Understanding Trademark Law Outline with Casebook Cases

Contents
Ch. 1: Nature and Purpose of TM Protection .................................................................................... 2 PART I: Historical Overview of TM Law ......................................................................................... 2 Ch. 2: Subject Matter of TM Protection .............................................................................................. 3 PART I: Nature of Trademarks ....................................................................................................... 3 PART II: Establishing Trademark Rights ....................................................................................... 4 PART III: TYPES OF TRADEMARKS ............................................................................................ 9 PART IV: FEDERAL TRADEMARK REGISTRATION................................................................ 15 PART V: State Trademark Registration ....................................................................................... 29 Ch. 3: Trademark Infringement and Unfair Competition................................................................. 31 PART I: TRADEMARK INFRINGEMENT .................................................................................... 31 PART II: REVERSE PASSING OFF ............................................................................................ 38 PART III: FEDERAL LAW OF FALSE ADVERTISING ............................................................... 39 PART IV: DILUTION ...................................................................................................................... 41 PARTY V: CYBERSQUATTING ................................................................................................... 49 PART VI: SECONDARY LIABILITY ............................................................................................. 52 PART VII: DEFENSES .................................................................................................................. 54

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Understanding Trademark Law Outline with Casebook Cases

Ch. 1: Nature and Purpose of TM Protection
PART I: Historical Overview of TM Law
1.01: Introduction Two purposes of trademark law o Protecting consumers from being confused or deceived about source of goods/services  Stork Restaurant v. Sahati (explains source confusion) y Confusion of source misleading the public by imitation of ³an attractive, reputable TM for the purpose of securing for the imitator some of the goodwill, advertising, and sales stimulation of the owner¶s TM. The fact that the businesses don¶t compete doesn¶t matter. P only needs to show likelihood of confusion to prevail.  Hanover Star Milling v. Metcalf (explains the principles of TM law) y The primary function of TM law is to identify the origin or ownership of a good or service. TM rights grow out of use.

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Encouraging merchants to stand behind their goods/services by protecting goodwill

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Rights conferred by TM law o NOT property rights in gross o Arise only through actual use of mark  Public must actually recognize the mark as a source indicator in order for it to be protected. y If mark ceases to be source indicator, it will cease to be protected as TM 1.05: The Lanham Act A: Overview

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The three most fundamental sections of LA o §2 standards for registering a TM or SM on register PTO o § 32 protects federally registered marks against unauthorized uses likely to cause confusion as to origin o § 43(a) provides federal unfair competition cause of action for a party that suffers a competitive injury as a result of false statements made by others in connection with offering of goods/services Page 2 of 63

Understanding Trademark Law Outline with Casebook Cases B: Recent Amendments Dilution Doctrine o § 43(c) creates cause of action for dilution of the selling power of famous marks  Purely for purpose of protecting goodwill, NOT consumer confusion Anticybersquatting Provisions o § 43(d) to protect mark owners against web addresses which were confusing/misleading to consumers and made unauthorized use of their TM

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Ch. 2: Subject Matter of TM Protection
2.01: Introduction Federal registration o significantly enhance the legal protections available to the TM owner o not essential to TM protection in the US

PART I: Nature of Trademarks

2.02: Trademark As Origin Identifiers Function of TM inform consumers about origin of g/s o Consumers typically care about the qualities and characteristics that they associate with g/s emanating from that source. o Hold merchants accountable for disappointing g/s Goodwill Reputation that attaches to TM 2.03: The Requirement of Nonfunctionality A: Public Policy Functionality bar o denies TM protection to any aspects of an article that contributes to the utility of an article. Functional if « o Essential to the use or purpose of article or if it affects cost/quality of article o Exclusive use of feature would put competitors at significant non-reputational disadvantage. Page 3 of 63

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Volkswagon (no aesthetic functionality) o Car logo case. But if acquire secondary meaning. a TM which identifies the source of goods and incidentally services another function may still be entitled to protection. Ask: would protection impose a significant nonreputational competitive advantage? - - - - PART II: Establishing Trademark Rights 2.04: Use In Trade Rights grow out of use Page 4 of 63 . Ives Laboratories (functional color no TM protection) o Physicians putting things in wrong bottles.´ This would blow TM law away. There is no such thing as ³aesthetic functionality. Jacobson (color can be TM if secondary meaning) o By themselves. Cannot be TM if functional. puts HEAVY BURDEN on party seeing to refute this aspect of functionality C: Aesthetic Functionality Restatement 3d Unfair Comp o Design = functional because of its aesthetic value ONLY IF it confers a significant benefit that cannot be practically duplicated by use of alternative designs o NOTE: This doctrine is applied differently by different courts and is an inconsistent standard Qualitex SCOTUS interpretation of aesthetic functionality doctrine o Forbids the use of a product¶s feature as a trade mark were doing so will put a competitor at a significant disadvantage because the feature is ESSENTIAL TO THE USE OR PURPOSE or AFFECTS COST/QUALITY o Ultimate test does it significantly hinder competition? Automotive Gold v. Traffix Devices v.Understanding Trademark Law Outline with Casebook Cases Purposes of functionality doctrine o Fosters competition o Prevents TM law from encroaching on patent law for useful product features B: Evolving Definition of Functionality Inwood Laboratories v. can be TM. Product feature is functional if it essential to use or purpose of article or if affects cost/quality of article. Pills were functional. But. Marketing Displays (hierarchy of functionality analysis) o Inwood test is primary o Qualitex expansion is relevant only when primary test is not satisfied o Utility patent strong evidence that feature is functional. Qualitex v. colors cannot be trademarks.

Resolution of Priority Issues o Where similar marks are used in geographic areas that are remote from one another. P¶s mark had no effect on US commerce. was allowed to keep using its mark even though P had federally registered the mark. Court eventually decided D used mark in good faith first. Christman (foreign mark has no effect on Sr. each user will enjoy exclusive rights within its area y United Drug Co. v. Person¶s v. P sold shipments of pants to store managers. Theodore Rectanus Drug co. a mark owner must (1) adopt its mark before P¶s registration under the - Page 5 of 63 .  Exclusive right to use (priority) belongs to first user (senior user). user in USA)  D used a mark in the US that P was using only in Japan. rights belong to senior user y Thrifty Rent A Car System v.  When areas overlap. TM rights established only through actual use of mark in connection with offering of goods or services to public ± not mere adoption. A: Establishing Priority of Use - Common law o rights are established by person first to make BF use of mark  May be established by pre-sales publicity or sales solicitation COMBINED with intent to use  Blue Bell v. Since D was the first to register in the US. not just nominal or token use. o o o - Difference between CL and Fed law o Federal registration of a TM gives rise to ³constructive use´ of mark even in markets where registrant has not actually used the mark. The senior user can¶t come in and demand the junior user leave its own locality if the senior user wants to expand. Senior user cannot be charged with bad faith use. See United Drug Co. To qualify for the limited area exception. v. Theodore Rectanus (common law concurrent use OK if in different locales) o When two unregistered marks in different localities concurrently. Farah Manufacturing Co (first to make bona fide use of mark has priority) y P and D both engaged in shady tactics to try to get use of the ³Time Out´ mark. Thrift Cars (the ³limited area exception´) o D. it is fine.Understanding Trademark Law Outline with Casebook Cases Under CL and state statutes. use must be bona-fide. he was senior user. a junior user. D slapped new labels on old goods.

The lanham act extends to all commerce that congress can regulate. PG made minor and sporadic nominal use of their mark in the minor brands program to keep it alive. business presence. See Blue Bell v. amount of advertising in area. it was conducting commerce under the LA. possible market penetration o Market penetration volume of sales of TM product. not made merely to reserve a right in a mark. presently planned expansion. geographic origins of orders/customer inquiries. number of people purchasing.Understanding Trademark Law Outline with Casebook Cases Geographic area determined by CL principles based on actual use. Johnson and Johnson (use must be actual use in commerce) o Assure deodorant case. Use In Commerce Commerce is « o All commerce which may be lawfully regulated by congress  Larry Harmon Pictures v.  Zone of expansion y Courts that recognize this doctrine tend to define zone narrowly y Factors previous biz activity. previous expansion/lack thereof. B: Lanham Act 1. y Sales in territory important indicator of use  Reputation/business presence y May acquire trademark priority in territory where already established reputation for mark. Since customers from different states visted William¶s restaurant. o Commerce the BF use of a mark in the ordinary course of trade. This use was not enough to establish priority Page 6 of 63 o . even though not offer product service in that area o Advertising may have carried the reputation of the mark y Factors nature and extent of advertising + promo activities. geographic distribution of catalogs/flyers. Farah.  Token/de minimis use will not qualify y Proctor and Gamble v. Williams (single restaurant location OK for interstate commerce) y Bozo¶s restaurant case. dominance of contiguous areas. reputation. growth trends in area. zone of expansion  Actual Use y Use in ordinary course of business y Insignificant/sporadic use/token sales = insufficient.

See Blue Bell v. There must be intent to use the product again in the future. West Coast Entertainment 2.  Licensee subject to quality control use inures the benefit of registraint/applicant Tacking o Users may only tack TM rights if the marks are so similar that the relevant consumers consider them to be the same mark. See Brookfield Communications v. displays. documents (if placement impractical).Understanding Trademark Law Outline with Casebook Cases in the mark. Foreign Use - - - Territoriality Principle o Use of a mark exclusively outside the US is not a use in commerce and will not establish ownership rights in the US. Use of mark in advertising without more will not qualify as a use in commerce for purposes of federal registration  Maryland Stadium Authority v. [E asks:Was this just a fuzzy attempt to favor the team? Can this geographic term even be protected?] o - § 45 LA use in commerce between TM and SM o Goods  Mark must be affixed on goods. associated. but not purely intrastate ones o Public awareness is necessary o Secret shipments do not qualify. Page 7 of 63 . o Services  Used in commerce when « y Used in sale or advertising + services rendered in commerce o More than one state OR US and foreign land Related companies o Substantial relationship between the parties is required  Any person whose mark is controlled by owner of the mark wrt nature and quality of the goods or services on or in conjunction with which mark is used. Advertising can be sufficient use of a mark so long as services/goods are available within a commercially reasonable time and the totality of the acts create association of the goods and services and the mark. MUST BE SOLD or TRANSPORTED in commerce y Transportation alone can qualify. containers. Farah. Becker (advertising can satisfy the use requirement) y Camden yards case. tags or labels.

which are typically describtive. o More lenient standard for registration?  Eastman Kodak v. The Famous Marks Doctrine (controversial exception to territoriality principal) Use of mark exclusively overseas may give mark owner priority in US if mark is sufficiently well known to US consumers. If they are found to have no secondary meaning. 4. says that even though casino only has services in monte carlo. 2. It¶s ok. Punchgini (famous marks doctrine rejected by Fed Court)  P was denied relief under FMD for the mark Bukkhara restaurant. o 3. o If ITU application eventually ripens into a valid TM registration. Empire of Carolina (priority of an ITU registrant) y An ITU registrant has priority over someone who actually uses the mark in the interim between the ITU registrants filing and later subsequent use. o But see ITC v. Court said while there is persuasive argument for P. Foreign trade = WHO you trade with.  WarnerVision Entertainment v. even if goods/services not offered in US. if not in a statute. ITU Applications Benefit o Possible to get on the principal register before the date on which the mark is first used in trade. which congress can regulate. 5. the effective date of that registration will take place when ITU was filed. isn¶t such a big deal. not WHERE the trade occurs. not gonna invent a remedy. advertising in US is ok because foreign gambling is foreign trade. Bell & Howell (ITU OK for product numbers) y Since the LA allows for another evaluation after the ITU period. the registration will be cancelled.Understanding Trademark Law Outline with Casebook Cases Where a mark is used exclusively for services offered outside of the US.05: Distinctiveness Page 8 of 63 . use in commerce cannot be established solely through advertising to US consumers. Societe des Bains « (BAD LAW: advertising OK to uphold foreign mark with no US service) y BAD LAW! Court muffs this one. registering numbers. Constructive Use Nationwide constructive use o gives the registrant priority against later adopters even in areas were registrant has not actually used mark.  But see International Bankcorp v.

 Inherent distinctiveness y Arbitrary y Fanciful y suggestive  Distinctiveness through use (secondary meaning) See Wal-Mart v. No longer is used as a source indicator. including a unique product. or device. suggestive (always distinctive). Service mark definition Page 9 of 63 .  Assignment in gross assignment/license to be separated from underlying goodwill so that consumer expectations are frustrated  Naked licensing TM owner fails to exercise QC  Losing Fed TM protection Not filing periodic renewals/statements of use PART III: TYPES OF TRADEMARKS 2. or (2) Which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter. to identify and distinguish his or her goods. or any combination thereof (1) Used by a person. y Descriptive - Abercrombie and Fitch v. Hunting World (the levels of distinction) o Marks can be generic (non distinctive).06: Maintaining TM Rights - Once TM rights have been established. descriptive (sometimes distinctive). symbol. from those manufactured or sold by others and to indicate the source of the goods. or arbitrary and fanciful (always distinctive) 2. even if the source is unknown. they must be maintained or will be lost. o Can be lost via  Non use abandonment  Non distinctiveness genericized.Understanding Trademark Law Outline with Casebook Cases Distinctiveness in TM context o tendency to identify the goods sold as emanating from particular source o Two ways of being distinctive. Samara Bros. name.07: Protectable Marks § 1 of the LA defines trademark as « ³any word.

aunt jemima) Arbitrary o Words in common usage with dictionary meanings. 2. Arbitrary/Fanciful (the strongest marks) Fanciful o Coined terms that have no commonplace or dictionary meaning ± completely fabricated by their owners (Xerox. eligible for TM protection without a showing of 2ndary meaning Very strong marks. substitutes ³service´ for goods. Kodak. and other distinctive features of radio or TV programs may be registered as SM notwithstanding that they. and adds ³titles. beany) Composite marks (consist of several components) o Distinctivenesss must be determined by considering the mark as a whole. A. may advertise the goods of the sponsor. or the programs. o Arbitrary/fanciful (inherently distinctive) o Suggestive (inherently distinctive) o Descriptive (must acquire distinctiveness through 2ndary meaning) o Generic (never protectable)  Alternate spelling does not make generic terms proctectable. Descriptive o - - Page 10 of 63 . Spectrum of Distinctiveness Marks in descending order of strength categorization of mark is a matter of fact. (lite beer. but less so than arbitrary and fanciful marks Only indirectly conveys an impression of the goods or services to which it is attached o Requires the observer or listener to use imagination and perception to determine the nature of the goods 3.Understanding Trademark Law Outline with Casebook Cases Same as above. 1. but that do not in any respect describe the goods or services to which they are attached o Only distinctive within its product market and entitled to little or no protection outside of that area o The distinctiveness of an arbitrary mark arises from the fact that it is mismatched to a particular product or service. Suggestive Considered inherently distinctive. character names.

Vericheck (breaking up word to examine distinctiveness)  Court upheld a TM examiner¶s decision not to grant a TM to Vericheck because it was descriptive of what the service did. o Takes no imagination to understand what characteristic of a product or service is being conveyed Each part of word matters o In the Matter of the Application of Quik-Print Copy Shops (no TM for descriptive mark without secondary meaning)  Each part of the name (Quik. though anonymous source."). 2ndary Meaning Arises when public comes to recognize the mark as an indication of source. Concurrent use o same descriptive mark in the same geographic area party¶s mark was first to acquire 2ndary meaning. Secondary meaning was necessary in order for protection. function. ("In considering a mark as a whole. characteristic.Understanding Trademark Law Outline with Casebook Cases Specifically describes a quality. Print) was broken down. o This is a question of fact. o A generic term that describes the genus of which a particular merchant¶s product is a species. and the TM office decided the name was descriptive. Generic Terms(per se ineligible for protection) Commonly used as the name or description of a kind of goods. the [Trademark Trial and Appeal] Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. or ingredient of a product or service. Page 11 of 63 . sufficient if the public is aware that the product comes from a single. - - - priority depends on which 4. o Essential that the primary significance of the term in the minds of the consuming public is not the product but the producer. a. o Lahoti v. Common Law Proscription descriptive marks can be protected as TM under state and federal TM and unfair competition laws once they have achieved distinctiveness (2ndary meaning) in the minds of consumers b.

The court had mercy on P. but not another. Trade dress was functional. Nabisco (generic descriptions = no TM) y Shredded wheat had become a generic term. Ty (Personal name needs secondary meaning for TM) y Since Ty was not using ³Niles´ as a source indicator. and Peaceable Planet was able to Page 12 of 63 . lots of other businesses used them in the field of adult entertainment for women.  o A term may be generic if it has a distinctive characteristic of the genus to which the product belongs (Matchbox ± matchbox cars)  In re Chippendales (common basic shape or design not distinctive) y Cuffs and collar were common in porno industry. See [the hog case] o - Marks at risk for genericide o associated with unique or patented products/services  Kellog v. Term may be generic for one class of goods. and it got generified. (marks can become generic if become a noun) o People started using ³Aspirin´ as a noun. Personal Names - Individual¶s name can serve as trademark o Not considered inherently distinctive o Generally treated as a descriptive mark that can be protected only upon a showing of a secondary meaning  Peaceable Planet v. and put a limited injunction on D (limiting the ways it could use the mark) instead of ruling the mark was totally generic and unprotectable. so no protection for ³pillow shape´ either. B. y King ±Seeley v. Bayer marketed the drug in a way that consumers associated the brand with the product and not the source. it did not acquire secondary meaning. United Drug Co.Understanding Trademark Law Outline with Casebook Cases Test for genericness does the public perceive the term is the article? y Bayer v. so no TM protection. o marks that have been featured in strong ad campaign o Whether a mark has become generic is a question of fact. and consumer survey evidence showed this. Expired patent is evidence of generification. Aladdin Industries (surveys show lack of consumer understanding that mark is brand and not product) o Thermos had become largely genericized.

C. y Two Pesos v. shape. it must o be associated with the offering of goods/services to the public and NOT just perceived as the identity of an individual. o Services can have TD too (UPS brown) o Munsingwear v. o Have 2ndary meaning  The public must have the impression that this product or service comes from the same source whenever it is offered under that name. Posner also noted the rule must be applied to people! For a personal name to serve as a mark. texture. but the box is what counts.Understanding Trademark Law Outline with Casebook Cases use the name on its camel.  TD is inherently distinctive OR has acquired 2ndary meaning. The TD of the underpants might be the same. - Page 13 of 63 . Jockey Int¶l (pre or post sale packaging examination?)  Court decided that pre-sale TD was the way to analyze two horizontal-fly underpants competing in the same store ± that is how consumers deal with them. color or color combinations. Trade Dress Refers to the distinctive features of a product¶s packaging or the distinctive features of the product configuration itself o Total image of product ± may include size. Kinedyne (no TM protection for function) o Features which constitute the actual benefit the consumer wants to purchase are not protected via TM. graphics. Taco Cabana (TD can be protected if inherently distinctive) o Inherently distinctive TD can be protected under § 43(a) without showing it has acquired secondary meaning. protectable if it is capable of distinguishing one business from another Federal law requirements o Must be TD must be nonfunctional and distinctive o §43(a) requirements  Trade dress of products is confusingly similar  Features of TD is primarily nonfunctional y Tie Tech v. or even particular sales techniques. Product¶s manufacturer does not have rights under TD law to compel its competitors to resort to alternative designs which have a different set of advantages and disadvantages.

Numbers and Alphanumeric Combinations - Page 14 of 63 . Artistic. product¶s design is distinctive only upon secondary meaning. Sound. different. Contrast Two Pesos TD of a restaurant is more like packaging. it was not used as a mark in a constant and consistent way and thus it was not sourcedesignating. o Ex artistic designs. Gentile Productions (unique fanciful)  Even though the building of the RRHOF was unique. inherent distinctiveness may exist in the particular combination of those elements. or commonplace sounds or those which listeners have been exposed under different circumstances. jingles. o Wal-Mart v. Scalia did not want to protect any kind of functionality. Other Expressive Works - - May qualify for CL and federal protection if they acquire distinctiveness. is not inherently distinctive. Party asserting protection has additional burden of establishing that the TD is nonfunctional D. Jacobson color In re Vertex Group (sound as TM) o A sound must be distinctive to be TM. o Although by themselves not inherently distinctive. not necessarily o Rock and Roll Hall of Fame v. o  Product configuration y There is a distinction between product PACKAGING and CONFIGURATION. Distinction must be found between unique. Musical. Samara Bros (product configuration protectable if secondary meaning)  Design. they can acquire secondary meaning. like color. Color. H. E. Under §43(a). design of a building Problem of TM concepts when work functions as both product and source indicator. See Qualitex v.Understanding Trademark Law Outline with Casebook Cases Even if individual elements of TD are not themselves inherenently distinctive. Equated with source. Scent  - These things can serve as TM.

but it does give benefits. y Exceptions that apply when another party has _____ prior to the applicant¶s filing date o Used the mark o Filed an application to use the mark which is pending or resulted in registration o Filed a foreign application to register the mark and timely files under 15 USC § 1126(d) o § 22 Page 15 of 63 . o Doctrine of foreign equivalents  If a word is from a relatively common language. Viking Range (registration = presumption of secondary meaning + the 7-factor test for secondary meaning) o Since registration for red knobs as TM was granted. in mark on principal register. y Wolf Appliance v. English translation will be used to determine genericness. I.  Places burden on D to showing the mark « y Should have never been registered in the first place y Has lost its validity o § 7(c)  Subject to several exceptions. o § 7(b) and 33(a)  Registration on principal register is prima facie evidence that the mark in question is valid and owned by the registrant. as well as similarity of connotation in order to assess whether it is confusingly similar to English-language word marks already in use PART IV: FEDERAL TRADEMARK REGISTRATION 2. secondary meaning is presumed. Foreign Words In some cases the English translation will determine whether the word or phrase qualifies for TM protection.Understanding Trademark Law Outline with Casebook Cases Can serve as TM under CL and fed law if they have inherent or acquired distinctiveness. and registrant has exclusive right to use. See list of seven factors to establish secondary meaning if not presumed.08: Benefits of Federal Registration Fed registration is not prerequisite to protecting a TM under § 43 of LA or state law. filing of application constitutes constructive use conferring nationwide priority as of the date the application was filed.

Precludes subsequent user from arguing that it adopted a mark in good faith and without knowledge of registration. o Basically. it can be registered on PR unless it fails § 2(a)-(e). deceptive.Understanding Trademark Law Outline with Casebook Cases Gives constructive notice of registrant¶s ownership. anything can make it  Unless it falls under a statutory bar under 2(a)-(e) o Only one mark can be registered in a single application NOTE: § 2 is for federally registerd marks. False Geographic Indications for Wines and Spirits - - § 2(a) bars registration of a mark that is « o Immoral. and 35(c) than unregistered owner has. General Standard § 2 of LA general substantive standards for registering a mark on the PR. mark can become incontestable § 42  o Can help TM owner block importation of infringing goods o Access to broader array of remedies under §§ 34(d). Marks Ineligible for Registration on the Principal Register - - If a mark is capable of distinguishing goods or services. Immoral. 1. 35(b). Composite marks o Applicant may disclaim parts of marks that are unregisterable  But might seek protection at a later time once secondary meaning has been established. See § 2(f).   o Incontestability  Once on PR for 5 years. or scandalous  Immoral/scandalous Page 16 of 63 . § 43(a) is for CL marks B. 2. gives registrant priority over junior users even in markets where registrant has not used the mark. or Disparaging Matter. Scandalous. o § 2(a)-(d) complete prohibition o § 2(e) can overcome presumption of unregisterability if acquired secondary meaning. Deceptive.09: Marks Eligible for Federal Registration - A.

o Matter that may disparage or falsely suggest a connection with persons (living or dead) institutions. Vulgar scandalous. immoral. disparaging remarks) y Sex Rod case. PTO must consider the mark in context of marketplace as applied to the goods in the described application for registration y y  Deceptiveness y Mark must « o Falsely describe goods or services o OR misdiscription must be one that the prospective purchaser is likely to believe is true AND that mistaken belief is likely to materially affect the consumer¶s purchasing decision. National. State. beliefs. Court also found mark would be disparaging to Sox. a connection would be presumed Geographical indication that is not the place where the goods originated if the use started after 1/1/1995 2. Municipal Insignia o - § 2(b) bars the registration of a mark that comprises or simulates the flag. Page 17 of 63 .Understanding Trademark Law Outline with Casebook Cases Offense to the conscience or moral feelings of a substantial composite of general public o But see In re Lebanese Arak Corp (disparaging remarks)  Court found that Khoran wine would be disparaging to Muslims. state. or foreign nation. national symbols. Sherman (scandalous. BUT isn¶t the proper scope all American wine purchasers? Not just the Muslim ones? o Vulgarity is sufficient to establish immorality/scandal  Boston Red Sox Baseball Club v. or bring them into contempt/disrepute  TTAB must find that y Applicant¶s mark is the same as or closely approximate¶s another¶s previously used name/identity y Mark would be recognized as such y Other party is not connected with the activities performed by the applicant under the mark y Name or identity of the other party is of sufficient fame or reputation that when mark is used. coat of arms. or insignia of US.

Marks Likely to Cause Confusion with Existing Marks §2(d) incorporates the CL ³likelihood of confusion´ test o bars registration of any TM that comprises a mark which so resembles a mark already registered at the PTO or in use in the US which is not abandoned and is likely to cause confusion by mistake or deception. the PTO will focus on the DuPont factors. Priority of use applicant may be denied under § 2(d) if another party has used a confusingly similar mark on similar goods or services anywhere in the US o even if that was not a use in commerce because it was purely intrastate. portrait.Understanding Trademark Law Outline with Casebook Cases 3. Portrait. This test is the Polaroid factor test! - - Page 18 of 63 . or signature (w/o consent) o President during lifetime 4. There are 13 of them ± see § 2(d) for the deets. Name. or Signature § 2(c) bars registration of any mark that comprises o Living person¶s name. c. o Priority in §2(d) depends on which party was the first to use the mark in connection with the goods/services in question. Establishing priority under § 2(d) o Party must show it was first to establish proprietary rights in the mark  May arise from prior registration or use. Priority through Analogous Use A use that would not itself be a TM use may nonetheless be sufficient under § 2(d) to establish who is the senior user of a mark o If the use was of such nature and extent as to create an association by purchasing public Third party can inure benefit to someone else (commercial saying ³Mickey D¶s) Analogous use may be tacked to actual use o Even with reasonable delay. whether or not that use involved interstate commerce b. Factors Indicating a Likelihood of Confusion In determining whether confusion exists under § 2(d). a.

Descriptive. but deceptive marks under § 2(a) never can. o o Page 19 of 63 . Misdiscriptive. Deceptively misdescriptive §(2)(e)(1) o Deceptively misdescriptive misdescribes goods/services and if public is likely to believe the misdescription to be true o DIFFERENCE between deceptively misdescriptive under §2(e)(1) and deceptive under §2(a)?  DM consumer¶s mistaken belief material to purchase Mark can be misdescriptive without being deceptively misdescriptive  EX ³solid gold´ candy bar DM marks can be registered on PR if acquired 2ndary meaning. Concurrent Use Concurrent registrations can be served. depending on the particular circumstances of each case o Typically the similarity of the marks and the similarity of goods/services = important d. Merely Descriptive §2(e)(1) o Determination based specifically on goods or services for which registration of the mark is sought. but subject to limitation to avoid confusion o Mode or place of use of each mark o Goods in connection with which mark can be used Concurrent registrations will issue only to applicants that became entitled to use the marks as a result of their concurrent lawful use in commerce prior to the earliest of « o Filing dates of pending applications o Any registration actually used for the mark - 5.Understanding Trademark Law Outline with Casebook Cases The weight accorded to each factor will vary. or Functional Marks a. o Any mark that is denied registration on (e)(1) grounds is still eligible for registration when gets 2ndary meaning to satisfy § 2(f)  Generic marks y No amount of 2ndary meaning will make it registerable b.

 Page 20 of 63 . The Coca Cola mark had become a source indicator through use and had acquired secondary meaning. so no need to apply step three. there was no goods/place association. or when mark has popular significance with geographic meaning y American Waltham Watch v. c.Understanding Trademark Law Outline with Casebook Cases Coca Cola v. Here. d. In this case. Primarily Geographically Deceptively Misdescriptive §2(e)(3) o Marks in this category may not be registered even if they have become distinctive o Test for PGDM?  Identical to the test for deceptive marks under §2(a) y Mark must « o Falsely describe goods or services o OR misdiscription must be one that the prospective purchaser is likely to believe is true AND that mistaken belief is likely to materially affect the consumer¶s purchasing decision o In re California Innovations (new test for geographically misdescriptive marks)  The court decided that the test for deceptively misdescriptive and geographically misdescriptive marks is the same. It was not a remote or obscure place. US Watch (descriptive geographic term TM if secondary meaning) o Since ³Waltham´ had acquired secondary meaning with consumers. Koke (Deceptively misdescriptive = OK if secondary meaning) y The fact that there was no cocaine in Coca Cola did not invalidate their TM. Primarily Geographically Descriptive §2(e)(2) o The prohibition applies only when the term is ³primarily´ geographically descriptive wrt the goods in question  In re Baik (no TM protection for geographically descriptive marks) y ³Baik´ mark was rejected under §2(e)(2) because it was primarily geographically descriptive. the Plaintiff could enjoin Defendant from using it as a source designator on watches even though it was a descriptive geographic term. remote. the court found that the vodka buying public was the target market to consider.  Does not apply when the geographic term is obscure.

Overcoming Bars to Registration Under Section 2(f) - In order to demonstrate distinctiveness. sales volume. length and manner of use of mark. 7.Understanding Trademark Law Outline with Casebook Cases e. consumer testimony. Primarily Merely a Surname Such marks can still be registered if they acquire sufficient secondary meaning to satisfy §2(f) Names with several meanings o Test under §2(e)(4)  Is name primarily a surname. or are the other meanings significant? y See the five factors in §2(e)(4) for the deets. BARRED (§2(f) does not apply)  De jure functionality y Superior design essential for competition o See TrafFix case  De facto functionality OK y Merely performs some function or utility but is not significantly better than other possible configurations 6. surveys. - Functional Marks §2(e)(5) o Bars registration of functional mark o Manufacturer cannot compel competitors to resort to alternative designs with different advantages/disadvantages via TD law o Functionality is usually the issue. o Show proof of substantially exclusive and continuous use of a mark for 5 years immediately preceeding the date on which the claim of distinctiveness is asserted  BUT PTO director is not required to accept this - Marks that that have been denied for the PR can still go on the SR until they meet the §2(f) requirements. y Applicant must establish acquired distinctiveness by preponderance of evidence. applicant may « o submit evidence  Amount and manner of advertising. f. Dilutive Marks Page 21 of 63 .

mark is published in official gazette. applicant can appeal to TTAB.  For opposition to succeed on dilution grounds ITU application. PTO conducts initial examination o If acceptable. stick that in there too If PTO says mark entitled to registration. 2. applicant must file statement of use. Page 22 of 63 - - . Service Marks May be subject to all of the same rules and protections that apply to trademarks for goods Mark used for goods and services 2 different marks For mark to be used as SM o Must be used in provision of services. o If no opposition filed for 30 days protection granted If PTO rejects application. opposer¶s mark must have become famous before filing date of application  Considerations y See §43(c) for the six non-exclusive factors E. F. Applicant gets notice of allowance  Within 6 months.Understanding Trademark Law Outline with Casebook Cases §2 permits PTO to refuse registration of mark which would likely cause dilution by blurring or tarnishment under §43(c). Intent to Use Governed by §1(b) ITU applicant must state bona fide intent to use mark in commerce Once ITU application is filed. Use Application based on use must contain all information in §1(a) in LA o If evidence of distinctiveness under §2(f) is necessary to show. 10: Registration Process Two types of registration o Use o Intent to use (ITU) E. not just advertising for services. o Such refusal can only be pursuant to an opposition under §13 ± PTO cannot do it on its own. mark goes on PR and gazette. y Extensions are possible for up to 24 total months.

little LOC. Secondary meaning of P¶s mark was limited to the store. Plaintiff had already spent millions building the brand.Understanding Trademark Law Outline with Casebook Cases Any goods or services listed in NOA not listed in SOU are excluded from extension and ultimately in TM registration Date of effective registration date of ITU application   G. Mrs. Both were famous companies. Who May Register a Mark Entitled o The owner of a mark is entitled to register  Joint owners OK o Person entitled to use mark for ITU application NOT entitled o Licensees (even exclusive) H. Maintaining and Renewing Registrations - - - Page 23 of 63 . o Marshall Field v. K&S Foods (likely confusion based on name)  Nutrasalt was not allowed to use the name as a TM. Opposition Opposition period beings on the date the mark is published in official gazette o Limited to 30 days unless otherwise extended May be field by any person who anticipates being damaged o Opposer must have ³real interest´ in proceeding Opposition for confusingly similar mark under §2(d) may be brought by either « o Owner o Exclusive licensee o Nutrasweet v. Too likely to be confused with Nutrasweet. Fields Cookies (marks not confusing)  Even though Fields was in both marks. H. there was no confusion. TD would not cause a problem. and did not extend to banking services.

another between 9 and 10 years after initial registration. and continuing at successive 10 yeare intervals thereafter. there are two routes to appeal from the decisions of the TTAB or PTO Director. o Federal Circuit Appeal  Questions of Law reviewed de novo o US District Court Appeal  Questions of law = de novo. so they can be a single document. presumed valid under § 7(b) o But still subject to cancellation under § 14  §§14(4). facts = substantial evidence standard 2. Grounds for Cancellation Once TM has been registered on PR. o 2.Understanding Trademark Law Outline with Casebook Cases To maintain a federal TM registration. the owner of the registration must periodically file « o Affidavit of use  Between 5th and 6th years after initial registration.11: Judicial Review Under § 21 of LA. federal TM registration may be renewed for a 10 year period beginning 10 years after the intitial registration.12: Cancellation A.  Failure to file = cancellation of registration « the renewal timeframes for both of these coincide. and another in the year preceding every 10th year thereafter o Renewal application  Under § 9 of LA.(5) mark may be cancelled even after incontestability if « y Generic y Functional y Abandoned y Fraudulent registration Page 24 of 63 .

14. Procedure Petition for cancellation may be filed by any person who believes he or she has been or will be damaged by the registration of a mark on the PR TTAB conducts an inter partes proceeding subject to judicial review by fed circuit o Federal circuit requires petitioner in cancellation proceeding to In court action involving registered mark. Effect of Incontestable Status § 15 of LA permits certain registered marks to become incontestable o Conclusively establishes the validity of a registered mark and registrant¶s ownership and right to use mark in commerce wrt goods/services for which it has become incontestable Exceptions o Conclusive presumptions don¶t apply «  for grounds of cancelling a mark under §§ 14(3) or (5)  To the extent that the use of the registered mark infringes any CL right established by another¶s continuous use of a mark from a date prior to the registration date Incontestable mark CANNOT be cancelled on ground that it violated §2(d) (confusing similarity) Serves as quiet title to marks which have acquired distinctiveness under §2(f) Limits defenses that are available to infringers.13: Incontestability A. o Under §33(b). and 24 permit cancellation of a registered mark likely to cause dilution by blurring or tarnishment under § 43(c) B.Understanding Trademark Law Outline with Casebook Cases If mark on PR for less than 5 years. court may order full or partial cancellation of registration if it determines registration is wholly or partly invalid - - 2. infringer¶s defenses are limited to: Page 25 of 63 - - - . can be cancelled for any bar in § 2 §§2.

Eligible Marks Marks that are ineligible for registration on PR may be registered on SR unless barred by §§ 2(a). estoppel. but can acquire distinctiveness through use.(b). Dollar Park & Fly (incontestability offense AND defensive maneuver) o Incontestability can be used offensively to enjoin others from using the mark. Establishing Incontestability Conditions set forth in §15 o Continuous use for 5 consecutive years from date of registration on principle register o No adverse or pending decisions in court or PTO o Registrant must file affidavit with director within one year at end of any such five year period Obviously. Page 26 of 63 - - .      Park N Fly v. does not work for generic marks 2. the fact that a mark is incontestable does not necessarily establish that it is strong. - - B.14: The Supplemental Register Offers benefits for certain marks that lack the distinctiveness required for PR.(c).Understanding Trademark Law Outline with Casebook Cases Registration/incontestable status was obtained fraudulently Abandonment Registrant using mark to misrepresent source of goods/services Fair use D¶s use of mark was adopted without knowledge of registrant¶s prior use. or (e)(3). Useful purposes o Searchable database to prevent registration of confusingly similar marks A. Nothing in the LA says otherwise! For likelihood of confusion analysis. and used before P¶s registration  D was using the mark first  Mark is used for antitrust  Functionality  Equitable principles (laches.(d). acquiesance) Descriptiveness is NOT grounds for cancellation.

Registration Procedure Mark may be registered on SR after examined for elibigility and upon compliance with §1(a) and (e) of the LA. Cancellation Mark on SR is not published for opposition. o Anyone who thinks they will be damaged by registration of mark on SR can petition to cancel the mark under § 24. cancellation only allowed only if petitioner¶s mark became famous BEFORE the effective filing date of the registration on SR. owner then can pursue PR registration Requirements o use  Mark must be in lawful use in commerce in connection with goods or services for which it is registered o ITU  Eligible for SR after amendment to allege use or statement of use has been filed o FOREIGN registrations NOT eligible - B. but are subject to cancellation If applicant is refused registration on SR. not as good as being on PR. C. o No prima facie evidence of validity. ownership o No constrictive notice o Mark may not become incontestable o No barring of counterfeit good importation Can block confusingly similar or dilutive mark from going on the PR D. 2.15: Domestic Priority Based on Foreign Trademark Registrations A. can use same procedures as if rejected from PR. but will be published in official gazette upon registration. Effect of Supplemental Registration §26 benefits of being on SR. right to use. Marks are not subject to opposition. o If cancellation sought on ground that the registered mark is likely to dilute a famous mark by blurring/tarnishment. International Trademarks Page 27 of 63 - .Understanding Trademark Law Outline with Casebook Cases - SR primarily benefits marks that lack sufficient 2ndary meaning to satisfy §2(f) o Once mark acquires distinctiveness.

D. o Does not provide multinational filing mechanism B. Madrid Agreement and the Madrid Protocol - Effective 11/2/2003 A US national that applies for. National Treatment - - Implemented in §44(b) o Gives nationals in treaty with the US the rights to which any owner of a mark is entitled under the LA . or has applied for US registration may also file a single application filing any countries that are protocol signatories Page 28 of 63 . C. § 44(h) entitles them to effective protection against unfair competition. § 44(g) provides that trade names or commercial names of such parties are protected even without registration o Even if not trade names.Understanding Trademark Law Outline with Casebook Cases - 1883 Paris Convention o Members must give national treatment to each other  Afford TM rights at least equal to those provided to the member¶s own nationals  National of any signatory country who applies to register a TM in one member nation may use that filing to establish an effective filing date in any other member nation where that applicant applies for a registration within the first 6 months of filing. o Implements Art 4 of Paris Convention  Gives foreign nationals a right of priority for 6 months after filing a foreign application even if applicant has not used mark anywhere in the world y Need to qualify under §44(b) y Need a statement of intent  Filing date of foreign application becomes effective date of applicant¶s constructive use of a similar mark in the US o Foreign applicant may not file an infringement action based on any acts commited prior to the date on which the mark becomes registered unless registration is based off use in commerce. Domestic Priority Based on Foreign Registration - §44(d) nationals of trademark treaty partners or countries providing reciprocity may take advantage of an exception to the general rule that a mark can be federally registered only after use in commerce has commenced.

General [nothing good in this section] B.16: State Registration Statutes A.Understanding Trademark Law Outline with Casebook Cases Registration date is the date it is filed at PTO. mark will be published in official gazette and subject to opposition all international extensions last for 10 years o but can be cancelled in first 5 if home country application is  rejected  withdrawn  lapses  cancelled or otherwise terminates o any lapse/termination applies only to the category of goods/service for which the mark lost protection o when mark loses protection in home country. - PART V: State Trademark Registration 2. some courts will not enjoin (or award damages for) the use of the mark by a junior user unless and until the registrant shows likelihood of entry into the junior user¶s trading territory. federal law will preempt o See Sears. also need bona fide intent to use mark in commerce o Will be examined to see if it meets requirements in § 2  if mark meets requirements. Compco. - - Page 29 of 63 . o See Dawn Donut Case. applicant has 3 month grace period to file country by country applications in Protocol nations without losing the priority date that was based on international registration. Federal Preemption Generally o State common law and legislation wrt TM and unfair competition are not preempted by LA  CL trademarks typically protected by § 43(a) If enforcement of state TM law will interfere with rights conferred under LA. Bonito « Although LA makes clear that a federal registrant has nationwide priority. then filed to WIPO  WIPO has 18 months to examine o - Party that obtains an international TM registration from country other than US may request an extension for US protection o Under § 66.

Assignments Under both CL and LA. any assignment of a mark must include a transfer of the accompanying goodwill of the line of business in which the mark is used. TM owner must exercise adequate quality control of licensee¶s use of the mark. o Any attempted to transfer rights in mark without goodwill assignment in gross abandonment of mark o Need to file ITU when switching mark to new owner.18: Assignments and Licenses A.Understanding Trademark Law Outline with Casebook Cases Junior user¶s right to use mark would cease when senior user expanded into the area. 2. o - Page 30 of 63 . B. there was naked licensing and the court stopped from asserting its rights in the mark. §1(b). Tyfield Importers (naked licensing kills a mark)  Because P did not monitor or supervisee its TM licensees. o Barcamerica International v. Licensing Naked licensing o To avoid.

01: Introduction Cause of action for infringement may arise under CL. state statutes. who must present evidence that mark is invalid  Presumption does not apply to marks on SR - Page 31 of 63 . provided that representations are likely to cause confusion. the owner of the mark can bring a claim for unfair competition under §43(a) or state law. or commercial activities are actionalable even where no trademark misuse occurs. When mark is not registered but qualifies as a mark under CL. Valid Ownership of a Mark §7(b) Effect of Certificate of Registration If mark is registered on PR.02 Elements of TM Infringement A federal cause of action for infringement arises under § 32 of LA. affiliation of goods/services. o State courts usually use § 43(a) as measuring stick for infringement Under both federal and state law claims.Understanding Trademark Law Outline with Casebook Cases Ch. false or misleading representations of source. - PART I: TRADEMARK INFRINGEMENT 3. TM infringement has a two step analysis o Is mark valid/enforceable? Plaintiff owner of mark with right of priority over defendant wrt the mark?  Depends on which law is used ± state & federal laws must be considered o Has D used the mark in a way that is likely to cause consumer confusion as to the origin of the goods/services?  Same for both state and federal laws o Also must prove that D¶s activities took place in commerce  Federal law usually interstate  State law can be intrastate A. § 7(b) says « o prima facie evidence of «  Registrant¶s ownership  Exclusive right to use  « wrt the goods/service in the certificate o This shifts the burden to D. 3: Trademark Infringement and Unfair Competition 3. or LA o All 3 sources require senior user to establish that junior user¶s mark create a likelihood of confusion likely to cause a competitive injury to the senior user Under the broadly interpreted unfair competition provisions of the LA.

or just rebut a functionality defense. Likelihood of Confusion 1. Degree of similarity required is greater than the amount required for likelihood of confusion test Trade Dress under § 43(a) o P must also establish that TD is not functional  Might be different in state law. Overview LOC is evaluated from ³ordinary consumer´ pov o Has typical characteristics of buyers for particular good or service at issue Careless consumers o Some say that it favors LOC. Confusion must be probable. not just possible. y Date when began using mark to determine who is the senior user Tacking o OK if marks are slightly different  But the standard is high. varies from state to state y Might have to make PFC. B. but others disregard it. Factors - - - - - - Page 32 of 63 .Understanding Trademark Law Outline with Casebook Cases Effect of incontestable Mark o CONCLUSIVE evidence of «  Validity  Registration  Registrant¶s ownership  Registrant¶s exclusive right to use mark in commerce Common Law Mark OR mark on SR o P has burden of establishing ownership of valid mark  Must prove y Used mark in connection of offering goods/services y Mark is « o Inherently distinctive OR has acquired 2ndary meaning. o It is enough that consumers would belief that P endorsed or was affiliated with goods/services Infringement may also be based on ³initital interest confusion´ (discussed below) 2.

o These cases are fact specific. marketing channels  When goods are in direct competition. and virtually any facts and circumstances relevant to potential for consumer confusion can be considered. Kendall-Jackson Winery (Polaroid factors) y Non LOC because goods were very dissimilar (high end wine v. sales. geographic distribution. Note that evidence of unrelated infringers is irrelevant to a TM infringement analysis.com. market position audience appeal. extensive advertising.org « ) are disregarded Proximity of product/services  Compare content.  Incontestability makes this evidence conclusive subject to the defenses in §33(b) y Degree to which it is distinctive in the marketplace o long and continuous use. top level (. the more likely there is that there will be confusion  Strength measured by « y Degree to which it is inherently distinctive (arbitrary. use on broad variety of products  strength can be undermined by showing that multiple people used the brand at once o Degree of similarity between two marks  The marks have to be considered as a whole  For domain names. degree of similarity necessary to establish a LOC is lower than in case of dissimilar products  Banfi Products v. suggestive) o For federally registered marks. . but it¶s basically variations on the Polaroid factors. §7(b) provides rebuttable presumption that mark is either inherently distinctive or has acquired 2ndary meaning. labeled differently) o Page 33 of 63 . A strong mark is afforded the widest ambit of protection from infringing uses. fanciful. - Factors! o Strength of senior mark  The stronger P¶s mark. Consorzio del Gallo Nero (Polaroid factors)  A slam dunk win for P with the Polaroid factors. o E&J Gallo Winery v. box wine) and proximity of goods (marketed differently.Understanding Trademark Law Outline with Casebook Cases The factors used differ in various circuits. recognition in field of use.

Yoshida (dueling surveys) y After a round of dueling surveys. the court decided the real issue to prove was ³does a substantial majority of the public view Teflon as a brand name?´ o o o D¶s good or bad faith adopting the mark in question  Did D adopt mark with intent on capitalizing on P¶s reputation or goodwill?  Identical marks y Rebuttable presumption of bad faith Quality of D¶s product or service  Used in 2d Circuit. See Proctor & Gamble v. seems to have little importance in other jurisdictions  Can cut both ways y Cheaply-made goods can reduce LOC y But can also hurt P¶s reputation because of association with cheap goods Sophistication of buyers  More sophisticated consumers are presumed to be less easily confused than dumb consumers  Nature of goods relevant to question of sophistication y High end goods probably less confusion y Cheap goods might be more confusion bc consumers aren¶t as careful C.  Often the best LOC evidence  Impact y Isolated/little confusion little impact y Longtime concurrent use with another mark negative impact y Lots of confusion big impact o Surveys of 15-20% confusion usually persuasive  DuPont v. favors junior user. favors senior user. Johnson & Johnson Evidence of actual confusion  Some courts consider the effect of parodies in this factor.  If unlikely that senior user will use mark on other products in different market. consumers are likely to be misled into believing that the senior user¶s goods originate with junior user. o Most commonly arises from junior user¶s success with marketing Page 34 of 63 . Reverse Confusion o o - In reverse confusion.Understanding Trademark Law Outline with Casebook Cases Likelihood that prior owner will bridge the gap  If two markets are similar.

even though no actual sale is finally completed as a result of confusion.Understanding Trademark Law Outline with Casebook Cases Injury to senior user o Erosion of senior user¶s goodwill o Loss of control over senior user¶s reputation o See Dreamwerks Prod. Playboy Enterprises v. Mobil Oil v. Netscape Communications (initial interest confusion) o P won suit against D because D required adult-oriented companies to key-link their ads to the term ³playboy´ and ³playmate´ ± initial interest confusion. 2. Court found there was likelihood that consumers would be inititally confused. Confusion Before or After the Purchasing Decision 1. SKG Studio Where evidence exists to support both forward and reverse confusion. West Coast Entertainment. D would get crucial credibility during the intitial phases of a deal. Initial Interest Confusion Occurs when one party has used another¶s mark in a manner calculated to capture initial consumer attention. Post Sale Confusion - - - - - - Page 35 of 63 . v. the consumer may remain on infringer¶s site and spend money he originally would have given to another provider of goods/services  See Brookfield Communication v. Pegasus Petroleum (initial interest confusion) o D was enjoined from using ³Pegasus´ as a mark because P had used a picture of a flying horse for its oil biz for years. o By time of purchase. there is no longer confusion o Played a significant role in infringement claims arising from unauthorized use of TM in domain names and metatags Harm o Even where a consumer is confused only briefly. Court found actual confusion via expert survey. and this was probably enough right there. senior user may utilize both theories Considerations for Courts Determining Reverse Confusion o Just consider the same facts as regular confusion o Which user to focus on? Courts are split  Senior user threshold for 2ndary meaning should be somewhat lower? D.

usually initial interest confusion Courts remain divided on whether ³trademark use´ exists in these cases o See 1800 Contacts v. did not involve the sale of trademarks keywords triggering pop-up ads o Compare Rescuecom v.  Utah Lighthouse Ministry v. Used § 43(d)(1)(B)(ii) determined that because D had a belief and had reasonable grounds to believe his site was a parody.Understanding Trademark Law Outline with Casebook Cases Typically. E. or alter results of search. then threshold met. o In case of inferior goods. divert or misdirect consumers. Foundation for Apologetic Research (safe harbor saves D) y D¶s site parodying and criticizing P¶s church was not Cybersquatting.com  Court said that adware did not use TM in commerce because it did not use mark to designate origin of goods  But the court declined to show whether use of trademark in adware directory constituted use. Keyword Triggered Advertising Advertisements or sponsored links are not authorized by the actual owner of the TM or SM o This can lead to infringement. Vacheron (BAD LAW!) y Unique appearance of P¶s clock led to secondary meaning. Don¶t use this case. the consumer in post-sale confusion is not the same one who initially made the purchasing decision Harm o Purchaser gets benefit of wearing knock-off and fooling others  Mastercrafters v. a gift of an inferior good could dissuade a purchaser who has never dealt with a brand to not deal with that brand again (cheap knockoff sweater for Christmas makes you not want to buy from Abercrombie anymore after it starts unraveling on New Year¶s). WhenU. and thus legal.  But if commentary site offers goods/services. BUT. 1. Trademark Use This requirement is generally not satisfied when mark is used « o For commentary. this is exactly like Sears/Compco! This reasoning is outdated. Google Page 36 of 63 - - .  No TM use because adware did not alter or interfere with plaintiff¶s website.

Use in Commerce as Jurisdictional Predicate Infringement action under § 32 or § 43(a) must take place ³in commerce´ o Congress may not regulate purely intrastate commerce ³in commerce´ requirement for establishing subject matter jurisdiction for infringement or dilution claim under LA is different from ³use in commerce´ requirement for purposes of registration o Infringement/dilution claim for jurisdiction satisfied when «  Defendant¶s activity takes place in commerce  The defendant¶s conduct involves purley intrastate but nonetheless have a substantial effect on interstate commerce. Naughty Nursery F. y Steele v. Remember! Even when a court decides that trademark use has occurred. o See Playboy Enters. Bulova (LA applies if EFFECT on US commerce) o If D¶s conduct has any effect on US commerce. interfering with owner¶s own offering of goods/services Other courts are reluctant to adopt that theory of TM use where website domain name incorporates TM to site devoted to parodying or criticism. o If not. the LA can be used to stop extraterritorial conduct. this does not mean the use is also infringing or dilutive  2. Welles she WAS the playmate of the year like a bazillion years ago. o See Utah Lighthouse Ministries. Grosse v. D was makingbootleg watches in MX with parts from the US. question turns on whether consumers would be confused Some courts = incorporating a TM into a domain name involves TM use because consumers will mistakenly encounter the unauthorized site. v. Metatags Usually these are deemed to be trademark use But can be fair use if mark fairly and in good faith describes the contents of a website. In this case. Domain Names Question does the mere presence of a trademark in a domain name involve using the mark to indicate a sale of goods and services? o If website itself is considered a good/service. o - - - Page 37 of 63 . 3.Understanding Trademark Law Outline with Casebook Cases Google actually sold the trademarked words and suggested them to competitors who would use them in their own advertising. then yes.

Bulova Watch o Three factor test  Is D a US citizen?  Does the foreign activity having a substantial effect on US commerce?  Whether exercising jurisdiction would interfere with the sovereignty of another nation o Finding in this case not solely based on the fact that D bought some of its watch components in the US. Since there was no substantial effect on US commerce (could not buy goods in US. but also on the fact that the counterfeit watches were coming into the US and damaging Bulova¶s domestic goodwill.  o Registration - PART II: REVERSE PASSING OFF 3. Territorial Limitations Well settled that federal courts may enjoin extraterritorial conduct under LA when necessary to prevent harm to commerce in US. See Steele v. no LA application) o In this case. but represents them as defendant¶s own goods/services o Express v.Understanding Trademark Law Outline with Casebook Cases and they would make their way back to the US and harm P¶s brand name.03: Reverse Passing Off §43(a) applies to reverse passing off o Requirements  D misbranded P¶s goods  Such misbranding was ³material´  Defendant caused plaintiff¶s goods to enter interstate commerce  Defendant¶s misbranding caused a likelihood of confusion Reverse passing off o Occurs when a defendant offers the public goods or services produced by another person. site was in Japanese « ). Japanese D operated a website with teen girl clothes with P¶s last name as their mark. McBee v. the LA did not apply. Delica (if no substantial effect on US commerce. Internet activities usually are considered ³in commerce´ has applicant made qualifying use that congress can regulate? G. implied  Express defendant places its own origin indicator on goods produced by someone else  Implied where defendant omits plaintiff¶s origin indicator but does not substitute its own o Modification/relabeling Page 38 of 63 - .

y Minor modifications likely there is liability y Substantial modification new product. Gillette (misleading visual aids can be literally false) Page 39 of 63 . which is literally false.  must be unambiguous.Understanding Trademark Law Outline with Casebook Cases RPO may occur when D modifies another¶s product and relabels it as its own. It was really pasteurized. Tropicana (literal falsity) y Tropicana claimed the juice was right from the orange. liability less likely  - W/R/T creative goods o SCOTUS rejected application of § 43(a) to misattribution of creative or expressive works in Dastar v. but need not be explicit. concept. not to author of idea. Pfizer (bad scientic evidence falsity) y Listerine v.04: Federal Law of False Advertising §43(a)(1)(B) permits plaintiff to bring a claim for false advertising o Requirements P must prove by preponderance of evidence that «  D has made false or misleading statements about his own product (or another¶s) y False statements? o Literally false  court can enjoin continued assertion of claim without reference to advertisement¶s impact on public  Coca Cola v. Implicit falsity the blue stream of Listerine was equal to dental floss. Flossing case. No need to reference the advertisement¶s impact on the buying public before relief is granted. 20th Century Fox. Court found literal falsity that Listerine just as effective because scientific study used for claim was flawed.  Origin refers to producer of tangible goods.  Implicit literal falsity y Court asks will consumer unavoidably receive false message based from advertising on its face? y Schick Manufacturing v. or communication embodied in goods.  McNeil v. PART III: FEDERAL LAW OF FALSE ADVERTISING 3.

a substantial population of the intended audience y Polar Corp v. There seems to be a large element that Coors is getting what it deserves b/c Budweiser has shown that its beer isn¶t ³Rocky Mountain Brewed´. Coca Cola (misleading as to quality of competitor) o Declaratory judgment action ± bear throwing away coke bottle case. o Requirements  Commercial speech y Proctor and Gamble v. it was false. o o o  There is actual deception. or a tendency to deceive.Understanding Trademark Law Outline with Casebook Cases Hair growing case. Amway (commercial speech = no protection from 1st amendment) Page 40 of 63 . Here. Likely to confuse or deceive court must see that public was mislead  Plaintiff needs to show that there is a causal link between the challenged statements and the injury. Anheuser-Busch (there is no falsity. 201 in the HB for a detailed explanation of this. Court found for D because P implied that coke was impure. there were no literal falsehoods because Coors light IS diluted and travels to be bottled. See p. Since the picture showed D¶s razor cutting hair more effectively that it actually was. potential for harm if injunction not granted. P couldn¶t prove any implied falsehoods because of faulty survey and lack of extrinsic evidence. and was not even a reasonable approximation of how the product worked.    Deception is material to influencing purchasing decisions The advertised goods traveled in interstate commerce There is a likelihood of injury to plaintiff y Loss of sales or good will - Misreprsentations are actionable under §43(a)(1)(B) only if they take place in commercial advertising or promotion. Soda industry relied heavily on perceptions of purity. Coors Brewing v. so P loses!)  Beer train case.

P said it works more easily. a factfinder could reasonably conclude that P claimed its product was superior to bleach. False Advertising . Consumers might have thought they were buying detergent with same powers as Clorox. (3) whether there is economic motivation for speech By a defendant who is in commercial competition with plaintiff For purpose of influencing consumers to buy defendant¶s goods/services Must be disseminated sufficiently to the relevant purchasing public to constitute advertising or promotion within that industry. Clorox Puerto Rico v.Autodesk v. Commercial speech is not afforded the full protection of first amendment. The statements were not puffery because they were specific and measurable (best whitening) PART IV: DILUTION 3.05: The Concept of Trademark Dilution Antidilution laws protect the trademark owner¶s investment in the goodwill embodied in a mark o Dilution the gradual undermining of a mark¶s unique selling power  Courts have applied the doctrine wearily. which could have less weight in the minds of consumers (puffery). 3 prong ³Bolger factor´ test = (1) whether communication was advertisement. (2) whether the communication refers to a specific product or service. and can be false advertising. false advertising) o P and D sue each other for false advertising. Dassault Systemes (puffery v. and better at sharing. to not swallow up TM law Confusion not necessary o But the senior and junior users¶ use of the marks must trigger some sort of mental association in the mind of the consumer o Dilution will ordinarily only be found if there is at least some subliminal connection in a buyer¶s mind about the marks Schecter Page 41 of 63 - - . Amway o    - Puffery v. Proctor and Gamble (difference between puffery and falsity) o D¶s product was a color enhancer. efficiently. the advertisement may have been misleading because product was color enhancer. These are specific measurable claims. not a whitener. y Promotions need not be in classic advertising campaigns o See Proctor and Gamble v.Understanding Trademark Law Outline with Casebook Cases Satanism case. Also. On TV ads. Literal falsity detergent alone does not whiten better than bleach. D just gave vague claims of superiority. not whitener.

07: The Federal Trademark Dilution Act A. Elements of Federal Dilution Claim - § 43(c) o Plaintiff must establish  Plaintiff owns mark that is famous AND distinctive Page 42 of 63 . Perryman (no dilution when mark not used in conjunction with other products) o Case was more about the fact that D sold non-beanie baby toys on the ³bargainbeanies´ site was false advertising. and that Ty is probably attempting to fight off a genericide of ³Beanie. Posner¶s rationale for granting TM owners protection against unauthorized uses that are both non-competing and non confusing. Posner noted that a secondary market is just fine. History - - - §43(c) was added in 1995 o Purpose was to protect famous TM from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it.´ 3. MTD (tarnishment) y P makes fun of D¶s logo with a wimpy frightened deer. even in absence of likelihood of confusion B. o Consumer search costs will rise o Tarnishment can become a problem o Stop free riding Ty v. with the end result that the public will associate the lack of quality or lack of prestige in the defendant¶s goods with the plaintiff¶s unrelated goods  Deere v. or is portrayed in an unwholesome or unsavory context. but the court doesn¶t call it that. WRT dilution. P lost on infringement because there is no LOC nobody would believe P authorized the use.Understanding Trademark Law Outline with Casebook Cases Argued that unfair competition law should serve the broader goal of preserving the uniqueness of a trademark by protecting the TM owner against the ³gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods´ o - Tarnishment o Occurs when Plaintiff¶s mark is linked to products of shoddy quality. Sort of a tarnishment action.

E. and no actual injury C. Toyota Motor (no famousness no dilution remedy) Page 43 of 63 .Understanding Trademark Law Outline with Casebook Cases After Plaintiff¶s mark became famous. o TDRA¶s exemptions from dilution liability include  Fair use y Nominative or descriptive  Use that was not as a source designator D. § 43(c) only protects marks that are BOTH famous and distinctive 1. SEE THE STATUTE. Trade Dress and Nontraditional Marks - Courts have held that TD and other nontraditional marks can qualify as famous and eligible for dilution protection In the case of dilution claims involving unregistered TD. the TDRA added (c)(4). Distinctive and Famous Marks - Remember. Fame - §43(c)(2)(A) mark is famous if it is widely recognized by the general consuming public of the US as a designation of source of the foods or services of the mark¶s owner o Repudiates the language of ³niche fame´ o Also provides a non-exhaustive list of factors that a court MAY consider to determine the famousness of a mark. no competition. Defendant commenced use of a mark or trade name in commerce that is likely to cause dilution of the famous mark either by blurring or by tarnishment  - Liability may arise even where there is no actual or likely confusion. Trademark Use - TDRA appears to permit dilution liability to be premised on use of a mark other than as an indication of origin for the defendant¶s goods or services. which expressly requires dilution plaintiff to prove that o TD is famous  Mead Data v. Distinctiveness - Most circuits interpreted this as a requirement that the mark be EITHER o Inherently distinctive o Descriptive with 2ndary meaning 2.

o §43(c) allows injunctive relief against unauthorized use that is likely to cause dilution by blurring or dilution by tarnishment  Actual dilution is too high a burden for TM holders o In addressing likelihood of confusion. 13(a). and 24 reflecting the adoption of the likelihood of dilution standard and the clarification that dilution includes both blurring and tarnishment o o Page 44 of 63 . a court can consider ³all relevant factors. Likelihood of Dilution 1. 14. See below.  Degree of similarity  Degree of distinctiveness of famous mark  Owner of famous mark¶s substantial use of mark  Degree of recognition of famous mark  Whether the user of mark intended to create association with famous mark  Any actual association with famous mark o The statute also made conforming amendments to §§2(f). taken as a whole.Understanding Trademark Law Outline with Casebook Cases Lexis/Lexus case. but will probably address all of them. therefore there can be no dilution remedy. then the owner must prove that the unregistered component of the TD. The FTDA and Moseley Decision Moseley v. it is not famous.´ and specifically notes « See § 43(c)(2)(B). TD is not functional If the unregistered TD includes any registered marks. Victoria¶s Secret Catalog o Court ruled that 1995 version of §43(c) required by TM owner to establish actual dilution rather than likelihood of dilution. o But this got overruled. courts are not required to address any of these factors. 2. Since only one percent of the population (attorneys/accountants) knew what Lexis is. Similarity The degree of similarity necessary to support a dilution claim is greater than that required to establish a likelihood of confusion o Similarity must be great enough even that a noncompeting use is harmful to the senior user G. Actual Dilution v. Likelihood of Dilution under TDRA In 2006 TDRA. congress overruled Moseley. is famous ³separate and apart from´ the fame of the registered marks y F.

Starbucks v. the 4th Cir. Evidence that Nikepal¶s customers associated Nikepal with Nike. rather a satire of the famous mark  The brunt of the joke becomes more famous  But a poorly done parody could be dilutive consumers cannot tell between parody and source designator  The most successful parodies are likely to involve dissimilar marks. Haute Diggity Dog o Because D was using mark as source indicator for its own goods. Charbucks case. even though not confused. the court seemingly went out of control and said that a truck with Hershey bar looking couch could dilute Hershey¶s TD even though no LOC. Hershey v. nothing special here. Wolfe¶s Borough Coffee (dilution does not require SUBSTANTIAL similarity) o Mr. District court erred in deciding marks had to be substantially similar for blurring analysis ± only have to be similar. No tarnishment because ³charbucks´ referred to the positive aspects of Starbucks¶ over-roasted coffee. - - - o A successful parody communicates that it is NOT the famous mark. everything favored Nike. Remanded for further dermination of blurring.Understanding Trademark Law Outline with Casebook Cases 3. How is this blurring? Hard to justify this. o But. it was not eligible for the ³fair use´ exception under the 2006 version of § 43(c)(4)(A). Court just marched through the dilution factors. No parody exception because D used Charbucks as a source identifier. Judicial Interpretations a. Likelihood of Dilution by Blurring Louis Vuitton v. held that the parodic context was relevant to its analysis of the six statutory blurring factors  Relevant to « y Intent to associate y Actual association Nike v. Art Van Furniture (extreme example of dilution) o Here. Nikepal (dilution by blurring) o Just what Schecter had in mind. because the dissimilarity is necessary to convey the parodic message - Factor analysis o Degree of similarity  Courts have required marks to be ³nearly identical´ under §43(c) to support dilution claim Page 45 of 63 .

had to identify it. H. it hs been held that this factor does not necessarily favor the plaintiff.  Even when junior user intends to create an association with a famous mark. Likelihood of Dilution by Tarnishment The few courts that have considered post-TDRA claims have not departed significantly from their pre TDRA approaches o Focus entirely on nature of jr user¶s goods o Most inclined to find tarnishment where they perceive those goods to be unwholesome. Exceptions 2006 TDRA revised §43(c)¶s fair use exception to dilution liability. Actual association  Courts have given great weight to consumer survey evidence. Moseley. y In V Secret v. Moseley II (presumption for sexy marks) y Created a rebuttable presumption that FTDA creates a rebuttable presumption or strong inference that a new mark used to sell sex related products is likely o tarnish a famous mark if there is a clear semantic association between the two. offensive. y See Mr.Understanding Trademark Law Outline with Casebook Cases Starbucks and Mr. while leaving noncommercial use and news reporting exceptions intact. one complainer was sufficient y y y b. Victor¶s Little Secret too similar Nike v. Coffee was dark. o o Page 46 of 63 . the more important question is the degree to which consumers actually associate the two marks. Charbucks. Charbucks different enough Victoria¶s Secret v. Charbucks. No indication that consumers associated Charbucks with low quality  V Secret Catalog v. or poor in quality  See Mr. Nikepal o Runs counter to general trend of nearly identical standard  Held Nike and Nikepal were nearly identical because y Dominant feature of each mark was Nike y Survey evidence associated between two marks  Looks like court improperly merged two blurring factors ± degree of similarity and extent of actual confusion Intent to Create Association  Even if jr user didn¶t intent to create an association.

o Exception does not apply if person accused of dilution uses the mark as a source indicator for their own goods. 2. Remedies - - Remedies available to P¶s under § 43(c) are more limited than those under § 32 or § 43(a). costs and attorney fees under §35(a). particularly where D¶s news reporting has commercial aspects. only likelihood of dilution necessary. o Occurs when  Defendant uses plaintiff¶s TM to describe or identify P¶s goods or services  P¶s mark is the only way to describe goods/services Fair use exception applies to traditional noncomparative advertising. Effective Date of TDRA - Between 1995. I. need to have shown actual dilution. P is entitled only to injunctive relief and importation of goods. This applies to the new § 43 too. and also to parodies or criticisms of famous works. 3. the enactment of the FTDA and before 2006. After 2006 TDRA. J. News Reporting/Commentary Issues may arise regarding scope. o Old §43 Any speech that does not propose a commercial transaction. Fair Use Nominative fair uses are non-dilutive as a matter of law. Page 47 of 63 . This is really just a Catch-all for any speech that was protected by first amendment but fell outside of FTDA¶s excepts for comparative advertising and news reporting o See Barbie Girl case.Understanding Trademark Law Outline with Casebook Cases 1. and order for destroying articles under §36. o Wilfull infringement Under §43(c)(5) the owner of a famous mark may recover damages/profits. o Unless defendant¶s dilutive activity is willful. Noncommercial Use §43(c)(4)(B) Noncommercial use use that consists of entirely noncommercial or fully constitutionally protected speech.

Understanding Trademark Law Outline with Casebook Cases K. Federal Registration as Dilution Defense § 43(c)(6) Complicated stuff. Look in this part of the book if it gets on the test. Fuck this though.

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Understanding Trademark Law Outline with Casebook Cases

PARTY V: CYBERSQUATTING
3.08: Anticybersquatting Consumer Protection Act (ACPA) § 43(d) Cybersquatting o Occurs when person other than the trademark holder registers the domain name of a well-known trademark and then attempts to profit from this by either  Ransoming the domain name back to the TM holder or  Using the domain name to divert business from the TM holder to the domain name holder A. Elements of a Cybersquatting Claim §43(d) gives TM owner cause of action against anyone who, with a bad faith intent to profit from the mark, registers, traffics in, or uses a domain name that is o Identical or confusingly similar to a mark that was distinctive at the time the defendant¶s domain name was registered o Is identical or confusingly similar to, or dilutive of, a mark that was famous at the time the defendant¶s domain name was registered . TM owner asserting claim under ACPA must establish « o Valid TM subject to protection o Mark is distinctive or famous o Defendant¶s domain name is identical or confusingly similar to or dilutive of owner¶s mark  Confusingly similar? y Looking at domain name only o Defendant used, registered, or trafficked domain name o Bad faith intent to profit  Courts consider the factors in §43(d)(1)(B)(i). Check the statute if this is on the test!  Sporty¶s Farm v. Sportsman¶s Market (bad faith intent to profit) y Sporty¶s ³farm´ acquires www.sportys.com, and the factors point towards Cybersquatting. Sporty¶s not in same line of business as Sportsman¶s.  Southern Grouts & Mortars v. 3M (no intent to profit) y 3M acquired the ³diamond brite´ domain name when it acquired an electric sign company. It stopped using the mark. Not cyberquatting because not trying to extort domain name or divert traffic. The Orange Bowl Committee v. Front and Center Tickets (bad faith? Really?) Page 49 of 63

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Understanding Trademark Law Outline with Casebook Cases This case wasn¶t clear cut. Need to show bad faith, and this wasn¶t exactly evident here. Secondary markets are OK. Seemed like a nominative use. Courts usually don¶t find gripe sites in bad faith. y Lucas Nursery and Landscaping v. Grosse (gripe site) o SJ for Grosse Gripe sites weren¶t the behavior that congress was worried about when it enated the ACPA. This case has been influential among gripe-site cases. Safe harbor provision § 43(d)(1)(B)(ii) y Bad faith may not be found where D believed and had reasonable grounds to believe the domain name was fair use and otherwise lawful y Offer to sell domain name, without more, is not bad faith y  

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Liability under §43(d) can only be imposed on the registrant or authorized licensee of the registrant. Southern Co. v. Dauben (no harm? No injunction for Cybersquatting) o On appeal, court said that since P failed to show irreparable harm (he showed confusion), there was no Cybersquatting. E thinks this is evidence of the skepticism of the full enforcement of the ACPA. B. In Rem Jurisdiction

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Requirements o Authorized only if court finds  Court cannot obtain in personam jurisdiction over the party in violation of § 43(d) OR  Through due diligence was unable to find the person liable o NO requirement of bad faith for in rem jurisdiction.  Harrods Limited v. 60 Internet Domain Names (in rem actions) y UK/SA store confusion case. For an in rem action, you can bring any claim from part 1 of the ACPA. All claims are good to go. §43(d)(2)(C) o Situs of domain name. check statute if this comes up. C. Personal Names

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§47 any person who registers a domain name that consists of a name of another living person, or name substantially and confusingly similar thereto, without that person¶s consent, with intent to profit by selling domain name for financial gain, shall be liable to that party in civil action. o Estate of Frank Gorshin v. Martin (bad faith Cybersquatting) Page 50 of 63

o If UDRP panel orders cancellation or transfer of domain name. court may order forfeiture or cancellation of domain name. A party dissastisfied with outcome of UDRP proceeding may pursue a separate legal action in court.  Including statutory damages 3.  - - - Page 51 of 63 .Understanding Trademark Law Outline with Casebook Cases Riddler case. but court still had to apply the 3 UDRP factors.com. or transferred to owner of mark. simply Cybersquatting. a non profit NGO that administers the domain name registration system. E thinks Martin might have had some laches or estoppels argument. o These are the exclusive remedies of § 43(d)(2) o Under § 43(d)(1). o List of factors. full array of remedies under LA is available. Did not respond to claim. Here. ACPA Remedies When §43(d) is established. D. Look them up in textbook for test. there is tons of evidence of bad faith ± P wanted the site shut down during his life. Moakely (obvious Cybersquatting) o Disgruntled former employee registers 1-800mattress. Slam dunk for P.09: Alternative Forums for Domain Name Dispute The main mechanism for resolving domain name disputes outside of LA is the Uniform Domain Name Dispute Resolution Policy under ICANN. although D says otherwise. Paragraph 4 of the UDRP standards for arbitration. appeal must be made within 10 days Dial A Mattress v.

to cancel registered domain names and cease registering new domain names which allegedly infringe upon P¶s mark. and D did not have constructive or actual knowledge of infringement. Since there was no evidence that D induced physicians to do this. NSI  No contributory infringement because registrar did not control and monitor the infringing activities o Tiffany v. and thus unprotectable. it satisfied its requirement under Inwood. Internet related activities o Lockheed Martin v. Page 52 of 63 - . - - Willful blindness o Person must suspect wrongdoing and fail to investigate o Cannot be premised on mere failure to take reasonable precautions o See Hard Rock no wilfull blindness o Tiffany v. no liability.  Inwood v. eBay  No contributory liability because eBay didn¶t know which items were being infringed. Contributory Liability Contributory liability arises under §§32 or 43(a) when defendant either « o Actively induces another to infringe  Franchisor¶s liability for independent acts of franchisees only if intentionally infringe or knowingly participated in infringement o Continues to supply a product to a party that it knows or has reason to know is using the product in an infringing activity. D took infringing vendors off the market.10: Contributory and Vicarious Liabilty A. Note also the appearance of the pills was functional. Network Solutions (court distinguishes SERVICE from PRODUCT) y P tried to force D. Ives (no inducement = no contributory liability) y P sued D because physicians put P¶s generic drug into D¶s bottles. Court found for D because when told of infringement. P had to protect it¶s own mark to some extent. Court found for D because D did not supply a product with which to facilitate infringement. eBay (no contributory negligence if no willful blindness)  P claimed D was contributorily liable for TM infringement because there were counterfeit goods auctioned on D¶s site.Understanding Trademark Law Outline with Casebook Cases PART VI: SECONDARY LIABILITY 3. Because it ceased to service customers it knew was infringing. D cannot be held liabile for infringements it doesn¶t know about.  Lockheed Martin v. a domain hosting service.

Court did not dismiss because P made good showing that D intentionally induced others to infringe (contributory liability). which are often misspellings or variations of protected marks. and that D had aspects of control over the companies (vicarious liability). a flea market operator. Concession Services International (no vicarious liability when principal unaware of infringement) o P tried to hold D. Google (contributory AND vicarious liability) o P claimed D is secondarily liabile for TM infringement because they help ³parking companies´ pick the best ads to put on their domain names. Court held for D because there was not enough evidence that D knew the infringement was happening. Vicarious Liability Courts generally apply common law principles of agency in determining whether and under what circumstances to impose vicarious liability understate TM law and under the LA o Actual or apparent partnership o Ability to bind other party o Exercise joint ownership or control Hard Rock Café Licensing v. No evidence that D was willfully blind towards the problem. Also note that Court relied on common law of torts for contributory liability Vulcan Golf v.Understanding Trademark Law Outline with Casebook Cases B. liable for one of its vendors who was making bootleg HRC shirts. - - Page 53 of 63 .

Wal-Mart (good parody = no LOC)  Wal-ocaust case There was no likelihood of confusion in this case ± consumers will not think Walmart is behind this. tarnishment rejected.Understanding Trademark Law Outline with Casebook Cases PART VII: DEFENSES 3. Infringement and Unfair Competition In context of infringement and unfair competition claims. Lots of other ways to do this. Parody wasn¶t targeting company. or whether considerations of the issues should be undertaken only if a LOC is found likely to exist. Commercial Parodies 1. established for the sole purpose of promoting a competing product risk the possibility that consumers will come to attribute unfavorable characteristics to a mark and ultimately associate the mark with inferior goods and services Page 54 of 63 - o . A. and reflect courts¶ widely disparate levels of tolerance for parody o Deere & Co. o 8th circuit failure to separate parody analysis from standard LOC analysis is reversible error. Smith v. Dilution The results in dilution cases are inconsistent. 2. just making a message. Would people really be confused by this? Tarnishment seems to be the bigger issue here. v. but court said «  D diluted P¶s mark because ³alterations of that sort.11: First Amendment Considerations Courts disagree on whether first amendment issues should be integrated with the LOC analysis. parody is generally not treated as an affirmative defense. Novak (bad parody = confusion)  Parody of insurance company for nuclear holocaust insurance. o Serves as additional consideration in LOC analysis  Weighs against a finding that consumers are likely to be confused What makes a good parody? o Comments on author¶s work o Portrays message that this is NOT the original and thereby lessens confusion  Parody that is too subtle may give rise to liability  Good parody is obvious and heavy handed o Mutual of Omaha v. MTD Products no dilution claim.

Haute Diggity Dog B. Jim Henson Productions tarnishment claim  3 distinctions between this case and Deere y No negative association with P¶s mark y No direct competition y D¶s parody was part of the product itself - As revised in 2006. and Brennan all see a political side to this where they think the speech deserves some kind of 1st amendment protection. SCOTUS said because commercial use. Infringement and Unfair Competition - Most courts have employed a balancing test that weighs the public interest in free expression against the public interest in avoiding consumer confusion o Courts are generally willing to tolerate some degree of confusion in order to avoid chilling protected speech o San Francisco Arts & Athletics v. including use in connection with identifying and parodying. Strip club similar in look and feel have at Page 55 of 63 - . Grimaldi y The LA should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression y Two prong test o Is artistic relevance above zero?  ESS Entertainment 2000 v. criticizing. Noncommercial Expression 1. or commenting upon the famous mark owner or the goods or services of the famous mark owner o DOES NOT APPLY to a commercial parody that uses the famous mark as an indicator of source for D¶s product  See Louis Vuitton v.  Rogers v. Kozinski. other than as a designation of source for D¶s own goods or services.Understanding Trademark Law Outline with Casebook Cases Fact that parties competitors was critical  o Hormel Foods v. Eisenberg. Rock Star Videos (artistic relevance > 0) y Playpen case. federal dilution statute now exempts « o § 43(c)(3)(C) Any non commercial use o § 43(c)(3)(A)(ii) Any fair use. Have to express some other way. no 1st amendment protection. Only way to create parody of LA is to include buildings that constitute it. USOC (no free speech if commercial use)  USOC has unique rights in ³Olympics´ mark. Only way to defend is via 1st amendment.

no 1st amendment protection. Political Speech Political speech is the one arena in which courts have consistently subordinated the rights of TM owners in the interest of free expression. y Here. regardless whether the claim is infringement/unfair competition or dilution Page 56 of 63 o . Since RP had no artistic relevance to song title.) in favor of concluding that titles of literary works (song lyrics) are not source designating. parody. Grimaldi standard). focuses on noncommercial aspect of dilution claim. Dilution Application of dilution laws to traditional expression has an even greater potential to chill protected speech than their application to TM infringement o Dilution can be established without any LOC o See Louis Vuitton v. Haute Diggity Dog  Fourth circuit gave significant weight to parodic context in evaluating the likelihood of dilution by blurring C. weird reasoning. Nothing in game indicates that consumers would believe that ESS produced the game.Understanding Trademark Law Outline with Casebook Cases least some artistic relevance. therefore protected by 1st amendment. Does it explicitly mislead as to the source or contents of a work?  Mattel Inc. Modification of ESS¶s TM is not explicitly misleading. (Rogers v. LaFace (artistic relevance standard) y Rosa Parks song case.  Parks v.´ Instead. but trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view. Kozinski sidesteps a lot of obvious arguments (nominative fair use. Correct result. MCA Records y First amendment may offer little protection for a competitor who labels its commercial good with confusingly similar mark. v. 2. Celebrities have automatic trademark-like rights in their name.

Political speech gets Nader off the hook. o Court applied the LOC factors. including acts of commission or omission. Cessation of Use - Abandonment under section 1 of the LA definition may occur through express abandonment (owner¶s cancellation of mark) or through cessation with intent not to resume use. hats. Noncommercial ± not necessarily nonmonetary code for ³entitled to heightened protection under the 1st amendment) Isn¶t Nader just free-riding? No realistic likelihood of confusion. Novak o Court enjoined defendant from distributing shirts. but maybe the overtly political content makes the LOC analysis skewed. cause the mark to become generic 1. Non use by itself constitute abandonment o Common law requires that cessation of use be coupled with an intent to abandon Mark enters PD once abandoned Once registration has been cancelled due to abandonment. Nader 2000 Primary Committee (political speech protected) o Priceless.Understanding Trademark Law Outline with Casebook Cases - MasterCard v.12: Affirmative Defenses A. 3. or  When the conduct of the mark¶s owner. etc. D. Abandonment - Both a defense to infringement and a ground for cancellation of a federal registration. giving significant weight to survey evidence of confusion o Court rejected first amendment defense ± rights of TM owner did not yield to 1st Amendment when adequate alternative avenues of communication exist. Expressive Merchandise - Mutual of Omaha v. the mark must be registered anew in order to enjoy the rights appurtenant to registration § 45 of LA o Mark is deemed abandoned when «  Bona fide use in the ordinary course of trade has been discontinued with intent not to resume such use. o Intent not to resume?  Inferred from circumstances y Party challenging mark must establish owner is not using and has no intention to resume in reasonably foreseeable future  3 consecutive years of nonuse PFE of abandonment Page 57 of 63 .

Punchgini. mark abandoned) o Amos and Andy case. Other Causes of Abandonment - Mere failures to pursue infringers does not by itself constitute abandonment o But this weakening can cause the mark to become generic a. An intent to not to use was inferred by not airing the A&A tv show for over 20 years. 2. o Demonstrate reasonable grounds for suspending use of mark o Produce evidence of intent to resume within reasonably foreseeable future  Reasonably foreseeable? depends on industry and circumstances of the case  2d Cir.Understanding Trademark Law Outline with Casebook Cases Shifts the burden of production to owner owner needs only to show evidence to rebut abandonment. b. y - Silverman v. There must be an intent to resume within the reasonably near future. has held that intent not to resume must exist during the three year period of non use. Nominal use. like battling infringers in court and licensing. Assignment in Gross - A mark is deemed abandoned when it is transferred separately from the goodwill it reprsents o Mark cannot be sold or otherwise assigned apart form the business with which it is associated Page 58 of 63 . See ITC v. Question for courts o Did licensensor IN FACT exercise control?  Ability to control is not that important.  Sporadic use not good enough o Must produce more than conclusory testimony or affidavits of intent. Naked Licensing - - Occurs when a trademark owner fails to exercise reasonable control over use of a mark by licensee such that the presence of the mark on licensee¶s goods or services misrepresents their connection with the trademark owner since the mark no longer identifies goods or services that are under the control of the owner and cannot provide a meaningful assurance of quality. which is non public use. CBS (intent not to resume inferred. does not suffice.

who only made women¶s boots under the mark. there is no TM infringement. Inferiority is expected in 2nd hand goods. or their geographic origin. Clark and Freeman v. and sell those goods under their original trademark o Exceptions  Does not apply when reseller tricks consumer into thinking it is one of manufacturer¶s franchisees  Does not apply when goods are sold that are materially different from the trademark owner has authorized for sale  Does not apply when repackaging does not have proper notice y Champion Spark Plugs v. and lost rights because of the assignment in gross. Any benefit that refurbisher gets is fine as long as the public is not deceived. offer. otherwise than a mark. under which « o the use of the name. or device charged to be an infringement is a use. of a term or service which is descriptive of an used fairly and in good faith only to describe the goods or services of such pary. Heartland (assignment in gross kills TM) o P had bought the ³Heartland´ mark from Sears. First Sale Doctrine First sale doctrine permits a purchaser of lawfully TM¶d goods to display. B. F. it could not enjoin others from using the mark.Understanding Trademark Law Outline with Casebook Cases Assignment of mark typically NOT assignment in gross if o Accompanied with assignment of physical assets used in the associate line of business OR o Assignee is producing a product or providing a service which is substantially similar to that of the assignor and where the consumers will not be deceived or harmed. Since P used the mark on lots of other shit. Requirements o D must prove «  Its use of P¶s mark was not as a TM or SM Page 59 of 63 - - - . Classic Fair Use §33(b)(4) provides an affirmative fair use defense to TM infringement in the case of an incontestable mark. term. Sanders (TM for 2nd hand goods) o As long as the refurbished goods are clearly marked as such. not to describe or identify P¶s services. Applies when D has used P¶s TM only to describe D¶s own goods or services.

Brown Group (fair use) o ³looks like a pump. but to TD as well o Car Freshener v. Lasting Impression  The plaintiff has a burden of establishing a LOC. or to describe the defendant¶s relationship to the TM owner The FU defense is not only limited to word marks. P did not meet their burden for LOC. Fair use permits others to use a protected mark to describe aspects of their own goods. o KP Permanent Makeup v. S.   - Fair use has been held to apply where D¶s use of another¶s mark in an index or catalog to indicate the source of its items. even though the D¶s ultimate goal is to describe their own goods/services.´ Court found this was just describing P¶s own product. Nominative Fair Use - - - - Not grounded specifically in §33(b)(4) o Applies when D has used P¶s TM to describe or identify P¶s goods and services. feels like a sneaker.Understanding Trademark Law Outline with Casebook Cases It was using the mark fairly and in good faith It is using the mark only to describe its goods and services y US Shoe v. not trying to confuse the source. Defense is most likely to work when defending against a descriptive mark Defendant can prevail on FU claim without being required to prove an absence of likelihood of confusion.  SCOTUS recognized that some confusion must be tolderated in order to preserve the rights of competitors to describe their goods and services accurately y But the degree of confusion was not necessarily irrelevant to the determination of whether D¶s use was fair within § 33(b) FU defense has been recognized under common law and §43(a) applies to both registered and unregistered marks. D must establish « Page 60 of 63 - .  Typically occurs when P¶s mark is the only way to describe a particular subject matter. and an affirmative defense such as FU should have legal significance independent of any such challenge to the strength of P¶s PFC. Requirements of Nominative Fair Use o When D raises the defense. Johnson (descriptive fair use)  Since pine tree shape describes the smell.C. D did not infringe on the shape of P¶s TM¶d car scenter. provided it is in GF and not as use as a mark. G.

Kozinski says referring the NKOTB in that manner was nominative fair use because (1) product/service was not readily identifiable w/o reference to TM.´ Same reasoning as NKOTB case. o Kassbaum v. Court more concerned with public policy to promote competition than the law. Steppenwolf Productions (nominative fair use)  ³former member of Steppenwolf. you¶ll love us.Understanding Trademark Law Outline with Casebook Cases P¶s goods/services at issue are not readily identifiable w/o use of P¶s TM D used only as much of the mark as was reasonably necessary to identify P¶s goods/services D did nothing that would. state TM or unfair competition law might be unenforceable because they are preempted by federal patent or copyright law.´ This conduct is OK under LA as long as there is no confusion as to source or sponsorship. Boston Athletic Association o New Kids on the Block v. so no problem. suggest sponsorship or endorsement by P. The wallpaper makes it looks like she was affiliated with Playboy. Comparative Advertising Smith v. Chanel (comparative advertising is OK) o P sells knock off Chanel. not just possible! The express exemptions in the federal dilution statute include an fair use in the context of comparative advertising I. Says ³if you like Chanel. o Clash with patent law Page 61 of 63 . Welles (nominative fair use)  Old playmate case. Nabisco (comparative advertising is OK) o Werther¶s candy case. in conjunction with the mark. News America Publishing (nominative fair use)  P objected to their name being used in a phone poll. Court rejected arguments of genericide or dilution.    - Cases about Nominative Fair Use o Playboy Enterprises v. Federal Preemption - - In certain cases. Confusion must be probable. Fair use to say playmate of the year. August Storck v. H. (2) only so uch of the mark is used to reasonably identify the product/service. but not to put it on the wallpaper. (3) D did nothing to identify sponsorship/endorsement. Very little risk of confusion. o See WCVB TV v. Competition is the focus. Just like Chanel case.

Expense.(c). (no federal IP protection unless provided by statute) o Unless an IP right is enumerated by statute via congress. o False advertising claim under §43(a) not heard in federal court because fed court did not have jurisdiction. - Cheney Bros. 11th Amendment - SCOTUS interprets 11th amendment to preclude federal court jurisdiction in suit brought against a state o Two exceptions  To enforce 14th Amendment  When State waives sovereign immunity y See College Savings Bank v. Doris Silk Corp. not the creative content the goods embody. State did not disclaim immunity.The most predominant and most traditional remedy for violations of TM and unfair competition law . It is inconsistent with the limited times provision for IP protection in the constitution.Understanding Trademark Law Outline with Casebook Cases Sears v. Statute of Limitations - LA has no SOL 3.  o Clash with copyright law  Dastar v. Compco v.13: Non-Monetary Remedies A. or (d) wrt both registered and unregistered marks o Affords a court great latitude in fashioning injunctive relief Page 62 of 63 . Thunder Craft Boats (trademark cannot be used as a substitute for patent) y these cases all say that state unfair competition statutes cannot extend patent-like property rights via unfair competition law. o Origin of goods physical goods. Injunctions . K. Bonito Boats v. v. as well as for violations of §§43(a). there is no protection. Court will not ³invent´ protection J. 20th Century Fox y SCOTUS rejected a reverse passing off claim under §43(a).§34(a) permanent and temporary injunctions available for infringements of registered marks under §32. Florida Prepaid Postsecondary Educ. Day-Brite Lighting. Stiffel.

it had become kind of generic. Preliminary injunction requirements? o Likelihood P will ultimately succeed on the merits o Whether P is likely to suffer irrepreable harm if D is allowed to continue it¶s allegedly infringing behavior o Whether the hardship to the plaintiff in the absence of a preliminary injunction is likely to be greater than the hardship to the defendant if injunction is granted o Whether preliminary injunction would serve the public interest.  - Page 63 of 63 .Understanding Trademark Law Outline with Casebook Cases See King Seely Thermos v. Aladdin Industries y Court recognized that although Thermos was still a protected mark. and allowed Aladdin restricted use of the term.

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