Intellectual property lawLesson 7 of 9 in the course Trademark Basics

Trademark Registration Bars: Prior Use, Functionality, and Subject Matter

5 flashcards · 4 quiz questions · 5 match pairs · 4 fill-in sentences · English

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Summary

Trademark law includes limits that can prevent a mark from being registered, even when a person or business wants to use it to identify its products. This lesson introduces two important bars: prior use by another party and functionality.

A mark generally cannot be registered by an applicant if another party used it before the applicant began using it. Adopting an already-used mark may also expose the applicant to a claim of trademark infringement. The key concern is that consumers could be confused about which business is the source of the goods or services.

All flashcards

What is the prior use bar?
It generally prevents an applicant from registering a mark that another party used before the applicant began using it.
When may businesses sometimes use the same mark?
When they operate in entirely different markets or fields, so consumers are unlikely to confuse their sources.
What does the functionality bar restrict?
Trademark protection for features that primarily serve a useful purpose or whose removal raises cost or lowers quality.
What makes a geographic mark deceptively misdescriptive?
The goods do not come from the named place, consumers likely believe they do, and that belief materially affects purchasing decisions.
How can a surname become eligible for trademark protection?
It may qualify when consumers associate it with a distinctive commercial source.

Quiz questions

  1. Why can a later user's adoption of a mark already used by another party create legal risk?Answer: It may confuse consumers about the source and expose the later user to an infringement claim.
  2. A product feature is more likely to be functional under the cost-and-quality test when removing it would have what effect?Answer: It would raise the product's cost or reduce its quality.
  3. A shoe brand uses a well-known city name, but the shoes are made elsewhere. Consumers believe they come from that city, and that belief materially influences many purchases. What type of mark is this?Answer: A deceptively misdescriptive geographic mark.
  4. Why are marks that are merely ornamental generally barred from trademark protection?Answer: They may decorate goods without identifying who produced them.

Based on Introduction to Intellectual Property by David Kline, David Kappos (OpenStax), licensed CC BY 4.0. Adapted into a summary, flashcards and quizzes.

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