With Genericide, companies can try to  suck back the mark from generic then the company will say Tabasco brand hot sauce to try and avoid this.

Trademark policing also helps in avoiding genericide

-  a tm owner will review the official gazette to try and make sure that someone is not going to register a similar trademark.

Trademark policing also helps in avoiding genericide.

Policing also helps in making sure that no one is infringing upon a trademark.

If you use someone’s trademarks of any purpose, it’s bad.

However you can use a tm in certain instance s *(someone else’s tm) and it’s ok:

1) In advertising- Soft Scrub with Clorox bleach- soft scrub’s use of Clorox is perfectly fair as long as I am putting Clorox bleach in my company has it is. This is ok, as long as it is truthful.

2) Comparative survey- if you use the trademark McDonalds to say that your fries are better (and you have the data to back it up) then it is an accurate statement based on the survey data that you collected.

Fair use- is the ability to use another party’s tm without their permissions, you don’t have to pay for or do anything to get permission from them as long as the statement is true.

1) Assignment – a transfer of ownership in that particular trademark. The new party now own the mark and has all the rights of that trademark and you no longer have the right to put the tm on your products.

2) License- permission to use a trademark for a period of time.

An assignment is a sale and license is like renting.

There are two types of license- a. an exclusive license and b. a non-exclusive license.

An exclusive license is that there is only one licensee and only one.

b. for non-exclusive licensee-  licensed to multiple people

it is possible although extraordinarily unlikely that an assignment may not transfer the goodwill. So you MUST have the goodwill of the mark that is the tie that the mark has been using the mark so when they receive it it’s as though they  had done all the work to build the goodwill.

If the goodwill is not transferred with the assignment, this is an assignment in gross, so basically you have completely destroyed all the goodwill in the trademark and the owner of the tm has to  rebuild it.

The words of the tm are not worth anything.  The goodwill is what’s worth something.

What is it important to remember about licenses and quality control?

Why?

. All license must have quality control. If you don’t follow the quality control established, then you will loose your license.

LICENSES MUST have quality control.

If you grant a license without quality control you have granted a naked license and the licensee can run amuck so this is really bad.

the fees that are paid to the licensor to a licensee under a license for the use of the tm.

Through Inter Partes Proceedings (aka proceedings between different parties).

1) Opposition

2) Cancellation

3) Concurrent Use

When a tm is published, you get 30 days to oppose a mark that you believe is confusingly similar to your own. A proceeding will be opened up and both parties will  each state why they do not want the registration to occur.

If you fail to oppose during the 30days after pub, then you can file a cancellation . This can be done any time after registration, but this is made more difficult after a section 15 affidavit is filed if I am trying to allege confusing similarity.

Where parties ask the PTO to let them use the same  or similar trademarks but limiting each party’s use to certain regions. These are extremely rare to day because of the Internet it’s hard to keep use to a specific geographic region.

Use the  same variable for determining confusing similarity. Confusing similarity is the exact same discussion as trademark infringement but trademark infringement is between two parties.

use same variable for determining confusing similarity. Confusing similarity is the exact same discussion as trademark infringement but trademark infringement is between two parties.

1) look at the criteria for infringement.

2) abandonment ( thorough non-use of three years).

3) genericide

4) Fair use

Is it however possible for an infringer to sue the trademark owner in a declaratory judgment action where the infringer sues the tm owner. This can happen because the infringer would like to get ride of the use. So if we are sundial,, and we are worried about dial suing us, we could go ahead and file a declaratory judgment to have the issue decided before you bring your mark to market

1) Damages 2) Injunction (this is not exclusive of damages, you can get both). 3) Seizure or destruction of infringing goods (this can be an extraordinarily invaluable penalty that is not necessarily available in other areas of the law. 4) criminal penalties (for certain counterfeiting issues).

What is dilution?

Who is it available to?

How is this availability determined?

Is a viable as a remedy under the tm act. Tm dilution is available only to those parties where the trademarks qualify as being FAMOUS.

There is a lot of criteria  for what is a famous tm only but for class it’s the lay idea of famous.

a) blurring- when someone is using the same or similar mark on different goods but the quality is the same (so blurring is equal quality). We would do this because in this situation the traditional criteria for infringement would not be available.

b) tarnishing.- when the other party is doing something and it’s lesser quality. So can prevent another person from using your or similar mark for something that is of lesser quality.

purposeful use of another’s goods (exactly what you expected). Criminal  damages are available

they are goods that are typically manufactured in a third world market  of lesser quality by the  tm owner itself for another market and then are imported en masse to a market where it costs more.  These are licensed goods so there’s no way that they can infringe. Used to , there would be contractual restrictions of where the less quality goods can be imported.

So set up your tm license agreements to that you can’t run into this problem in the market place to begin with.

Use the trademark similarity analysis to determine if a domain name infringes a tm owner’s use.

Previous this did not apply but now it does.

Exception: website with tm is for personal use.

 So if you maintain a website to put your photos up and blog and talk about your life then you are not using it to sale anything so it’s not in a commercial context so then  it cannot infringement.

when you go to a website and there is a link on the page that when you click on it will take you to another location.

If the hyperlink is on the website and is a tm that then you click and it sends to another website (so if there is a link that says Disney and it sends you to a porn site, that is a bad thing).

what about a tm that's similar to

www.mcdonaldssucks.com

so long as the website is providing free amendment speech then it’s fine.  If you sale product s then you are engaging in commercial activity and it’s infringement.

- to evaluate if there is a confusing similarity, then we must translate the foreign term to English first. And then evaluate the mark with the registrability test.

Be careful when taking a tm to a foreign market b/c the mark could have a different ( and not so awesome meaning in that country).

Can you seek registration for your tm overseas?

What are some ways this can be done?

You can  file the application within six months from the  date in the US. So then your foreign application has priority to then it is  treated as  it was filed the same day in the US.

You can also file the foreign application later but this would not get the priority date.

You can file either under the Madrid protocol or the community tm system.

So with the Madrid protocol application you can cover a bunch of  countries you can reach a bunch of other countries. Or you could file a Madrid application first and then spread out.

CTM marks you can get coverage in all European Union marks.