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Roughly corresponding to the syllabus for my Trademark Law class.

@#$% I need to know[edit]

  • Causes of action
    • infringement - confusing similarity, trade dress
    • unfair competition
    • state trademark, unfair competition
    • counterfeiting
    • rights of publicity
  • Defenses
    • fraud
    • abandonment
    • misrepresentation
    • prior use
    • functional (in trade dress)
    • rebut likelihood of confusion
    • fair use
    • laches and acquiescence
    • unclean hands
  • Remedies
    • Actual damages / lost profits
    • Treble damages at discretion
    • defendant's profits
    • costs of the action
    • in extreme cases, attorney's fees
    • reasonable royalties
  • Factors / tests
  • how to register or oppose a mark

opposition to registration

  • merely descriptive
  • geographically misdescriptive
  • merely a surname
  • functional (that's trade dress)
  • live people without their written permission
  • dead presidents (during the life of their widow)
  • obscene
  • fraud - Bose falsely claimed to be selling tape decks when they hadn't for 10 years

Principles of Trademark and Unfair Competition Law[edit]

Unfair competition - you can pursue this without being registered

  • 43(a) - civil action for infringement - consumers have no standing under the trademark act, you have to be a competitor
  • 43(b) - importation
  • 43(c) - dilution
  • 43(d) - cybersquatting

Federal TM Legislation & the Constitution, Adoption & Use, Priority[edit]

Distinctive, Descriptive & Geographic Terms, Surnames, Color[edit]

Hierarchy of trademark distinctiveness![1] From best to worst

  • Coined / fanciful - you made the word up
  • arbitrary - Apple for computers
  • suggestive - mustang for cars
  • descriptive - computerworld for computer store
  • generic - fish market for a fish market ... you're losing your mark

Trademarks in danger of being lost

  • XEROX for photocopies
  • KLEENEX for facial tissues
  • GOOGLE for Internet searches and search engines

TM registration and administrative proceedings, generic terms[edit]

Abandonment, Assignment without Goodwill, Licensing & Franchising[edit]

Trade dress protection[edit]

Infringement of Trademark Rights[edit]

Du Pont test for likelihood of confusion - similarities weigh more than differences, may be dispositive on their own

  • similarity of the marks - appearance, sound, connotation, commercial impression
  • similarity of goods or services
  • similarity of trade channels
  • conditions in which sales are made - impulse vs. sophisticated purchasing
  • fame of prior mark
  • how many people use similar marks used on similar goods
  • actual confusion
  • potential confusion
  • concurrent use w/o evidence of actual confusion
  • variety of goods on which a mark is used - house mark, family mark, product mark
  • if the mark was transferred between users, whether that was done correctly - assignment in gross
  • extent of distinctiveness / ability to exclude others

Defenses and Limitations[edit]

Concurrent use / concurrent rights and grey market goods[edit]

Permitted use[edit]

Dilution & Domain name misuse[edit]

  • Blurring
    • similarity of marks
    • distinctiveness of famous mark
    • engaging in exclusive use of the mark
    • recognition of famous mark
    • intent to associate with the famous mark
  • Tarnishment
  • only for famous marks
    • reach of advertising/publicity
    • extent of sales
    • actual recognition
    • how long has it been registered, on principal register?

Fair use in statute[edit]


  • Monty python
  • misrepresentative advertising - talking trash about the other fashion boutique (competitor) - has to be sufficiently disseminated
  • misleading survey results - inaccurately presenting results of the survey in advertising, false advertising
  • split in the courts on false advertising - either has to be literally false on its face, or false by necessary implication
    • Time warner v. direct tv - false by necessary implication, creates impression with consumers that conflicts with reality
  • you can recover profits, actual damages (or up to 3 times the actual at court's discretion), cost of the action


Advertising, Merchandising, and right of publicity[edit]

Domain name practice[edit]

TTAB Practice[edit]

only for registrations, you can't get injunctions from TTAB

  • you can file opposition against a pending registration
  • concurrent use but nobody does that anymore