Intellectual Property The Law of Trademarks Copyrights Patents and Trade Secrets 5th Edition Bouchoux Test Bank 1

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Chapter 06 - Inter Partes Proceedings, Infringement, and Dilution
Intellectual Property The Law of

Trademarks Copyrights Patents and Trade
Secrets 5th Edition Bouchoux Test bank
Full download at link;
Test Bank: https://testbankpack.com/p/test-bank-for-intellectual-

property-the-law-of-trademarks-copyrights-patents-and-trade-secrets-
5th-edition-bouchoux-1305948467-9781305948464/
1. To initiate an opposition, a party must show actual damage has occurred.
a. True
b. False
ANSWER: False
POINTS: 1
QUESTION TYPE: True / False
HAS VARIABLES: False
DATE CREATED: 9/21/2016 6:58 AM
DATE MODIFIED: 9/21/2016 6:59 AM
2. Oppositions and cancellations are both handled by the Trademark Trial and Appeal Board.
a. True
b. False
ANSWER: True
POINTS: 1
3. No discovery is allowed in either opposition or cancellation actions.

a. True
b. False
ANSWER: False
POINTS: 1
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4. Most oppositions and cancellation proceedings proceed to trial rather than being settled.
a. True
b. False
ANSWER: False
POINTS: 1
5. Generally, USPTO findings as to registrability of marks can be set aside only when those findings are arbitrary,
capricious, or an abuse of discretion.
a. True
b. False
ANSWER: True
POINTS: 1
6. The only persons who may initiate actions for trademark infringement in federal court are those that have federal
trademark registrations.
a. True
b. False
ANSWER: False
POINTS: 1
7. Unless two marks are identical, there can be no trademark infringement.

a. True
b. False
ANSWER: False
POINTS: 1
Name: Class: Date:

8. For trademark infringement to be found, there must be at least one instance of actual confusion between the two
marks.
a. True
b. False
ANSWER: False
POINTS: 1
9. Generally, the single most important factor in determining likelihood of confusion between two marks is the
similarity of the marks.
a. True
b. False
ANSWER: True
POINTS: 1
10. In an infringement action, infringement can be found when the goods or services offered under the two marks are not
identical but are rather related in some way.
a. True
b. False
ANSWER: True
POINTS: 1
11. Generally, marks that are “strong” are given greater protection than descriptive or “weak” marks in infringement
actions.
a. True
b. False
ANSWER: True
POINTS: 1

Name: Class: Date:

12. There is no statute of limitations for bringing an action for trademark infringement.
a. True
b. False
ANSWER: True
POINTS: 1
13. A trademark that is extremely well known in the Pacific region of the United States can be diluted, even if the mark is
not well known in other parts of the country.
a. True
b. False
ANSWER: False
POINTS: 1
14. To prevail in a dilution action, the plaintiff must prove actual dilution.
a. True
b. False
ANSWER: False
POINTS: 1
15. Counterfeiting is a form of trademark infringement.

a. True
b. False
ANSWER: True
POINTS: 1
Name: Class: Date:
16. What does the term “inter partes” mean?

ANSWER: It means “between parties” and refers to proceedings between parties relating to
rights, use, and ownership of trademarks.
POINTS: 1
QUESTION TYPE: Essay
17. What is the difference between oppositions and cancellations?

ANSWER: The primary difference between these two proceedings is their timing. Oppositions are
initiated to stop registration of a mark; cancellations are initiated after a mark has registered
and seek to cancel existing registrations.
POINTS: 1
18. The appropriate TTAB proceeding to challenge a mark registered on the Supplemental Register is _______.
ANSWER: a cancellation
POINTS: 1
QUESTION TYPE: Completion
19. If parties use their marks in different geographical areas, a ______ proceeding may be initiated to determine
in which geographical area each party will use its mark.
ANSWER: concurrent use
POINTS: 1
20. Assume a party is dissatisfied with the decision of the TTAB in a cancellation proceeding. What two
avenues of recourse are available? Be specific.
ANSWER: The dissatisfied party may appeal to the Court of Appeals for the Federal Circuit or may
initiate a civil action in federal district court, which will consider the issues de novo.
POINTS: 1
Name: Class: Date:

21. What is the standard or test that is used to determine if one mark infringes another?
ANSWER: The test is whether the junior user’s mark is likely to cause confusion or mistake or to
deceive.
POINTS: 1
22. In some instances, a trademark owner might allow a low level of use of a mark by another and then when the
other either changes the appearance or use of the mark, the trademark owner may then object to the use. This
type of infringement is often called ______.
ANSWER: progressive encroachment or infringement
POINTS: 1
23. Why is the price of goods an important factor that courts consider in infringement cases? Are expensive or
inexpensive goods more likely to cause confusion?
ANSWER: When goods are inexpensive, consumers don’t exercise a great deal of care when buying such
goods and thus confusion is more likely. Consumers might simply grab a can of soda or candy
bar on impulse without paying a great deal of attention to it and thus confusion with these
goods is more likely than when expensive goods are offered under a mark. Consumers will
exercise more care and discretion when buying expensive goods and thoughtfully consider the
item before making a purchase. Thus, confusion is less likely than where the goods are
inexpensive.
POINTS: 1
24. Many businesses in California use the mark “BEACH” in their marks. Discuss whether you think the mark
BEACH BUNGALOW is likely to be confused with BEACH RESORT if both marks are used for hotel
services in southern California.
ANSWER: In this case, the use of the word “Beach” is common in the locality, thus making it weak. In
such a case, when numerous similar marks coexist, consumers become adept at distinguishing
marks from each other. In this case, the marks can be distinguished on the basis of their

Name: Class: Date:
noncommon elements (the words “Bungalow” and “Resort”). Thus, it is unlikely that the
marks are likely to cause confusion.
POINTS: 1
25. Briefly describe what a defendant is asserting if it raises the defenses of laches and estoppel.
ANSWER: Laches is a defense that asserts that the plaintiff delayed an unreasonable period of
time to bring the action and this delay has prejudiced the defendant (who, for
example, during the period of delay expended significant time and money in
promoting the mark.) An acquiescence defense asserts that words or conduct on the
plaintiff’s part amounted to an assurance to the defendant that the plaintiff would not
assert its trademark rights against the defendant.
POINTS: 1
26. In an infringement action, a court might issue a[n] ______ to compel the defendant to cease use of an
infringing mark.
ANSWER: injunction
POINTS: 1
27. In what way is a proceeding with the International Trade Commission an alternative to trademark
infringement litigation?
ANSWER: A trademark owner may file a complaint with the International Trade Commission
alleging an act of trademark infringement. The ITC will conduct an investigation and
determine if Section 337 of the Tariff Act has been violated. If so, the ITC will issue an
exclusion order which bars the products bearing the offending mark from entry into
the United States. ITC proceedings have become popular because they are far less
expensive and more expeditious than infringement trials in court.
POINTS: 1

Name: Class: Date:
28. The two ways in which a mark can be diluted are by ______ and by ______.
ANSWER: blurring, being tarnished
POINTS: 1
29. Identify and discuss the form of dilution for the following marks: ADIDAS ORANGE JUICE, the use of a
can similar to that of DR PEPPER for drug paraphernalia, CARTIER SHAMPOO, and PornRUs for adult
videos.
ANSWER: ADIDAS ORANGE JUICE and CARTIER SHAMPOO are examples of dilution by blurring
because the uses whittle away these established and famous trademarks’ selling power
through unauthorized use upon dissimilar products. The use of the DR PEPPER can for drug
paraphernalia and PornRUs for adult videos is tarnishment of the marks because these uses
harm the reputation of the famous marks DR PEPPER and TOYSRUS—the famous marks
are being portrayed in an unsavory or embarrassing way.
POINTS: 1
30. One advantage of securing a federal trademark registration is that the owner may record the registration with
______ to block importation of infringing goods.
ANSWER: the U.S. Customs and Border Protection Service
POINTS: 1
31. In an infringement action, if courts have a difficult time determining if infringement has occurred, they will
rely on ______ and resolve the matter in favor of the senior user of a mark and against the newcomer.
ANSWER: the rule of doubt
POINTS: 1
32. A trademark ______ is a trademark owner that uses its trademark rights to harass and intimidate another
business beyond what the law might be reasonably interpreted to allow.
ANSWER: bully
Name: Class: Date:
POINTS: 1
33. What is the advantage in an infringement action to a trademark owner of using a trademark registration
symbol (®) in connection with its goods or services?
ANSWER: No profits and no damages may be recovered in an infringement action unless
the defendant had notice of the trademark registration—thus, a registrant
should always use the registration symbol (®) to afford such notice.
POINTS: 1
34. The ______ theory/doctrine generally allows a consumer who has purchased a trademarked item to
resell it without committing an act of infringement.
ANSWER: exhaustion or first sale
POINTS: 1
35. A synonymous term for “parallel imports” is ______.

ANSWER: gray market goods
POINTS: 1

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Chapter 06 - Inter Partes Proceedings, Infringement, and Dilution