst

Trademarks in danger of being lost

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

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?

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

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

only for registrations, you can't get injunctions from TTAB