IP class 13

trademarks cont
doctrine.

have to then ask, is there a reason why we would want to take certain symbols out of the realm of trademark protection. this issue also comes up under distinctiveness. in the word marks context, we looked at highly/inherently distinctive marks, down to suggestive marks, then to non-discriptive/generic marks. descriptive marks can acquire distinction or secondary meaning, because consumers come to associate your mark with a certain source.

use. in order to be protectable the mark must be actually used, because otherwise that would be anti-competitive. registration is important because it provides nationwide notice, but you're not entitled to the registration unless you're actually using the mark in commerce.

infringment
elements:
- a valid and protectable mark
- likelihood of confusion
confusion analysis
- multifactor tests: sleekcraft
multiplying species of confusion

dilution elements
- a famous and distinctive mark (blurring would destroy the sole and unique meaning of its association with the good and manufacturer. tarnishment damages the mark's morally sensible association)

trademark analysis
1. subject matter
- llok at s.45
- word
- logo
- trade dress

2. distinctiveness
- word 
     - inherent (disputed/not disputed)
     - acquired
          - doesn't matter if generic

- logo
      - inherent
      - acquired (factual dispute)
      - trade dress
      - secondary meaning
         - acquired distinctiveness (factual dispute, length of use)

- registration that has been on books for five or more years is incontestible

- infringment 
     - protectable mark
     - likelihood of confusion (license, approval of the quality, etc)
          sleetcraft balancing test factors
          strength
            - inherent distinctiveness (not/strong)
            - acquired distinctiveness (not/strong)
            - proximity of the goods (where proximity is identity, services, market)
            - similarity of the marks (word logo and design:for cheesecake factory example, defendants should argue broad scope, plaintiff's should argue narrow scope)
            - actual confusion (a matter of fact)
            - marketing channels (advertising, distribution,
            - types of goods/ purchaser concern (are goods purchased in such as way as to displace confusion?)
            - defendant's intent (is the intent to confuse and draw away business, which is wrongful?)
            - likelihood of expansion of defendant's business

as to actual confusion, we would need survey evidence.
marketing channels

- dilution
             - famous mark
             - use commencing after the fame of the mark
             - blurring is considered just infringment, and the factors are not the same
             - similarity leading to an association
             - tarnishment