1. Concepts 1 Subject Matter 1
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- Flag, Coat of Arms or Other Insignia p. 254
- 5.3.Name, Portrait or Signature, Living Individual or Deceased US President p. 256
- Nutrasweet v. K S Foods p. 257
- Marshall Field v. Mrs. Fields Cookies (TTAB, 1992) p. 260
- American Waltham Watch v. United States Watch (Mass, 1899) p. 270
- In re California Innovations (Federal Circuit, 2003) S p. 63
- 5.6.Surnames and Other Issues
- In re Quadrillion Publishing (TTAB, 2000) p. 282
- Peaceable Planet v. Ty (Seventh Circuit, 2004) S p. 4
5.2.Deceptive Matter p. 253§ 2 (a): absolute bar, cannot be rescued under section 2(f) of the Lanham Act by showing that a mark “has become distinctive” through a showing of secondary meaning. § 2 (e) (1): merely deceptively misdescriptive marks cannot be registered unless under § 2 (f), secondary meaning can be demonstrated. Federal Circuit three-step test for determining deceptiveness (In re Budge Mfg.):
If the first two questions in the test are answered in the affirmative, but not the third question, then the mark is deceptively misdescriptive. If only the first question is answered in the affirmative, then the mark may be arbitrary or suggestive since belief in the misdescription is key to a finding of deceptiveness. Flag, Coat of Arms or Other Insignia p. 254No mark may be registered which § 2 (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
5.3.Name, Portrait or Signature, Living Individual or Deceased US President p. 256No mark may be registered which § 2 (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
5.4.Confusion p. 257No mark may be registered which § 2 (d) consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. Nutrasweet v. K & S Foods p. 257Where products are closely related, complementary products, their use is likely to result in confusion as to source and sponsorship, use of a different font etc. is not relevant. If sales are de minimis, lack of confusion is not relevant. Marshall Field v. Mrs. Fields Cookies (TTAB, 1992) p. 260If both marks are famous, the public will easily recognize the differences in the marks and distinguish between them. Factors considered: similarity, use of surname, type of product, trade dress, markets, motive. 5.5.Geographic Terms p. 269§ 2 (e) also bars from registration a mark which, inter alia consists of a mark which … (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, … § 2 (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e) (3), and (e) (5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
In re Nantucket (CCPA, 1982) p. 272Registration of marks that would be perceived by potential purchasers as describing or deceptively misdescribing the geographic origin of the goods may be denied under § 2 (e) (2). If the goods do not come from the place named, and the public makes no goods-place associations, the public is not deceived and the mark is accordingly not geographically deceptively misdescriptive. In re California Innovations (Federal Circuit, 2003) S p. 63NAFTA shifted the emphasis for geographically descriptive marks to prevention of any public deception. Deceptiveness rather than lack of distinctiveness is required. The PTO must deny registration under § 1052 (e) (3) if
5.6.Surnames and Other Issues§ 2 (e) (4) provides: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it– (e) consists of a mark which … (4) is primarily merely a surname. Reflects common law. Test: primary significance to the public. In re Quadrillion Publishing (TTAB, 2000) p. 282Initial burden on Trademark Examining Attorney to establish a prima facie case that a mark is primarily merely a surname. Factors:
Peaceable Planet v. Ty (Seventh Circuit, 2004) S p. 4The rationale of the personal-name rule is wholly inapplicable to fictional characters. Numerals, Letters and Initials p. 285As a general rule, if merely differentiating between grades etc., not protectable. If, in addition and primarily, designates the source, protectable. Question of fact requiring analysis of the manner of use, intent of user, and meaning understood by the consumer: have they acquired secondary meaning? Directory: sites -> default -> files -> upload documents upload documents -> Torts Outline Daniel Ricks upload documents -> Torts outline Functions of Tort Law upload documents -> Constitutional Law (Yoshino, Fall 2009) Table of Contents upload documents -> Arrest: (1) pc? (2) Warrant required? upload documents -> Civil procedure outline upload documents -> Criminal Procedure: Police Investigation upload documents -> Regulation of Agricultural gmos in China upload documents -> Rodriguez Con Law Outline Judicial Review and Constitutional Interpretation upload documents -> Standing Justiciability (§ 501 Legal/beneficial owner of exclusive right? “Arising under” jx?) 46 Statute of Limitations Run? 46 Is Π an Author? 14 Is this a Work of Joint Authorship? 14 Is it a Work for Hire? upload documents -> Fed Courts Outline: 26 Pages Download 119.67 Kb. Share with your friends:
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