My exam is coming up for trademarks and I have a few questions, especially the ones in bold, that I hope someone here can help me with- I mainly have questions about infringement/dilution and distinctiveness-Thanks for the help in advance I really appreciate it.
(1) Can you have trademark infringement claim (which is likelihood of confusion) and also make a dilution claim or can you only have one or the other – so can you only make a dilution claim if there is no infringement (likelihood of confusion) but the plaintiff is still harmed by the defendant using their trademark?
(2) For Dilution by Blurring (I know there are more factors but I had a question concerning the below)- how do you prove the below (through survey, what else?)
i. Extent the owner of the famous mark is engaging in substantially exclusive use of the mark
ii. Degree of recognition of the famous mark
iii. Any actual association between the mark/trade name and the famous mark
Also for the exclusive use of the mark- (i. above) if the mark is not substantially exclusive (ie. this means that there are other trademarks with the same trademark name correct? ) how important is this in weighing the factors for dilution by blurring (if its not exclusive then does that show strong evidence that there less possibility of blurring, more, etc.?
(3) When weighing the elements/ factors of an infringement claim (likelihood of confusion) and a dilution claim (especially dilution by blurring) what are the factors that are most important in tipping the scale for the likelihood of confusion and of the dilution by blurring to occur or not?
(4) For Trade dress is it true that if you can’t tell if something is a product packaging or configuration the presume its product configuration and use secondary meaning?
-->So for example the Coke bottle – can’t the shape of the bottle be both product packaging as well as – so following what I said above since its ambiguous we would then just say its product configuration and would need to find secondary meaning (which you can since the consuming public knows what a coke glass bottle looks like)
(A) Nike- is it suggestive or arbitrary (is it arbitrary b/c just looking at the word means nothing) BUT if given information that NIKE actually come from the word meaning victory then would it be suggestive?
(B) Is NIKE not descriptive because don’t have immediate idea what it just by looking at word? I get confused with this because doesn’t NIKE get secondary meaning since NIKE is so well known a brand NIKE consumers know what services/good-. so then would NIKE be descriptive? Can you have someone that is more than one distinctiveness (such as being suggestive, descriptive, and arbitrary, etc?)
(C) For suggestive you need to use imagination and for descriptive trademarks you need to have both immediate idea and secondary meaning- so if don’t have the immediate idea then not descriptive and probably more likely its suggestive? Does anyone know any other way to remember how to tell these distinctive categories apart?
Thanks again for the help.
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