Exam Review - Trademark Law Outline

Ch. 1 Introduction to Trademarks

• Exam context and logistics (from Page 2): Exam software Exam4 required; no internet; no cut-paste; only one answer per MCQ; grading of MCQ portion; more on procedures at the provided link.
• Ch. 1 Overview: Introduction to Trademark concepts and framework.
• Page references indicate foundational definitions and structure that recur throughout: definition of a trademark, types, rights, and the goals of trademark law.

Ch. 2 Distinctiveness

• Core idea: Trademarks must be distinctive to identify and distinguish goods/services.
• Distinctiveness spectrum (Abercrombie framework on Page 18):
  • Inherently distinctive marks (or inherently distinctive categories): Arbitrary/Fanciful; Suggestive; Descriptive (with acquired distinctiveness); Generic (not registrable).
  • Arbitrary/Fanciful examples: Exxon, Adidas, Kodak, Apple.
  • Suggestive examples: Coppertone, Kleenex, Sunkist.
  • Descriptive examples (potentially registrable only with proof of acquired distinctiveness): nylon, yo-yo, aspirin, escalator; Vision Center; Abercrombie (reference to acquired distinctiveness/secondary meaning).
  • Generic: not registrable.
• Descriptive vs. suggestive vs. arbitrary/fanciful distinctions (Page 17):
  • Descriptive: describes a feature or quality; requires secondary meaning for protection.
  • Suggestive: implies something about the product but requires imagination; inherently distinctive.
  • Arbitrary/Fanciful: coined terms with no inherent meaning that are strongly distinctive.
• Non-word marks (Page 19): Logos; colors, sounds, smells; trade dress (product packaging; product design; décor).
  • Significance: non-word marks can be protected if distinctive; trade dress may be protected as a source indicator.
• Key takeaway: Distinctiveness determines registrability and scope of protection; the higher the inherent distinctiveness, the stronger the protection.

Ch. 3 Functionality

• Functionality concept (Pages 21-24): De facto v. de jure functionality
  • De facto functionality: a design that serves a function but may still be protected as a TM if other factors support protection.
  • De jure functionality: design is legally functional and cannot be protected as a trademark.
• Qualitex/Traffix framework for functionality (Pages 22-24):
  • Qualitex/Traffix test elements:
    1) Essential to use or purpose of the device; or affects cost or quality.
    2) Competitive necessity: exclusive use would put others at a significant non-reputation-related disadvantage.
    3) Feature claimed in a patent as strong evidence (not arbitrary, incidental, or ornamental).
  • Morton-Norwich factors (summary):
    1) Whether an expired patented invention exists.
    2) Whether ads tout the utilitarian aspect.
    3) Whether there are comparable alternatives.
    4) Whether the item is manufactured by a simple or cheap method.
• Practical impact: If a feature is functional, it generally cannot be protected as a TM; if non-functional and distinctive, it may be protected.
• Notable cases (Page 25): Abercrombie vs. American Eagle (6th Cir. 2002); Leapers vs. SMTs (6th Cir. 2018); Louboutin v. YSL (2nd Cir. 2012); Au-Tomative Gold v. Volkswagen (9th Cir. 2006) – focus on aesthetic features and functionality.

Ch. 4 Use

• Use in commerce is essential for trademark rights; coextensive with Congress’s commerce power (Pages 28-29).
• Definitions of use in commerce (Page 29-31):
  • Goods: bona fide use in the ordinary course of trade; on goods or their containers, displays, tags/labels; if placement is impracticable, use on related documents; goods sold or transported in commerce.
  • Services: use/display in sale or advertising of services; services rendered in commerce or across state lines or internationally; the service provider must be engaged in commerce.
• The “three doors” to trademark protection (Page 32):
  • 1st door: common law use rights (use in commerce, unregistered rights).
  • 2nd door: use-based federal rights under §1(a) based on actual use in commerce.
  • 3rd door: intent-to-use (ITU) plus later actual use under §1(b) after filing; basis for registration.
• Use in commerce equation (Page 33-34): Distinctive (ID/SM) + Not Functional + Use in Commerce = Trademark Rights (if first in time).
• In detail: Use in commerce for goods and services (Page 34):
  • Goods: bona fide use on goods/labels; goods sold in commerce.
  • Services: use in sale/advertising; services rendered in commerce.
• Abandonment and licensing (Page 35-37):
  • Abandonment defense under § 45: non-use for 3 consecutive years prima facie evidence of abandonment; intent not to resume can be inferred.
  • Naked licensing: if licensee controls quality or licensor loses control, it can lead to abandonment.
  • “Use” requirements apply to licensing with quality control to preserve rights.

Ch. 5 Registration

• Federal registration process (Pages 38-41):
  • Search existing marks (USPTO site or private service).
  • File TEAS online: Section 1(a) Use-based app; Section 1(b) Intent-to-use app; Sections 44 or 66 for foreign filings.
  • PTO examination for admissibility; potential opposition in Gazette; 30-day window for oppositions.
  • If approved, entry on Principal Register (for § 1) or Supplemental Register ( § 23) depending on distinctiveness/registration.
• Principal vs Supplemental Register (Page 39-40):
  • Principal Register (§ 1): presumptions of validity and ownership; exclusive right to use; nationwide protection if registered; constructive notice.
  • Supplemental Register (§ 23): for marks lacking enough distinctiveness; no constructive notice or prima facie rights; federal action under § 32(a) possible but weaker.
  • § 2(f) option: if a mark is not inherently distinctive but has acquired distinctiveness, it may be registered on the Principal Register.
• Post-registration maintenance (Pages 40-41):
  • File § 8 (use affidavit) and possibly § 15 (incontestability) around 5-6 years after registration.
  • Renewals: § 8 & § 9 between years 9-10 after registration; potential third-party cancellation under § 14 on grounds such as non-use, mere descriptiveness, or fraud.
  • § 2(a) through § 4: various grounds for disqualification or cancellation (e.g., immoral, deceptive, or scandalous matter; disparagement; geographical misdescription).
• Section 2(a), 2(e), 2(a) elaborations (Pages 41-49):
  • § 2(a): prohibits marks that are immoral, deceptive, scandalous; disparaging or falsely suggesting a connection; or geographical indicators in certain contexts.
  • § 2(e): marks not registrable if descriptive, deceptively misdescriptive, geographically descriptive/misdescriptive, primarily surnames, or functional.
  • 3-part PGDM test for 2(e)(3) (post-NAFTA): primary significance is a known geographic location; goods/place association; materiality to consumer decision.
  • § 2(f): possibility to register a mark if it has acquired distinctiveness but is non-functional; § 23(c) Supplemental Register for functional issues.

Ch. 6 Geographic Limits

• Geographic limits and senior/junior user dynamics (Pages 50-53):
  • Rectanus doctrine (Hans Hanover Milling) and remote good-faith expansion: good-faith expansion can enclose rights in a geographical area.
  • “Good faith remote junior user” and the zone of expansion: senior user’s rights may be limited by use and expansion, especially if junior user entered area in good faith.
  • Dawn Donut remedy rule (Page 53-54): injunctions or damages may be denied if the senior user is unlikely to enter the junior user’s market; the rule’s status remains contested and evolving.
  • The Dawn Donut rule has varying application across jurisdictions and contexts.
• Jurisdictional split and zone concepts (Page 51-53):
  • Knowledge of senior marks can negate good faith of junior users; knowledge as a factor in good-faith determinations.
  • Some courts adopt a “zone of natural expansion” concept; others reject or limit it.

Ch. 7 - Confusion Based Liability

• Core liability framework (Pages 55-63):
  • Liability under § 32 (registered marks) and § 43(a) (unregistered TD infringement) require proof of use in commerce and likelihood of confusion.
  • Infringement elements (Third Circuit formulation, Page 57):
    1) Plaintiff owns the asserted mark;
    2) The mark is valid and legally protectable;
    3) Defendant’s use of the mark is likely to cause confusion.
  • Common law vs. statutory claims: common law requires proving confusion; statutory claims rely on likelihood of confusion and other statutory elements.
  • Incontestable marks (§ 15) have certain presumptions of validity but can still be challenged on narrow grounds.
• Other complexities (Pages 58-63):
  • Actual confusion proof: surveys can suffice in damages cases; some circuits require actual confusion, others do not.
  • How to present use and infringing uses in modern contexts (e.g., keyword suggestions, metadata) as potential infringement signals.
• Likelihood-of-confusion framework across circuits (Page 61-62):
  • All circuits employ a multi-factor likelihood-of-confusion analysis (Sleekcraft framework in many circuits).

Sleekcraft Likelihood-of-Confusion Framework (8 factors; Ninth Circuit standard)

• Eight Sleekcraft factors (Ninth Circuit standard; Page 62):
  1) Strength of the plaintiff’s mark.
  2) Relatedness of the products.
  3) Degree of similarity between the marks.
  4) Evidence of actual confusion.
  5) Marketing channels used.
  6) Buyer care/level of sophistication.
  7) Defendant’s intent in selecting the mark.
  8) Likelihood of expansion into other markets by the plaintiff or defendant.
• Practical use: Courts weigh these factors to determine if consumer confusion is likely enough to support infringement liability.

Ch. 8 Non-Confusion Based Liability; Dilution

• Introduction to dilution (Pages 66-73):
  • Dilution protects famous marks from erosion of distinctiveness or reputation through unauthorized uses, even absent likelihood of confusion.
  • 43(c) outlines federal dilution provisions; 2006 TDRA revised standards.
• Types of dilution (Page 67):
  • Blurring: weakening the mark’s distinctiveness due to similarity or broader use.
  • Tarnishment: harming the mark’s reputation through improper association (e.g., with inferior or offensive products).
• TDRA evolution (Pages 68-71):
  • 1995 FTDA introduced dilution at state level; 2006 TDRA introduced federal dilution protections.
  • Requirements for a dilution claim: the plaintiff must show a famous mark; the defendant’s use after the mark became famous; likelihood of dilution through blurring or tarnishment.
• TDRA factors for dilution by blurring (Page 71):
  • Degree of similarity between marks; degree of distinctiveness; degree of exclusive use; degree of recognition; intent of defendant; any actual association between marks.
• Fame standard (Page 73):
  • The second circuit: “widely recognized by the general consuming public of the United States as a designation of source” (as of pre/post-2006). The evaluation considers distinctiveness, duration and extent of use, advertising, geographic reach, sales, actual association, and registration status.
• Identity standard update (Page 72):
  • Courts increasingly move away from requiring identical marks; several circuits consider non-identical marks when assessing dilutive risk.

Ch. 9 - Permissible Uses of Another's Mark

• Fair use defenses (Pages 75-76):
  • Two categories: Descriptive/Classic fair use and Nominative fair use.
  • Classic descriptive use: using the mark descriptively to describe one’s own goods/services (e.g., fish fry).
  • Nominative fair use: use of the mark to refer to the trademarked product; requires three elements (New Kids on the Block test in some circuits).
• New Kids on the Block test (Page 79):
  • P’s product/service is not readily identifiable without use of the plaintiff’s TM.
  • Only as much of the plaintiff’s mark as necessary to identify the product/service is used.
  • User should not imply sponsorship or endorsement.
• Century 21 test and KP Permanent Makeup (Pages 80-85):
  • General tests require showing no likelihood of confusion or proving fair use in some contexts; the burden allocation can vary by jurisdiction.
• Denotation and limitations of fair use (Page 84-85):
  • Parody, expressive uses, and titles may invoke a Rogers test (artistic relevance and not explicitly misleading) and “2 messages” test for parody.
• Incontestability defenses (Section 33(b)) (Pages 77-78):
  • Describes defenses when the use is in good faith and descriptive or purely descriptive or geographic origin use; also describes use of an individual name and descriptive use outside of a mark.

10–12 Remedies; Remedies and Preliminary Injunctions

• Remedies overview (Pages 86-93):
  • Section 34: Courts may grant injunctions to prevent violations under §32, §43(a), or §43(c)/(d).
  • Winter v. NRDC framework (Page 88): four-factor test for preliminary injunctions: likelihood of success, irreparable harm, balance of equities, public interest.
  • eBay standard for permanent injunctions (Page 89): four-factor test: irreparable injury, inadequacy of legal remedies, balance of hardships, public interest.
  • Rejection of categorical rules; courts assess case-specific harms and likelihood of success.
• 2020 Trademark Modernization Act (TMA) §34(a) (Page 90):
  • Creates a rebuttable presumption of irreparable harm upon finding a violation for permanent injunction, and upon likelihood of success for preliminary injunction or TRO in certain cases.
• Section 35 (Damages and Profits) (Page 91):
  • Elements: defendant’s profits, plaintiff’s damages, costs, potential treble damages, court’s discretion to award just amounts; aim is compensation, not punishment; attorneys’ fees in exceptional cases.
• Proof of actual confusion (Page 92):
  • Many courts require actual confusion for damages; surveys can suffice in some circuits; some circuits do not require proof of actual confusion.
• Final takeaway: Remedies are flexible and heavily depend on the specifics of a case, the nature of infringement, and the potential for irreparable harm.

Quick Reference: Key Statutes and Tests Mentioned

• Lanham Act definitions (§45) and registrations (§1, §2, §3) – foundational framework for registration and protection.
• §2(a) immorality, deception, scandalous, disparagement; §2(e) descriptiveness/PGD/PGDM; §2(f) acquired distinctiveness; §23(c) supplemental registration.
• §32(a) and §43(a) infringement provisions for registered and unregistered marks, respectively.
• §33(b) Incontestability: defenses and scope.
• §34 Injunctions and §35 damages; §34(a) and §35 are remedial provisions.
• §45 use in commerce definitions; 1(a), 1(b), 2(d) and ITU concepts for registration.
• TDRA (Trademark Dilution Revision Act) and its criteria for dilution claims, including fame and dilution types (blurring and tarnishment).

Study Tips and Connections

• Diagnostic framework: Start with whether a mark is registrable (distinctiveness and non-functionality) before evaluating use in commerce and possible infringement.
• Use in commerce is fundamental: without use, rights do not arise; usage determines scope and enforcement.
• Distinctiveness and secondary meaning: descriptive marks often require evidence of secondary meaning; this is a common battleground in registration and infringement cases.
• Functionality doctrine is a key gatekeeper: features that are essential to the use or cost efficiency of a product are typically not protectable as marks.
• Dilution protects the reputation of famous marks even absent consumer confusion; consider whether the mark is famous and whether the defendant’s use weakens its distinctiveness or harms its reputation.
• Fair use defenses require careful analysis of whether a defendant’s use is descriptive, nominative, or parodic; the New Kids on the Block test and Rogers test provide practical guides for determining fair use in TM contexts.
• Remedies emphasize both preventive (injunctions) and compensatory (damages, profits) strategies; modern statutes provide presumptions in certain scenarios to streamline relief.

Conceptual Summary

• A trademark is a source-indicator right that emerges from actual use, consumer perception, and enforcement consistency.
• Distinctiveness and non-functionality are prerequisites for protection; functionality defeats protection.
• Use in commerce, registration, and the ability to enforce rights (including injunctions and damages) are interlinked through a multi-step process: selection, use, registration, and enforcement.
• Modern trademark law balances preventing consumer confusion with protecting brand value and free expression in fair use and parody contexts, while providing robust remedies for violations.