Deck 6: Trademark Law

Question 1

In 1967, two friends from California designed a sailing surfboard that combined the sports of sailing and surfing. They originally called it a "sailboard." They filed for and received a patent, which was assigned to Windsurfing International, Inc. WSI). In 1968, WSI's Seattle dealer coined the term "windsurfing." WSI applied for and was granted trademarks for various terms using the word "Windsurfer." Between 1969 and 1976, WSI produced a particular type of board called the Windsurfer. During this time period, WSI controlled over 95% of the market. To promote sales, WSI and its employees repeatedly referred to the sport as "windsurfing" and to the sport's participants as "windsurfers." Participants, trade magazines, and the general public also used the terms, as there were no other general terms that could be used to describe this sport.

Answer 1

In 1977, WSI began policing the use of its trademarked terms, "windsurfer" and "windsurfing." The general public continued using the terms to refer to the sport and its participants, however.
In 1984, one of WSI's competitors sued to have WSI's trademarks cancelled. What theory is the competitor espousing? How should the court rule on this issue, and why?
This is based on a real case. The competitors argued that the term "windsurfing" and all its variants had become a generic term for the sport of sailing on a surfboard. The court agreed, and WSI lost the case. WSI did not take adequate action to protect the mark during the early years of its use, and over time the mark lost its distinctiveness.

Question 2

The Anticybersquatting Consumer Protection Act protects mark holders from Internet infringement and unfair competition. The Act permits the owner of a mark to sue anyone, who in bad faith, uses a domain name similar to the mark. Which of the following is NOT a factor used to determine if bad faith exists?

A) The intention to sell the domain name for financial gain without showing the intent to use the domain name for commerce.
B) The intention to divert consumers in a way that could harm the goodwill of a mark.
C) Registration of multiple marks that the registrant knows are identical or confusingly similar to a protected mark.
D) The intention to use the mark to sell a product substantially similar to the product the protected mark represents.

Answer 2

D

Question 3

Marks that are not inherently distinctive are protected only when they acquire what?

A) Arbitrary meaning.
B) Primary association.
C) Secondary meaning.
D) Inherent distinctiveness.

Answer 3

C

Question 4

Which of the following is NOT a function that marks serve?

A) They indicate that the goods or services to which the mark is attached are from a single source.
B) They advertise the goods or services.
C) They provide an identification symbol for a particular good or service.
D) They provide a marketing point for increasing the price of the good or service without increasing costs.

Question 5

Which of the following is NOT an element a plaintiff must establish to show trademark infringement?

A) That the mark is valid.
B) That the junior user's use creates a likelihood of confusion among consumers.
C) That the plaintiff is the senior user.
D) That the mark is registered.
E) The plaintiff must prove all of the above.

Question 6

The distinctive shape of a Coca-Cola bottle would be an example of which of the following?

A) Trade dress.
B) Ornamentation.
C) A service mark.
D) A certification mark.

Question 7

Negative statements about a competitor's products are permitted in comparative advertising provided they are clear, truthful, and non-deceptive. However, use of the competitor's trademark in such advertising will constitute trademark infringement unless the competitor grants permission for the use or the FTC approves the advertising in advance.

Question 8

The Carrothers Corp. has registered a trademark for the CartonEase, to identify the special adhesive that it has invented that makes it easier for children to open the flaps of individual-serving milk cartons. Carrothers has learned that a competitor, Deakin Dairy, is using Carrothers' mark without permission on its own milk cartons which do not use the special adhesive). The PTO may bring a trademark infringement lawsuit against Deakin, but only if Carrothers files a complaint with the PTO.

Question 9

Hartekz Pretzels has sold its pretzels in a 14-ounce, mustard-yellow bag with navy blue lettering and a stylized picture of a beer mug on it for over 40 years. The pretzels have been marketed nationally for over 30 years.

Question 10

"Gray market" goods are defined as:

A) Goods that are intended for overseas markets but are instead imported into the United States.
B) Goods that bear the same trademark but are not of the same quality.
C) Goods that have similar trademarks but are not of the same quality.
D) Identical goods where one good bears a trademark while the other does not.

Question 11

Which of the following is the most important factor courts consider when reviewing "fair use" of a mark?

A) The manner in which the defendant used the mark.
B) Whether the defendant's use is likely to confuse consumers.
C) Whether the defendant acted in good faith.
D) Whether the use constitutes a parody.

Question 12

McManus Window Corp. uses television ads promote its replacement windows, touting them as being superior to the competition. In these ads, McManus displays the mark of its competitor, Tamres Corp. If Tamres sues McManus for trademark infringement, Tamres will receive an injunction prohibiting McManus from using its mark in this way.

Question 13

Which of the following is NOT a valid notice of trademark registration under the Lanham Act?

A) Registered in U.S. Patent and Trademark Office.
B) ™
C) Reg. U.S. Pat. & Tm. Off.
D) ®
E) All of them provide valid notice of a trademark registration under the Lanham Act.

Question 14

Your friend Mark has just started a new Internet company and he is trying to decide what to name his new company. He plans to create Internet telephone software. He asks your opinion on two choices: 1) Internetphone or 2) Wolverine Software, named after his alma mater. Which name choice do you think will receive the most trademark protection?

A) Internetphone, because it clearly describes his company's product.
B) Wolverine Software, because it is an arbitrary mark.
C) Internetphone, because it is a suggestive mark.
D) Wolverine Software, because it is a fanciful mark.

Question 15

Of the four main types of intellectual property law that we discussed this term, only trade secret law permits claims to be brought under state law.

Question 16

The primary focus of trademark law is to protect ____________.

A) trademark holders from trademark infringement.
B) the value of the trademark.
C) consumers from deception.
D) the brand identity of the trademark.

Question 17

The primary focus of dilution law is to protect ____________.

A) trademark holders from trademark infringement.
B) the value of the trademark.
C) consumers from deception.
D) the brand identity of the trademark.

Question 18

One advantage to choosing an arbitrary or fanciful mark for your goods or services, as opposed to descriptive or suggestive one, is that the mark will receive trademark protection from the moment it is used in commerce.

Question 19

McDonald's "golden arches" are an example of which type of mark?

A) Trademark.
B) Service mark.
C) Certification mark.
D) Collective mark.

Question 20

A friend comes to you concerned about unauthorized overseas use of her company's mark in several Asian countries. Her company registered the mark with the U.S. government, and has used the mark for over five years. However, it seems that a foreign company has already registered the mark in several Asian countries. Generally, do you think your friend's company has a claim to the mark in those foreign countries?

A) No, because under federal law you need to use the mark for five years in the foreign country.
B) No, because foreign countries generally recognize the first to file the mark.
C) Yes, because registering the mark with the U.S. government will also cover the mark in a foreign country.
D) Yes, if your friend's company can show it was the senior mark user.