Deck 6: Inter Partes Proceedings Infringement, and Dilution

Question 1

In an infringement action, infringement can be found when the goods or services offered under the two marks are not identical but are rather related in some way.

Answer 1

True

Question 2

Generally, marks that are "strong" are given greater protection than descriptive or "weak" marks in infringement actions.

Answer 2

True

Question 3

There is no statute of limitations for bringing an action for trademark infringement.

Answer 3

True

Question 4

Unless two marks are identical, there can be no trademark infringement.

Question 5

What does the term "inter partes" mean?

Question 6

No discovery is allowed in either opposition or cancellation actions.

Question 7

Oppositions and cancellations are both handled by the Trademark Trial and Appeal Board.

Question 8

To prevail in a dilution action, the plaintiff must prove actual dilution.

Question 9

What is the difference between oppositions and cancellations?

Question 10

Generally, the single most important factor in determining likelihood of confusion between two marks is the similarity of the marks.

Question 11

The appropriate TTAB proceeding to challenge a mark registered on the Supplemental Register is _______.

Question 12

To initiate an opposition, a party must show actual damage has occurred.

Question 13

If parties use their marks in different geographical areas, a ______ proceeding may be initiated to determine in which geographical area each party will use its mark.

Question 14

A trademark that is extremely well known in the Pacific region of the United States can be diluted, even if the mark is not well known in other parts of the country.

Question 15

Generally, USPTO findings as to registrability of marks can be set aside only when those findings are arbitrary, capricious, or an abuse of discretion.

Question 16

The only persons who may initiate actions for trademark infringement in federal court are those that have federal trademark registrations.

Question 17

Assume a party is dissatisfied with the decision of the TTAB in a cancellation proceeding. What two avenues of recourse are available? Be specific.

Question 18

Counterfeiting is a form of trademark infringement.

Question 19

Most oppositions and cancellation proceedings proceed to trial rather than being settled.

Question 20

For trademark infringement to be found, there must be at least one instance of actual confusion between the two marks.

Question 21

One advantage of securing a federal trademark registration is that the owner may record the registration with ______ to block importation of infringing goods.

Question 22

A synonymous term for "parallel imports" is ______.

Question 23

The two ways in which a mark can be diluted are by ______ and by ______ .

Question 24

In what way is a proceeding with the International Trade Commission an alternative to trademark infringement litigation?

Question 25

The ______ theory/doctrine generally allows a consumer who has purchased a trademarked item to resell it without committing an act of infringement.

Question 26

Many businesses in California use the mark "BEACH" in their marks. Discuss whether you think the mark BEACH BUNGALOW is likely to be confused with BEACH RESORT if both marks are used for hotel services in southern California.

Question 27

Why is the price of goods an important factor that courts consider in infringement cases? Are expensive or inexpensive goods more likely to cause confusion?

Question 28

Briefly describe what a defendant is asserting if it raises the defenses of laches and estoppel.

Question 29

Identify and discuss the form of dilution for the following marks: ADIDAS ORANGE JUICE, the use of a can similar to that of DR PEPPER for drug paraphernalia, CARTIER SHAMPOO, and PornRUs for adult videos.

Question 30

In some instances, a trademark owner might allow a low level of use of a mark by another and then when the other either changes the appearance or use of the mark, the trademark owner may then object to the use. This type of infringement is often called ______.

Question 31

What is the standard or test that is used to determine if one mark infringes another?

Question 32

What is the advantage in an infringement action to a trademark owner of using a trademark registration symbol in connection with its goods or services?

Question 33

In an infringement action, if courts have a difficult time determining if infringement has occurred, they will rely on ______ and resolve the matter in favor of the senior user of a mark and against the newcomer.

Question 34

A trademark ______ is a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.

Question 35

In an infringement action, a court might issue a[n] ______ to compel the defendant to cease use of an infringing mark.