PART I: True, False Sometimes


1.         Filing an intent-to-use application will give you some rights, if only of priority, that you would not get by filing a regular trademark application on the same date.

sometimes: depends whether you are currently using it

2.         The Lanham Act, as amended, prohibits false and misleading statements that make use of another person's trademark.

sometimes: some fair use/political use

3.         Given that a trademark could last forever, and a design patent lapses after only 14 years, if one has a design that arguably would qualify for a design patent as well as a trademark, the trademark protection is all you need.

sometimes: can be situtations where both might work, and patent has additional protection

4.         A copyrightable work is not eligible for trademark protection.

sometimes: mickey mouse acts as a source identifier

5.         Malibu Graphics is a web design firm located in Coral Gables, Florida. Malibu Graphic's application for a federal service mark in "MALIBU GRAPICS" will be rejected by the USPTO.

sometimes: not primirily geo. misdescriptive since malibu not known for graphics. issue as to prior users.

6.         A person who has been granted a utility (ordinary) patent on a design is ineligible to hold a valid trademark on that same design.


7.         Gaubatz makes and sells T-shirts that say "Don't buy miami_herald_med.gif ". If the Miami

Herald has an incontestable trademark on miami_herald_med1.gif for clothing as well as newspapers, then Gaubatz is guilty of trademark infringement.

political speech? could be done w/out the logo? not misleading so probably fair use

8.         The act of placing multiple trademarks on a good that is then widely offered for sale creates, by its very nature, a substantial risk of undermining the validity of at least one of those marks.

false - depends how you do it

9.         Anderson files an ITU for "Freedom Pizza" on Feb. 1, 2000 for a pizza restaurant. Bradley opposes it, citing detailed business plans made for a different "Freedom Pizza" restaurant in Dec, 1999, but no actual use in commerce until April, 2000. Assuming no one else has a valid claim on the "Freedom Pizza" mark for a pizza restaurant, Anderson will prevail over Bradley’s opposition.

sometimes – anderson must make actual use

10.       Since 1958, Casebeer has run a small toy shop in Coral Gables called "Tampa Toys". Casebeer received a federal trademark registration on "Tampa Toys" in 1999. Other toy shops called "Tampa Toys" are violating the Lanham Act.

sometimes: may have prior use in limited geographic area

11.       Arcadia is a non-English-speaking-nation that is a party to the Paris Convention. Doyle duly registers and uses a word mark in Arcadia for an English word. Doyle now seeks to register the mark in the USA. If the application is one that would otherwise have been refused in the USA on the grounds that the word is generic for the proposed use, due to the Paris Convention it will nonetheless be accepted for entry into the principal registry.

no - generic bar is absolute

12.       A state or federal trademark registration is a prerequisite to a successful federal anti-dilution action.

sometimes - whether the mark is federally registered or not is just one of the factors listed in the statute. although it's hard to imagine a CL being famous and not registered, it's possible.