IN 443 Midterm Review

A trademark owner has no rights to an Internet domain name based on the trademark; in order to obtain the domain name the trademark owner must simply be the first person to request the domain name. A. True B. False

B. False

Given what we know about Martha Stewart, we can assume that Martha Stewart's housewares license with K-Mart was a good example of a license agreement in which the licensor had very little control over the licensee and the licensee's design and production methods. A. True B. False

B. False

Trelise Cooper is a big clothing designer and Tamsin Cooper is a small jewelry designer. Let's say their logos look fairly similar. Trelise sues Tamsin for trademark infringement. If you were the lawyer for Tamsin Cooper (DEFENDANT against charge of infringement), which of the following would be a strong argument in court? A. Trelise Cooper and Tamsin Cooper focus on different product lines, so consumers wouldn't be confused. B. Trelise Cooper was adopted, so Cooper was not her real birth name. C. Trelise Cooper is not really all that famous. D. Trelise Cooper is extremely similar to Tamsin Cooper. E. Trelise Cooper did not have a registration for her trade dress.

A. Trelise Cooper and Tamsin Cooper focus on different product lines, so consumers wouldn't be confused.

"Moral rights" refer to a European legal concept under which a copyright owner continues to have some right over his/her works even after first sale (e.g., a painter can prevent a portrait from being defaced). A. True B. False

A. True

As soon as you create an original work of artistic expression, like a drawing, musical composition, fabric design or sculpture, you have a copyright in that work -- however, if you want to sue an alleged infringer for statutory damages, you must first register your copyright with the U.S. copyright office. A. True B. False

A. True

From the dispute between Star Class Yacht Racing and Tommy Hilfiger we learn that -- even though it is usually wise to employ attorneys to conduct an in-depth trademark search for a potential brand name or trademark -- there is one danger, which is that if you ignore your attorney's advice it can come back to haunt you, because a court will interpret any subsequent trademark breach as willful or deliberate, which can increase the damages you may have to pay. A. True B. False

A. True

Generally, a licensee will ask for a larger territory, and the licensor will be more likely to want to limit the territory of the license. A. True B. False

A. True

Geographical marks (if accurate) are descriptive and therefore, are protectable as trademarks only if they have achieved secondary meaning. A. True B. False

A. True

If you are a fashion designer and work as an employee of a fashion company, then they will normally own any designs you make on the job, but a freelance designer will own the copyrights to designs unless the employer makes the freelance designer sign a "work for hire" contract. A. True B. False

A. True

In a licensing negotiation, it is usually going to be the licensee who is going to insist on a streamlined design-approval process, with automatic approval by licensor of final designs after a specified approval period. A. True B. False

A. True

In licensing contracts, an upfront license fee or payment is usually treated as an advance against royalties (kind of like pre-paid royalties). A. True B. False

A. True

In the US, copyright law does not protect apparel designs because items of apparel are considered "useful articles", so that innovative or original types of apparel in the US can only be protected (in some cases at least) by patent or trade dress law. A. True B. False

A. True

In the mid to late 1990s, the CEO of Gucci sought to cancel or buy back many of Gucci's licenses. A. True B. False

A. True

In the world of creative endeavor, artists often are influenced by previous art -- however, they may not incorporate or appropriate copyrighted materials into their artwork. Artist Andy Warhol achieved notoriety with a style of silk-screened paintings which were based on photographs. In at least one case, he had to settle a lawsuit with a photographer who claimed he had appropriated her copyrighted photograph. Now let's apply a possible defense to the celebrated case of Shepard Fairey, a graphic artist who developed a famous poster for the Obama 2008 campaign which featured a multi-colored treatment of a photograph of Obama, with the word "Hope" underneath the candidate. As it turned out, the photograph was allegedly owned by the Associated Press or by a photographer who had sold the image to A.P., Manny Garcia. Shepard Fairey was sued by A.P. and settled out of court. But let us say that the case went to trial, and that you were sitting on the jury, and that you decided that in your opinion, Fairey had "substantially transformed" the original photograph so much that it was virtually a new work or art, and that it was very unlikely that it could negatively impact the market for the original photograph. In such a case, you would have to find that Fairey was NOT guilty of copyright infringement of the A.P./Manny Garcia photograph. A. True B. False

A. True

It is possible to copyright a photograph. A. True B. False

A. True

It is possible to obtain a certain amount of trademark protection merely by using a trademark, even if it is not registered. A. True B. False

A. True

Jewelry and accessories are protectable by copyright, if the designs are original, because they are sculptural elements. A. True B. False

A. True

Licensors prefer royalties to be based on sales, not receipts. A. True B. False

A. True

Once a 20-year utility patent expires, the patented invention or device enters the "public domain," which means anyone can use it. A. True B. False

A. True

One exception to copyright law is "fair use" -- meaning, that certain uses of copyrighted material are legally acceptable because they serve some other social purpose, such as the dissemination of news, the use of materials for education, and the free speech need of parody or satire to comment upon existing copyrighted material. A. True B. False

A. True

One thing we learn from the dispute between Victoria's Secret and Victor's Little Secret is that large, famous brands take their brand image very seriously, and if you come up with a trademark that seems to tarnish or damage the famous mark by associating it with something unsavory or distasteful, you are likely to get sued for trademark dilution. A. True B. False

A. True

The International Trade Commission (ITC) is a US government agency which allows U.S. intellectual property owners to block the importation of foreign goods that violate their I.P., but only if the I.P.-holder's products are actually manufactured in the U.S. A. True B. False

A. True

The licensor will usually prefer that royalties be paid quarterly rather than annually. A. True B. False

A. True

The underlying goal of trademark law is to protect consumers and improve the quality of information in the marketplace. A. True B. False

A. True

Trade dress protection may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. A. True B. False

A. True

U.S. copyright law currently protects architectural works and vessel hull designs, but not fashion designs. A. True B. False

A. True

When a corporation owns a copyright, its term of protection is 95 years after publication or 120 years after creation, whichever comes first. A. True B. False

A. True

When news and organizational institutions use copyrighted material for news or educational purposes, such use will be protected as "fair use" -- provided the use is not excessive. A. True B. False

A. True

n 1996, Linda Wachner was the highest paid female executive in the US, earning over $10 million per year. A. True B. False

A. True

If trade dress in packaging or design acquires secondary meaning, the trade dress can be registered as a trademark. A. True B. False

A. True ("Trade dress": the general way a product, service, or business is packaged or presented to the public)

It is possible to obtain trade dress protection for the characteristic interior design of a fashion boutique. A. True B. False

A. True ("Trade dress": the general way a product, service, or business is packaged or presented to the public)

Trademarks that are inherently distinctive receive the highest form of protection. A. True B. False

A. True (Inherently distinctive marks are suggestive or arbitrary)

In most fashion and apparel trademark licensing contracts, the licensee is more likely to request an exclusive arrangement than the licensor. A. True B. False

A. True (Licensee wants to be the only one)

In the European Union, it is possible to register a single trademark which must be respected in all EU nations. A. True B. False

A. True (Madrid Protocol)

A mark is suggestive if it requires some leap of imagination to get from the word or words of the trademark to the product itself. A. True B. False

A. True (Suggestive means "hint" like copper tone means you will be tan)

The Samara Brothers case shows that it is easier for a famous mark to win a case based on trade dress infringement, because the famous mark is more likely to have achieved secondary meaning in the consumer's mind than a relatively unknown brand. A. True B. False

A. True (Supreme Court held that product design trade dress (as opposed to packaging trade dress) could never be inherently distinctive or arbitrary)

In the L.A. Gear and Rockport cases we see that in order to obtain a design patent, it is not necessary that every single part of the design be novel (new), so long as the entire assembly or composition of the design is novel. A. True B. False

A. True (The overall shoe with the combination of color, design, and shoemaking was new)

Joseph Abboud sold his name when he sold his company. For 5 years he followed the sale contract's provisions as a consultant to the buyer, and then for 2 years after that he respected the non-compete stipulations of the buyout agreement. After that, however, he allowed his name to be used in the marketing of a new line. The trademark buyer sued Abboud to prevent Abboud from further commercial use of his own name in connection with the sale of menswear. A. True B. False

A. True (Think Paolo Gucci)

One lesson that we learn from the dispute between Zazu and L'Oreal is that in order to obtain trademark protection via use, you need to demonstrate actual, commercial use, and not just token, minimal use. A. True B. False

A. True (Zazu sued L'Oreal and won but was overturned when court decided your trademark has to be selling and known in order to be considered for protection)

Trademarks can be protected indefinitely and will last until they are abandoned. A. True B. False

A. True (just keep renewing)

If Forever 21 buys a fabric from a fabric supplier and uses it to make a dress which it then sells in Forever 21 stores, and it turns out that the fabric design infringed a copyright design produced by another fabric designer, then Forever 21 is not guilty of copyright infringement because it bought the fabric from someone else -- only the fabric supplier is guilty of copyright infringement. A. True B. False

B. False

In determining whether a trademark has gained secondary meaning, the USPTO and courts rely primarily on whether the mark has gained secondary meaning in the mind of the trademark owner. A. True B. False

B. False

In the L.A. Gear v Thom McAn case, the defendant was able to show that the designs on L.A. Gear's shoes actually served a functional purpose, because they held the upper to the sole, so the shoe designs could not receive a DESIGN patent -- because only ornamental non-functional designs can be protected by design patents, all functional designs can only be protected by utility patents. L.A. Gear's design patent was invalidated. A. True B. False

B. False

It is possible for a court to find that there has occurred "trademark dilution" of a famous mark even if the owner has not submitted any evidence of financial loss from the alleged dilution, so long as it seems obvious that the offending use would reflect badly on the trademark in question. A. True B. False

B. False

Like copyright, patents grant international rights; so if you obtain a patent in one country, it will be valid around the world. A. True B. False

B. False

Surnames alone, such as Smith or Jones, are too common to be registered as trademarks. A. True B. False

B. False

The designer licensing movement began in the early 1990s. A. True B. False

B. False (1970s)

In a typical designer licensing deal the designer receives a percentage royalty on wholesale sales volume, with the percentage ranging usually from 20% to 30%. A. True B. False

B. False (5%-20%)

A "tech pack" is a legal registration of innovative technology in fashion. A. True B. False

B. False (A tech pack is a document containing sketches and specifications from which a product will be made)

Arbitrary and fanciful trademarks are not protectable without proof of secondary meaning. A. True B. False

B. False (Arbitrary is strongest trademark)

In the Kieselstein-Cord case, the court ruled that apparel items may be covered by copyright whenever the artistic element is conceptually inseparable from the apparel item. A. True B. False

B. False (Conceptually separable)

Utility patents are the most difficult and expensive type of I.P. to obtain, because the Patent Office must examine the "prior art" to determine whether it will grant the patent, and there a number of application fees that must be paid over the life of the patent, not to mention the expense of hiring a lawyer specializing in patent law. A. True B. False

B. False (Design Patent)

Trademark protection last for 70 years after the death of the trademark owner. A. True B. False

B. False (Indefinite)

The Madrid Protocol makes it more difficult to register trademarks internationally because it forces trademark owners to register in one country at a time. A. True B. False

B. False (Madrid Protocol: a system administered by WIPO which facilitates submission of multiple trademark applications to chosen countries)

The licensor would prefer to grant a "naked" license, but the licensee will usually insist on a high-control license with lots of quality assurance standards. A. True B. False

B. False (Naked license grants everything to the licensee, thus the licensor would not like that)

The basic legal requirements for obtaining a design patent are that it must be: 1) novel, 2) non-obvious and 3) functional. A. True B. False

B. False (New, non-obvious, and useful)

Trade secrets can be protected for a maximum of 70 years after the death of the inventor or author. A. True B. False

B. False (Not limited to time)

In the Jovani v Fiesta Fashions case, a prom dress manufacturer sued a competitor who had copies the ornamental placement of sequin patterns on a particular dress. The court held that since it was possible to conceptually separate the sequin patterns from the dress, the original manufacturer had copyright protection for those patterns, and therefore damages were awarded for infringement. A. True B. False

B. False (They were inseparable)

The Crocs v ITC stands for the principle that, in determining whether a design patent has been infringed, one must not look primarily at the design patent drawings in question, but instead should focus on the explicit verbal description of the patent in the patent claims. A. True B. False

B. False (This case talked about how viewing the items makes it easier)

As a licensor working for the first time with an unknown licensee, it is safer to base your royalties on profits rather than on revenues. A. True B. False

B. False (You want to sell your product, thus revenue is important)

It is the U.S. Patent and Trademark Office's duty to police individuals' trademarks against infringements. A. True B. False

B. False (it is the individual's responsibility)

A color can be inherently distinctive. A. True B. False

B. False (never)

Design patent protection lasts for 14 years and can only be renewed once. A. True B. False

B. False (non-renewable)

In the Louboutin case the Court of Appeals decided that only Louboutin can use red shoes as a trademark, so that YSL's monochrome red shoe was a clear infringement of Louboutin's trademark. A. True B. False

B. False (the red-sole had secondary meaning, the monochrome red did not.)

If you make a drawing or write a song, you have zero protection until your work is received and registered at the Copyright Office. A. True B. False

B. False (you have some protection, but much more after registration)

One key lesson to be learned from the dispute between Paolo Gucci and the Gucci company is that in all cases you may never be prevented from using your own as a trademark, so long as you can prove that it was your real birth name. A. True B. False

B. False (Likelihood of Confusion)

Let's say you are trying to come up with a trademark name for your new line of plus-size bra's that are highly comfortable. Which of the following would be the WORST mark from a legal point of view? A. Mammoth Falls B. Plus-Size Bra C. Brunhilda D. Monstro-Bra E. Das Uber-bra

B. Plus-Size Bra

What is the geographic scope of a trademark which is protected only by "common law" trademark? A. this is a trick question but I don't know the trick B. the reasonable expected area of operation of the business C. the entire state D. the country of operation E. the bio-energetic aura that surrounds you at all times

B. the reasonable expected area of operation of the business

There is an international system at WIPO that helps you make simultaneous trademark applications to a large number of countries. What is it called? A. The Berne Convention. B. The Paris Convention. C. The Madrid Protocol D. WIPO E. The Vienna Convention

C. Madrid Protocol

An entrepreneur in the UK started a children's clothing line which she decided to call "Unique Kids." How would you classify the strength of the Unique Kids trademark? A. Abstract or Generic B. Fanciful or Arbitrary C. Suggestive or Descriptive D. Secondary E. Copyright or Patent

C. Suggestive or Descriptive (Descriptive is weak)

In Ghana, there is a thriving fabric industry which constantly produces new fabric print designs for the colorful clothing worn by women in West Africa. What kind of IP protection might the producers obtain for their new fabric designs? A. Patent B. License C. Trademark D. Copyright

D. Copyright

You are a small entrepreneur with a US trademark. What is the biggest problem you will face as you expand globally, specifically as regards your trademark rights? A. You will be forced to renew your trademark every 3 years. B. There is no problem, you are just stressed, do some yoga C. You may be forced to grant a compulsory license in certain poor countries D. It will be expensive to obtain trademark protection if you want to be protected in a great number of foreign countries. E. Don't worry, be happy, the Paris Convention gives you automatic global coverage

D. It will be expensive to obtain trademark protection if you want to be protected in a great number of foreign countries

(At the International Space Station, a Japanese scientist is currently testing a type of underwear that can be worn for a week without becoming smelly (this is actually TRUE). If the Japanese should decide to market undergarments made from this space-age fabric, which of the following names would be the WORST from a purely legal point of view (i.e., it would NOT be advisable from a legal point of view? A. Asstrophysics B. U-No-Stink C. Pharties D. Odor-free Underwear E. Nopu

D. Odor-free Underwear (Generic)

Let's say you are trying to come up with a trademark name for your new line of flat women's shoes that have comfortable soles. Which of the following would be the strongest mark (from a legal point of view, not a marketing one)? In other words, which trademark has the highest level of legal security, presuming that no one else is using anything like it? A. Flat Shoes B. Pillow Soles C. Tender Feet D. Snurbles E. Toe Cushions

D. Snurbles (Arbitrary)

What facts or proof does a trademark owner need to submit to win a case of trademark dilution? A. Substantial similarity between the two trademarks B. Trademark infringement C. Confusion of consumers D. Secondary meaning E. Damage to the value of the trademark

E. Damage to the value of the trademark

Prof J decides to market a brand of honey made from bees which forage in Central Park (the honey ends up tasting like diet coke and pretzels). He calls his product New York Honey, and seeks to register the trademark right away. Is there a legal problem with this trademark? A. No, a geographically descriptive trademark is always OK B. Yes, because it is geographically mis-descriptive. C. Maybe, I don't know, I haven't really been coming to class, I'm happy with a B- D. No, because it is geographically mis-descriptive. E.Yes, a geographically descriptive trademark is not valid absent a showing of "secondary meaning" achieved after several years of use, and Prof J just started with his honey recently...

E.Yes, a geographically descriptive trademark is not valid absent a showing of "secondary meaning" achieved after several years of use, and Prof J just started with his honey recently... (Generic - naming jeans 'jeans' (weakest) Descriptive - geography and names (weak) Suggested - hint ex. copper-tone tans (strong) Arbitrary - random ex. apple computer (strongest))