Exam Review - Trademark Law (Ch. 1-12) Vocabulary Flashcards

Vocabulary flashcards covering key concepts, terms, and standards from the lecture notes on trademark law (Ch. 1–12).

Trademark

A word, name, symbol, device, or any combination used in commerce to identify and distinguish goods, indicating source.

Kinds of Marks

Trademarks, service marks, certification marks, and collective membership marks.

Triadic Structure of a Trademark

The Signifier (the symbol/mark), the Signified (source/goodwill), and the Referent (goods/services).

Lanham Act §45

Definition of use in commerce: bona fide use in ordinary course of trade, in commerce, not merely to reserve a right.

Use in commerce (goods)

Placed on goods, containers, displays, or on sale documents; goods sold or transported in commerce.

Use in commerce (services)

Used or displayed in sale or advertising of services; services rendered in commerce across states or internationally.

First in time, first in right

Priority determined by who first used in commerce for particular goods/services and geographic area.

Abandonment

Discontinuance with intent not to resume; nonuse for 3 consecutive years; or becoming generic; rights lost.

Naked licensing

Licensing a mark without maintaining quality control, risking abandonment or loss of rights.

Distinctiveness classes

Arbitrary/fanciful, suggestive, descriptive, and generic marks based on inherent distinctiveness.

Abercrombie test

Descriptive marks require secondary meaning or acquired distinctiveness for registrability.

Non-word marks

Marks that are logos, colors, sounds, or smells; often protected as trade dress or device marks.

Trade dress

Product packaging, design, or decor that identifies source; may require ID/SM protection.

Functionality doctrine

A feature that is essential to use or affects cost/quality generally cannot be protected as a TM.

Qualitex/Traffix test

Two-part test: (1) essential to use/purpose or affects cost/quality; (2) competitive necessity—exclusivity would disadvantage; plus Morton-Norwich factors.

De facto vs de jure functionality

De facto: practical functional use not legally protected; De jure: legally functional; not protectable.

Registration process (TEAS, §1(a)/(1)(b))

Federal registration: search; file TEAS (use-based §1(a) or ITU §1(b)); possible opposition; publication.

Principal vs Supplemental Register

Principal Register (§1) for distinctive marks; Supplemental Register (§23) for descriptive marks lacking distinctiveness.

§ 2(a)

Prohibits registration of immoral, deceptive, scandalous, or disparaging matter (and certain geog. indications in wine/spirits).

§ 2(e) descriptiveness/PGD/PGDM

Not registrable if merely descriptive, deceptively misdescriptive, primarily geographically descriptive or deceptively misdescriptive, primarily a surname, or functional.

PGDM test

Post-NAFTA test: primary significance is a known geographic location; goods/place association; materiality to consumer decision.

Rectanus doctrine

Geographic limits: junior user’s rights are limited to area not entered by the senior user; knowledge matters.

Dawn Donut rule

Remedy principle: injunctions may be denied if senior user is unlikely to enter junior’s market; balancing factors apply.

Confusion-based liability

Lanham Act claims under §32 or §43(a) require use in commerce likely to cause confusion, mistake, or deception.

Sleekcraft factors

Eight-factor test for likelihood of confusion: strength, relatedness, similarity, actual confusion, channels, sophistication, bad faith, bridging gap.

Dilution (FTDA/TDRA)

Protection for famous marks against blurring (diminishing distinctiveness) and tarnishment (harm to reputation).

Fame factors

Factors for dilution: distinctiveness, duration/extent of use, advertising, geographic reach, recognition, actual association, competition, federal registration.

TDRA framework

Requirements: famous mark; use in commerce after senior mark became famous; likelihood of dilution via blurring or tarnishment.

Fair Use (Descriptive vs Nominative)

Descriptive fair use describes the goods/services; nominative fair use refers to another’s mark to describe the product.

Rogers Test

Titles/expressive works fair use defense: (1) artistic relevance; (2) not explicitly mislead.

New Kids on the Block test

Nominative fair use: product not readily identifiable without the mark; only necessary portion used; no sponsorship implied.

LOC/NFU burden shift

Plaintiff must show likelihood of confusion; if LOC is shown, defendant bears burden to prove fair use (NFU).

Incontestability defenses (33(b))

Defenses allowing use of name/descriptive terms in good faith or to describe goods/services or geographic origin.

Evidence of actual confusion

Often required for damages; some circuits permit surveys or do not require actual confusion.

Injunction standards (Winter test)

Preliminary injunction: likelihood of success on merits, irreparable harm, balance of equities, public interest.

Permanent injunction standards (eBay)

Permanent injunction requires irreparable injury, inadequate legal remedies, balance of hardships, public interest.

Trademark Modernization Act §34(a)

Presumption of irreparable harm for certain injunction requests upon finding a violation or likelihood of success.

Remedies under §35

Award defendant’s profits, plaintiff’s damages, costs, and possibly treble damages; discretion; not a penalty.

Proof of actual confusion

Surveys commonly used; some circuits require actual confusion, others do not.

Remedies – non-confusion based liability

Liability theories beyond confusion include dilution and fair-use defenses; not strictly confusion-based.

New registration routes (illustrative)

Use-based (§1(a)); Intent-to-use (§1(b)); foreign registrations (§44/66).