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I. Trademark Theory A) What do trademarks do? 1. Identify sources of products a. Reduces transaction costs for consumers 2.

Provide substantive information a. Helps consumers make decisions B) 3 Main Goals of Trademark Protection 1. protect sellers goodwill and reputation 2. prevent confusion or outright deceit of consumers 3. promote competition by removing disincentives for sellers to make high quality
products C) Unlike other areas of IP law, NOT meant to promote creativity or inventiveness 1. protection awarded merely to the first person to use a distinctive mark in commerce Trademark Types and Categories A) Trademarks 1127 ( 45) 1. Any word, name, symbol, or device, or any combination thereof used to identify a sellers goods 2. Either: a. Currently used by a person b. Or a person has a bona fide intention to use it in commerce and applies for registration 3. To identify and distinguish the goods of one seller from another, and to indicate source B) Service marks C) Certification marks 1. Either: a. Currently used by a person other than its owner b. Or a person has a bona fide intention to permit another person use it in commerce and applies for registration 2. To certify a product 3. Collective marks a. Used by members of a cooperative, associationetc. D) Trade dress and product configurations 1. Shape, design, or packaging of a product 2. 3 Categories a. Product Design cannot be protected without secondary meaning, consumer must associate design with a specific source. Walmart i. For close cases, courts tend to pick design rather than packaging b. Product Packaging packaging can have inherent distinctiveness and does NOT require secondary meaning i. Packaging and product must be separable c. tertium quid (from Taco Cabana) treated like product packaging and does NOT require secondary meaning E) Categories 1. Marks that need only be used to be registrable a. Arbitrary or fanciful terms (strongest) i. Fanciful made up terms. ex. Exxon ii. Arbitrary use of words that have no bearing to the product. Ex. Apple Computer b. Suggestive terms (less strong)

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suggest character or quality of mark. Ex. Coppertone (a) requires some imagination because mark doesnt literally describe product 2. Marks registrable only with secondary meaning a. Descriptive marks i. Ex. Fish Fri, Alo (aloe cream), Vision Center ii. Factors in determining whether a mark is descriptive (a) Dictionary definition of the term (b) Does it require consumers to use their imaginations to reach a conclusion as to the nature of the goods? (c) Do competitors need the term to describe their products, or would it be useful to them? (d) To what extent has the term been used by competitors? iii. Secondary Meaning - If descriptive mark has come to be associated with a particular product/producer (a) Factors: (i) Amount and manner of advertising (ii) Volume of sales (iii) Length of the mark (iv) Consumer surveys b. Personal names if they designate goods or services provided by that person i. Alexander McQueen 3. Marks never registrable a. Generic marks F) Novel forms of trademarks 1. Sounds a. NBCs three-chime sound 2. Smells a. Smell of a particular flower on thread 3. Colors a. Qualitex requires that functional elements not be trademarked; if a product is a color for a functional reason, no luck. 4. Slogans a. Held generally to be suggestive rather than descriptive; no secondary meaning required. 5. Location of labels a. Levis tags on the ass pocket edge Establishing Trademark Rights A) Distinctiveness 1. The more it just describes a product, the weaker the mark will be 2. For registration a mark must be either: a. Inherently distinctive i. Includes arbitrary, fanciful, and suggestive marks b. Descriptive, geographic, and personal name marks must gain secondary meaning i. Generic marks can never gain secondary meaning 3. Descriptive marks can gain secondary meaning, but are vulnerable to fair use defenses a. Fair Use when a descriptive mark is used only in a descriptive sense to refer to Ds product and not TM sense, and not meant to confuse anyone as to the origins of the product. Zatarains B) Priority

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1. Addresses first use in commerce or registration with the intent to use in commerce 2. Parameters to consider: a. Extent of use/preparatory activity
Commercial use must be sufficient enough to: (a) Put other producers on notice (b) Link the mark with the product b. Similarity of names c. Registration and the associated market i. Geographic Limitations on Trademark Use (a) If mark is unregistered, protection extends only as far as goods are sold/advertised (b) Exception: can get rights for normal zones of expansion (c) Exception: can prevent others from trading on your good will d. Types of goods offered with a particular domain name Federal Registration 1. Registration does not create a mark, it only lists valid (or potentially valid) marks 2. Registered marks have nationwide protection a. True even if you sell/advertise in a small region 3. Types of Registration a. 1(a) use based registration (mark has already been used in commerce) b. 1(b) register with intent to use c. 44 foreign applications 4. Marks can be registered on 2 registers: a. Principal valid domestic marks b. Supplemental marks that are not valid trademarks in the US but can gain foreign protection 5. Advantages of Federal Registration a. Enhanced federal remedies b. Prima facie evidence of validity i. During first 5 years registration provides evidence of validity that can be challenged on any grounds (lack of secondary meaning, genericness, etc.) ii. After five years of commercial use the mark becomes incontestable and some defenses are eliminated c. Nationwide constructive notice of ownership and use d. Use of US Customs 6. Grounds for Rejecting Registration a. Immoral, scandalous, deceptive, disparaging marks i. Changes as social mores change b. Flag or insignia of US or any nation c. Name, portait, signature of living person without consent, or of a decased US President d. Likely to cause confusion with a non-abandoned valid trademark, unless approved by Commissioner e. Choose one: i. Descriptive or deceptively misdescriptive ii. Primarily geographically descriptive, unless indicative of special regional origin iii. Primarily geographically: (a) Descriptive, without having gained secondary meaning (b) Deceptively Misdescriptive (i) Emphasis on deceptive i.

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(a) Nantucket A product may be geographically misdescriptive but not deceptively, if the public does not usually associate the product with the place iv. Primarily a surname (a) Unless secondary meaning has been attained v. Comprises functional matter 7. Opposition a. Within 30 days of a marks publication in the Official Gazette an opposer can contest registration if he shows: i. He is likely to be damaged by registration of mark (standing requirement) and ii. There are valid legal grounds why applicant is not entitled to registration 8. Cancellation a. Even after a mark is registered, it can be cancelled 9. Concurrent Registration a. Can have more than one person use the same or similar trademarks if it wont cause consumer confusion 10. Incontestability a. After 5 years of registration and commercial use, a mark becomes incontestable, subject only to a few exceptions in 33(b) i. Park n Fly this applies to descriptive marks that should never have been granted protection in the first place Trademark Infringement A) For Registered Marks 32(1): 1. Use In commerce of any reproduction, counterfeit, copy, or colorable imitation of a registered mark which use is likely to cause confusion, or to cause mistake, or to deceive; OR 2. Actually do any of the reproducing/counterfeiting B) For Unregistered Marks 43(a)(1)(A): 1. Any person who, on or in connection with any goods or services which (A) is likely to cause confusion, mistake, or to deceive as to the affiliation, connection, or association.. or as to origin, sponsorship, or approval of goods or services by another person C) Uses in Commerce 1. Even if use of a mark does not serve to identify the source of a product. Rescuecom v. Google D) TEST: Proving Likelihood of Confusion = Main Factor of Infringement 1. Must show that ordinary users would likely be confused as to the nature or origin of a product

2. Sleekcraft Factors a. Strength of the mark b. Proximity of the goods c. Similarity of the marks
i. Sight, sound, and meaning Evidence of actual confusion Marketing channels used Type of good and degree of care likely to be exercised by purchaser Ds intent selecting the mark Likelihood of expansion of the product line Other types of confusion a. Confusion as to the source (even if products arent competing)

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i. tarnishment ii. if senior user wants to expand b. confusion as to sponsorship (endorsement) i. ex. putting Olympic rings symbol on cans of soup c. Initial interest confusion i. bait and switch confusion, where customer isnt actually confused as the nature of a product at the point of transaction d. post sale confusion rd i. purchaser is not confused, but 3 party viewers of products might be. Ex. counterfeit goods e. reverse confusion i. big guy copying little guys mark Defenses to TM Infringement 1. Genericide when a mark becomes so common and ubiquitous that it comes to represent the generic product line itself, instead of just a product from that manufacturer a. D bears the burden of showing this (dictionary/commercial usage) b. Fighting genericide i. Persuade people not to use their marks ii. Sue people 2. Functionality a. Functional aspects of products cannot serve as trademarks or trade dress b. Utilitarian functionality i. A product feature is functional if it: (a) Is essential to the use/purpose of the article; OR (b) Affects the cost or quality of the article ii. Burden of proof is on the party asserting protection to prove non-functionality of trade dress iii. Secondary meaning does NOT cure functionality c. Aesthetic Functionality i. If a product is bought predominantly for its aesthetic features those features may be functional ii. TEST: a feature is functional if granting TM protection would substantially hinder competition. Ex. heart-shaped boxes of chcolates 3. Abandonment a. Federally registered TMs will be found abandoned when: i. you stop using a mark with intent not to resume; OR (a) Intent may be inferred from circumstances (b) Prima facie showing of intent if you havent used it for 3 years (c) If mark is registered, burden of showing abandonment falls on D (d) Use actually has to be commercial use, not just to reserve right in the mark ii. any act or omission of the owner causes the mark to become generic or lose significance (a) Unsupervised Licenses license your product without controlling how the licensee uses it (b) Assignments in Gross assigning a TM without its accompanying assets and goodwill (causes consumer confusion) b. Burden to prove abandonment is on party seeking cancellation 4. Fair Use a. Using a mark to refer to Ds product in a descriptive way in good faith and not as a TM b. Likelihood of confusion does NOT preclude fair use

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Likelihood of confusion is already the reason why theyre in court BUT, relevant to a showing of good faith. (aka why did you choose such a similar name to use?) 5. Nominative Use a. When use of the TM owners mark is in reference to the owners product i. Product in question must not be readily identifiable without use of the mark ii. Only so much of the mark is used that Is needed to identify the product iii. User must do nothing with mark that would suggest endorsement 6. Parody a. Must show that it is not the original (likelihood of confusion) b. Use of the mark must be necessary to convey a point (difference from satire) 7. First Amendment mark has taken on an expressive meaning apart from its source product and P is free to comment on that Anti-Dilution Protection 43(c) 1. The owner of a famous and distinctive mark shall be entitled to an injunction against another persons commercial use of a mark or trade name which causes dilution of the distinctive quality of the mark 2. Alternative to likelihood of confusion infringement a. In some cases, consumers not likely to be confused as to origin of a product based on a sellers misuse of another sellers mark. BUT, the misuse would harm the marks distinctiveness/good will 3. Plaintiff must show: a. Plaintiffs mark has a distinctive quality capable of dilution b. That the mark is famous c. Likelihood of dilution through either i. Blurring not likelihood of confusion, but hurts the distinctiveness of the mark by having it apply to product areas drastically different from TM owners; based on: (a) Degree of similarity between marks (b) Degree of inherent or acquired distinctiveness of the famous mark (c) Extensiveness of owners own use (d) How famous the mark is (e) Whether other marks intent was to cause confusion (f) Any actual associations between the 2 marks ii. OR Tarnishment association that harms the reputation of the distinctive mark 4. In determining how famous a mark is, a court may look at: a. Inherent or acquired distinctiveness b. Duration and extent of use/advertising of the mark c. Amount, volume, geographic extent of sales under the mark d. Extent of actual recognition of mark e. Whether mark was registered 5. Defenses to federal dilution claims a. Fair use (SAME as TM fair uses ABOVE) i. Nominative use individual is using it other than as designation for his own goods ii. Descriptive use used only to describe and in good faith iii. comparative commercial advertising iv. parodying, criticizing, commenting upon famous mark owner or goods b. Noncommercial use of a mark c. All forms of news reporting and news commentary 6. In practice i. ii.

a. Likelihood of dilution is enough, dont have to show actual dilution b. Courts are split on whether a mark requires both fame AND distinctiveness for
anti-dilution protection

B) Extension by Contract: Franchising and Merchandising 1. Franchises a. Each store owned and run by individual owners who license the use of the
national brand (diff from chain stores) i. Equity stake gives owners incentive to do well ii. Contractual obligations to run the store in a certain way 2. Licensing a. Seller of products paying TM owners money to use the TM on their products Domain Name and Cybersquatting 1. Cybersquatting - When people register names not to actually use but to sell to someone else a. Cyber-piracy: the act of ransoming this name to TM owner 2. Typo-squatting register likely misspelling of popular domain names to trap traffic 3. Cyber-racing multiple companies with same name race to register domain name 4. Anticybersquatting Consumer Protection Act a. Any person who, with bad faith to profit from the goodwill of a TM registers or uses a domain name that is identical or confusingly similar to, or dilutive of such TM i. Must show: (a) Bad faith intent to profit from confusion (b) Domain name is identical/confusingly similar to famous mark b. Not meant to prevent noncommercial uses of the mark, such as comment/criticism, parody, etc. 5. Uniform Dispute Resolution Procedure a. Private mechanism for resolving these domain name disputes Indirect Infringement 1. A manufacturer or distributor of goods who aids or encourages TM infringement is liable a. Must have actual knowledge or reasonable suspicion b. OR, continue to support infringement after you find out about it 2. Pharmaceutical case Example a. Patent expires on popular drug, generic drug makers jump in and sell drug that looks exactly like it. Pharmacies sell cheap generic as the expensive brand name drug, liable for infringement. Generic drug manufacturers liable since they made it really easy? False Advertising 43(a)(1)(B) 1. Any person who, on or in connection with any goods or services which in commercial advertising.. misrepresents the nature, characteristics, qualities, geographic origin of his or another persons goods, services a. Elements for Literal Falsehood: i. Uses a word, term, false designation or origin ii. In interstate commerce or import/export iii. In connection with goods/services iv. Designation is likely to cause confusion v. P has been or is likely to be damaged b. Alternatively, Implied falsehoods i. statements that are factually true but make an implication that is false or unfounded (Johnson & Johnson absence of aluminum in TUMS)

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If D showed deliberate efforts to mislead AND did so in a way that was egregious, there is presumption of false advertising iii. If NOT, must show that an actual significant number of consumers were confused (a) If not, game over (b) If yes, did ad contribute? (context of commercial and Ds prior ad history) c. Defenses i. Puffing unbelievable claims ii. Free Speech iii. Comparative advertising Misappropriation Tort Claim (INS v. AP) 1. Giving protection to things that arent copyrightable 2. A form of unfair competition that creates a property right in information Elements (NBA v. Motorola) 1. P generates or gathers info at a cost 2. Info is time sensitive 3. Defendants use of the info constitutes free riding on Ps efforts 4. D is in direct competition with a product or service offered by P 5. Allowing free ride would so reduce the incentive to produce the info that the existence or quality of product would be substantially threatened

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