p.

CLASSIFICATION
For to bring infringement/dilution claims against , must show that its mark is valid/protectable.
Is s trademark PROTECTABLE?
o Is s mark REGISTERED on the principal register? presumed validity / nationwide priority
o If s mark is NOT REGISTERED, does it have 2NDARY meaning where s mark operates?
o Is s mark DISTINCTIVE?
Is it an invented word with no dictionary or other meaning, like Exxon? FANCIFUL
Is it an actual word with a known meaning that has no association / relationship with the
goods/service protected, like Apple? ARBITRARY
Is it primarily geo misdecriptive like an Idaho potatoes mark for sweatpants?
Does the mark SUGGEST a product in peoples minds, like Coppertone sunscreen?
Do the words naturally direct attention to the purpose/function of the product?
Does the term, standing alone, convey information regarding the products
characteristics?
Does the term require imagination, thought, and perception to understand the nature of
the good?
Would an unfamiliar consumer have an idea of the products purpose/function based on
the connection between the product/service and the mark?
Is the term so closely related to a product/service that competitors would find the term
useful in identifying their own goods?
Do competitors actually use the term in marketing similar products/services?
Does an ACRONYM or MISPELLING change the conventional meaning?
Like LA for low alcohol instead of Los Angeles?
Fish-Fri mispelling does not change the conventional meaning descriptive and not
suggestive.
Is it a GEOGRAPHIC MARK?
Primarily geographically misdescriptive protd
Primarily geographically descriptive need secondary meaning.
Primarily geographically deceptively misdescriptive NOT PROTECTABLE
If DESCRIPTIVE?
Does the descriptive mark have SECONDARY MEANING?
o [Factor 1] amount and manner of advertising
o [Factor 2] volume of sales
o [Factor 3] length and manner of use
o [Factor 4] results of consumer surveys
Examples
o Factors weighed heavily in favor of secondary meaning for Fish-Fri:
continuous use for over 30 years expending $400k on advertising the
mark/product over 15 yrs sales of nearly 1 mil cases of Fish-Fri in recent 15 yr
period cumulatively. Zatarains.
o Surveys supported secondary meaning in local geographical area (New Orleans):
23% of New Orleans area women who fry fish a few times monthly specified
Zatarains Fish-Fri as a product on the market especially made for frying fish
similar survey at New Orleans mall revealed 28/100 respondents also identified
Zatarains Fish-Fri.
o Failed to establish secondary meaning for Chick-Fri mark because: drastically
lower (no direct) advertising expenditures compared to Fish-Fri. Zatarains.
Is s mark INCONTESTABLE, like Park NFly? Cause then cant claim s mark is
descriptive.
o [Element 1] Used mark for 5 CONTINUOUS YEARS post-registration?
o [Element 2] NO FINAL DECISION adverse to registrant?
o [Element 3] NO PENDING PROCEEDING involving the mark?
o [Element 4] Affidavit that mark has been in CONTINUOUS USE?; AND
o [Element 5] Is the mark GENERIC?
p.1

p.2

p.2

p.3

Is s mark GENERIC?
Is it a foreign word that translates to something generic, like Etterem restaurant?
Does the mark identify a CLASS OF GOODS rather than the SOURCE of a good?
[Factor 1] Did the PTO/ TTAB deny the mark?
[Factor 2] Does the DICTIONARY definition refer to a class of goods?
[Factor 3] Does the media use the term to refer to a class of goods?
o LA Times article used Filip Yellow Pages in generic sense
[Factor 4] Do surveys show consumers use the term to refer to class of goods?
[Factor 5] Did registrant fail to challenge generic uses of its mark, like FYP did not
challenge marketing of second Filipino Yellow Pages on East Coast?
o Did registrant use its own mark generically, like how FYP itself used Filipino
Yellow Pages generically in Buy Out Agreements?
Example
o Genericide found where: PTO/TTAB rejected TM many dictionaries defined
Murphy bed as a wall bed numerous examples of newspapers/magazines
using the phrase Murphy bed to described generally a type of bed. Murphy
Door Bed.

Because s mark is [______], it [IS/IS NOT] distinctive and therefore [IS / IS NOT] protectable.
o

p.3

If s mark is a CERTIFICATION MARK, is it invalid?

[Basis 1] Does the owner FAIL TO EXERCISE CONTROL over the mark?
[Basis 2] Does the owner PRODUCE THE GOODS/SERVICES the mark certifies?
[Basis 3] Does the owner permit use of the mark for purposes OTHER THAN CERTIFICATION?
[Basis 4] Does the owner DISCRIMINATE in use of the mark?
If s mark is TRADE DRESS:
Is it PRODUCT DESIGN, like heart / flower designs on kids clothing?
Since design cant be inherently distinctive, does it have secondary meaning?
o [Factor 1] amount and manner of advertising
o [Factor 2] volume of sales
o [Factor 3] length and manner of use
o [Factor 4] results of consumer surveys
Or is it PACKAGING, like how restaurant food is packaged in restaurant design?
Is the packaging inherently distinctive, like Taco Cabanas restaurants festive dcor, with
artifacts, bright colors, murals, awnings, umbrellas and architecture?
o If not, does it have secondary meaning?
Or is it descriptive like a pine scent freshener in a tree shape?

p.4

LITIGATION
Having shown that s mark [IS / IS NOT] protectable, can state a claim?
[Requirement] Did use the allegedly infringing mark in PUBLICLY in COMMERCE, or was the use
INTERNAL?
o Was it use of a domain name without goods/services for sale? not in commerce.
o Must sell something $$$!
Claim 1: INFRINGEMENT
o Type 1: Initial Interest Confusion
Did s mark initially capture consumer attention by making them think was selling s
products/services?
Online more likely
o s use of metatag Moviebuff to divert users from s website (moviebuff.com)
caused IIC [Parcho: actually source/spons/affil]
o PETA.org as People Eating Tasty Animals caused IIC b/c parody not apparent
from web address itself.
Brick & Mortar less likely
o The Velvet Elvis restaurant caused IIC because it resulted in people coming into
the restaurant, even though no confusion after entering. Capace.
o Gibson guitar shape IIC not applicable
o Only interested in s Hari Puttar because of Harry Potter.
o Type 2: Point of Sale Confusion
Would s mark lead consumers to believe that is the source of s product/service?
o Type 3: Sponsorship / Affiliation
Do consumers think that sponsored or is affiliated with s good? Use Sleekcraft but focus on:
1) Must be displayed prominently
o LV bag briefly shown /named in Hangover 2 confusion unlikely.
2) Must be intended to profit
3) Must show actual harm
o Evil portrayal of Caterpillar machinery in Disney movie.
Hot Wheels vs. Hot Rigz affiliation confusion likely, largely because of surveys showed
consumers ASSOCIATED one mark w/the other.
o Type 4: Post-Sale Confusion
Does s mark divert sales from ?
Does s mark damage the goodwill of s mark, like passersby attributing poor Payless shoe
quality to Reeboks?
Or like a low quality stitching pattern on jeans that look like Levis?
Or do knockoffs decrease scarcity / luxury of the good, like Rolexes?
Does s mark reduce s control over its reputation?
o Type 5: Reverse Confusion
Do consumers associate s mark with instead of with , like would they think the NCAA is the
source of a local schools March Madness?
o Sleekcraft Analysis
How strong is s mark?
Distinctiveness?
Secondary meaning factors
o Extent of marks use? Extent of advertising? Volume of sales? Registration
in relevant industry?
How proximate are and s goods/services?
Extremely close like family vs. racing boats?
Complementary goods like wine and salami?
How similar are and s marks, in general commercial impression?
If encountered visually do they look alike?
If audio exposure do they sound alike?
Is there a certain feature given special weight, like Toys R Us or Mc prefix?
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p.5

Is the mark subordinate to another that wouldnt cause confusion, like Polaroid Alpha?
Is there evidence of actual confusion? (7.6% insuff (Henry Food). need 15-20%)

Do and use similar marketing channels?

Like same boat shows/magazines (Sleekcraft) or different like wholesalers / consumers
(Dawn Donuts)?
What degree of care do relevant customers use?
High-end goods, like nuclear reactors/boats, or cheap?
Are customers sophisticated or not?
Impulse purchase OR careful decision?
One-time purchase OR repetitive purchases?
Children or Adults?
Are marks similar in quality?
Did have bad faith in selecting the mark?
Did adopt a mark identical to s famous mark?
Did continue to use s mark after s objection?
Was there a plausible explanation for creation of the mark, like in Sleekcraft, or
implausible like Nikepal?
Are and expected to expand into the same products/services?
Like a fashion producer going into perfume (Scarves by Vera)?
Like two closely related boat makers (Sleekcraft)?
Because and s goods are [VERY/SOMEWHAT/NOT] related and their marks are [VERY/SOMEWHAT/NOT]
similar, [DID/ DID NOT] meet the (HEAVY / LIGHT) burden on [PROVING / DISPROVING] confusion through the
remaining factors. Thus, confusion [IS / IS NOT] likely, and infringement [IS / IS NOT] LIKELY.

o Claim 2: DILUTION
As shown above, ____ has shown that _____ used [THE MARK] in commerce, so this element is satisfied for bringing
a dilution claim. Next, must show that used the junior mark after s mark became famous, and that use is likely to
blur [s mark] by dilution or tarnishment.
[Element 1] Is s mark famous?
o [Factor 1] How long has used the mark?
o [Factor 2] How far and wide is s mark advertised/publicized?
o [Factor 3] What are the sales of the mark?
o [Factor 4] How geographically widely has the mark been sold?
o [Factor 5] Is the mark registered?
o [Factor 6] Is the mark only known to a niche market, like legal services or Florida?
o Examples
STATE court held that Lexis mark only known to small segment of public: roughly 1% of overall
car market (attorneys and accountants) insufficient level of fame. Mead Data Central.
Milbank is NOT famous outside niche market for legal services. Milbank.
Rain Bird mark is NOT famous outside niche geographic market of Florida. Rain Bird.
[Element 2] Did use the junior mark after s mark became famous?
[Type 1] Is dilution by blurring likely?
o Does s use impair the distinctiveness of s mark: would the public think that there are two different
sources for the SAME MARK?
[Factor 1] Are the marks identical or nearly identical?
Nikepal and Nike are nearly identical because Nike is dominant term in Nikepals
composite mark pronounced the same majority of consumers surveyed associated
Nike with Nikepal. Nikepal.
[Factor 2] How distinctive is s mark?
[Factor 3] Has used the mark substantially exclusively?
Instance of Nike Hydraulics Inc. with a 1958 registration for the Nike mark insufficient
to disprove Nikes substantially exclusive use. Nikepal.
[Factor 4] How widely recognized is s famous mark?
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p.6

p.6

[Factor 5] Did intend to associate with ?

s awareness of the Nike mark and dubious testimony that he came up w/Nikepal mark
by flipping the dictionary established intent to create association. Nikepal.
[Factor 6] Do consumers actually associate s mark with s?

p.7
Examples of Dilution
Dilution by blurring found: N and P capitalized in NikePal, Nike part pronounced same
nearly identical marks Nike is fanciful highly distinctive only 1 other company uses Nike
name (Nike hydraulics) substantially exclusive use knew of Nikes existence at time it
created mark + implausibly said he randomly found Nike in the dictionary + while Nikepal.com
was under construction, hyperlinks went to Nike products intent to create association high
degree of recognition of Nike surveys showed 87% of consumers associated marks w/ each
other high actual association. Nikepal.
Successful parodies may actually make the mark more distinctive, not less. Mattel.
[Type 2] Is dilution by tarnishment likely?
o Does s use harm the reputation of s mark by causing customers to think less of it?
Enjoy Cocaine, South Butt? Sex? Drugs?
Starbucks v. Charbucks NO tarnishment. Even though some people associate Charbucks with
bitter coffee, doesnt mean people will think less of the Starbucks mark.
Chewy Vuitton NO tarnishment.
o

p.7

Claim 3: INDIRECT INFRINGEMENT

o Contributory Liability?
Type 1: Did INTENTIONALLY INDUCE another party to infringe?
Website host was contributorily liable for helping create and develop site, coaching and
business advising the infringer for a large fee, being aware of the domain name and logo.
Roger Cleveland Golf
Type 2: Did know or have reason to know of an infringing 3rd party that it continued to provide
products/services to?
eBay not liable, did not continue to provide its internet marketplace services to infringing
merchants because once it became aware of infringing actions, it removed counterfeit
listings and suspended repeat sellers of infringing products. Tiffany.
o Vicarious Liability?
Type 1: Did and the infringer have an apparent or actual partnership?
Type 2: Or did and the infringer have authority to bind each other in 3 rd party trxs?
Type 3: Or did and the infringer exercise joint ownership/control over the infringing product?
NO vicarious liability for credit card company processing payments by credit card users
buying counterfeit magazines that infringed on s mark. Processing payments does not
constitute joint ownership / control over an infringing product. Perfect Ten

p.8

DEFENSES
Although ___ has a [STRONG / MODERATE / WEAK] claim of [INFRINGEMENT / BLURRING / TARNISHMENT],
___ will assert defenses and seek to cancel ____s mark.

Grounds for Cancellation

Defense 1: Generic
Defense 2: Functionality
Defense 3: Abandonment
Defense 4: Illegitimate assignments involving mark
Defense 5: First sale doctrine

o
o

p.8

Only for Litigation

Defense 6: Descriptive Fair Use
Defense 7: Nominative Fair Use
Defense 8: Parody
Defense 9: 1st Amendment

Is s use a GENERIC use of s mark, like a Kleenex tissue or Xerox copier?

See p.1
Is s trade dress not protectable because its FUNCTIONAL?
[Type 1] Is the product feature ESSENTIAL to the use/purpose of the PRODUCT? Low bar is it
useful at all?
o

Dual-spring mechanism was held functional b/c of prior utility patent covering it. TrafFix.

1 spring is ineffective affects quality of product functional.

3 springs is effective BUT is more expensive functional.
Color of medical pill was held functional b/c the color helped consumers identify the kind of
medication (in addition to its source). Inwood Labs.
Rounded corners were held functional because they improve pocketability and durability;
rectangular shape maximizes the display area. Apple.

[Type 2] would exclusive use of the feature put competitors at a SIGNIFICANT, NON-REPUTATION
RELATED DISADVANTAGE?
o Is it functional b/c of color scarcity?
NO for green-gold cleaning pads. Qualitex.
YES for Green tractors and Black motorboard because they match best?
YES for Gold gilded edges of book pages that uniquely connote opulence.
o Are there a limited number of feasible features, like lampshade designs or how chocolate
uniquely improves the taste of quinine?
[HUGE factor] Was the feature protected by a UTILITY PATENT, like the dual-spring mechanism in
Traffix?
[Factor] Is the usefulness of the design touted by:
o s own advertisements?
o Trade publications?
o Consumers / the market?
[Factor] Does the design come from a cheap, simple, or superior method of mfring?
Did ABANDON its mark?
[Element 1] Did discontinue use of the mark in the ordinary course of trade?
o Reserving The Brooklyn Dodgers for Oldtimers days and not as the name of the baseball team
during the regular season is not ordinary course of trade. MLB v. SNOD.
[Element 2] Does have no intent to resume use of the mark in the reasonably foreseeable future?
o When Amos & Andy is no longer demaning to black ppl is NOT the reasonably foreseeable
future. Silverman.
Did make ILLEGITIMATE ASSIGNMENTS involving the mark?
[Element 1] Did TM owner license the mark to company B?
[Element 2] Did TM owner fail to monitor the quality of products that B produces in connection with
his mark?
Did ASSIGN the mark in GROSS?
[Basis 1] Was the TM transferred without goodwill or underlying assets?
[Basis 2] Is the TM being used to refer to a diff product?
Is permissibly using s mark in RESELLING the good? [FIRST SALE DOCTRINE]

p.9

Except, did reseller FALSELY MISLEAD the public into believing the reseller is associated with the
producer, like saying Im an official IKEA builder!?
Or did reseller MATERIALLY CHANGE the good before re-selling it?
o Was it material, like scratching glass of fragrance bottle to remove batch code?
o Was it immaterial, like repainting golf balls?
Or did reseller RE-PACKAGE THE PRODUCT without adequate notice to customers?
o Was there adequate notice, like indicating repainted balls were refurbished?

If s mark is descriptive, is s use of s mark DESCRIPTIVE FAIR USE?

[Requirement 1] Did use the mark not as a source-identifier, but to
literally describe its product?
o Like using fish fry to describe seafood coating mix?
o Like a pine tree shape to refer to the pine smell?
o Or encouraging customers to literally seal it with a
kiss?

[Requirement 2] Did use it fairly (accurately) and in good faith?

Is s use of the mark NOMINATIVE FAIR USE?
Did use the mark to identify s own product/service, like eBay
selling Tiffanys?
o [Element 1] Is s product/service not readily identifiable
without using the mark?
o [Element 2] Did use only so much of the mark as necessary to identify the product/service;
AND
o [Element 3] Did do anything to suggest sponsorship or affiliation w/the TM owner?
Is s use of the mark a PARODY, like the song Barbie Girl?
Does s use make fun of the original work / the cultural values claims the work represents?
Or is s use an unprotected satire, using s style to ridicule something unrelated to the original
work?
o Like the Cat NOT In The Hat to mock the OJ trial and not mocking Dr. Seuss?
Is s use in a LITERARY TITLE? lower bar for protection because consumers expect titles to
indicate CONTENT not SOURCE.
[Requirement 1] Does the title have at least some relevance to the artistic work?
o E.g. Barbie Girl is relevant to the underlying work because it critiques Barbie and the vapid
cultural values she represents.
[Requirement 2] Or is the title expressly misleading as to the source or content of the work?
o E.g. Barbie Girl is not expressly misleading w/r/t/ its source, because it does not explicitly
or otherwise suggest that it was produced by Mattel.
Is s use of s mark NONCOMMERCIAL or protected by the 1st Amd?
Did use the mark for a noncommercial, political campaign like Naders Priceless ads or ACADEMIC
use? protd.
Or did use s mark to critique s product/service? protd.
Or does s use merely propose a commercial transaction without being biting, like a couch in a
Hershey bar wrapper w/o further commentary?

DEFENSES ONLY FOR

LITIGATION CONTEXT,
NOT OPPOSITION]

p.9

p.10

Registration
Principal Register
o Requirement: is the mark distinctive?
See p.1
o [Type 1] Did owner ACTUALLY USE the mark in interstate commerce (Zazu)
[Requirement 1] Was the use PUBLIC and NOT INTERNAL?
[Requirement 2] Was the MARK DISPLAYED ON THE PRODUCT?
[Requirement 3] Did sales CROSS STATE LINES?
[Factor 1] QUANTITY and CONTINUITY of SALES
[Factor 2] CONSUMER PURCHASES shipping to other states without having other sales
[Factor 3] Is the mark owner in the SAME BUSINESS as the line of products?
[Factor 4] QUALITY CONTROL does the owner give a shit about product quality?
[Factor 5] INTENT Is registrants intent unfair competition?
Reasonable explanation why registrant needs to use it?
[Factor 6] PROFIT / LOSS
[Factor 7] ADVERTISING
o [Type 2] Intent to use
Did the owner use the mark within 6 months after filing an intent to use registration?
o Did neither party register? each is limited to exclusive use where they have secondary meaning.
o Even if senior user registered the mark / or even if its incontestable, can use the mark in a LIMITED
AREA?
[Requirement 1] Did junior user adopt the mark before senior user registered it?
[Requirement 2] Did junior user use the mark in a different INDUSTRY or GEOGRAPHIC AREA
prior to registration by the senior user?
[Requirement 3] was the mark used continuously by the junior user in the relevant area preregistration?
o Would the PTO issue concurrent use registration, because both parties filed for registration of marks that
were in use at the SAME TIME in DIFF AREAS?
[Requirement 1] did each party already use the mark in commerce?
[Requirement 2] will continued use not result in likelihood of confusion?
[Requirement 3] can geographic markets be allocated to avoid likelihood of confusion?
Supplemental Register
o [Requirement] Did registrant actually use the mark in commerce, rather than just intend to use?
o [Requirement] Is the mark unregistrable because of any statutory bar?

OPPOSITION: _____ will seek to invalidate _____s mark through opposition.

Can the user FILE FOR OPPOSITION?
o [Element 1] Will registration of mark harm the opposer?
o [Element 2] Does opposer have a real interest in the mark?
Is opposer the owner or exclusive licensee of a similar mark?
Is opposer in competition with applicant?
Is the mark scandalous? anyone can challenge.
o [Element 3] Can opposer show valid legal grounds why ____ is not entitled to registration?
See statutory bars below.
Insufficient use of the mark?
o [Element 4] Did opposer bring opposition within 30 days of the marks publication?
_________ [WILL / WILL NOT] be able to file an opposition claim because of ________. Assuming that ____ can
properly bring opposition, _____ wil assert:

p.10

p.11

State / Common Law Protection

Only need Actual Use in in-state TRADE, NOT interstate COMMERCE

ONLY Geographic priority (NO NATIONWIDE PRIORITY) first person or business to make bona fide use of a mark
w/ respect to the goods or services offered
Unregistered marks only protected in geographic area where actual use is established and ALSO get:
o 1. Protection in the broader geographic area where reputation was established
Use national advertising / media coverage of the product/service
o 2. Protection in the NORMAL ZONE OF EXPANSION
o 3. Protection against any COMPETITOR who INTENTIONALLY tries to appropriate TM owners goodwill
(bad faith)
State registries
o Registration optional can still get CL protection
o Rules of registration closely track those of federal registration
Get statewide priority
Constructive notice within state
Presumption of validity and ownership

p.11

p.12

Statutory Bars

p.12

Absolute Statutory Bars

Bar 1) Generic
Bar 2) Immoral/Scandalous/Disparaging
Bar 3) Deceptive
Bar 4) False assoc. with persons/instiutions/beliefs
Bar 5) National, State, Municipal Insignia (flag)
Bar 6) Name, Portrait, Signature
Confusingly similar to existing mark
Primarily Geo. Deceptiv. Misdescript.
Idaho Potatoes grown in Wisconsin

Statutory Bars Removable W/ 2ndary Meaning

Primarily merely a SURNAME - 2(e)(4)

Merely DESCRIPTIVE marks. 2(e)(1)
Primarily misdescriptive marks. 2(e)(1)
Primarily Geo. descriptive marks. 2(e)(2)
Idaho Potatoes grown in Idaho

Cancellation
Any statutory bar
Abandonment
Registration was fraudulently obtained
Functionality

Is there a STATUORY BAR to Registration of the mark?

o Is the mark GENERIC?
See p.1
o Did ABANDON the mark?
See p.4
o Is s mark FUNCTIONAL?
See p.4
o Was s mark FRAUDULENTLY OBTAINED?
o Is the mark IMMORAL/SCANDALOUS/DISPARAGING?
Would the LIKELY MEANING be perceived as...
OFFENSIVE to the consciousness / moral feelings of...
a substantial composite of the general public?
Like Bullshit, Madonna or Messiah?
Like Squaw One relating to clothing, which offends Native Americans, though not w/r/t
ski gear?
o Is the mark DECEPTIVE?
[Requirement 1] Mark FALSELY describes goods/services
Like Lovee Lamb for synthetic car seats?
Like Glass Wax for glass cleaner containing NO WAX?
[Requirement 2] A prospective purchaser is LIKELY TO BELIEVE the misdescription
[Requirement 3] Mistake is likely to MATERIALLY AFFECT the purchasers decision
o Is the mark DECEPTIVELY MISDESCRIPTIVE? no bueno.
Or Primarily Geographically deceptively misdescriptive? no bueno.
o Does the mark HARM THE REPUTATION of or is it FALSELY CONNECTED WITH persons,
institutions, beliefs?
Like James Dean leather jackets? NO REG.
Like Blue Ivy Carter NYC for a clothing line? NO REG.
Like Boston Tea Party? [NOT national symbol] can REG.
o Is the mark NATIONAL, STATE, OR MUNICIPAL INSIGNIA?
Like Liberty Bell? [not national insignia] can REG.
o Is the mark a NAME, PORTRAIT, OR SIGNATURE
identifying a PARTICULAR LIVING INDIVIDUAL (w/o her written consent)?
of a deceased President during the life of his widow (w/o her consent)?

p.13
[Requirement 1] Does the requested mark REPLICATE / CLOSELY RESEMBLE a living persons
name, portrait, or signature?
[Requirement 2] Is the party whose name/identity is used NOT COMMERCIALLY CONNECTED
to the applicant?
[Requirement 3] Is name/identity SUFFICIENTLY FAMOUS that association will be presumed?
Is the mark CONFUSINGLY SIMILAR to an existing mark? [GO TO SLEEKCRAFT p.3]

REMOVABLE BARS

p.13

[Factor 1] How SIMILAR are the MARKS?

[Factor 2] How SIMILAR are the relevant GOODS/SERVICES?
[Factor 3] How SIMILAR are TRADE/MARKETING CHANNELS?
[Factor 4] MARKETPLACE CONDITIONS and DEGREE OF CUSTOMER CARE?
[Factor 5] FAME of the existing mark?
[Factor 6] Is the marketplace crowded with SIMILAR MARKS in on SIMILAR GOODS?
[Factor 7] Is there ACTUAL CONFUSION?
[UNIQUE Factor 8] Is there evidence of CONCURRENT USE w/o CONFUSION?
[Factor 9] Does produce a WIDE VARIETY OF GOODS, such that consumers expect s good comes
from ?
[UNIQUE Factor 10] Did and take steps to minimize potential consumer confusion?
[UNIQUE Factor 11] Can the applicant exclude others from using the mark? Mark policing power?
[Factor 12] Will confusion be DE MINIMIS or SUBSTANTIAL?

Is the mark DESCRIPTIVE?

Is the mark PRIMARILY MISDESCRIPTIVE?
Is the mark PRIMARILY GEO. DESCRIPTIVE MARKS?
Is the mark a SURNAME (primarily merely)?
[Factor 1] How RARE is the surname in the market (US)?
[Factor 2] Is the mark the surname of anyone connected with
applicant?
[Factor 3] Does the mark have OTHER RECOGNIZED MEANINGS
besides as a surname?
[Factor 4] Does the mark have the LOOK AND FEEL of a surname?
[Factor 5] Does the MANNER in which name is DISPLAYED negate any surname significance?
o
o
o
o

p.14

Cybersquatting
ACPA
o
o
o
o

p.14

[Element 1] Does has a valid trademark?

[Element 2] Is the mark distinctive or famous?
[Element 3] Is s domain name is identical, confusingly similar, or dilutive of s mark?
[Element 4] Did act with bad faith intent to profit?
Factor 1: did the registrant OWN THE TM that the domain name resembles?
Doughney had no IP right in peta.org supports bad faith. PETA
Factor 2: did the domain name contain the registrants LEGAL NAME?
Peta.org is not Doughneys name supports bad faith.
Factor 3: did registrant sell BONA FIDE GOODS or services using the domain?
Doughney had no prior use of peta.org in bona fide offering of goods/services
Factor 4: Is registrants use NONCOMMERCIAL, in good faith or fair?
Doughneys use of peta.org was a commercial use
Factor 5: Did registrant INTEND TO DIVERT customers from the marks owner by harming the
mark owners goodwill or tarnishing/disparaging the mark?
Factor 6: Did registrant ATTEMPT TO SELL the domain back to mark owner?
Factor 7: Did registrant provide FALSE INFO to register the domain?
Factor 8: Did registrant own MULTIPLE DOMAINS identical/confusingly similar to the marks of
others?
Factor 9: HOW DISTINCTIVE OR FAMOUS was the mark that the domain resembled?
Examples
E.g. Doughney held liable under ACPA: didnt sell anything called PETA to sell domain;
wanted to harm PETAs goodwill registered other domains based on other famous marks.
E.g. ct found bad faith b/c had no legit interest in earnestandjuliogallo.com AND had
registered a ton of other random domain names. E&J Gallo.
Does qualify for the ACPA safe harbor?
[Requirement 1] Did believe his use of the domain name was fair use/lawful?
[Requirement 2] Did have reasonable grounds to believe his use of the DN was fair/ lawful?
[Requirement 3] Did act even partially in bad faith? NO SAFE HARBOR.

UDRP
o [Element 1] Are challengers mark and the challenged domain name IDENTICAL OR
SUBSTANTIALLY SIMILAR?
Low bar: walmartsucks.com meets this element.
o [Element 2] Does domain name registrant have NO LEGITIMATE INTEREST in the domain?
[Indicia 1] Did registrant use the mark in connection with GOOD FAITH OFFERINGS of goods or
services?
[Indicia 2] Is the registrant KNOWN BY THE DOMAIN NAME?
[Indicia 3] Did the registrant make a LEGITIMATE NON-COMMERCIAL USE or fair use of the
mark without diverting customers or tarnishing the mark?
o [Element 3] Was the domain name obtained in BAD FAITH?
[Indicia 1] Was registration done to RESELL IT to the TM owner or TM owners rivals?
[Indicia 2] Was registration done to DENY THE TM OWNER USE OF THE DOMAIN NAME?
[Indicia 3] Was registration done to DISRUPT THE BUSINESS OF A COMPETITOR?
[Indicia 4] Was registration done to PURPOSEFULLY DIVERT CONSUMERS?