Trade dress must still be a source indicator. Functional elements cannot be protected as trade dress. This includes visual functionality, where a design is used because it is visually appealing.
This means that it is "merely descriptive" and has no inherent distinctivecharacter.
Descriptive marks can acquire a distinctiveness by acquiring a secondary meaning associating the mark with the product.
Five years of substantially exclusive and continuous use in commerce is evidence that can establish acquired distinctiveness and can be accepted as prima facie evidence of such.
Or five years on the supplemental register
Related names, geography, etc. are always descriptive.
This means that it "requires imagination, thought, and perception to reach a conclusion as to the nature of goods" and is entitled to registration without proof of secondary meaning.
According to the Lanham Act, a mark on goods is used in commerce when "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce".
Contributory infringement occurs when one induces another to infringe yet another's trademark or continues to supply his product to one that he knows or should have known is infringing upon another's trademark.
There is no hard line for what a famous mark is, but it has to be really famous. Usually around 70% recognition among the general consuming public is required.
To determine whether a mark is famous, four factors are used:
The extent of duration and geographic reach
The volume and geographic extent of sales
The extent of actual recognition
If it was registered before the creation of the principal register
Cybersquatting is when one registers the domain name of another's distinctive mark with the bad faith intention to profit from it.
It requires that the person:
has a bad faith intention to profit from the mark and
registers or uses a domain name that is identical, confusingly similar, or dilutive of a distinctive mark.
Factors for bad faith intention to profit
Whether or not a person has a bad faith intention to profit is determined by balancing nine factors:
His IP rights in the domain name
The extent to which the domain name consists of his legal name or other common name
His prior use of the domain name in connection with the bona fide offering of goods or services
His bona fide noncommercial or fair use of the mark in a site at the domain name
His intent to diver consumer from from the mark owner's site, either for commercial gain or to tarnish the mark by creating a likelihood of confusion
His offer to transfer or sell the domain name for financial gain without using it in the bona fide offering of any goods or services, or a history or doing this
His provision of false contact information which registering the domain name, failure to update it, or history of doing this
His acquisition of multiple domain names identical or confusingly similar to marks of others
The extent to which the mark is distinctive and famous
When a defendant uses a trademark to describe the plaintiff's product, even if his end goal is to describe his own product, he is entitled to a nominative fair use defense provided he meets the following three requirements:
the product or service in question must be one not readily identifiable without use of the trademark;
only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
This includes comparative advertising, but that is not the only scenario.