Trademark Outline OT

PART 1 FOUNDATIONS AND PURPOSES OF TRADEMARK

AND UNFAIR COMPETITION LAW:
 CHAPTER 1 INTRODUCTION TO TRADEMARK AND
UNFAIR COMPETITION LAW
A. Sources and Nature of Trademark Rights
- Progress Clause in U.S. Constitution does not apply to Trademarks
- Trademarks last indefinitely unlike patents and copyrights
- Not discoveries or writings
- Commerce clause requires that there be a foreign or interstate aspect
to the trademark for Congress to exercise power over it and legislate
- Hanover Case pg.7
o Goodwill is property in connection with an existing business
o Goodwill does not necessarily mean a good reputation
o Goodwill is essentially the assurance that the goods a consumer
is receiving is from the source that the consumer expects
o Trademark is treated as merely a protection for the good-will,
and not the subject of property except in connection with an
existing business.
o Have no property right in the trademark itself except in relation
to the trade (good/service)
- Mishawaka Case
o Psychological function
o The aim is to convey through the mark, in the minds of
potential customers, the desirability of the commodity upon
which it appears.
o If another poaches upon the commercial magnetism of the
symbol has created, the owner can obtain legal redress
- Yale Electric Case
o “a reputation, like a face, is the symbol of its possessor and
creator, and another can use it only as a mask.
o If another uses a mark, he borrows the owner’s reputation,
whose quality no longer lies within his own control.
- Prestonettes, Inc v. COTY
 o A trademark does not confer a right to prohibit the use of the
words/symbols
 Only gives right to prohibit the use of it so far as to
protect the owner’s good will against the sale of
another’s products as hisif it does not deceive = no
infringement
 Likelihood of confusion requirement addresses this
NOTES
 Unlike copyright and patent law, where congress has preempted state law,
state trademark and unfair competition law does exist
- Triadic Structure of TM
1. Tangible symbol (signifier)
2. Used in commerce for goods or services (referent)
3. Identify and distinguish the (referent) goods/services (signified)
a. Identifying the referent with a specific source and that
sources good will
B. The Nature of Unfair Competition Law
 It is unfair competition to pass of your goods as those of another producer by
using a trademark that is confusingly similar to that of the other producer
 Basically a claim for infringement of an unregistered trademark
- INS v. AP case pg 12
 Defendant engaged in the systematic practice of taking the bodies of news
stories from bulletin boards and early editions of complainant's newspapers
and selling them as its own. Complainant sued, seeking, among other things,
to enjoin defendant from engaging in such activity.
o The court said this is unfair competition because INS was doing
all of the work while AP just took the work and portrayed it as
its own for profit
o (labor theory)
o INS expended labor, skill, and money (the Labor theory)
o To transmit news of another news outlet for commercial use in
competition with said news outlet is taking material that has
been acquired by the news outlet as the result of organization
and the expenditure of labor, skill, and money, and which is
 salable by the news outlet, and then appropriating to itself the
fruits of such labor
 Summary: In determining whether a news collecting agency has property
rights in the news the consideration needs to be whether an agency has a
property right in news it collected versus other collecting agencies, rather
than against the public. The business of making this news known to world,
when the parties to the case are competitors in the field creates a quasi
property interest in the news between them. It is unfair competition when
one party interferes with the normal operation of another’s legitimate
business precisely at the point where profit is to be reaped, in order to divert
a material portion of the profit from those who have earned to those who
have not.
- Dastar Corp v. Twenieth Century Fox pg. 14
 TM law is a subset of unfair competition law
C. Purposes of Trademark Law
1. To protect the public so that it may be confident that, in purchasing a
product bearing a particular trademark which it favorably knows, it will get
the product which it asks for and wants (for the benefit of consumers)
a. TM help consumers select goods. By identifying the source of goods,
they convey valuable information to consumers at lower costseasily
identifiable TMs reduce the cost consumers incur in searching for
what they desire, and the lower the costs of search the more
competitive the market
2. To ensure that where the owner of a trademark has spent energy, time, and
money in presenting to the public the product, he is protected in his
investment from misappropriation by pirates and cheats
a. TM may also induce the supplier of goods to make higher quality
products and to adhere to a consistent level of quality (build brand
reputation and good will)
D. Modern Marketing and Trademark Law (No Reading)
NOTES
 Transformative brandschange the use experience
o Not just about the product
o May tap into emotional and self-expressive needs
E. An Illustration
- EPE Case
 o Unfair Competition and Trademark Infringement
o Neither exhaustive or exclusive list of likelihood of confusion
factors on Page 30
 (1) the type of trademark alleged to have been infringed;
(2) the similarity of design between the two marks; (3)
the similarity of the products or services; (4) the identity
of the retail outlets and purchasers; (5) the identity of the
advertising medium utilized; (6) the defendant's intent;
and (7) evidence of actual confusion. This list is neither
exhaustive nor exclusive. The absence or presence of any
one factor ordinarily is not dispositive; indeed, a finding
of likelihood of confusion need not be supported by even
a majority of the seven factors.
o Customers recognized the bar was a parody and not associated
with EPE
o The similarity between the marks was outweighed by their
strikingly different meanings
o EPE’s trademarks obviously referred to Elvis Presley the singer
and his legacy while the Velvet Elvis referred to a faddish art
style
o EPE’s intent to eventually open night clubs could work in their
favor however here it did not because the Velvet Elvis’s
parodic purpose was obvious
o Actual confusion is the best way to prove likelihood of
confusion but it did not exist here
o Dilution has two categories: Blurring or Tarnishment
o No blurring occurred here due to lack of similarity
o Tarnishment must be supported by evidence in this case to
indicate that the plaintiff’s mark will suffer negative
associations from the defendant’s use.
o Court found that nude portraits hung in a bar for the purpose of
mocking the tasteless décor of the sixties does not inspire
negative images of Elvis or Elvis related products or services in
the mind of EPE customers.
 CHAPTER 2 DISTINCTIVENESS
o When a term is immediately capable of identifying a unique source, rights to the term are
determined solely by priority use 
 Terms such as these are labeled “inherently distinctive” 
 Arbitrary/Fanciful/Suggestive  
 Though for analytical completeness they are further subdivided into
subcategories 
 
o For all other terms—those deemed NOT inherently distinctive—the Landham Act requires proof
of an additional element to secure trademark rights: secondary meaning 
 The most important type of word or symbol requiring proof of secondary meaning is a
descriptive term 
 A descriptive mark is a word, picture, or other symbol that directly describes
something about the goods or services in connection with which it is used as a mark 
 EXAMPLE: Arthricare for arthritis treatment 
 In addition to descriptive terms, geographic terms (Nantucket soft drinks) AND
personal Names (O’Malley’s bear) require secondary meaning to acquire legal protection 
 
o A descriptive term garners trademark protection when it reaches a threshold of acquired
secondary meaning associated with a single source of productsàOnce an appreciable number of
consumers associate it with the brand 
 Proof that it has acquired secondary meaning as a source identifier elevates the descriptor
to trademark status 
 Does NOT mean that buyers need to know the identity of the source, only need
to know that the product or service comes from a single source. 
 
o Classifications of Marks 
 
 Generic Term: the name of a particular genus or class of which an individual article of
service is but a member 
 Constitutes the basic nature of articles or services RATHER THAN the more
individualized characteristics of a particular product 
 NOT eligible for protection under trademark law 
 If at any time a registered trademark becomes generic as to a particular
product or service, the mark’s registration is subject to cancellation 
 EXAMPLE: aspirin 
 
 Descriptive Term: identifies a characteristic or quality of an article or vice, such as
its color, odor, function, dimensions, or ingredients, purpose 
 Ordinarily, they are not protectable trademarks 
 They may become valid marks by acquiring a SECONDARY MEANING in the
minds of the consuming public 
 Personal names and geographic locations 
 EXAMPLES: Boston Beer, 24 Hour Fitness, Bank of Texas, Lawoffices
Directory 
 
 Suggestive Terms: requires the consumer to exercise the imagination in order to draw
a conclusion as to the nature of the goods and vices 
 Protected without proof of secondary meaning 
  EXAMPLE: Coppertone 
 Speaks to characteristic or quality of goods in an indirect way  
 EXAMPLES: 7-Eleven à could be gym or gambling place 
 
 Arbitrary or Fanciful Terms: bear no relationship to the products or services to
which they are applied 
 Protected without proof of secondary meaning 
 Usually made up terms 
 EXAMPLE: Kodak 
 
o Secondary Meaning recognizes that words with an ordinary and primary meaning of their
own may after long use with a particular product, come to be known by the public as specifically
designating that product  
 Plaintiff MUST show that the primary significance of the term in the minds of the
consuming public is not the product but the producer 
 Major Inquiry: consumers attitude toward the mark 
 Mark must denote a single thing coming from a single source 
 Both circumstance and direct evidence may be relevant and persuasive on the issue 
 Factors such as amount and manner of advertising, volume of sales, and length
and manner of use may serve as circumstantial evidence  
 ***Effectiveness in altering the meaning of the term to the consuming public 
 
o Fair Use Doctrine 
 Even when a descriptive term has acquired a secondary meaning sufficient to warrant
trademark protection, others may be entitled to use the mark without incurring liability for
trademark infringement 
 When the allegedly infringing term is used fairly and in good faith only to describe to
users the goods or services of a party, or their geographic origin, LANHAM ACT, a
Defendant in a trademark infringement action may assert the FAIR USE DOCTRINE 
 The defense is available only in actions involving descriptive terms and only
when the term is used in its descriptive sense rather than its trademark sense 
 Fair Use defense prevents a trademark registrant from appropriating a descriptive term
for its own use to the exclusion of others, who may be prevented thereby from accurately
describing their own goods 
 The holder of a protectable descriptive mark has no legal claim to an
exclusive right in the primary, descriptive meaning of the term; consequently, anyone is
free to use the term in its primary descriptive sense so long as the use does not lead to
consumer confusion as to the source of goods or services  

 A TM is a word, name, symbol, device, or other designation, or a

combination thereof, that is distinctive of a person’s goods or services and
that is used in a manner that identifies those goods or services and
distinguishes them from the goods or services of others.
A. The Spectrum of Distinctiveness
- A mark must be distinctive before it can be registered
- Generic: cannot register
 - Descriptive: needs secondary meaning to acquire distinctiveness
- Suggestive/arbitrary/fanciful: inherently distinctive
- Abercrombie & Fitch Case
 FACTS: 
Abercrombie & Fitch Co. (A&F) (plaintiff) had trademarked the term “SAFARI” to describe
specific types of clothing and footwear sold in A&F’s stores. Hunting World, Inc. (HW)
(defendant) used the term “SAFARI” on HW’s clothing and footwear, in a newsletter, and to
describe a portion of the HW store devoted to “SAFARI” products. A&F sued HW for trademark
infringement and requested an injunction against HW to prevent HW’s use of the term
“SAFARI.” The district court dismissed A&F’s complaint, and A&F appealed. 
 RULE: There are four classes of terms in regards to trademark protection. In order of
ascending protection, they are: 
1. Generic – NOT protectible 
 This means that it is the "common descriptive name" and affords no exclusive right to the
mark. the common name for the products or services in connection with which it is used,
such as "salt" when used in connection with sodium chloride. A generic term is not
capable of serving the essential trademark function of distinguishing the products or
services of a business from the products or services of other businesses, and therefore
cannot be afforded any legal protection. 
 A term can become generic if it becomes widely known and used to name that thing itself
as opposed to describe/identify it– ex. Kleenex/Band-Aid/Velcro/Zipper… 
2. Descriptive – ONLY protectible if it has secondary meaning 
 This means that it is "merely descriptive" and allows registration if there is "proof of
substantially exclusive and continuous use of the mark applied to the applicant’s goods
for five years preceding the application". (If it acquires a secondary meaning.) Such terms
are not registrable unless it can be shown that distinctive character has been established in
the term through extensive use in the marketplace 
3. Suggestive 
 This means that it "requires imagination, thought, and perception to reach a conclusion as
to the nature of goods" and is entitled to registration without proof of secondary meaning.
A suggestive trademark tends to indicate the nature, quality, or a characteristic of the
products or services in relation to which it is used, but does not describe this
characteristic, and requires imagination on the part of the consumer to identify the
characteristic. 
 Ex. Blu-ray 
4. Arbitrary/Fanciful 
  An arbitrary trademark is usually a common word which is used in a meaningless context
(e.g. "Apple" for computers). Such marks consist of words or images which have some
dictionary meaning before being adopted as trademarks, but which are used in connection
with products or services unrelated to that dictionary meaning. Arbitrary marks are also
immediately eligible for registration. Salty would be an arbitrary mark if it used in
connection with e.g. telephones such as in Salty Telephones, as the term "salt" has no
particular connection with such products 
  A fanciful / inherently distinctive trademark is prima facie registrable, and comprises an
entirely invented or "fanciful" sign. For example, "Kodak" had no meaning before it was
adopted and used as a trademark in relation to goods, whether photographic goods or
otherwise. Invented marks are neologisms which will not previously have been found in
any dictionary. 
 HOLDING: 
"Safari" has become a generic term for certain clothing items. "Safariland" is permissible
because of its focus on selling these genericized goods. This is not the case for footwear, where it
is either "suggestive" or "merely descriptive" and therefore incontestable. However, defendant
had longer names for its footwear, like "Camel Safari" or "Hippo Safari." As defendant's parent
company embarks on African safaris, this could be justified fair use by being named such to
associate it with the trips. 
o Because the mark is descriptive = you cannot block other from using that mark àit is fair
use of the mark\\ 

SUMMARY
o A generic term is one that refers, or has come to be understood
as referring, to the genus of which the particular product is a
species. I.e. bread
o Abercrombie used safari as TM to sell articles of clothing and
Hunting world used it for the same purpose but the court found
that safari was a generic term.
o Is safari generic? You have to look at it in relation to the good
or service first
o Safari is associated with a type of outfit not shoes so Safari is
not generic in relation to boots or shoes
o Mark must always be assessed in relation to the goods
o The meaning can change over time

B. Descriptiveness and Secondary Meaning

 - Zatarain’s Case
Rule:
 A descriptive term generally is not trademarkable unless it has achieved a sec-ondary
meaning in the market.Facts: Zatarain’s, Inc. (plaintiff) obtained trademarks for two
batter mixes: “Chick-Fri” and “Fish-Fri.” Oak Grove Smokehouse, Inc. (defendant) sold
its own batters for frying foods that used the terms “chicken fry” and “fish fry.”
Zatarain’s brought a trademark in-fringement suit against Oak Grove. The United States
District Court for the Eastern Dis-trict of Louisiana ruled (1) that both trademarks were
descriptive terms, (2) that Oak Grove’s use of “fish fry” was fair use, and (3) that
Zatarain’s trademark for Chick-Fri should be cancelled. Zatarain’s appealed, arguing,
among other things, that Fish-Fri is a suggestive term, not a descriptive term.
ISSUE
 Is a descriptive term generally trademarkable if it has not achieved a secondary meaning
in the market?
Holding:
 No. A descriptive term generally is not trademarkable unless it has achieved a secondary
meaning in the market. Potential trademarks are classified into one of four cat-egories:
generic, descriptive, suggestive, or arbitrary. A descriptive term identifies a char-
acteristic of a product. Courts look to four factors to determine whether a term is descrip-
tive: the dictionary definition; whether the term conveys the characteristics of the
productthrough simple observation, rather than exercise of the imagination (imagination
test); whether competitors are likely to need to use the term to describe their own, similar
prod-uct; and whether competitors actually do use the term to describe their own product.
A descriptive term generally is not trademarkable unless it has achieved a secondary
mean-ing in the market. Further, even if a descriptive term has achieved a secondary
meaning, an allegedly infringing use of the term is fair use if it is used in good faith
simply to de-scribe the product of the allegedly infringing party. A trademark holder
cannot have a mo-nopoly on a term’s original, descriptive meaning. In this case, both
Chick-Fri and Fish-Fri are descriptive terms. Zatarain’s products are batter mixes that
consumers apply to chicken and fish before frying them. Consumers can plainly observe
without the use of their imagination or deduction that they would use Chick-Fri and Fish-
Fri to fry chicken and fish. In addition, competitors need to use the terms to describe their
own, similar products. Competitors would be hard-pressed to describe a batter for frying
chicken or fish without using the terms chicken fry or fish fry. Indeed, Oak Grove has
used the termsto market its own products, which is further indicia the terms are
descriptive. As a result of the foregoing, the court determines that Chick-Fri and Fish-Fri
are descriptive terms. Based on a survey of consumers, the court determines that Fish-Fri
has achieved a sec-ondary meaning in the market. Zatarain’s trademark for Fish-Fri thus
remains valid. However, Oak Grove’s use of “fish fry” was in good faith as it was simply
 to describe its own fish fry batter product. The appropriation of the trademark was thus
fair use. On the contrary, Chick-Fri has not achieved a secondary meaning in the market
and thus is not protectable and the trademark should be cancelled. The United States
District Court for the Eastern District of Louisiana’s findings in favor of Oak Grove are
affirmed.
SUMMARY

o They didn’t look at the difference between “Fri” or “Fry”

because fanciful spelling doesn’t change the trademark. Sound
is important too.
o Zatarain’s argued that it was a suggestive term and therefore
inherently distinctive no need for secondary meaning.
o Suggestive or Descriptive?
 Dictionary test: indication of the ordinary significance
and meaning of words to the public
 Imagination test: Does it require imagination, thought
and perception to reach a conclusion as to the nature of
goods?
 Competitors’ Need: Do competitors need to use the term?
 Competitors’ Use in Marketplace: Are other companies
actually using the same term to describe their similar
products?
o Secondary Meaning?
 Consumer attitude towards the mark
 Required for descriptive marks as well as for:
 Personal names
 Colors, sounds, scents
 Product designs (product configurations)
 Fish-Fri established secondary meaning but it was
protected under the fair use doctrine and therefore not an
infringement
 Proving secondary meaning
 Ex
 penditure of over 400k for advertising
 Sales increased by a lot after advertising increased
  23% of women who fry fish in NOLA answered
Zatarain’s on a survey as a product they would buy
at the grocery to use as a coating
 Survey evidence is the most direct and persuasive
way of establishing secondary meaning

 TESTS FOR CLASSIFYING A MARK AS DESCRIPTIVE: 

1. Dictionary: the dictionary definition of the word is an appropriate and relevant
indication of the ordinary significance and meaning of words to the public 
2. Imagination Test: measure the relationship between actual words of the mark and the
product they are applied to 
o If a term requires imagination, thought and perception to reach a conclusion to the
nature of goods, it is considered a suggestive term 
o Alternatively, a term is descriptive if standing alone it conveys information as to the
characteristics of the product  
3. Advantage/Need Test. Whether competitors would be likely to need the terms in
used in the trademark in describing their products: a descriptive term generally
relates so closely and directly to a product or service that other merchants
marketing similar goods would find the term useful in identifying their own goods 
4. Widespread Use Test. Extent to which a term actually has been used by others
marketing a similar service or product: whether competitors are likely to find a mark
useful in describing their products 

- Descriptive: Holiday Inn

- Suggestive: Coppertone
- Arbitrary: Apple or Ivory Soap (they have nothing to do with their
product but are real words)
- Fanciful: Exxon (made up word)
- Page 66 shows marks found to be suggestive and marks found to be
descriptive
-
C. Generic Terms
GENERICNESS 
 
o For a term to serve the purpose of a trademark, it must point to a unique source 
o When a term refers instead to a general class of products, it is deemed generic, and cannot serve
as a trademark 
 EXAMPLE: Toyota is a source of products || car is a class of products—a genus 
o Generic terms are either “born generic” (refused registration on the Principal Register because
they are generic) OR they become generic over time through a process called Genericide 
 Genericide occurs when the public appropriates a trademark and uses it as a generic name
for particular types of goods or services irrespective of its source 
 EXAMPLE: aspirin || escalator || Kleenex  
 Where no substitute is available to refer to the good or service 
 Trademark policing might be required by the owner to prevent the mark from
diluting and becoming generic  

- Booking.com case
HOLDING
 The United States Supreme Court determined that a term like “Booking.com” can be
generic for a class of goods or service if the consumers deem it so. In this case,
consumers do not consider the term “Booking.com” as a signifier for hotel reservation
services as a whole. Trademark distinctiveness is determined on a sliding scale with the
descriptors as follows (in increasing order): generic, descriptive, suggestive, arbitrary, or
fanciful. If a trademark was deemed “generic” or “descriptive” it would not be accepted;
however, the Lanham Act extended protection to “descriptive” trademarks if it had
already achieved major recognition with the public and can identify the applicant’s goods
and services, known as “secondary meaning.” For Booking.com it has already established
its presence amongst the public as well as its goods and services. The Act also focuses on
the consumer’s impression of a given trademark. If consumers thought that any hotel-
reservation booking site is a “Booking.com” it would then make the defendant
“Booking.com” generic; however, the public does not. When looking at Booking.com as
a whole the Supreme Court was focusing on the whole term, not “Booking” or “.com” as
separate parts, thus making Booking.com a distinctive trademark in that sense. If the
Supreme Court were using the USPTO’s logic with other companies like Art.com and
Dating.com it wouldhave considered them “generic.” The USPTO did not consider
Art.com and Dating.com “generic” when they registered their trademarks, so labeling
Booking.com as “generic” goes against their policy. It is also assumed that consumers
recognize a particular domain with a particular site or business. A concern that the
USPTO has with giving Booking.com trademark protection is that it fears that it could
stifle competition from using the words “booking” or “hotel-booking” in future domains.
When cases like this arise, the USPTO should look at whether or not the trademark
confuses the consumer between two businesses. If there is confusion then there is an
infringement case. Even if confusion does exist Booking.com would be covered under the
“classic fair use doctrine” since they are using a descriptive term fairly, ethically, and to
illustrate their goods/products/services/etc. As a huge hindrance to the USPTO’s case,
they failed to explain how the particular connection between Booking.com and its owner
makes it, the domain, generic. The Supreme Court also reasoned that even if
 Booking.com was a “generic” term then unfair competition laws would prevent others
from advertising their servicesas Booking.com’s. Along with the unfair competition laws,
it would require the other business to be more innovative in choosing a trademark to
avoid confusion

SUMMARY
o “Under these principles, whether “Booking.com” is generic
turns on whether that term, taken as a whole, signifies to
consumers
o Domain name can be source identifying because only one
company can have a domain name
o Consumers do not view Travelocity as a type of
“Booking.com”. Consumers do not say things such as “what is
your favorite “Booking.com”. Therefore, because the term is
not generic to consumers it is not generic.
- Distinctiveness matters because it is needed for TM to be registrable;
we are trying to avoid an individual or company from having a
monopoly on a word

- FYP v. AJP Case

o Filipino Yellow Pages say secondary meaning while AJP says
generic. FYP lost, mark generic
o Apply who are you, what are you? Test
o Filipino is generic. Yellow pages is generic.
o If Generic + Generic still equals what are you then it is not
equate to generic
o Court used the Surgicenters case. Did not constitute a deviation
from normal usage.
o Must look at the overall consumer impression
o Who are you?= generic
o What are you?= not generic
o FYP did not bring enough evidence considering the fact the
burden was on them to prove non-genericness due to the fact
that the mark was unregistered
o FYP actually used the term in a generic sense
o FYP also did not go after other companies using the term
- Mil-mar shoe v. Shonac Case
 o Mil-mar brings suit against Shonac for use of term DSW Shoe
Warehouse. (Mil-mar owns Warehouse Shoes)
o Multiple companies in retail have warehouse in their names
- Haughton Elevator Case
o Escalator Mark
o Escalator became known as another word for moving stairway
over time
o They did nothing to prevent others from using it generically
o In their own ad they didn’t emphasize escalator as a trademark
- Murphy Bed Case
o By the time they attempted to reg TM for “Murphy bed”, it was
already generic, so registration was refused (1981/82)
o So unregistered mark for Murphy Co.
o Zarcone license goes sour. Murphy alleges TMI and unfair
competition (Zarcone tried to pass off Murphy beds as his own
after the agreement was terminated)
D. Distinctiveness of Nonverbal Identifiers: Logos, Packages, Product
Design, and Colors
- Non verbal marks
- Logos
- Trade dress: total image and overall appearance of a product, may
include size, shape, color, textures, sales techniques etc.
- Seabrook test
1) A common shape or design
2) Unique or unusual in a particular field
- Amazing Spaces Case
o Star symbol is an amazing spaces registered service mark
o Metro mini seeks sj on basis that the star is not distinctive
o Abrecrombie is wrong test because the star would come out to
be fanciful or arbitrary
o Seabrook test first 3 questions are to determine whether the
design is so unique that its not common
o Star not distinctive because other industries used the mark so
one could not assume that it referenced Amazing Spaces
o Stylized means that is the star different from other stars?
 o The star is descriptive therefore you must look at secondary
meaning
o Secondary meaning was not met. Look at 7 factors on Page
115.
o Trade dress is not a defined term in the statute
- Trade Dress
-
- Two Pesos Case
o Court rejects argument that trade dress cannot be inherently
distinctive and that it must always demonstrate secondary
meaning
o Under 43(a) you apply the same general principles that you
apply in assessing registration in evaluating the protection
available to unregistered marks.
o If you required secondary meaning for a trade dress mark it is
an additional burden for start up business (it takes time for
secondary meaning)
o Stevens Concurring (43a has evolved but this is not its original
intention)
- Color Marks
- Qualitex Case
o A symbol is anything capable of carrying meaning
o “Suntost” immediately signals brand or source, but over time, a
color can come to indicate a source as well
o No theoretical objection to use of color alone, taking into
consideration the objectives of TM law
o Color can be a source identifier because the public can come to
identify it with a source
o Court says we could treat color as descriptive
o Companies may want to simply only use color as their symbol
and not a word or design
- Walmart v. Samara Bros Case
o Walmart deliberately copied Samara Brothers children’s
clothing design
o Product packaging vs Product design
o Design is not inherently distinctive
 o Competition concerns with trade dress product design is that it
would be unfair to the consumers because there may be a
function on the design consumers want
o Since it does not almost automatically tell a customer that it
refers to a brand, design, like color, is not inherently distinctive
pg. 137
o Because design has function other than source identification, it
makes inherent distinctiveness more problematic
o Two Pesos tells us that TD can be inherently distinct. It does
not tell us that product design can be. Pg. 138
o Product Packaging does not have the same anti-competitive
nature as product design
- In Re Clarke
o Scent trademark for scented yarn
o Advertised the scent of the yarn
o Her yarn was a big player in the market
- Dastar Case
o Eisenhower created a book based on his crusade in Europe
o Fox created TV show based on it
o Eventually Dastar took it and made minimal changes to the
original crusade series (make it shorter, put new titles, etc.)
o Determined that “origin” referred to the maker of the physical
product not the creative content that the product contained
o Therefore Dastar did not violate the Lanham act
o Look at notes in notebook
E. The Edge of Trademark Protection: Subject-Matter Exclusions?
 CHAPTER 3 FUNCTIONALITY
A. An Introduction to the Concept of Functionality
- Functionality more of Trade dress issue
- Morton Norwich Case
o Is this design superior, so that there is competitive necessity to
copy to compete effectively? Consider:
 Does an expired utility patent disclose the utilitarian
advantages of the design?
 Does advertising/promotion tout the utilitarian
advantages of the design?
  Are there no or few alternative designs that exist which
perform the function equally well?
 Does the design result from a comparatively simple or
cheap method of manufacturing the article?
o De jure functionality vs. De facto functionality
 De facto functionality is that something has a utility.
Saying that it is de facto functional is saying that it has a
function but not necessarily legally functional; not anti-
competitive
 We care about legal functionality (de jure functionality)
o We care about the patent because if they give exclusive use to
certain TMs you are essentially giving TM law power to do
what patents should do for an indefinite period of time
o Looking at the bottle as a whole and not just the pump and
spray mechanism
o If what you’re claiming is the same as what your patent claimed
then you will experience more difficulties
o Want to make sure there is adequate competition in the
marketplace
B. The Scope of the Functionality Doctrine
- Brunswick Case
o Wanted to trademark the black engine
o The color black found to be functional
o Would negatively affect competition
o Competitive need for the color black
C. The Supreme Court’s Approach to Functionality
- Kellogg Case
o National biscuit thought they had a claim to the name shredded
wheat along with the look of the cereal pieces
o NB patent expired. Court said “shredded wheat” not a TM and
pillow shape not a TM. Patent on machine for making pillow
shape expired and pillow shape design patent was about to
expire but was invalidated. Basically, shape is dedicated to
public. i.e. public domain
o Form is functional because cost would increase and quality
would be lessened (181). Kellogg sharing in goodwill of article
 called “shredded wheat” that was created by skill and judgment
of its predecessor, but that is “not unfair”.
o Was not unfair because they needed it to effectively compete
with NB;
- Qualitex Case
o Found the color of the press was not functional
o Aesthetic functionality is
o Color can serve a non-trademark function
- Traffix case
o They tried to trademark Dual spring road sign
o Three springs more costly
o The fact that other designs are available does not mean
something is not functional
- AliveFive Problem
o Say there is secondary meaning
o Bird noise does not create a competitive disadvantage
o They should be able to trademark their sound
o Aesthetic functionality: Inwood and then Qualitex test
o Use seabrook test
o A sound from nature might not be considered to be unusual
o Was the sound essential to the use of the article? (Inwood)
o Not allowing the competitors to use the sound or go off five
times does not put them at a disadvantage. (Qualitex)
D. Post-Trafix Applications of the Functionality Doctrine
- Bodum Case
o French press coffee case
o Jury found for Bodum
o Bodum claims overall appearance but not the internal
mechanisms that are required to make a French press
o Bodum presented evidence that it is more expensive to design it
in the way that they made it
o This is not the only way a French press coffee case can be made
o The patents were not relevant because the patents were not
related to what they were claiming trade dress for
- Lotte Case (chocolate covered cookie stick)
 oChocolate covered cookie stick called “Pocky”.
oCourt says functional means useful.
oUseful because you won’t get chocolate on your fingers
oOne way to show functionality is does the feature make the
product work better?
o Court also considered the fact that it was a stick and easy to
share with friends (which was promoted in this way through
their advertisements); promoted it as useful
o Alternative designs did not matter because that does not
automatically decide functionality
o Patent was not relevant in this case
- Louboutin Case
o Red sole mark reg’d 2008
o YSL monochrome red shoes. Plaintiff argues TM infringement;
among other things
o Three step process (Qualitex and Inwood combined)
o Design essential for use/purpose; effect on cost or quality; and
the competition inquiry from Qualitex.
o If you say no to the first 2 prongs then you look at the third
o Limiting color in the fashion industry you could limit the ability
of designers to create fashionable pieces
- Leapers Case
o Rifle scopes with “knurling”
o Leapers claims unique knurling design, not the knurling itself
o Defendant seeks SJ based on functionality and distinctiveness
o Evidence of aesthetic intent- that the product was designed for
an aesthetic purpose tends to show that a product’s design is
purely ornamental
o Court said you have to look at whether the range of alternative
designs is constrained and if it is then you can argue
competitive disadvantage (not the case here)
 CHAPTER 4 USE
A. Use as a Jurisdictional Prerequisite
- Use:
o Actual Use
 o Constructive Use- date that you filed
o “Surrogate” Uses
o Loss of rights through non-use or Uncontrolled uses
- Use based registration system vs registration based
- Common law marks require actual use
- Lanham act- registered marks. Actual or constructive use protected
- Use in Commerce § 45
o Use in commerce. The term “use in commerce” means the bona
fide use of a mark in the ordinary course of trade, and not made
merely to reserve a right in a mark. For purposes of this
chapter, a mark shall be deemed to be in use in commerce—
o (1) on goods when—
o (A) it is placed in any manner on the goods or their containers
or the displays associated therewith or on the tags or labels
affixed thereto, or if the nature of the goods makes such
placement impracticable, then on documents associated with
the goods or their sale, and
o (B) the goods are sold or transported in commerce, and
o (2) on services when it is used or displayed in the sale or
advertising of services and the services are rendered in
commerce, or the services are rendered in more than one State
or in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection
with the services.
- Aycock Engineering Case
o Has company called Airflite but he stopped using it
o Mid-1960s Aycock was created and owner obtained two toll-
free telephone numbers
o March 1970- Aycock distributed flyers to air taxi operators with
info about AIRFLITE service; he later entered into contracts
with some of them and received initiation fees
o Aug. 10 1970- Aycock filed a service mark application
o April 30, 1974- mark registered on supplemental register
o AIRFLITE for “arranging for individual reservations for flights
on airplanes”
o Biz never got off the ground
o Question became what was considered use in commerce?
o Discussed a case where fundraising to get things started was not
enough
o Discussed a case where there was unopened water park
claiming a name but the court found that this was not enough
because they did not offered their services to the public yet
o Use requirement:
1. Was the mark used in the sale or advertising of a service?
2. Was the service rendered in interstate commerce or in
more than one state or in international commerce?
o Never a time where the public could use his service
o Goods: Mark placed on goods and goods sold or transported in
commerce
o Services: used or displayed in the sale or advertising of services
and the services rendered in commerce, or the services rendered
in more than one State or in the United States and a foreign
country
o Totality of the Circumstances Test
 Adoption
 Use- “in a way sufficiently public to identify or
distinguish the marked goods in an appropriate segment
of the public mind as those of the adopter of the mark,
even without evidence of actual sales.”
o Advertising alone not enough, but coupled with distributor
solicitations, it could suffice: announcement + promotion at
trade convention; ads + promotion to industry buyers
o Promotional efforts are not use, and de minimis uses do not
establish TM rights
o Not all transports count: secret undisclosed shipments are not
adequate
o Is there sufficient use to establish ownership of the mark? Can
be established even if there were no sales. Sales highly
persuasive, but only one factor. Depends on the industry. Look
for commercial use that is typical in that industry.
o Recap:
 Mere preparatory steps are not enough
  Is there an “open and notorious” offer to render services
in commerce?
 Can establish use even in the absence of sales (public
notice). Sales, or lack thereof is not dispositive.
 Mendes: need use in way sufficiently public to identify or
distinguish the marked goods in an appropriate segment
of the public mind as those of the adopter of the mark
even without evidence of actual sales.

- Mark in Use § 1(A)(1) 15 U.S.C. § 1051 (A)(1)

o (a)(1) The owner of a trademark used in commerce may request
registration of its trademark on the principal register hereby
established by paying the prescribed fee and filing in the Patent
and Trademark Office an application and a verified statement,
in such form as may be prescribed by the Director, and such
number of specimens or facsimiles of the mark as used as may
be required by the Director.
- Intent to Use § 1(B)(1)
o (b)(1) A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use a
trademark in commerce may request registration of its
trademark on the principal register hereby established by
paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement, in
such form as may be prescribed by the Director.
o You have 6 months to produce evidence of actual use.
Additional 6 months if requested within specified time frame.
Then at discretion of Director of TM. Not to exceed 24 months
in total.
o Filing TM application is constructive use of mark. Creates
priority date.
o Tacking: allows owner of mark to claim priority on first use
date of a mark that is similar but technically distinct
 Very narrow
  Mark previously used must be the legal equivalent or
indistinguishable in the mind of the consumers that is the
same mark.
 Marks must create the “same, continuing commercial
impression” and not materially alter or differ from the
mark to be tacked
 Purpose of tacking: allow TM owner to alter his mark
without losing priority
B. Actual Use as a Basis for Establishing Rights
C. Constructive Use as a Basis of Establishing Rights
- Constructive Use § 7(C)
o (c) Application to register mark is considered constructive use.
Contingent on the registration of a mark on the principal
register provided by this chapter, the filing of the application to
register such mark shall constitute constructive use of the mark,
conferring a right of priority, nationwide in effect, on or in
connection with the goods or services specified in the
registration against any other person except for a person whose
mark has not been abandoned and who, prior to such filing—
o (1) has used the mark;
o (2) has filed an application to register the mark which is
pending or has resulted in registration of the mark; or
o (3) has filed a foreign application to register the mark on the
basis of which he or she has acquired a right of priority, and
timely files an application under section 1126(d) to register the
125mark which is pending or has resulted in registration of the
mark.
o
D. Foreign Activity as a Basis for Establishing Rights
- Foreign Use § 44(E)
o (e) A mark duly registered in the country of origin of the
foreign applicant may be registered on the principal register if
eligible, otherwise on the supplemental register herein
provided. Such applicant shall submit, within such time period
as may be prescribed by the Director, a true copy, a photocopy,
a certification, or a certified copy of the registration in the
country of origin of the applicant. The application must state
 the applicant’s bona fide intention to use the mark in
commerce, but use in commerce shall not be required prior to
registration.
E. Surrogate Uses
- When someone other than the TM owner uses the mark, is it use by
the TM owner? If so, when?
- First use of a mark by an entity that is “controlled by the registrant or
applicant” inures to the benefit of the controlling entity
- Must show a “substantial relationship” between the using entity and
the controlling entity
- Example: licensee/licensor; parent/subsidiary
- Use by Affiliates
o Doctrine of related companies
 Lanham Act § 5, the first use of a mark by an entity that
is “controlled by the registrant or applicant for
registration of the mark” inures to the benefit of the
controlling entity
 Lanham Act § 45 defines “related company” as an person
whose use of a mark is controlled by the owner of the
mark with respect to the nature and quality of the goods
or services or in connection with which the mark is used.
- Coca Cola/Coke. Public started calling it “Coke”. Competitor sought
to market “Koke-up”
- Public use is attributed to mark owner if it serves to identify the mark
- Informal Groups- who owns the mark?
o Look at
 The parties’ objective intentions or expecations
 Who the public associates with the mark; and
 To whom the public looks to stand behind the quality of
goods or services offered under the mark
F. Loss of Rights Through Non-Use or Uncontrolled Uses
- § 45 Abandonment
o A mark shall be deemed to be “abandoned” if either of the
following occurs:
o (1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from
circumstances. Nonuse for 3 consecutive years shall be prima
 facie evidence of abandonment. “Use” of a mark means the
bona fide use of such mark made in the ordinary course of
trade, and not made merely to reserve a right in a mark.
o (2) When any course of conduct of the owner, including acts of
omission as well as commission, causes the mark to become the
generic name for the goods or services on or in connection with
which it is used or otherwise to lose its significance as a mark.
Purchaser motivation shall not be a test for determining
abandonment under this paragraph.
- Genericide is one way to lose your mark. This would be considered an
“uncontrolled use.”
- Another way to lose your mark is abandonment through non-use
- E-ONE v. American Eagle Case
o Fire truck case
o E-one acquires American Eagle
o Ex-employee decides to use American Eagle brand for his new
company, AFE, after a few years
o E-one sues
o Step 1- statutory presumption of abandonment after non-use for
3 years
o Step 2- once a prima facie case is made, the TM owner can
rebut by producing evidence of actual use or intent to resume
use in reasonably foreseeable future.
o Discussion on top of page 323
o Only one truck left the factory with the American Eagle mark
attached (it wasn’t really being used)
o Court concluded that you have to look at the industry to
determine if a TM owner had intent to resume use in the
foreseeable future
o Therefore they were able to obtain a new trial in this case
- Lawn Managers Case
o Husband and wife own lawn care company but then divorce
o He keeps lawn managers and she starts Progressive Lawn
Managers
o Period during which it is agreed she will do biz as lawn
managers get credit etc.
 o Period passes, He sues for infringement. She responds that
assignment was a naked license. TC finds for ex-husband.
o Naked Licensing
 The purpose of the control requirement is to avoid the
danger that the public may be deceived as to the quality
of a product sold under a recognized name…naked
licensing occurs when a trademeark owner licenses a
mark without exercising sufficient quality control over
the services provided under the mark.
 It is “inherently deceptive” and constitutes abandonment
of the mark
 Must prove lack of sufficient control by clear and
convincing evidence
o How much control?
 Court found that the ex husband reasonably relied
because the employees were able to check the work of
the other company. They operated in the same
geographic area. The wife had been in the business for a
long time.
 Smith contended that the divorce would affect the
reasonable reliance but the court reasoned that just
because there was an issue between the ex husband and
wife didn’t mean that there was
 Did the licensor
 (1) Retain control of the use of its mark under the
contract; or
 (2) Actually control the quality of the trademark’s
use (inspections etc); or
 (3) Reasonably rely on the licensee to maintain the
quality
- University Book Store Case
o Bucky Badger mark
o U Wisconsin did not create it. University was not first user
o UBS sold Bucky decals since 1940
o UBS and Brown’s were selling Bucky Badger merch since
1950s
 o U Wisconsin sought to register mark
o Court decided that this was not abandonment
 Lack of first use was fine because the other businesses
were using the mark to support the university in the
community
 No complaints about quality that could imply a quality
control problem
 Other companies had an implied license; a badger was
the state animal; no confusion when not used for
university use
 Public domain argument- exclusivity of rights is not
necessary to find abandonment; public understands what
the mark represents
 Market change- not like there was a sudden change that
justifies that they should now look into a formal licensing
program
- Gallo Winery Case
o 2 brothers in family inherit a winery
o 2 brothers got into an agreement with Gallo Salami
o The 3rd brother (Joseph) created Gallo Cattle
o Joseph argues assignment in gross w/o transfer of goodwill
 There are no right in a TM alone, so no rights can be
transferred apart from the business with which the mark
is associated
 But it is not necessary to transfer some or all of the
tangible assets. It is the goodwill that accompanies the
mark that must be transferred
o The 2 brothers made an agreement with Gallo Salami that
created an assignment
 Gallo Salami is not connected to the Gallo family
 They licensed the name Gallo back to him
o Joseph tried to argue that that license is a naked license and that
they abandoned their rights
o Court said goodwill was actually transferred. Gallo winery
could oversee Gallo Salami
 CHAPTER 5 REGISTRATION
A. The Registration Process, Post-Registration Actions, and
Incontestability
- Bases for filing
o Actual use
o Bona fide intent to use
o Priority based on foreign filed application
o Registration in country or region
- Application
o One registration per mark
o List goods or services in connection with which mark to be
used
o Pay maintenance fees: first five years and then every 10 years
after that
- Principal register
o Marks that meet statutory requirements
- Supplemental register
- Marking requirement
o Not mandatory
- Disclaimer and Phantom marks
o Composite mark with generic words: disclaim the generic word
o Can’t use xxx
- Registration
o Must DISTINGUISH goods from those of others
o The following can be registered if they acquire secondary
meaning (they become distinctive):
 Descriptive
 Deceptively misdescripitive
 Primarily geographically descriptive and not a GI
 Primarily merely a surname
- Statutory Language for Acq’d Dist
- Absolute Bars to Registration § 2(a)-(e)
o (a) Immoral, deceptive, scandalous, or disparaging matter; or
matter which disparages or falsely suggest a connection to
persons, living, or dead
- Cancellation Proceedings
 o A petition to cancel a registration of a mark may, upon payment
of the prescribed fee, be filed by an person who believes that he
is or will be damaged by the registration of the mark on the
principal register
o Must seek to cancel within 5 years from registration
o Note that TM registrants can seek incontestability status after 5
years of continuous use. Not available for generic names or if
mark being litigated.
o Note that incontestability is distinct from 5 year limit
- Cancellation- At any time
o Can seek to cancel at any time (incontestability not
withstanding) on the following grounds:
 Genericness
 Functionality
 Abandonment
 Fraud in obtaining the registration
- Incontestability
o If continuous use for 5 consecutive years, you get “quiet title”
- Park’ N Fly Case
o Long term airport parking lot case
o Park N Fly filed infringement action and requested court enjoin
Dollar Park and Fly from using the words “Park and Fly”
o Dissent says that there needs to be proof of a secondary
meaning; no evidence that secondary meaning was proved
o Once its incontestable it is incontestable you can’t challenge it
on the basis that it is descriptive
- Matal v. Tam Case
o Case where the disparaging mark provision was shot down and
considered unconstitutional
o The provision in controversy: you cannot register a mark that
“consists of or comprises immoral, deceptive, or scandalous
matter; or matter which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt, or disrepute.”
o Asian band members wanted to name their band The Slants
o Geller Test- Disparaging marks (2 steps)
  Determine likely meaning of the matter in question
taking into account dictionary definition but also
relationship of the matter to other elements of the mark,
the nature of the goods or services, and the manner in
which it is used in the marketplace in connect with the
goods or services.
 If the likely meaning refers to identifiable individuals,
groups, beliefs etc., would that meaning be disparaging to
a substantial composite of the group?
o The band wanted to reclaim the term
o SCOTUS sets out benefits of registration
 Constructive notice of ownership claim
 Prima facie evidence of validity
 Possibility of incontestability
 Ability to block imports
o Arguments:
 It is government speech
 The government itself is not regulated by the 1st
Amendment scrutiny
 Far fetched to say registered mark is government
speech
 PTO does not approve marks they grant them
 Just having a system of registration does not mean
the government is speaking
 The monuments case is different from trademarks
because the government has historically spoken to
the public through monuments
 It is government subsidy
 Distinguished because the Trademark applicant
has to pay the government; they are not in anyway
being subsidized
 It should be treated under a new “government program
doctrine”
o Court says there really is no way to save this clause because
even under relaxed scrutiny the court says then you will need a
 substantial interest that is narrowly drawn (protected under
represented groups)
o “Happy talk” clause
o Must allow freedom of speech even when it’s the thought that
we hate
o Court split on some aspects but all agreed it was
unconstitutional because of viewpoint discrimination
o Concurring Judges
 Say that at the end of the day there is viewpoint
discrimination
 They understand that the goal of TM is source
identification but disparaging marks have nothing to do
with reaching that goal
- Brunetti Case
o TTAB “found that Brunetti’s website and products contained
imagery, near the mark, of “extreme nihilism” and antisocial
behavior…In that context, the Board thought, the mark
communicated “misogyny, depravity, and violence. The Board
concluded: Whether one considers the mark as a sexual term, or
finds that Brunetti has used the mark in the context of extreme
misogyny, nihilism, or violence, we have no question but that
the term is extremely offensive.”
o Court held that this is a 1st Amendment violation
o Brunetti was selling clothes under the name FUCT
o Morality provision
o The government may not discriminate against speech based on
the ideas or opinions it conveys.
o What is immoral?: “When is expressive material “immoral”?
According to a standard definition, when it is “inconsistent with
rectitude, purity, or good morals”; “wicked”; or vicious.” Or
again, when it is “opposed to or violating morality”; or
“morally evil””
o Court finds it too broad
o i.e. Pro-drug messages denied, anti-drug messages approved
o Not limited to lewd, sexually explicit or profane marks
o Court unwilling to rewrite statute
 o Viewpoint discrimination
o Concurring Judges
 Alito basically says this is not about moral relativism
 Congress could rewrite statute to disclaim vulgar marks
 Roberts says scandalous by itself could reach marks that
are offensive or vulgar; he would want to narrow it rather
than striking it down completely
 Sotomayor says bar on scandalous marks was reasonable;
dissents to the extent that a proper construction of
scandalous would not lead to it being struck down
- With Tam disparaging marks were struck down while in Brunetti
immoral or scandalous marks were struck down.
-

B. Exclusions from Registration

PART 2 CREATION OF TRADEMARK RIGHTS:

 CHAPTER 6 GEOGRAPHIC LIMITS ON TRADEMARK
RIGHTS
A. Geographic Limits on Common Law Rights
- Geographical Indications
o Indications of source, but as a collective mark or certification
mark
o Not used by owner as a regular TM, but rather owner authorizes
others to use
- Geographic TM is not the same as a GI
- A TM cannot be registered if it is primarily geographically descriptive
(unless it is a GI collective mark or certification mark)
- A TM cannot be registered if it is primarily geographically
deceptively mis-descriptive (absolute bar)
- Merely descriptive or deceptively mis-descriptive marks can be
registered if they acquire secondary meaning. But not geographically
deceptively mis descriptive.
- Geographically descriptive marks that have acquired secondary
meaning are permissible
- Newbridge Cutlery Case
o TM examiner refused to register because primarily
geographically descriptive
o Historical: primarily geographically deceptive ok with
secondary meaning, but post-NAFTA primarily geographically
deceptively mis-descriptive is barred
o Test for geographically deceptively mis-descriptive:
 Is the term primarily a signifier of the geographic origin
of the goods?
 If so, would prospective purchasers likely make a goods-
place association?
 If so, is the geographic mis-description likely to affect
the decision to buy? (materiality element) The focus here
is on consumer deception—believing that the geographic
region named is the source of goods
o Is it primarily geographic?
 Is the place generally known to the public?
 Would the public make a goods-place association?
 Do the goods originate from that region?
o Establishing Goods-Place Association
 Is there a reasonable basis to conclude that the public
would likely make the goods-place association?
 No need to show actual association
 Association can be made even where place not well
known for the relevant goods
o PTO presumes good-place association where:
 Location generally known
 The term’s geographic significance is its primary
significance
 The goods originate from that location
o In present case they said that people generally knew about
Newbridge, Ireland but;
o The question is will the AMERICAN consumer make a goods-
place association
 o The fact that it is on the internet doesn’t mean that people know
it (a lot of info already on the net)
o Court was not convinced that the relevant public would know
o First part of test not met here
- Examples: Alaska Bananas (they wouldn’t assume and buy bananas
because from Alaska) therefore not geographically deceptively mis-
descriptive
- Something that is primarily geographically descriptive cannot be
registered unless there is secondary meaning
- Deceptive Marks test
o Is the term mis-descriptive of the character, quality, function,
composition, or use of the goods?
o If so, are purchasers likely to believe the misdescription?
o If so, is the misdescription likely to affect the decision to
purchase? If so, mark is deceptive and cannot be registered.
- Geographic Indications are indications which identify a good as
originating in the territory of a Member, or a region or locality in that
territory, where a given quality, reputation or other characteristic of
the good is essentially attributable to its geographical origin.
- Trips Article 22
o In respect of geographical indications, members shall provide
the legal means for interested parties to prevent:
 (a) the use of any means in the designation or
presentation of a good that indicates or suggests that the
good in question originates in a geographical area other
than the true place of origin in a manner which misleads
the public as to the geographical origin of the good
- GI examples
o Alcohol GIs get extra level of protections
o Florida Oranges
o Tequila
o You cannot say “Chilean Tequila”

B. Geographic Limits and Registered Rights

- There is no property in a TM separate from the goodwill of the
business. The rights are based on use, not on mere adoption. So if
your TM has not been used in an area, you have no rights there, there
are no “blocking trademarks”
- A good faith junior user in a different geographic area can continue to
use the mark
- United Drug Case
o Rex from name Regis- Massachusetts 1877 (sold biz 1911)
o Rex from name Rectanus- Louisville 1883 (sold biz 1906)
o Rex/Regis/retail 1st use in Louisville in 1912
o Rexall was notified of Rex’s use in Louisville in 1911
o Dist Ct said Regis has exclusive right to Rex but no accounting
for profits
o Court of Appeal said Regis cannot get an injunction in the
Rectanus selling area because she was mostly known up north
in the New England States
o Case goes to SCOTUS
o Tea Rose Doctrine
 Good faith junior user in a separate geographic region
can continue to use the mark
 Who is the junior user?
 Does it matter if the junior user was aware that someone
else was using the mark?
o In Kentucky area Rectanus was the senior user and Regis was
junior user
o There was no attempt to trade off the good will of others (no
bad faith)
o This case pertains to common law marks it becomes more
tricky with federally registered marks
- Dawn Donuts Case
o Registration provides constructive notice of the mark
o However, concurrent use of marks is permitted in some
instances
o Senior user had federally registered mark. Junior user had
acquired common law rights through use in separate geographic
 area. The channels of trade were distinct—one was whole sale,
one was retail
o Dawn Donuts was the senior user here and Hart’s was the
junior user
o Neither side was aware of the other
o If they were aware they could be creating public confusion
depending if it was used in the same area
o Hart’s tried to argue since dawn hadn’t used the dawn mark in
Rochester for over 30 years that it was abandoned
o Court responded that just because you don’t use your mark in a
specific area doesn’t mean its abandoned if its federally
registered
o You can prevent concurrent use if there will be a likelihood of
confusion
o Test for concurrent use:
 Sufficiently distinct and geographically separate markets
 No likelihood of expansion into the defendant’s trading
area
 Since there was no likelihood of confusion, the junior
user was not enjoined form use
- Persons Case
o US copycat of Japanese brand, mark registered in 1984 for
wearing apparel
o Japanese brand becomes well known in Japanese fashion
industry and start to sell in U.S after the copycat. Registered in
US in 1985 on luggage, clothing and accessories
o Confusion in marketplace
o TM law is territorial
o Cannot base claim on Paris convention
o No bad faith to copy foreign mark unless the mark is famous
o In woman’s world, both parties were using within the US. The
senior user, junior user analysis does not apply to foreign marks
o When it comes to bad faith for a foreign mark the defendant
would have to be put on notice that the foreign brand planned to
move into the US
- Grupo Gigante Case
 o Groccery store on Mexican/Us BORDER, GG used since1962
in Mexico City
o Expanded into Baja, California, Mexico in 1987. By 1991 100
stores in Mexico, including 2 border stores in Tijuana
o 1991, M. Dallo opens store in San Diego called GG. There
were no GG stores in U.S. 1996 2nd Dallo GG store
o
C. The Territorial Nature of U.S. Trademark Rights
D. The Extraterritorial Enforcement of U.S. Trademark Rights
 CHAPTER 7 CONFUSION BASED TRADEMARK
LIABILITY THEORIES
A. Evolution of the Confusion Standard
B. The Actionable “Use” Prerequisite
- Lanham Act § 32 Infringement (registered marks)
- Lanham Act § 43 Infringement (unregistered marks)
- Infringement Action
o You need to prove that you have a valid trademark, that you are
the owner of the mark, and that you have priority over D in
respect of that mark
o You need to establish that D used the mark in connection with
goods and services in a way that is likely to cause confusion
- Has to be an actionable use
- Holiday Inns Case
o Holiday Inn filed suit alleging unfair competition and
infringement of its trademark telephone number 1-800-
HOLIDAY
o 800 was an agency that made reservations for number of hotel
chains
o The “405” number was different from the Holiday Inn’s
number but close enough for consumers to accidentally call it
o District court enjoined 800 from using the “405” number
o Court of Appeals reversed
o Confusion already existed among the public
o Holiday Inn also did not want to take the simple precaution of
reserving its complementary number
 o 800-reservations was siphoning business off of holiday inn if
consumers called the wrong number
o The defendant never used 1-800-HOLIDAY nor did they use
the Holiday Inn mark
o There was no actionable use here because there was no use of
the protected mark
- Rescuecom v. Google Case
o Rescuecom is a national computer service franchising company
that provides on-site computer services and sales
o Google’s AdWords program
o Allowed competitors of Resumecom to purchase the
Resumecom trademark as a search term so that when people
searched Resumecom they would see Ads with links to the
competitor’s site
o District Ct granted Google’s 12(b)(6) Motion to Dismiss
because Google was not using Resumecom’s mark in
commerce
o Court of Appeals found that Resumecom’s complaint
adequately pleaded a use in commerce
o District Court erred in believing the 1-800 case was on all fours
o In 1-800 the defendant did not use, reproduce, or display the
plaintiff’s mark at all
o Also in 1-800 under the defendant’s program advertisers could
not request or purchase keywords to trigger their ads
-
C. The Factors Analysis for Likelihood of Confusion
- Likelihood of confusion test on Pg. 558
- Virgin Enterprises Case
o VEL owns incontestable registration to VIRGIN
o NAWAB tried to use the name Virgin Wireless because they
thought the name was available in telecommunications
o VEL sued and moved for preliminary injunction
o District Ct denied relief and plaintiff appealed
o Polaroid six factor test used here and found all but one factor in
favor of plaintiff VEL
- McDonald’s Case
 o Restaurant versus dental services
o Defendant is NY professional corporation in Plattsburg, NY
that provides dental services under name McDental
o Issues:
 Whether the Plaintiff owns trademark rights in a family
of marks featuring the prefix “Mc” connected to generic
non-food terms
 Whether there is a likelihood that ordinary consumers are
likely to be confused as to the source of Defendant’s
services
o McDonalds was claiming that “Mc” was a common component
of a family of marks that they had
o They prevailed in cases related to “Mc” and food items
o Family of marks is defined as a group of marks having
recognizable common characteristic, wherein the marks are
composed and used in such a way that the public associates not
only the individual marks, but the common characteristic of the
family, with the trademark owner.
o Simply using a series of similar marks does not of itself
establish the existence of a family.
o There must be recognition among the purchasing public that the
common characteristic is indicative of a common origin of the
goods
o Court determined the more rational approach would be to
measure the strength of the “family of marks” and the
“likelihood of confusion” from a present standpoint
o Court concludes that the strength of plaintiff’s mark, evidence
of confusion, similarity of the marks and lack of good faith on
the part of the individual defendants in choosing their name
together support a finding of trademark infringement warrants
the issuance of an injunction in this case absent a valid defense
- Libman Case
o Libman company brought suit against Vining Industries for
infringement of a federally registered trademark on a broom
o District Ct enjoined Vining from selling the brooms and
awarded Libman 1.2 mil based on profits made
 o District Ct erred in finding that consumers were likely to
mistake Vining’s broom for Libman’s
o Decision reversed
D. Confusion Away from the Point of Sale
- Ferrari case
o Roberts was replicating exclusive cars made by Ferrari
o The mark was the design and make of the car (trade dress)
o Roberts tried to argue that there was no confusion at the point
of purchase because he had a label that said it was not
o Post sale confusion was the problem here
o Ferrari was afraid that people on the street would see the replica
and be unimpressed causing them to not purchase one
o Ferrari also wanted to preserve the exclusivity factor as well
o Because Ferrari’s reputation in the field could be damaged by
the marketing of Robert’s replicas, the district court did not err
in permitting recovery despite the absence of point of sale
confusion.
o Dissent: makes the test for confusion too broad
- MTM v. Amazon case
o MTM does not like how when you search MTM on amazon a
list of other watches pops up
o Amazon did not sell MTM watches
o MTM wanted Amazon to something along the lines of “NO
RESULTS”. Wanted them to make it clear that they don’t sell
MTM watches and these watches are not affiliated
o The relevant consumer here is likely to take more care because
the watch is more expensive
o The reasonably prudent consumer who has experience shopping
online
o In light of Amazon’s clear labeling of the products it carries, by
brand name and model, accompanied by a photograph of the
item, no rational trier of fact could find that a reasonably
prudent consumer accustomed to shopping online would likely
be confused by the amazon search results
o Dissent: should’ve let this go to the jury because a reasonable
jury could find some confusion
 - Planet Ice Cream Problem
o Zatarain’s case involving the spelling of Fish Fry versus
Fish Fri (the way it sounds)- Adding another e to ice cream
doesn’t change the way it sounds
o
E. Reverse Confusion
F. Indirect and Vicarious Theories of Infringement Liability
- Inwood Case
o Similar drug designs
o You can intentionally induce one to infringe or you can
continue to supply when you know or have reason to know that
infringement is going on
o Add more notes during review
 CHAPTER 8 NON-CONFUSION BASED TRADEMARK
LIABILITY THEORIES
A. Dilution Protection
- If a mark is well known you can qualify for dilution protection
- Types of Dilution
o Tarnishment
 An association that harms the reputation of the famous
mark
 No statutory factors for this type of dilution
 Courts have focused more on things that have some type
of sexual connotation
 Statute sets up fair use
 Nominative
 Descriptive
o Blurring
 Any association arising from the similarity between a
mark/trade name and a famous mark that impairs the
distinctiveness of the famous mark (does not mean
consumers are actually confused)
 Important to police your mark to maintain the ability to
make a dilution claim
- Dilution is the whittling away of the value of a mark
- Fame required for the mark
- Section 43(c) determines what is a famous mark
- Likelihood of dilution is required, not actual dilution
- Famous mark holder can obtain an injunction under 43(c) if the mark
is impaired by the use of the other user
- No competition or economic injury required
- Famous factors
o Duration
o Geographic reach of the advertising or publicity of the mark
o The volume of sales
o The extent of recognition of the mark
- Blurring you are looking for impairing distinctiveness
- Tarnishment you are looking for damage to the reputation
- Toys R Us (We Are Guns case)
o Not likely to dilute
- Victoria’s Secret Case
o Company named Victor’s Secret selling adult toys
o Victoria’s Secret sued for Dilution by Tarnishment
o Court interprets new statutory meaning to mean that likelihood
of dilution is that dilution is probable
o They also say it is a rebuttable presumption
o How does the fact that you have this sexual connotation turn
into tarnishment?
 Other circuits have made this finding
 Strong inference or rebuttable presumption when there is
a sexual connotation
o There has to be similarity and then an association, and then an
association that harms that mark
o The dissent says theres no evidence of harm to the mark
through the association
o Dissent says Victoria’s secret already has a sex feel to it
- Sweet Factors (outdated)
o Similarity of the marks
o Similarity of the products covered by the marks
o Sophistication of consumers
o Predatory intent
o Renown of the senior mark
 o Renown of the junior mark
- Starbucks Case
o Small company starts selling a blend of coffee called Charbucks
o Starbucks sued them for trademark dilution by blurring
o Starbucks is policing their mark because it could eventually
hurt your case
o Starbucks wants to claim the “bucks” portion in relation to the
similarity factor
o Charbucks and Starbucks sounding the same doesn’t help
Starbucks because they are treated as minimally similar
o The packaging and display were very different and that relates
to consumer perception
o Not something where you can just check off all the boxes
o This is a flexible test that the court will use in these situations;
they will balance out all the factors
o Factors on Page 668-669
o Similarity and actual association are the most important factors
o Actual association in this case is fairly weak
o The survey did not survey the public in a way that the marks
would actually be presented to the consumer
- Visa Case
o Visa mark is suggestive
o Other guy was using “evisa” for educational
o He was not trying to copy the visa brand
o Commonly used word to describe a travel document
o The other guy is using
B. Protection Against Cybersquatting
 CHAPTER 9 PERMISSIBLE USE OF ANOTHER’S
TRADEMARKS
A. Fair Use of Another’s Trademark
- To prove fair use the defendant must show:
o The use was made other than a mark
o Used in a descriptive sense
o Used in good faith
- Fair use refers to use of a TM that is not infringing. There is no
precise meaning of “fair”. It will depend on the facts of each case
- There are two kinds of fair use
o Descriptive fair use
o Nominative fair use
- Descriptive fair use refers to the use of P’s mark to describe D goods.
Here, you use the mark in a descriptive way to describe your products.
The more descriptive a mark, the higher the risk of descriptive fair
use.
- Nominative Fair Use: use of P mark by D to refer to P as source of
goods. Here, you use the mark as a source indicator to describe P’s
goods. Comparative advertising is an example of nominative fair use.
- Fair use is available under statute and common law as a defense to
TM infringement and dilution.
- Fair use is an affirmative defense. (I did it but what I did is
permissible)
- Fair Use & Infringement- Lanham § 33 (4)(b)
o “That the use of the name, term, or device charged to be an
infringement is a use, otherwise than as a mark, of the party’s
individual name in his own business, or of the individual name
of anyone in privity with such part, or of a term or device which
is descriptive of and used fairly and in good faith only to
describe the goods or services of such party, or their geographic
origin…”
- Fair Use & Dilution- Lanham § 43
o 43(c)(3) Exclusions.—The following shall not be actionable as
dilution by blurring or dilution by tarnishment under this
subsection:
o (A) Any fair use, including a nominative or descriptive fair use,
or facilitation of such fair use, of a famous mark by another
person other than as a designation of source for the person’s
own goods or services, including use in connection with—
 Advertising or promotion that permits consumers to
compare goods or services; or
 Identifying and parodying, criticizing, or commenting
upon the famous mark owner or the goods or services of
the famous mark owner
  All forms of news reporting and news commentary
 Any noncommercial use of a mark
- Descriptive Fair use
o Use other than as a trademark
o To describe D’s goods
o In good faith
- KP Permanente v. Lasting Case
o Action for SJ
o Lasting registered micro colors in 1992. The mark became
incontestable in 1999
o KP has used microcolor descriptively before Lasting registered
micro colors. KP says its use is descriptive fair use, meaning
the term is not used as a TM, but merely to describe its product
o 9th circ said KP could only benefit from fair use defense if no
likelihood of confusion
o Why is fair use a risk of using a descriptive mark?
 Society has a right to speech. You don’t get a monopoly
on words
o What aspect of the descriptive mark is protected?
 The secondary meaning only, not the descriptive aspect.
o What is wrong with 9th circuit analysis?
 It appears to have place burden on D to show absence of
confusion
 Congress said nothing about likelihood of confusion in
setting out the elements of the fair use defense in §
1115(b)(4)
- Can there be fair use even where there is a likelihood of confusion?
Yes
- P must first prove confusion. Mere risk of confusion does not rule out
fair use. CL of competition tolerated some degree of confusion for
descriptive use of another’s TM.
- D can then assert affirmative defense of fair use
- Why tolerate confusion?
o “Since the burden of proving likelihood of confusion rests with
the plaintiff, and the fair use defendant has no free-standing
need to show confusion unlikely, it follows (contrary to the
 Court of appeal view) that some possibility of consumer must
be compatible with fair use, and so it is”
o “The common law’s tolerance of a certain degree of confusion
on the part of consumers followed the very fact that in cases
like this one an originally descriptive term was selected to be
used as a mark, not to mention the undesirability of allowing
anyone to obtain a complete monopoly on use of a descriptive
term simply by grabbing it first.”
- Fortune Dynamic v. Victoria’s secret
o Delicious Footwear registered TM
o VS Delicious on shirt. No TM search before using. Claims
descriptive fair use based on the 3-part test. 1. Otherwise than
as a mark; 2. Fairly and in good faith, 3. To describe D’s
goods/services
o Appeal from SJ in favor of VS
o VS said they were using the mark to describe how the product
makes their customer feel
o How did court determine “use as a mark”?
o Rationale for fair use: Don’t allow monopoly on use of
descriptive term by “grabbing it first”
o Otherwise than as a mark: is it being used to ID and distinguish
and to indicate source? Is it used as a symbol to attract public
attention? Are there any precautionary measures such as
labeling or other designs to minimize the perception that it is a
TM?
o Descriptive: may mean more than describing a characteristic of
D’s goods. But here, it may be suggestive rather than
descriptive. Why?
o What is good faith use?
 Failure to conduct a TM search does not necessarily
amount to bad faith, even if it is standard practice. What
did the court have to say here about VS’s carelessness.
Was there evidence of mal intent?
 The court concluded there were genuine issues of
material fact on each part of the three-part test. And
remanded.
- Kelly Brown v. Winfrey
o “Own your Power”
o Kelly Brown radio show. The service mark is : LIGHT BLUE
SCRIRPTED LETTERS WHICH CREATE THE WORDS
OWN YOUR POWER. Registered May 27, 2008
o Brown alleges Oprah Winfrey “O” Magazine use of “Own
Your Power” infringes her mark.
o Court says D must meet each element of the test and show use:
1) other than as a mark, (2) in a descriptive sense, and (3) in
good faith
o Was there evidence of use as a mark?
o Was there evidence of use in a descriptive sense?
o Was there evidence of good faith? The court says that even if
there was no stated intention to trade on the good will of
Brown, this does not preclude a finding of bad faith. Why not?
- Marketquest v. Big Corp
o All in One and The Write One registered marks- Marketquest
(P)
o All in One catalogue cover and The WRITE Pen Choice for 30
years for pen ads- Bic/Norwoid (D)
o Issue: is this descriptive fair use? Lower court thought it was
o DC erred by granting SJ
o Revered and remanded
o Court analysis applies Fortune Dynamic and KP Permanent
o Is it use other than as a TM? Need to consider different uses.
 Consider the size, shape, and placement. Use on the 2011
catalogue included precautionary measures and
emphasized Norwood. But, looking at all the uses, a jury
could find TM use. The other uses did not have
precautionary measures or a clear distinction between
TM and non-TM use.
o Is it use in a descriptive sense?
 Strong argument for descriptive use on 2011 catalogue,
but less clear room for the other uses. The use of All-in-
One Basket may be suggestive rather than clearly
descriptive
 o Good faith?
 No bright line rule. Did D intend to capitalize on P
goodwill?
 No inference of bad faith arises from mere knowledge of
a mark when the use is otherwise objectively fair.
 Fair use is available for reverse confusion—the P
argument on this point was rejected.
o There can be fair use even if there is some confusion.
o Fair use is an affirmative defense to TM infringement. D does
not need to prove an absence of confusion for fair use to exist.
o The degree of consumer confusion is a factor in the fair use
analysis that helps to ascertain whether the use was objectively
fair. If the use is more likely to confuse consumers, it is less
likely to be fair.
o It is not essential to analyze all the LOC factors to complete a
fair use analysis. Courts can do so to the extent that the LOC
factors are relevant to each case.
- Nominative Fair Use
o This is use of P mark by D to refer to P as source of goods.
Here, you use the mark as a source indicator to describe P’s
goods, not your own goods.
o Use as a mark. Refers to TM owners goods/services and not to
your own.
o One company may need to refer to another company’s brand to
do comparative advertising
- Smith v. Chanel
o “We dare you to try to detect any difference between Chanel #5
(25.00) and Ta’Ron’s 2nd chance. $7.00”
o Both parties acknowledge that there is a right to copy
unpatented formula.
o So why is this a problem for Chanel? Not ideal for the brand.
o As the court notes, “imitation is the lifeblood of competition”
o The court expressed concern about anti-competitive effects
o “A competitor’s chief weapon is his ability to represent his
product as being equivalent and cheaper…”
 o “A large expenditure of money does not in itself create legally
protectable rights. Appellees are not entitled to monopolize the
public’s desire for the unpatented product, even though they
themselves created that desire at great effort and expense. As
we have noted, the most effective way (and in some cases the
only practical way) in which others may compete in satisfying
the demand for the product is to produce it and tell the public
they have done so, and if they could be barred from this effort
appellees would have found a way to acquire a practical
monopoly in the unpatented monopoly in the unpatented
product to which they are not legally entitled.”
- RG Smith v. Chanel
o What factors affect the courts’ analysis?
o What are some of the public interest considerations?
o Why does the court say that spending a lot of money does not
necessarily create legal rights?
- New Kids on the block test
o Productive/service not readily identifiable without use of the
TM
o Use only so much as reasonably necessary to ID good/service
o Did nothing to suggest sponsorship or endorsement of TM
owner
- Lending Tree- two step test 1) LOC 2) Fair use
o LOC still relevant. Use factors that are pertinent.
o This is a modified NKOB test. You first evaluate LOC. This s
more in line with Lasting Impression (SCOTUS on descriptive
fair use)
- Century 21 v. Lending Tree
o In marketing mortgage services, Lending Tree used Coldwell
Banker group marks
o Court guided by Lasting Impressions SCOTUS decision that
LOC is still relevant
o Step 1: to prove LOC (modify the LOC factors—similarity and
strength should not weigh in favor of confusion). Four factors
identified as most relevant.
 o Step 2: if there is LOC- D has burden to prove that use was fair.
Fairness is a 3 step test similar to NKOB.
- Confusion and fair use are not mutually exclusive. Court relies on KP
Permanente v. Lasting Impression Supreme Court decision and also
on the language of the statute
- The court holds that P bears burden of demonstrating LOC. The
burden then shifts to D to demonstrate fair use.
- Why is the LOC test modified? How does the court explain each part
of the modified test?
- Fairness under lending tree
o Under our fairness test a defendant must show:
 That the use of plaintiff’s mark is necessary to describe
both the plaintiff’s product or service and the defendant’s
product or service
 That the defendant uses only so much of the plaintiff’s
mark as is necessary to describe plaintiff’s product; and
 That the defendant’s conduct or language reflect the true
and accurate relationship between plaintiff and
defendant’s products or services.

B. Use of Another’s Trademark on Genuine goods

- Parody
- A parody must convey that it is the original but that it is NOT the
original
- It has a second message that communicates some element of satire,
ridicule, joking or amusement
- A successful parody will not be infringing
- Louis Vuitton v. Haute Diggity Dog
o Action for TM Dilution and TM Infringement
o On cross motions for SJ, district court for for HDD on basis that
the HDD items were successful parodies of LV handbags
o Held on appeal : no LOC. LV loses on infringement claim and
dilution claim. SJ in favor of Haute Diggity Dog
o LV: famous brand that sells high end bags and luggage. The LV
brand is famous and distinct. LV also sells limited amount of
pet accessories: collars, leashes and pet carriers, but not dog
 toys. LV does extensive marketing and invests significant
amounts of money to build its brand. From 2003-2005, LV
spent more than $48 million advertising products using its
marks and designs.
o HDD: sells Chewy Vuiton dog toys that imitate the LV
handbag. They also sell other parodies of high end brands
o LV argues that the HDD product are likely to cause confusion.
HDD has only changed on letter of the LV name its product,
VUITON instead of VUITTON and uses a LV themed
monogram
o HDD contends: “It necessary for the pet products to conjure up
the original designer mark for there to be a parody at all.
However, a parody also relies on “equally obvious
dissimilarities between the marks” to produce its desired effects
o HDD says that the fame of the mark avoids confusion.
o Court on Parody
o Court says this is an effective parody. You can have a
confusing parody and a not confusing parody. An effective
parody is less likely to be confusing
o The approach:
 Is it an effective parody?
 Is it confusing?
o First, the pet chew toy is obviously irreverent, and indeed
intentional, representation of an LVM handbag
o It is an imitation of LV, but is clearly not LV
o “…no one can doubt also that the “Chewy Vuiton” dog toy is
not the “idealized image” of the mark created by LVM. The
differences are immeadiate, beginning with the fact that the
“Chewy Vuiton” product is a dog toy, not an expensive, luxury
LOUIS VUITTON handbag. The toy it is plush, and virtually
all of its designs differ.” This toy is designed to mock celebrity.
o Court on Confusion
o An effective parody is less likely to be confusing. But the
analysis does not end with an inquiry about whether the parody
is effective.
o Applying the LOC factors, finds against LV on pretty much
everything:
 Fame- the more famous the mark, the less likely the
parody will be confusing
 “We agree with the district court. It is a matter of
common sense that the strength of a famous mark
allows consumers immediately to perceive the
target of the parody, while simultaneously
allowing them to recognize the changes to the
mark that make the parody funny or biting.”
o Similarity of marks: this is the essence of parody, so it is ok to
have mimicked the marks. “While a trademark, parody
necessarily copies enough of the original design to bring it to
mind as a target, a successful parody also distinguishes itself
and, because of the implicit message communicated by the
parody, allows the consumer to appreciate it.”
 This conclusion is bolstered by the fact that the parties
use the marks differently in the marketplace- LV sells in
high end locales.
o Similarity of products: not similar
o Advertising: no overlap. One high end magazines, the other in
pet magazines.
o Intent: an intent to parody is not an intent to confuse
o Court on Dilution
o The parody defense under the Trademark Dilution Revision Act
is for “use other than as a mark.” Thus, parody is not a
complete defense to dilution by blurring, where the Defendant
is using the parody as an indicator of source. However, it is not
irrelevant.
o The statutue “does not require a court to ignore the existence of
a parody that is used as a trademark, and it does not preclude a
court from considering parody as part of the circumstances to
be considered for determining whether the plaintiff has made
out a claim for dilution by blurring.”
o You need to apply the statutory factors, to the extent they are
relevant.
 o Parody & Dilution
o Parody used as a TM does not support a “fair use” defense, but
it can be taken into consideration in determining whether it
impairs the distinctiveness of a mark. It has to be non-TM use
for it to be excused under § 43 (the dilution provision)
o Applying the dilution by blurring factors, the court concludes:
“… as Haute Diggity Dog’s “Chewy Vuiton” marks are a
successful parody,… they will not blur the distinctiveness of
the famous mark as a unique identifier of its source”
o So, even though the court says parody is not a fair use defense
to dilution, it concludes that an effective parody will not impair
distinctiveness of this famous mark. The court notes, however,
that a parody that is confusingly similar may impair the
distinctiveness of the famous mark.
- Barbie Case (Mattel v. MCA)
o Found to be a successful parody
o Dist ct granted SJ in favor of MCA
o Use of Mattel “Barbie” in Aqua girl song marketed and sold by
MCA Records
o Barbie was originally a “German streetwalker” that Mattel
transformed into something else over the years. Court describes
Barbie as a source of controversy, both the ideal American
woman and a “bimbo.”
o LOC: balancing TM rights and Expression
o Court: “The problem arises when trademarks transcend their
identifying purpose. Some trademarks enter our public
discourse and become an integral part of our vocabulary. How
else do you say that something’s “the Rolls Royce of its class”?
What else is a quick fix, but a Band-Aid?... Trademarks often
fill in gaps in our vocabulary and add a contemporary flavor to
our expressions. Once imbued with such expressive value, the
trademark becomes a word in our language and assumes a role
outside the bounds of trademark law.
o The LOC test strikes a balance between the TM owner’s
property rights and the public’s expressive interests.
o Expressive Speech
o TM cannot be used to quash expressive speech. The court says,
“the trademark owner does not have the right to control public
discourse whenever the public imbues his mark with a meaning
beyond its source-identifying function.”
o This is not a competitor using the mark as a source identifier.
This is an artistic work.
o Barbie Girl Song
o The song targets Barbie herself, it does not use Mattel mark to
poke fun at another subject.
o The Lanham Act should only apply to artistic works where
“where the public interest in avoiding consumer confusion
outweighs the public interest in free expression.”
o Does the use of the Barbie violate the TM Act?
 The court adopts Rogers: A title is designed to catch the
eye but does not normally tell us about the source or
origin of the product.
o The Rogers Test
o Literary titles do not violate the Lanham Act:
 1. Unless the title has no artistic relevance to the
underlying work whatsoever or
 2. If it has some artistic relevance, unless the title
explicitly misleads as to the source or the content of the
work.”
o Apply the Rogers test
o Is the title of the song a use of the Mattel TM? Court applies the
Rogers test.
o First prong: the use of Barbie in the song title clearly is relevant
to the underlying work, namely, the song itself. The song is
about Barbie and the values Aqual claims she represents
o Since the first prong is satisfied, we move to the second prong
o Second prong. The song has artistic relevance, and the song
title does not explicitly mislead as to the source of the work; it
does not, explicitly or otherwise, suggest that it was produced
by Mattel.
o Dilution by blurring
 o There is an exception for non-commercial uses. Court turns to
first amendment caselaw.
o The court applies Hoffman: “Although the boundary between
commercial and noncommercial speech has yet to be clearly
delineated, the core notion of commercial speech is that it does
no more than propose a commercial transaction.” If speech is
not “purely commercial”—that is , if it does more than propose
a commercial transaction—then it is entitled to full First
Amendment protection.”
o Barbie Girl is not purely commercial speech and is therefore
fully protected. Yes, MCA used the Barbie name to sell the
song. But the song also poked fun at the Barbie image and the
cultural values Aqua claims she represents. Use of the Barbie
mark in the title and the song Barbie Girl falls within the
noncommercial use exemption to the FTDA.
o The court concludes “The parties are advised to chill.”
 CHAPTER 10 FALSE ADVERTISING
C. Elements of the Section 43(a)(1)(B) False Advertising Claim
- TM law plays a limited role. For example, the Federal Trade
Commission (FTC) protects consumers from unfair or deceptive trade
practices. There are various laws under which the FTC can proceed.
- Types of Advertising
o My product is better than yours
o Tests prove my product is better than yours
o Non-actionable puffery: opinion without any assertion of fact
- §43(a)(1)(B) False designations of origin; false description or
representation
o (a)(1) Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any
word, term, name, symbol, or device, or any combination
thereof, or any representation of fact, which—
 (A) is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of
such person with another person, or as to the origin,
sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
  (B) in commercial advertising or promotion,
misrepresents the nature, characteristics, qualities or
geographic origin of his or her or another person’s goods,
services, or commercial activities,
 Shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by
such act.
o “To invoke the Lanham Act’s cause of action for false
advertising, a plaintiff must plead (and ultimately prove)
 An injury to a commercial interest in sales or business
reputation
 Proximately caused by the defendant’s
misrepresentations
- Elements of a False Advertising Claim
o False statement of fact by D in a commercial advertising
o Statement actually deceived or has tendency to deceive
audience
o Deception is material and likely to influence purchasing
decision
o Defendant caused its false statement to enter interstate
commerce
o P has been or is likely to be injured either by direct diversion of
sales or loss of goodwill associated with its products
- Two kinds of false claims
o Literally false (mine is better or tests prove mine is better)
o Literally true or ambiguous but misleading in context or likely
to deceive consumers
- United Industries v. Clorox
o Clorox (Combat roach bait) and United Industries (Maxattrax
roach bait)
o Maxattrax ad shows a kitchen infested with active, dancing
roaches compared with one that is pristine. In small print at the
bottom of the commercial, is a statement that is based on lab
results.
o Clorox alleges that the Maxattrax ad was false advertising
under 43(a)(1)(b) of the Lanham Act
 o Dist. Ct found that the Maxattrax claims were literally true
o Clorox argues that the Maxattrax ad conveys that it controls
within 24 hours, that combat does not, that Maxattrax is a
superior product
o In fact, Maxattrax does kill within 24 hours if the roach comes
in contact with it. So, court agreed that this was true because
this is how customers expect roach bait to work—the roach
needs to come in contact with the poison
o Superiority Claims
 If it is “mine is better than yours” with no testing, P must
prove that D claim is actually false, not just
unsubstantiated
 If it is “tests prove” then P need only show that tests
relied upon were not sufficiently reliable to make
conclusion that is being made or conclusion couldn’t be
supported
 Clorox did not refute the reliability of the lab tests.
o Whether the images were misleading in suggesting that the
infestation was completely controlled within 24 hours, this was
unsupported by the evidence at that point and was a matter for
trial.
o Denial of preliminary injunction affirmed
 CHAPTER 11 TRADE IDENTITY RIGHTS IN ONE’S
PERSONA: ENDORSEMENT, ATTRIBUTION, AND
PUBLICITY
A. Section 43(a) and the Protection of Personal Identity
B. Right of Publicity
- Inherent right of every human being to control the commercial use of
his or her image.
- Origins in privacy law
- State statutory and common law. No federal right of publicity
- Protects name, image, and likeness
- May also cover other indica of personality
- Cheatham v. Paisano
o P has unique clothing designs and displays those designs at
biker’s events
 o Photograph of P at one of those events ends up in a magazine
and on a T-shirt
o Motion for dismissal. Held: motion denied
o No invasion of privacy:
 The designs were worn at large events where there were
many people present
 The point of her was to attract attention to her designs so
she has taken them out of her private life
 No placement in false light. To sustain false light, you
need: (1) the false light in which the other was placed
would be highly offensive to a reasonable person; and (2)
the publisher has knowledge or acted in reckless
disregard of the falsity of the publicized matter…It is
sufficient that the publicity attributes to the plaintiff
characteristics, conduct or beliefs that are false. That was
not present here.
 She was portrayed as she appeared
o What about the publicity right? Consider how it differs from the
right of privacy.
o Court defines it as the right to be free from commercial
appropriation
o The court focuses on the use of the image on the t-shirt since
the other use is, according to the court, fair use because the
magazine was reporting newsworthy items.
o You don’t need to be a celebrity, but “the remedy available in
right of publicity claims belongs to those who identity has
commercial value.”
o What is commercial value? “Commercial value may be
established by proof of (1) the distinctiveness of the identity
and by (2) the degree of recognition of the person among those
receiving the publicity.”
o Here, friends and customers recognized her designs. This was
sufficient to overcome the motion to dismiss at this stage.
- What are the protectable aspects of persona?
- John W. Carson v. Here’s Johnny Portable Toilets
 o Johnny Portable Toilets makes a play on the Johnny Carson
show with its portable toilets
o The “Here’s Johnny” mark, which was used for t-shirts and
other products (but not toilets) was a relatively weak TM an
could not enjoy protected use in a separate market.
o The publicity right as defined as the lower court was, however,
rejected as “too narrow.”
o This case provides several examples of protection of persona.
Race car. Boxer in the dark room. Voice. Nickname. And
“here’s Johnny!”
o Held: vacated and remanded.
- Vanna White v. Samsung Electronics
o Does a robot made to appear like show host Vanna White
violate her right of publicity?
o Dist. Court rejected ROP claim on SJ
o Held. No ROP claim possible under the statute, but yes under
the common law.
o This decision was seen as somewhat controversial. Not every
state will go this far in protecting identity
o Rationale
 You don’t need to appropriate the likeness by a particular
means. It doesn’t have to be the most obvious means of
appropriating P’s identity.
 “The identities of the most popular celebrities are not
only the most attractive for advertisers, but also the
easiest to evoke without resorting to obvious means such
as name, likeness, or voice…
 The robot is standing on what looks to be the Wheel of
Fortune game show set. Vanna White dresses like this,
turns letters, and does this on the Wheel of Fortune game
show. She is the only one. Indeed, defendants themselves
referred to their ad as the ‘Vanna White’ ad. We are not
surprised.”
o What about parody?
  Court found that the parody was only tangentially related
to the message—“buy Samsung VCRs” and so was not a
defense.
o The dissent warns about slippery slope and overprotection.
o Dissent: “Overprotecting intellectual property is as harmful as
under protecting it. Creativity is impossible without a rich
public domain. Nothing today, likely nothing since we tamed
fire is genuinely new: Culture, like science and technology,
grows by accretion, each new creator building on the works of
those who came before. Overprotection stifles the very creative
forces it’s supposed to nurture.”
o “Intellectual property rights aren’t free: They’re imposed at the
expense of future creators and of the public at large.”

 CLASS REVIEW
o Seabrook test: asks whether something is a common shape or design;
is it unique or unusual in that particular field
 Used a lot more in trade dress cases
o Product packaging can be inherently distinctive (Two Pesos) but trade
dress product design cannot be inherently distinctive (Wal-Mart)
o Deceptive Marks
 Can’t acquire secondary meaning

o Deceptively Misdescriptive
 Could acquire secondary meaning