bsad 486 test 1

exclusion order

ITC can issue this, which bars the products entry into the US

registration

certificate of registration, currently valid for 10 years, includes information about mark and owner, renewal and affidavit of continuing use, electronic filing through TEAS

nature of TTAB proceedings

dont have final say-they are only the trial court. largely use the federal rules of civil procedure, offer accelerated case resolution, encourage alternative dispute resolution

rule of doubt

in close cases, when the issue of likelihood of confusion is in doubt, under the rule of doubt, courts resolve the doubt in favor of the senior user against the new comer

acquisition of trademark rights

in the US-rights arise from use of mark, not ncessarily from registration. use is also based on interstate commerce

inter partes proceedings

iniated after registration, variety of grounds for petitions to cancel, proceedings nearly identical to oppositions, vast majority settled voluntarily by the parties

reviewing a proposed mark

is consent from a living person needed, is the mark generic, is it statutorily protected, is the mark descriptive of a feature offered, check the translation of foreign terms

real property

land or real estate

inter partes

literally mean between parties, proceedings are those involving disputes between parties regarding rights, use and onwerships of marks. these actions are heard before the TTAB, an adminstrative tribunal of the USPTO, the USPTO is empowered to determine only the right to register a mark

conducting the trademark

preliminary search is often called a knockout search, a direct hit stops the searching and the client must consider a new mark and without a direct hit a comprehensive search can begin. can also search records and journals

design patents

new, original and ornamental designs for articles (furniture)

generic mark

not truly a mark but is merely a common name of a product

estoppel

plaintiff is estopped or precluded from asserting trademark infringement becuase it led the defedant to believe that it could use the mark by allowing numerous other similar uses to go unchallenged

senior vs junior user

senior is person who uses it first and the senior will have preference on who will use it forever more. File first, then use it within a specifieid time and you will get preference

TTAB-trademark trial and appeal board

set up by USPTO and then one could go through the court system

trademarks and geographical terms

you cannot trademark marks that include geographic terms such as references to countries, states, towns, streets and rivers. these present special problems

lanham act

(also called the U.S. Trademark Act and found at 15 U.S.C. §§ 1051 et seq.), enacted in 1946 and named for Congressman Fritz Garland Lanham (D. Tex.), the then chair of the House Patent Committee (which also proposed legislation relating to trademarks) who introduced the legislation. In addition to providing for federal trademark protection, the Lanham Act also includes statutes prohibiting acts of unfair competition, such as false advertising

Protectable matter

-slogans, letters, and numbers -logos and symbols -names of performing artists -domain names and hashtags -foreign terms (if not descriptive) -shapes and containers (if not functional)

Types of marks

-trademark: going on physical goods or products, a motto or slogan, the way a product is packaged or designed -service mark: not for a physical good, but a service you provide. -certification mark: certifying that certain things maybe are in your product and different groups or organizations are responsible for doling them out

trademark bullying

-use of trademark rights to harass or intimidate. A bully will trademark all kinds of things & then start sending cease and desists letters. The tech industry feels this a lot-big corporations buy up all they can and limit/stifle creativity

principal and supplemental register

2 tiers of registration: principal register: proven you've gotten secondary meaning. a primary trademark register and fully protected under the trademark act

trademark registration process

2 ways you can possibly apply-actual use or intent to use

timing requirements

30 day from filling in the official gazette, if someone has an opposition in that 30 day period, that it is on the official gazette, one would need to file your notice of opposition

request for extensions

30 days automatically (no questions asked), or 90 days but you have to show for good cause.

collective mark

A collective mark is one owned and used by a collective membership organization, such as a labor union, fraternity, or professional society, to identify that the person displaying the mark is a member of the organization and can be used by those members to identify their products and services.

common law trademark

As discussed, in the United States, trademark rights arise from use of a mark. It is not necessary to secure permission or registration from any governmental entity to acquire trademark rights. a party who is using a mark without any such governmental registration is said to have this

descriptive mark's registration ability

Because descriptive terms merely describe something about the goods or services, rather than identify the source of a product, they are not registrable with the USPTO until the consumer links the mark with a single source. That learned association is called secondary meaning or acquired distinctiveness. Descriptive marks cannot be registered until secondary meaning is shown.

infringement of trademarks

Introduction: new mark likely to cause confusion between 2 brands. These are the different factors court will look at and consider in determining likelihood of confusion -sight, sound, meaning and connotation -similarity of goods or services -consumer care and sophistication -strength of marks -area product (s) are being sold *defenses to infringement-maybe you have a mark and someone else is telling you you cant use it-here are some defenses -abandonement through nonuse. Maybe they registered it but its been abandoned -generic-mark not distinct enough -merely descriptive (no secondary meaning) -fraud: maybe you could prove the party is fraudulent -acquiescence: you've been using the mark for a while, you've interacted with that party and they've not indicated there is a trademark infringement and by them not enforcing it sooner, you make the argument that, "you've allowed this" -fair use

Trademark law treaty implementation act (TLTIA)

TLTIA (which implemented the 1994 Trademark Law Treaty), effective in late 1999, simplified several requirements relating to trademark registration and maintenance. For example, at present, the applicant need only submit one specimen showing how a mark is used rather than three, as was previously required. Additionally, a trademark applicant need no longer state the manner in which the mark is used. Finally, TLTIA established a six-month grace period for filing a renewal for a trademark registration.

trade related aspects of intellectual property rights (TRIPS)

TRIPS, a treaty signed by the United States in 1994, bars registration of a mark for wine or spirits if the mark identifies a place other than the origin of the goods and was first used after 1996. Thus, a new wine cannot use the mark "Napa" unless the product originates in that region of California. TRIPS also increased the period of time of nonuse of a mark that would result in abandonment from two years to three years.

Anti-cyber-squatting Consumer Protection Act of 1999

The Anticybersquatting Consumer Protection Act was signed into law in late 1999 and is intended to protect the public from acts of Internet cybersquatting, a term used to describe the bad faith, abusive registration of Internet domain names, such as the registration of www.juliaroberts.com by one with no affiliation with actress Julia Roberts.

federal trademark dilution revision act

The Federal Trademark Dilution Revision Act protects famous marks by preventing others from using marks (even on unrelated goods) if they are likely to cause dilution of the famous mark either by "blurring" (causing the famous mark to lose its distinctiveness) or "tarnishment" (harming the reputation of the famous mark). Thus, for example, the owner of NIKE may prevent another individual or entity from using the famous NIKE mark in connection with doughnuts or in conPrioritizing Resources and Organization for Intellectual Property Act ("PRO-IP Act"). The PRO-IP Act of 2008 created a new White House Intellectual Property Enforcement Coordinator or "Czar" to oversee and coordinate domestic and international IP enforcement activities, increased the range of penalties available in counterfeiting cases, and provides money so state and local governments can train law enforcement and educate the public about counterfeiting.nection with pornography

madrid protocol

The Madrid Protocol became effective in November 2003 and allows trademark applicants or registrants to file a single international trademark application and obtain protection in any of the more than 90 countries that are parties to the Protocol. The Protocol thus facilitates efficient and cost-effective protection for marks on an international basis, reducing the paperwork and expense involved in obtaining international trademark protection.

goodwill

The value inherent in achieving consumer loyalty to a particular product or service through the maintenance of consistent quality of the products or services offered under a mark is called goodwill. The goodwill associated with a trademark continues to increase over time as additional sales are made of the product offered under a mark and consumers associate the mark with its owner and continue to desire to do business with a seller who offers the reliable products they like.

gray market goods or parallel imports

U.S. trademark owners grant rights to those in foreign countries to manufacture goods that bear their U.S. trademark. After the goods are distributed in the foreign markets bearing this valid U.S. trademark, other parties buy them (often in bulk) and import them back into the United States to resell to others, in competition with and without the authority of the U.S. trademark owner. These goods are called; The goods are not counterfeit because they are produced by permission of the trademark owner. Often, however, they are packaged or formulated differently from their U.S. counterparts (perhaps to appeal to a foreign market) and are not intended for sale in the United States.

library of congress

US copyright office has been a part of the library of congress since 1870 and is in charge of examinining the approximately 600,000 copyright applications filed each year

acquiescence

a defense that alleges that words or conduct on the plaintiffs part amounted to an assurance to the defendant-infringer that plaintiff would not assert its trademark rights against the defendant

standard for determining likelihood of confusion

a determination of likelihood of confusion is made by reviewing all factors and no single factor is determinative. In close cases, when the issue of likelihood of confusion is in doubt, under the rule of doubt, courts resolve the doubt in favor of the senior user and against the newcomer. (rule of doubt)

copyright protection

a form of protection governed exclusively by federal law, granted to authors of original works of authorship

patent

a grant from the us government that permits its owner to exclude others from making, selling, using or importing an invention

international trademark association INTA

a non-profit international association composed chiefly of trademark owners/practioners

mark

a synonym for both trademarks and service marks

trademark

a word, name, symbol or device used to identify and distinguish ones goods and services to indicate their source

certification mark

a word, name, symbol, device or combination used by a person other than its owner to indicate one of three things: that goods and services have certain features in regard to quality, accuracy, materials, mode of manufacture or some other characteristics to certify regional or other origin or to certify that the work done on the goods or services was performed by members of a union or other organization

post examination procedure

abandonment, lack of timley response, issuance of formal notice of abandonment, revival of applications, petition to revive, request to reinstate the application

Under TRIPS and effective january 1, 1996, the lanham act

absolutely bars registration of any geographic mark for wines and spirits not originating from the place identified in the mark. Thus, the word "Sonoma" can only be used in connection with wines from the Sonoma region of California. Even when the goods originate in the Sonoma region, however, such marks are often rejected as geographically descriptive, and applicants must disclaim the geographic term. Thus, the owner of the mark SONOMA ONE® for wines disclaimed exclusive rights to use the word "Sonoma" apart from the mark (so that others can also use the word "Sonoma" for their goods

basis for filing application

actual use or intent to use, foreign application, foreign registration, extension of protection

TRIPS (trade related aspects of intellectual property)

administered by WTO and establishes minimum levels of protection that members must give to fellow WTO members

US patent and trademark office (USPTO)

agency charged with granting patents and registering trademarks, one of several bureaus or agencies within department of commerce

madrid protocol

allows trademark protection for more than 90 countries, including all of the 28 countries in the EU by means of a centralized, trademark-filing procedure. US implemented terms in late 2003

trade secret

any information that derives economic value from not being known to others and is the subject of reasonable efforts to maintain its secrecy. no limit to the type of information that can be protected as trade secrets

intent to use

applys if youre intending to use it or not sure which route to take

fanciful marks

are those that are invented and have no dictionary meaning like honda

purpose of trademarks

assure quality and consistency and assist consumers with purchase decisions

examination process

attorney examination-somone who works in the USPAT and specializes in that area youre filing in. Companion applications, conflicting applications, office actions and refusals to register marks, once they review it, they will then take some action. "first action" or office action-you will get an indication of whats going on. priority action-the examining attorney can reach out and ask/see how you can expedite the process.

petition to cancel

can be filed at any time., if the mark is on the principal register, the petition to cancel must be filed within five years of the registration date. This petition must set forth a "short and plain statement" of the reasons for the petitioners belief that he or she will be damaged by continued registration of the mark, state the grounds for cancellation and identify the owner of the registration

inter partes proceedings notes

cancellations come about when mark has already been registered and didnt know it was in the official gazette, asserting same types of brands will tarnish your brand, dilute it, etc. ministry wants partys to come together with agreement

house marks

companies use this establish recognition in a wide range of products or services

reporting results to client: formal written report prepared with the following elements

description, methods used, limitations, potential conflicts, opinion regarding availability, recommendations

Functions of trademarks

distinguish goods or services from others, specify "source", indicate consistent quality and serve as an advertising device

nondisclosure agreements

employees with access to trade secrets should sign this in order to protect trade secrets

exclusions from trademark protection

falsely suggestive marks (calling something bama that has nothing to do with alabama) -immoral or scandalous matter -names and potraits of living persons (without their consent) -deceptive matter -mere surnames

World Intellectual Property Organization

founded in 1967 and is a specialized agency of the united nations whoses purposes are to promote intellectual property throughout the world and to administer the 26 treaties dealing with intellectual property

certain marks are protected by federal statute

from use or confusingly similar use by another. There are about 70 of these special statutes, and the marks they protect include various marks used by veterans' organizations and such familiar ones as "Smokey Bear," the Red Cross logo (see Exhibit 2-12), and the Olympic rings and associated wording. (See Exhibit 2-13 for a table of matter that is excluded from trademark protection.)

evaluation trademark search reports

fundamental questions about use can be answered, compare report results to proposed mark, commercial impressions, strengths and weaknesses of mark, goods and services offered under the mark

categories of marks

generic (not truly a mark) but for generic things like computer or bicycle. description (secondary meaning needed). arbitrarty (known word with some unfamiliar product). fanciful or coined (no dictionary meanings like google)

three grounds to reject a trademark based on geographical things

geographically descriptive, geographically deceptive or misdescriptive, or they include a geographical indication used with wines and spirits to identify a place other than the origin of goods

disagreements

go to TTAB

unclean hands

has committed such a serious wrongful act, such as wrongfully using a trademark notice when it had no right to do so, that relief should not be awarded to it

concurrent use proceeding

if parties use similar marks in different geographical areas, this may be iniated. generally these parties have used their marks in their respective areas in good faith and without the knowledge of the others existence

petition to cancel definition

if the mark is on the supplemental register, this can be filed at any time. If the mark is on the principal register, the petition to cancel must be filed within five years of the registration date if the grounds are those that would have initially justified denial of registration, such as descriptiveness, that the mark is confusingly similar to that owned by another, that it is primarily merely a surname and so forth.

interference

if two pending applications conflict or if a pending application conflicts with an existing registration, the USPTO may declare an interference. interferences are rare and occur only upon a showing of "extraordinary circumstances"

letter of protest

if you then make it through the first round, you then go to publication.

what you cannot trademark

illegal things like marijuana, except in states it is legal, marijuana cologne is acceptable. cannot trademark insignias or a countrys mark, cannot trademark immoral or scandalous marks.

descriptive mark

immediately tells something about the product or service offered under a mark by describing some characteristics, quality, ingredient, function, feature, purpose or the use of the product or service

related trademark claims

importation of gray market goods-produced in foreign countries by permission of trademark owner. counterfeiting:black market goods, unfair competition, false designation of original or false representation, custom regulations: block importation of offending goods

remedies for infringement

injunction, monetary damages, seizure or destruction, costs of actions, procedures you have to go through, resolving an infringement dispute: first you will usually get a cease and desist letter to alleged infringer. infringer response can do a few things-deny allegation, assert defense, suggest compromise, arbitrator may reach a "trademark settlement agreement"

property rights overlap

intellectual property rights often intersect and overlap. the formula for coca-cola is a trade secret, while the distinctive script in which words are displayed is a trademark

exception to use requirement

intent to use application-person who filed first will have right to it

investing and resolving conflicts

investigation and research, consent to use, license and assignment, revising the mark

arbitrary mark

is a commonly known term that is applied to an unfamiliar product. such as camel cigerettes

oppositions

is a proceeding iniated by a person who believes that he or she would be damaged by registration of a mark on the principal register

supplemental registers

mark does not distinguish goods or services, affords some protections, after 5 years of use presumption-you get the full protection on principal register. then file the application through TEAS then the US patent and trademark office will send you an email detailing it

dilution of trademarks

mark is famous, infringer using mark commercially, use is after mark became famous, use is likely to cause dilution by blurring or tarnishment. blurring-whittling away of established selling power, tarnishment-similarity that harms repuation of famous mark, inferior quality, unwholesome or embarrasing context. federal remedies for dilution-remedy for owner in federal court. facotrs considered: ad duration, extend and geographic reach, sales amount, volume and geographic extent. extend of actual recognition of mark, whether federally registered

State registration

mark not used in interstate commerce, states have own trademark laws, process is fairly expeditous

nominative fair use

may be asserted when a defendant has used the plaintiffs name or mark not to identify the defendants goods but to merely name or identify the plaintiffs goods

fair use

meaning it did not use the plaintiffs name or mark as a trademark but merely to describe its own goods in a general fashion

utility patents

most common patents and cover useful inventions and discoveries

interferences-the 3rd type of rare proceeding

must show extraordinary circumstances, used when opposition or cancellation unavailable, rare, similar marks used in different geographical areas, parties "carve up" us for use of their marks

laches

namely that the plaintiff delayed an unreasonable amount of time to bring the action and this delay has prejudiced the defendant, who for example, during the period of delay, expended significant time and money in promoting the mark and thus should be allowed to continue using the mark).

federal registration

nationwide constructive use, nationwide notice to the public, if you filed a trademark, you will have national rights to use. if theres an infringing trademark, you can file for infringement for damages. right to bring an action in federal court, incontestable status, use of registration symbol @r, ability to bar importatation of international goods of any infringing goods

interstate commerce and trademarks

not used in interstate commerce can be registered in the state which they are used. Trademarks are generally protected from their date of first public use. A trademark registration is valid for 10 years and may be renewed for additional 10 year periods thereafter as long as the mark in use in interstate commerce.

progressive encroachment

once a permissible and often low-level use gradually becomes an infringing use

exhaustion theory or first sale doctrine

once the first lawful sale is made, the trademark owners rights are exhausted or extinguished in regard to subsequent sales

notice of opposition

once your trademark is filed and someone goes to file a new one thats too smiilar, you will get a notice of opposition from the USPTO

infringement

one need not have a registered mark to bring an action for trademark infringement. If one has a common law mark (namely, one being used without any federal registration for it), one may likewise bring a civil action under Section 43 of the Act (15 U.S.C. § 1125). The test is the same: Is the junior user's mark likely to cause confusion or mistake or to deceive

Paris convention

one of the first treaties or "conventions" designed to address trademark protection in foreign countries in 1883. based on the principle of reciprocity so that foreign trademark and patent owners may obtain in a member country the same legal protection for their marks and patents as can citizens of those member countries

trade name/commercial name

one used to identify a business or company and its goodwill, while trademarks and service marks identify goods and services

step 1-the preliminary search

online databases, patent and trademark resource center, USPTO website search service, trademark electronic search system, structured form search, free form search (advanced)

scope of search

online search is the most effective, computer searches can search for similar goods and services, scope must be broad enough to consider all similar marks

world trade organization

organized in 1995 and deals with rules of trade among its more than 160 member nations. resolves trade disputes and administers various agreements

drawing of mark

overview: standard characters (no design, just letters) special form: potrait of chef boyardee-some specific image styled in a certain way. specimens: one for each class of goods, declaration and signature: by individual, officer of corporation or attorney

the applicant

owner of the mark or person with bona fide itent-must provide citizenship and address

copyright

protects original works of authorship including literary, musical, dramatic, artistic and other works

intellectual property

refers to the fruits or product of human creativity, including literature, advertising slogans, songs or new inventions. property that is the result of through is intellectual property

substantive refusals

refusals on the basis of confusing similarity (not unique enough/too generic). refusals on the basis of descriptivness

what does USPTO do

reviews trademark applications, divided into departments, assignments, post registration,etc

the trademark search; reasons and duty to search

save time and money, avoid litigation, ensure availabillity, avoid USPTO objections

personal property

specific items or things that can be identified (cars, jewelry,artwork)

identification of goods and services

specific, definite, clear, accurate, concise

suggestive mark

suggest something about the goods or services offered under the mark but does not immediately describe them. suggestive mark requires some imagination or thought to reach a conclusion about the goods or services offered under the mark.

trade names and business names

symbol or named used only as a business name and cannot be registered as a trademark or service mark. name identifies and distinguishes goods and services. may be registable under the lanham act

step 2: the comprehensive search

tailor to specific requirements, check USPTO and state recrods, conduct "common law" searches, conduct international searches, search specific industries. International searching: companies rely on associates in other countries, established relationships, the associate files an application, US attorney supervises the process, WIPO-madrid protocal applications. Professional search firms-thomson compumark, government liaison services inc, GSC corporation service company, corsearch, markify,

appeals from TTAB decisions

taken to court of appeals for the federal circuit, alternative civil action in federal district court

blurring

the whittling away of an established trademark through its unauthorized use upon dissimilar products

trade dress

total image and overall appearance of a product, such as size, shape, color, texture, packaging and graphics may be protected through a trademark registration

electronic filing system-TEAS

trademark electronic application system

TSDR monitoring system

trademark status and documental retrieval, online database, provides status of application, used to check status of any registered mark or application

Types of Intelectual Property

trademarks, copyrights, patents and trade secrets

service mark

typically identifies a services like starbucks

trademark

used in the marketing of a product, Reebok as a shoe name is an example

berne convention for the protection of literary and artistic works

was created in 1886 to protect literary and artistic works, administered by the WIPO and follows the principles of "national treatment"

contributory infringement

when one party aids another to infringe a partys mark-assisting in infringement

plant patents

which cover new and distinct asexually reproduced plant varieties like hybrid flowers

publication in the trademark official gazette

which publishes approved marks, allows for review and opposition (someone can file an opposition saying its too similar), notice of allowance, statement of use, request to divide