Exam 1: Intellecutal Property (Chapter 5)

Affidavit of Use

Document filed by a trademark registrant between fifth and sixth years and every 10 years after registration verifying the mark is still in use

Chain of Title

Documentation of continuity of ownership or title to a trademark, copy right, patent, or other property right

Incontestable

A trademark registered om the Principle Register that is protected from certain challenges after its registrant files a section 15 Affidavit alleging continuous use for five years

Affidavit of Incontestability

Document filed by the owner of a mark registered on the Principle Register after five years of continuous use that reduces the challenges that may be made to a mark

Renewal

Document filed with the USPTO or Library of Congress to maintain a trademark or copyright registration for an additional term

Abondonment

Loss of trademark rights through nonuse coupled with an intent not to resume use; loss of patent rights through express intention to relinquish rights.

Lanham Act deems a mark abandonded when

1. When conduct by the owner causes the mark to become generic name; or

2. Use of the mark has been discontinued with intent not to resume use. Nonuse for three consecutive years is prima facie evidence of abandonment.

Genericide

Loss of rights in a trademark occurring when consumers begin calling a product or service offered under a mark by the mark itself

Trademark Compliance Policy

A guide to use of a trademark to ensure a mark is not misused or does not become generic or abandoned

Cease and Desist Letter

Correspondence sent to a party demanding that it cease and desist from certain action

Assignment in Gross

A purported transfer of a trademark without the business goodwill that the mark symbolizes; it is insufficient to transfer trademark rights

Assignment

Transfer of rights in a trademark, copyright, patent, or other property to another

Nunc Pro Tunc Assigment

Assignment prepared on a later date to reflect an earlier transfer

Recordation

Filing of certain documents with the USPTO, Library of Congress, or other official body to provide public notice of the contents of a document or a transaction, such as an assignment or transfer of intellectual property, a grant of a security interest in intellectual property, or a change in the chain of title of intellectual property

Recordation (2)

1. Clarifies the records of the USPTO and affords notice to all of the identity of the owner of the mark

2. It allows the new owner to commence and defend actions at the USPTO in its name

3. It ensures that documents and notices issued by the USPTO will be sent to and will identify the correct owner

4. It simplifies post registration procedures inasmuch as Section 8 affidavits of use and Section 9 renewals will be rejected unless their identification of the trademark owner is consistent with the USPTO records

5. It provides public notice of the fact of the assignment such that later purchases of the mark are bound by it.

Electronic Trademark Assignment System (ETAS)

The USPTO’s system for electronically filing requests for recordation of assignments of trademarks and other similar documents

License

A limited transfer of rights, such as permission to another to use a trademark, copyright, patent, or trade secret subject to some conditions, rather than an outright transfer of all rights

Exclusive License

A grant of rights to one party with no other party having any right

Nonexclusive License

A grant of rights to more than one party

Royalites

Periodic payments paid by one who uses property owned or created by another, usually based on sales of the property

Descriptive Fair Use

Used in good faith to describe the goods or services of the user rather than to indicate the source of those goods or services. Trademark used in its ordinary, descriptive sense.

Nominative Fair Use

This allows the use of another’s trademark to refer to the trademarked product or service itself, particularly when there is no other way to refer to it without using a trademark.