Sarah Oglesby

20 January 2021

LSU v. Smack Apparel Co.

RULE: A color scheme can be protected as a trademark if it has acquired secondary meaning
and is nonfunctional.

ANALYSIS:
 Secondary meaning is achieved when the public automatically perceives a mark to be
from a single source
 Factors for determining whether secondary meaning has been achieved include (1) the
length of time the mark has been used and the manner in which it has been used, (2)
the amount of sales of the product, (3) the amount of advertising using the mark, (4) use
of the mark in newspapers or magazines, (5) relevant consumer survey results, (6)
consumer testimony, and (7) the alleged infringer’s intent

CONCLUSION: District court affirmed for universities.

Commodores Entertainment Corp. v. McClary

RULE: Members who remain with a group and control the quality and reputation of the marks,
have common law rights to the marks.

ANALYSIS:
 McClary’s use of the Commodore’s name and playing some of the same old music from
when he was in the group was likely to cause confusion
 The band members who remained in the band retained the rights to the mark to the
exclusion of members who left

CONCLUSION: District court affirmed for CEC.

ITC Limited v. Punchgini, Inc.

RULE: Foreign trademark holders will not have priority of trademark rights in the United States
through the famous-marks doctrine for federal unfair-competition claims.

ANALYSIS:
 Under the Lanham Act’s territoriality doctrine, a trademark holder will only have priority
of trademark rights in the United States based upon priority use in the United States and
not based on the trademark holder’s use in foreign countries
  A possible exception to this rule is the famous-marks doctrine, which states that if a
foreign mark has obtained sufficient fame in the United States, the trademark holder
will have acquired priority of trademark rights over later American users
 There is no federal law basis for the famous-marks doctrine

CONCLUSION: District court affirmed for Punchgini.

Larry Harmon v. Williams Restaurant Corp.

RULE: A single location restaurant that serves a small number of interstate travelers satisfies
the “use in commerce” requirement of the Lanham Act.

ANALYSIS:
 The court held that the commerce requirement of the Lanham Act was coextensive with
Congress' constitutional powers under the Commerce Clause of the Constitution
 It is not required that services be rendered in more than one state to satisfy a threshold
level of interstate activity to be granted a service mark – only that the commerce is of
the kind which Congress may regulate

CONCLUSION: Summary judgment affirmed.