FUCKING AWESOME CHECKLISTTM

FUCKING AWESOME CHECKLISTTM - Trademarks Final Checklist...

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Trademarks Final Checklist Topic To show infringement, you must show: (1) You possess a mark; Priority? Registered? Then have to Prove Use! Distinctiveness Chart Must consider the mark as a whole, not as separate parts. (2) Opposing party has used your mark; In such a way that it creates a LOC, mistake, and/or deception with consuming public (3) Opposing party’s use of the mark occurred in commerce; (4) LOC - Polaroid Factors Confusion can be that D’s products are the same as P’s OR that the D is somehow being associated, affiliated, connected, approved, authorized, or sponsored by the P. Not in Dilution (5) What Jurisdiction (6) What Remedy Can we register the mark? Two Types of Registration: Constructive Nationwide notice Prima facie evidence of validity, ownership, and the exclusive right to use the mark in commerce in connection w/ goods or services specified in the registrant’s certificate Right to request Customs officials to bar importation of goods bearing infringing TMs ITU Application; or Registration not issued until use. Requires Bona fide Intent ITU applications permit holder to use mark in commerce, obtain registration, and thereby secure priority retroactive to the date of filing ITU. Warnervision Entertainment v. Empire of Carolina Entertainment v. Empire of Carolina, 1996 Traditional Application Current Use in Commerce Use must be fixed to goods Company names: okay Domain names cannot be descriptive - Car.com Incontestability - After 5 years Continuous use of mark for 5 yrs after registration constitutes conclusive evidence of the exclusive right to use the mark, 86 ii. E.g. Park'n Fly. Defenses Incontestability forecloses all except the seven statutory defenses Fraudulent acquisition of TM R Abandonment Use of the TM to misrepresent source Fair Use defense Limited territory defense Prior R by D
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Topic Use of TM to violate antitrust laws Is a mark Deceptive under §2(a)? False Is the term misdescriptive of the character, quality, function, composition or use of the goods? Believable If so, are consumers likely to believe that the midescription actually describes the goods? (Consider the context of mark) Important If so, is the misdescription likely to affect the decision of purchasers? (Materiality Requirement) o If the answer to all of the above is “Yes,” the mark is permanently barred from registration. Secondary Meaning or Clarifying language are unavailing. Is a mark Deceptively Misdescriptive under §2(e)(2)? Does the mark disdescribe a characteristic, quality, function, composition or use of the goods or services? Are consumers likely to believe that the misdescription actually describes the goods or services? (No materiality requirement here, unlike Lovee Lamb – distinction based on reaction and perception of consumer.) o If “Yes” to both of the above, is there Secondary Meaning under §2(f)?
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FUCKING AWESOME CHECKLISTTM - Trademarks Final Checklist...

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