How Well Do You Know Trademark Law?

The answer is FALSE. Some trademarks become generic because the public begins to use them to refer to an entire group or category of products. In other words, the mark is no longer considered distinctive. For example, while Yo-Yo is still a Papa's Toy Co. Ltd. trademark name for a spinning toy in Canada, it was declared generic in the U.S. in 1965 as it no longer could be considered distinctive.

The answer is TRUE. A history of use can be enough to gain protection. The general rule is the first person or company to use the mark owns it. This has its basis in common law. However, registering a mark federally does give it more protection than can be found under common law. A trademark must be registered with the PTO to receive protection under the Lanham Act.

The answer is A, B and C. A trade mark is a word, name, symbol or design used to identify a company's goods and to distinguish them from similar products other companies make. A service mark similarly achieves protection for services or wares associated with a firm. Federal law also protects size, shape, color, texture and graphics associated with a product or service, although there are more areas of grey when it comes to these items. A sound can also be encompassed in trademark protection. For example, Intel requires any supplier to use the "Intel Inside sound" whenever advertising their product.

The answer is A, B, and C. The courts strive to balance the interests of the plaintiff, the defendant and the public in such cases. For example, in a case in New York City two jewelry companies were using the name Fabrikant in their business name. The court ruled that the late adopter of the name had to stop using the name or use a first name in front of the last name to create sufficient distinction. If they did not, it was deemed confusing for the public.

The answer is B. In the 1998 case of Panavision International v. Toeppen, Toeppen registered the domain name www.panavision.com, and launched a website with aerial views of the city of Pana, Illinois on the site.The Ninth Circuit Court of Appeals found that trademark dilution occurred when customers of Panavision could not find its web site at panavision.com, and instead were forced to search other less obvious domain names. Trademark dilution is a term that refers to any usage by others not owning the mark that lessen a mark's uniqueness and dilutes its distinctiveness.

A trademark will be protected only if it is distinctive. There are however different ways to determine distinctiveness and it is generally accepted that there is a continuum of distinctiveness in trademark law. Fanciful marks are invented marks and can be made up words. Kenworth is considered a fanciful mark. This is the most distinctive category. Arbitrary marks is the next most distinctive and refers to words that have ordinary meaning but not meanings applied to a product or service. Apple is an example of this type of category. Suggestive marks hint or suggest a product's qualities but do not describe it. Playboy is an example of this. A descriptive mark is just that--it describes the product and is generally accepted that they can not be trademarked. For example words like refreshing or fast can not be protected and must be available for use by everyone.

The answer is B. A cybersquatter is a person who claims domain names that include trademarks or famous people’s names. Congress attempted to stop the practice by adopting the Anticybersquatting Consumer Protection Act (ACPA) in 1999. A defendant must act in bad faith to be liable under the statute.

The answer is B. The court based its decision on the standard called trademark dilution, which the federal government interprets as the lessening of the capacity of a famous mark to identify and distinguish goods and services. The court found there was a complete absence of evidence of any lessening of the Victoria's Secret mark's capacity to identify and distinguish products or services sold in its stores or through its catalog.

The answer is B. The Second Circuit U.S. Court of Appeals held that the Trademark Dilution Revision Act of 2005 does not require proof of “substantial similarity” between the marks in question for a trademark owner to establish dilution by blurring. The court also declared that in such a situation the act does not require the infringer to act in bad faith in using his or her mark.

Aspirin is not a trademark protected in the U.S. It still remains a trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe. While Kleenex is often used by consumers as if it were a generic term for facial tissue in the U.S., France and Canada, it is still a legally recognized trademark held by the Kimberly-Clark Company. Originally a Thermos GmbH trademark name for a vacuum flask, the term was declared generic in the U.S. in 1963. Ping Pong was originally trademarked by Jaques and Son and later passed on to Parker Bros. Competitors are required to refer to the sport as table tennis as a means of trademark protection. Dumpster is a registered trademark of the Dempster Brothers dating back to 1963. It derived from the last name Dempster and appeared in the 1951 product name Dempster Dumpster, with patents dating back to 1937. While the term Realtor is often used by consumers as a generic term for any real estate agent, the term is a legally recognized trademark of the National Association of Realtors. Similarly in Canada, the term is a trademark held by the Canadian Real Estate Association. The two organizations are involved in ongoing efforts to prevent the term from becoming generic. Windbreaker was originally trademarked by John Rissman & Sons of Chicago, but this is no longer a trademark protected in the U.S. Zipper was originally a trademark of B.F. Goodrich but the company lost trademark protection and the term now appears in Webster’s dictionary as a generic term referring to a device used for fastening clothing or other products. The term Onsies is a legally trademarked brand name of Gerber, which objects to its usage in the singular form as "Onesie" or as a generic product name. Post-it is often referred to as a generic term for any sticky note pad but is still a legally trademarked brand held by 3M.