Trademark Final Exam OutlinePOLICY: preventing others from copying a source-identifying mark reduces the customer’s costs of shopping and making purchasing decisions, for it quickly and easily assures a potential customer that this item-the item with this mark-is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. The law thereby encourages the production of quality products and simultaneously discourages those who hope to sell inferior products by capitalizing on consumer’s inability to quickly evaluate the quality of an item offered for sale.

I. INTRODUCTION & BACKGROUNDA. Why do we give Trademark?

1) Dual protection systema) Protect companies – marketing and good will

- We want merchants to make investments good for societyb) Protect consumers/public

- Critical source of information if consumers want to specifically find what they want

2) Economic Efficiency (Posner) Efficient way to get the information: TM is very efficient market tool

for companies3) Persuasive Value (Lieman)

Is the value in the product or brand?- TM protects brand itself because brand itself may persuade

people to buyB. Trademark Cases (1879) – trying to shrink what TM is.

Federalism issue in TM law TM is regulated by the Fed. Whether congress can even have constitutional right to write TM Act

Congress says they have right to write TM Act because they also wrote Patent Act and Copyright Act.

Congress relied on the Intellectual Property clause of the Constitution: Congress has right to make laws to protect inventions or an author’s writings

SC rules that TM Act is unconstitutional TM does not fall under IP clause because it is not invention,

discovery, or an author’s writing; instead, it is just a signifier and label that gives information.

IP Clause deals with hard work genius, but TM is not hard work or genius.

Instead, TM becomes valuable OVER TIME – developing reputation through giving positive/negative impression and affect sales

Alternatively, Congress uses Commerce Clause to regulate TM TM involved goods and services, and goods and services cross state

lines. What if goods and services do not cross state line?

This is why we have federal and state TM law

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If goods and services do not cross state lines, then Fed. TM law does not apply, but state TM law applies.

TM law does not apply if there is NO USE (no business) At common law the exclusive right to TM grows out of its use, not

mere adoption.C. McDonalds Case – Quality Inn wants to have McSleep hotel. McDonalds sends

cease and desist letter. 5 days letter Quality Inn brings lawsuit for declaratory judgment. McDonalds claims passing off, dilution, false designation of origin and trademark infringement.

Confusion Test / Are Consumers confused? CONFUSION IS THE ULTIMATE TEST IN TM LAW. This is a legal multifactor test. 9 factors

Start thinking about what trademark law is meant to do. Protect consumers? Punish copyers?

II. UNFAIR COMPETITION & TRADEMARKSA. Definition of Unfair Competition: no clear definition of unfair competition. It’s a

catchall and relatively broad, however as the number of trademarks grow, the concept of unfair competition becomes more limited. Restatement definition is one who causes harm to commercial relations of another by engaging in business or trade

B. Restatement §1 – not harms to the commercial relation unless:1) Deceptive marketing – consumer deception: deceiving consumers as to who you

are. False advertising Putting someone else’s mark on you product False statement in marketing

2) Infringement of TM and other indicia of marketing Infringement Other indicia of marketing – buffer zone

- Something that indicates a product of a company, but not really a TM – something a bit loose than TM

3) acts that are unfair competition Broad

- “Appropriation of intangible trade value including trade secrets and the right of publicity, other acts or practices of the actor determined to be actionable as an unfair method of competition

§1(b) – sources of law- Federal and state law, international agreement, common law,

restatement NOTE: LANHAM ACT IS APPLICABLE ONLY TO INTERSTATE

COMMERCE. COMMON LAW APPLIES TO BOTH INTERSTATE AND INTRASTATE COMMERCE.

C. Case law1) INS v. AP (1918, SC) – INS taking stories from AP without paying for them.

(Quasi-property)

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INS is appropriating commercial value like genius or labor without cost, so it is unfair to AP.

Facts are valuable because it has taken a lot of labor for AP to get them

TM is also about reputation, and INS may be stealing AP’s reputation here..

In order for AP to remain competitive, they need protection. Unfair competition granted here to provide a legal right or legal

protection for those who provide the news. Consumers benefit from the news, thus the court recognizes that it must protect things that benefit the public.

2) Cheney Bros. v Doris Silk Corp. (1930, 2nd Cir.) Companies investing lots and lots of money on designs because they

were not sure which design would be a success. Involved similar problem as INS

- Investment issue, timing issue, appropriation of another’s commercial value

court did not rule same way as INS. Court said INS was limited to just the news. Here, there can be no unfair competition, because that would make monopolies over particular kinds of goods limitless.

Judge learned hand is concerned about INS v. AP, - that judges making common IP protection law, not congress- No laws from congress about this issue, and if congress wanted to

protect fabric designer, they should have done so.- No unfair competition because no laws from congress concerning

this issue- Concerned about BALANCE

3) Sears, RoeBbuck & Co. v. Stiffel (1964, SC) Stiffel made high-end floor lamps. Sears copied lamp and charged

less. Stiffel claimed unfair competition; however, Sears did not engage in deceptive commercial practice, and Stiffel’s patent was also found invalid.

Court held that there was no “passing off” here b/c Sears did not try to pass off their lamps as being of Stiffel’s quality.

Since the material is not patent protected, it is open for public/anybody to use/make it.

Investment and reputation association is what TM protects- Narrows down the scope of TM law

Functional v. Non-Functional- Functional parts of lamp(product) may not be enough to

distinguish it is TM because it is necessary to make lamp.- Non functional parts may fall into indicia of identification:

ornaments and other unique designs.- If people were recognizing pole lamp as “Stiffle”, then it may fall

into indicia of identification and TM may work Policy:

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- Competition is good. It benefits consumers by keeping high quality products in the stream of commerce while keeping costs down. Congress has put limits on competition via Trademark, Patent and Copyright statutes. Courts do not want to construe these exceptions too broadly.

- To allow a state by its use of unfair competition laws to prevent copying of an article which represents too slight an advance would be contrary to congressional intent→if it can’t get protection under U.S. Federal Patent laws, then federal law has thus implicitly deemed the good as one that belongs to the public.

- Trademark is more narrow – it is not good for people who do not get protection from patent to get protection form TM and create hierarchy.

4) Compco Corp. v. Day-Brite Lighting, Inc. (1964, SC – accompanying Stiffel)

5) Hanover Star (COMMON LAW TRADEMARK – TRADEMARK RIGHTS GROW OUT OF USE, NOT MERE ADOPTION) – Trademarks mean something only in relation to their use in commerce. Historically, trademarks at common law could be acquired only through commercial use, not through mere adoption. Thus, trademarks historically could only be enforced within the geographic area in which the commercial activity of the owner was conducted and only between products that were similar enough to be competitive.

- Although the test of trademark ownership became priority of use, it is not surprising that priority had to occur within the geographical or product limits that characterized the owner’s use.

- It was possible at common law that owner A’s use might precede owner B’s use in time, but that B would have superior rights if B used the mark first within a geographic area or in connection with a particular product line over which the dispute centered

- In common law, fairness, intent and good faith of the parties are important. A good faith user who had no knowledge of a prior user frequently could defeat a claim of unfair competition. A user usually could maintain credibility and succeed with a good faith defense only if he were using the mark at some distance from the first user, or in a line of products so different from those of the earlier user that the latecomer would not be expected to be aware of the earlier use.==============================================

- The common law of TM is a part of broader law of unfair competition

- TM is PROPERTY:o Common law TMs and the right to exclusive use are, of

course, to be classified among property rightso Property is not the Image itself (in this case the lion used

by both lien and iron company), but the

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ASSOCIATION/REPUTATION of that image good will

So if we decide image of lion/or lion is property, then we need to see if it is unfair for linen company to use lion, and see if reputation of lion (property) extends to the line company.

- Problem: there are companies that makes tons of different kinds of goods, and things to be protected can be more complicated and broad

o Traditional role of the TM law is satisfactory, but nowadays traditional TM alw is not enough to cover modern TM issues

D. Opposing views on Trademark Functions Posner : Rejects monopoly theory and says instead that trademarks serve

economic function. Trademarks save transactional costs for consumers and allow us to make wise purchasing decisions. The function of the trademark is to signify the quality of the product. Creating a reputation conveyed by brand ultimately reaps greater profits fro the firm b/c repeat purchasers and word of mouth references generate increased sales and consumers will pay more for decreased search costs and consistent quality. In order to perform its economizing function, a TM or brand name must not be duplicated.

Litman : trademarks are valuable beyond their use in commerce. They are a commodity in and of themselves. Competition is the premise of our system. If the thing itself is valuable, we want others to be able to compete in offering it to consumers in their own forms an d on their own terms.

E. Nuts and Bolts of Unfair Competition Why is protection of trademarks or trademark-like properties good thing?

Owner has made investment in cost, service and has developed a product so we want to protect that investment against unfair enrichment by a copier.

What are the costs and consequences of extending protection? Inhibiting competition and promoting monopolies. Consumers are bearing the cost for development of the goodwill of marks. Also, extending protection limits free speech

III. WHAT IS A TRADEMARK?A. Any signifier that distinguishes one company/product from other

company/productB. Subject matter of protection

1) TM Definition - § 45 of Lanham Act. A trademark is any word, name, symbol or device or any combination thereof. Must be (1) use in commerce and (2) TM must distinguish your goods from goods of others

NOTE : TMs cannot be functional What is Functional ? Essential to the use or purpose of article or affects

the cost or quality of the article. If it’s functional, you cannot protect it with trademark law. Policy behind this is that something that if

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something that’s functional is trademarked, competition is restricted. Competitors are forced to make something less functional.

Kellogg v. Nabisco (IF NO TM PROTECTION – NO SECONDARY MEANING AND MERELY DESCRIPTIVE - THE PUBLIC MAY SHARE IN PRODUCT’S GOODWILL)– TM was shredded wheat. Had patent on name and shape but patents expired. Court found that the consuming public regarded shredded wheat as a product and not a trademark, thus hearing shredded wheat did not indicate source – thus no secondary meaning and term is merely descriptive. Noted consuming public’s interest in competition and allowed competitors to call their product shredded wheat as well. Court says sharing in the goodwill of an article of an article unprotected by patent or trademark is the exercise of a right possessed by all. And in the free exercise of which the consuming public is deeply interested.

C. Word marks1) Coca Cola Co. v. Koke Co. (COURTS SHOULD JUDGE TM HOLDER BY

WHAT PUBLIC OPINION IS AT TIME OF THE LAWSUIT, NOT AT ADOPTION OF MARK – IT IS THE MIND OF PUBLIC THAT COUNTS!). Court held that the name “coca cola” means the drink, not the compound of substances, thus it had acquired secondary meaning. Court thought it was preposterous to deny relief based on def’s theory that someone at some time, somewhere may have purchased the drink hoping for cocaine intoxication. There was no fraud and the party’s position must be judged under circumstances of today and not what someone may have thought a long time ago.

2) Slogans Certain combinations of marks may properly function as TMs. A

slogan’s descriptive features does not automatically DQ it from registration

Even if a slogan is only descriptive, it may get protectable status if it can acquire secondary meaning through extensive, continuous and substantially exclusive use.

D. What can be TM?(also some Trade Dress) Qualitex Co. v. Jacobson Products Co.

o The green-gold dry cleaning pad used by Q.o A pure color without any design or logo cannot be TM. However,

CAN have TM over color of specific product and developed SECONDARY MEANING – distinctiveness is important.

However, there is depleting problem and shade problem…o this case also argues that color should be TM and not considered a part

of trade dress b/c actual registration of mark gives the holder many protections that trade dress cannot like right to assert others’ inability to import similar goods, incontestable status, constructive notice to others, prima facie evidence of ownership

E. Other identifying Indicia

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1) Color (can serve as a TM if it serves as a symbol to distinguish itself from others and is used in commerce. NOTE: color cannot be TM if color serves functional purpose)

2) Sound (NBC Chimes first trademarked sound)3) Smell (Case where plf wanted to TM yarn)4) Surnames (in past, we cared about these a lot more. Trend is to treat surnames

like any other trademark, thus the ultimate test is confusion) Ex) Law firm partner leave the firm and make another firm. Can they

use their name again? Ex) a designer sells his brand named after him, and make another

brand after his name and sells it- Cannot do this because he already sold his name.

IV. DISTINCTIVENESSA. Distinctiveness requirement has 2 themes:

1) It allows a first user to object to a later user on the basis that the later user’s mark is not distinctive if it too closely resembles that of the first user

2) Policy opposing the domination of the common or descriptive terms of the marketplace. A mark must be distinctive to prevent the preemption of these terms and their withdrawal from the public domain, since all competitor may need these words to identify their goods

B. Spectrum of Distinctiveness (Most to least). Defined in Abercrombie & Fitch CO. v. Hunting World Inc . 1) Arbitrary

Does not suggest anything about product, its use or its characteristics. No connection between goods or services. Must indicate brand or

source. These are given the strongest protection We want to encourage people to use these marks, because they don’t

take away from our lexicon of descriptive terms Examples are apple (computer) & snickers (candybar)

2) Fanciful Made up word –have to think a lot Examples are Kodak, nerf, Exxon, kleenex

NOTE : for Arbitrary and Fanciful marks, you never have to show secondary meaning. You automatically have a trademark in connection with the product named. Trademark law has incentives built into it to use arbitrary and fanciful marks. Use of these marks do not hamper speech or affect competition in any way. No or very little harm in someone having a monopoly over a word they invented.

3) Suggestive Requires imagination, thought and perception to determine the nature of

the goods (have to think some). The name of the mark may not immediately link the mark to what the good or service is.

Examples are iTunes, Coppertone, Febreze, North face, Mr. Clean, Whole Foods

4) Descriptive

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Merely describes something and conveys the immediate idea of what goods or service is – no imagination.

Disadvantages competitors in its market. Hard to use and not cause confusion Can be a legal trademark, but only if it acquires secondary meaning

and this secondary meaning connotes the brand Examples are sport & health club, Potomac Video, office depot, home

depot, National Football League NOTE : the law seeks to balance, with respect to registration,

between hardships to competitor who wants to use a word appropriate to the new product and the original who invested time, energy and money into development

Note : if others are using the term to describe their products, then you can draw inference of descriptiveness

5) Generic (not distinctive at all) – CAN NEVER BE TM Refers to the genus of which the product is a particular species. Is the

only way we can describe the thing Will never become a trademark It’s really anticompetitive to monopolize these marks Examples are corn flakes, escalator, escalator, Hypo needle, Cell phone The line between merely descriptive and generic is COMPETITION

– what can competitor use? NOTE : there is a critical legal difference between descriptive marks and generic

marks. Once a product has been deemed generic, it will always be generic and cannot move the other way on the spectrum. No mark that has reached genericness will ever serve as a trademark.

For descriptive marks, a merely descriptive mark cannot be a trademark unless the mark has obtained secondary meaning. If so, a descriptive mark is not merely descriptive and may serve as a trademark.

Reynolds case – “Brown in bag” is not merely descriptive Quik-Print Copy Shop (MERELY DESCRIPTIVE TEST → TO PASS

THIS TEST, THE MARK MUST IMMEDIATELY CONVEY TO ONE SEEING IT OR HEARING IT KNOWLEDGE OF THE INGREDIENTS, QUALITIES OR CHARACTERISTICS OF GOODS OR SERVICES)– “quik” is merely descriptive. Difference b/n this case and Reynolds is that here there is already use in market of similar terms (other businesses using quick print). The rule is that a mark that is descriptive is more likely to be merely descriptive where competitors in market use similar terms

In re Oppedahl & Larson – Patent.com .com is not distinctive Things to look for in question of whether something is merely descriptive

a) Is there a competitor on market?b) Or is this the first product of its kind

C. A mark can be descriptive when : 1) Inherently distinctive – nature of designation and context goods are in cause

prospective purchaser to perceive them as produced by particular person.

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Rock&R o ll Hall of Fame and Museum v. Gentile Protections(6 th Cir. 1998)- In this case, Plaintiff did not use the building as TM and

promoted building and good/services side by side- Being inherently distinctive means that it immediately conveys

source of good to the consumer- Although the building may be distinctive, there was inconsistent

use of the building as a good, not as a mark, and cannot stop others from taking the picture from different angles

- Court seemed to be troubled by the expansion and extension of copyright law: can an image of building copyrighted? NO!!! How about blueprints of building structure? YES!!!

2) Acquired secondary meaning D. Secondary Meaning

1) Definition of Secondary meaning: acquired when in the public mind, the primary significance of a TM is to indicate source of goods.

Shows that a formerly descriptive mark has developed a significance that distinguishes the producer of certain goods from the goods of others

An otherwise descriptive mark has been used so long that it has come to be synonymous with the goods or services with which it is connected, at least with respect to the content of the particular trade and consumers within that trade

Secondary meaning exists only if a significant number of prospective purchasers understand the term, when used in connection with a particular kind of good, service or business, not merely in its lexicographic sense, but also as an indication of association with a particular, even if anonymous entity

2) Factors to determine if secondary meaning has been acquired: - surveys, - manner and amount of advertising, - anecdotal evidence of confusion, - length of time in market, - volume of sales, - impact on consumers (large or small segment of society affected?)

3) Rock and Roll Hall of Fame (NO VALID TM IN BUILDING) – court held that disparate uses of building image in different perspectives not valid TM.

4) American Walthan Watch Co. v. United States Watch Co. The term Walthan did not have problem for business when the

business was established, but it acquired secondary meaning over time Walthan = watch The court ruled that D can use Waltham as geographical term

“made in Waltham” However, D cannot use Waltham as a brand name.

5) International Kennel Club v. Mighty Star

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In order to show infringement Kennel club needs to show secondary meaning such as: 1) how well known? 2) survey evidence? 3) advertising? How much money? 4) consumer statements?

Court ruled that international kennel club is a suggestive mark that acquired secondary meaning that customers think of plaintiff when they hear International Kennel Club. (some callers got confused after seeing the infringed item – confusion existed)

V. ACQUISITION OF TRADEMARK RIGHTSA. §7(c). You have rights from the date of filing and in any opposition proceeding,

your use is constructive, retroactive to the date of filings. NOTE: this applies to both ITU and use-based applications for registration

B. Adoption & use – Commercial Use & Interstate Commerce1) 2 requirements for valid trademark

- USEo §1(a)Application for use of TM

(1) The owner of a TM used in commerce… (2) … the date of the applicant’s first use of the

mark, the date of the applicant’s first use of the mark in commerce…

- IN COMMERCE The term use in commerce means the bona fide use of a mark in the

ordinary course of trade, and not trade merely to reserve a right in a mark. A mark shall be deemed to be in use in commerce:(1) on goods when: placed in many manner on the goods or their

containers or the displays associated therewith or no the tags or labels affixed thereto AND the goods are sold or transported in commerce

(2) on services when: services are rendered in more than 1 state or the U.S. and a foreign country and the person rendering services is engaged in commerce in connection with the services

Power is granted to Commerce to regulate trademark by the Lanham Act through the Commerce Clause

MUST BE ACTIVE USE – commercial use cannot be nominal, sporadic or solely for purpose of maintaining trademark rights

Proctor & Gamble – courts will determine use on a case by case basis. But, the general rule is the more consistent the use, the more likely it is to be acceptable

o The minor brand program did not give public meaning to the products because the product was not in market

o Unfair because small companies do not have budget to have minor brand program, and it also cause depletion of names for competitors

o RULE : use cannot be sporadic, casual and nominal. Intentions which are so vague and remote and so unlikely to come to fruition within reasonably near future do not meet the

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test that requires an intent to market TM-ed product in commerce.

Harry Horman Picture Corp. v. Williams Restaurant Corp (Bozos Restaurant) – restaurants that sit in one state must show that they get customers that come from across state lines to show that you get interstate commerce Commerce in Lanham Act includes intrastate commerce that affects interstate commerce

Concept of Hoarding: there are certain points on a timeline where we can make a distinction as to whether there’s definitely hoarding or whether there’s a grey area. Both parties try to pinpoint the date of rights. Courts will also look to the intent of companies, impression on consumers, kind of labels, number of sales and other critical facts

Bell v. Streetwise Records (New Edition case): (TM RIGHTS BELONG TO BAND’S MEMBERS)– court held that for joint endeavors, the legal task is to determine which party controls or determines the nature and quality of goods.

o Test: Who controls nature and quality of goods?(i) identify quality or characteristic for which group is

known by public(ii) ask who owns and controls that quality or

characteristico in this case, the court held that “new edition” has been identified

by public to be the five members. Robi v. Reed (The Platters case) – a person who remains continuously

involved with the group and is in a position to control the quality of its services retains the right to use the mark. But here, when plf left group, he never returned to it and ceased to perform at all, thus he could not assign or reclaim the right to use.

2) Token Use (NO LONGER USED) – this is technical trademark use on a small quantity of goods in commerce with the express purpose of providing the basis for an application to register the mark under Lanham Act. Is not necessarily accompanied by bona fide intention to engage in significant and ongoing commercial activity under the mark. The intent-to-use provisions of 1988 Amendments to TM act designed to eliminated need for token use as basis for applications to register.

3) Use analogous to Trademark Use – nontechnical use of a TM in connection with the promotion or sale of a product under circumstances do not provide a basis for an application to register, usually because the statutory requirement for use or in connection with the sale of goods has not been met. Although use analogous to TM use was never considered an appropriate basis for application to register, such use has been consistently held sufficient to establish priority rights as against subsequent users of the same or similar marks.

Shalom Children’s Wear – Look at repetitive, widespread activity and whether this activity reaches a substantial proportion of the

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user’s relevant consumers. In this case, court held that promotional use was not legally sufficient to establish use analogous to TM use.

4) Advertising and Promotion as Use – even without sale, advertising and promotion is sufficient to obtain rights in a mark as long as they occur within a commercially reasonable time prior to the actual rendition of service and as long as the totality of the acts creates association of the goods and services with the user.

Marry Stadium Authority v. Becker (Camden Yards case)- Becker started to use “Camden yard” on his shirts. Md Stadium

started to promote the name first but was not in business yet.- Court barred individual seller of T-shirts from using Camden

Yards logo even though Maryland stadium authority had not actually used the logo in commerce. The Stadium has TM because the promotion was followed by service in reasonable time.

5) Extraterritorial Use Buti v. Impressa Perosa (International Adversing case)

o There was advertising in US – free meal voucher and t-shirt.o The court found no TM violation because restaurant is located in

Milan, so there wouldn’t be commerce in US for US customers. Also, no plan to follow up with the business plan in US.

International Bancorp v. Societes des Bains de mer et du cercles des Entragers Monaco (Minority view)o Casino de Monte Carlo in Monaco sued IB for using name and

pictures of their casino on IB’s casino website.o The court concluded that since US citizens go to CMC to gamble,

advertising and service was rendered to US citizens which constitute foreign trade. Foreign trade is commerce which Congress can regulate, thus “Casino de Monte Carlo” suffices to Lanham Act protection since it satisfies use in commerce requirement.

o PROBLEMATIC and CONTROVERSIAL because it implies that anywhere US citizens go, there is going to be commerce.

C. Priority & Use- REQUIREMENT OF OPEN USE: to acquire TM rights, there has to be an

“open use,” which is a use has to be made to relevant class of purchasers or prospective purchasers since a TM is intended to identify goods and distinguish those goods from those manufactured or sold by others. Undisclosed, internal shipments are generally inadequate to support the denomination of use.

- Blue Bell v. Farah Manufacturing (MERE ADOPTION AND INTERNAL USE NOT ENOUGH; USE MUST BE SUFFICIENTLY PUBLIC TO ASSOCIATE GOODS WITH PRODUCER): two manufacturers of men’s clothing created identical TMs for goods substantially identical in appearance. Court found that evidence showing adoption and use in a way sufficiently public to identify or distinguish marked goods is what’s necessary to establish appropriation of a mark. (showing the goods to managers and consumers is not

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enough. Need shipping of goods across the state lines) Here, court held that mere adoption of a mark, without bona fide use, in an attempt to secure the mark for the future, will not create TM rights.

- Lanham Act bars registration of a mark that another person has not abandoned if use of that mark by the applicant would be likely to cause confusion, mistake or deceit

- Prior Use1) Pre-Lanham Act Rule (United Drug) – when a user of a mark or name gets

registration, they have rights anywhere in the country, except in the geographical locale where another user had established use prior to registration

2) Post-Lanham Act Rule. The rights of a Senior Registrant Against a Preregistration User (Thrifty) – Lanham Act says that constructive use based on federal registration exists throughout the country. The key is constructive use that comes into play upon registration under Lanham Act.

RULE : federal registration does not affect those rights already established by good faith junior users

RULE : a junior user has the right to continue the use within the limited area in which it has been established despite registration and a federal registrant cannot even enter the geographical market of a junior user who established its rights prior to registration

RULE : although senior user has federal registration and has the right to federal protection, he cannot enjoin the junior user from its established market nor can he enter that market himself

RULE : the senior registrant is entitled to prohibit junior user from expanding beyond limits of established market

Dawn Donut Co. v Hart’s Food Stores – so long as the junior user is expanding into an area in which the senior registrant has no intention of entering, there are no grounds upon which to enjoin the junior user from so using the mark, because in this circumstance, there will be no likelihood of confusion which is the basis for infringement

3) Post 1988 Amendment Rule – as of the date you file for registration, it’s as if you are using your mark throughout the country. The 1988 Amendment was meant to eliminate the need for token use.

Lanham Act §7(c) – contingent on the registration of a mark on the principle register by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring priority rights nationwide, as against anyone except those who have, prior to the filing, prior users or those who have applications pending in USPTO.

4) See Lanham Act §33(b)(5) – prior user gets rights if Trademark used before date of registration Trademark is used without knowledge and in good faith Mark is used continuously without abandoning it

D. Concurrent Use – available when more than one person is entitled to use a mark because of actual use prior to any application for the mark, provided that confusion, mistake or deception is unlikely. There’s a general presumption in favor of prior

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users, which means that if applicant is first to use the mark, nationwide registration presumptively belongs to it.

Thrifty Rent-a-Car (JUNIOR USERS HAVE RIGHT TO CONTINUED USE IN LIMITED GEOGRAPHICAL AREA IF USE ESTABLISHED PRIOR TO REGISTRATION): Thrifty rent a car began in 1958 in OK under trade name “Thrifty.” Business expanded and by the time of trial in this case, had become fifth largest retain car rental agency in this country. Thrift cars began in 1962 in MA and remained in MA in Boston and Nantucket areas. Court limited Thrift Cars to sales and advertising to those areas and media it used prior to the day that Thrifty received federal registration of its mark.

o Held : Under Lanham Act §33(b), there’s a limited area exception to the general premise of incontestability Thrifty achieved upon national registration, based on common law rights for remote users established by court on Metcalf case. And Thrift could continue to operate under this exception.

United Drug Co. v. Theodore Rectanus Co. (this is prior to Thrifty)o United Drug sued Theodore for using “Rex”, but Theo did not

know of United Drug.o The court ruled that priority of appropriation is important but it

does not apply when the mark is obtained simultaneously from far distance and marks meant different things.

o (From Metcalf: same marks used in wholly different market is legally insignificant unless it was willful infringement to take benefit of reputation)

o If would be unfair to give right in gross and extend it to wholly separate territory, and United Drug took risk that someone may come up with same TM in remote territory when they did not register the mark timely.

VI. REGISTRATIONA. Advantages to registration

marks can be incontestable – if used continuously for 5 years national registration (you get common law rights in any place you’re not using it

in the country) – registrant gets priority against a party adopting same or similar marks

gives notice or warning to others – will easily be found in TM searches your mark gets presumption of validity you have the possibility of treble damages, costs and atty’s fees bars imports protection against counterfeiting prima facie evidence of validity of mark use of the “R” symbol and other ways to denote federal registration

B. The requirements - Intent to Use ( §1(a) and §1(b) ) § 1(b) – you may apply for a mark even if you’re not presently using the

mark if you have a bona fide intent to use the mark.

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Policy behind intent to use amendment:1. Gives businesses legal certainty, which encourages companies to invest.2. U.S. faced international disadvantage (only holdout country that wouldn’t

allow registration prior to actual use – foreign competitors)3. Eliminates practice of token use which is shady and disadvantages small

businesses. (MAJOR ISSUE: avoids previous, controversial and arguably illegal practice of maintaining a “stable” of marks that essentially were held in reserve, under the subterfuge that they were actually, although minimally used)

o What if someone files intent to use application, how does he litigate against parties who were using the mark before?

1. When you file, you can extend the application up to 3years, and also the application itself takes a year to process. Therefore, you have plenty time of 4 years for bona fide approach and avoid litigation before registration

o Datacel phone case (CONSTRUCTIVE USE DEFENSE CAN BE ASSERTED AS OF ITU DATE) – constructive use provision of Act was intended to foster the filing of an intent to use applications, to give an intent to use applicant superior right over anyone adopting a mark after applicant’s filing date and to prevent a third party from acquiring common law rights in a mark after the filing date of an intent to use application. Court held that the right to rely upon the constructive use date comes into existence with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon this date in an opposition brought by a third party asserting common law rights.

Time limits for filing - § 1(b)(4)(D)(1) – TM office will give you 2-6 mo. extensions and then 2 more years. Thus, if you properly apply, at outer limits, it may be 4 years from initial intent to use application to perfect your rights. (i.e., you have up to 4 years to show you’ve used mark in commerce)

How do you determine if intent is bona fide? Commodore case - Bona fide intent is rebuttable presumption. Where 2 parties are fighting for use of the same mark, where one party cannot show one document or explain why no documents exist, the court will hold no bona fide intent. You can show lack of bona fide intent by creating inferences and presumptions.

Who has rights b/n initial Intent-to-Use Filing and Date of Registration (could be up to 4 years)?

Zirco Corp. v. American Telephone & Telegraph: Constructive use comes into being when intention to use application is filed – applicant files for registration of mark. Opposer starts using mark in interstate commerce after this filing date, but before applicants actually use the mark in commerce. Applicant says they have use as of filing date, while opposer says that constructive use is contingent upon registration.

Rule : court says that opposer’s argument actually defeats the entire purpose of the ITU provision. If opposers argument won, parties could never use the ITU as a shield against bad faith users who try and take advantage of

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applicants who make their intentions known (b/c ITUs are published)

you must show a bona fide intent to use someone cannot attack you and try to enjoin registration for

lack of use if the second user starts using after the application is filed. You have full 4 years to perfect your rights

you similarly can’t enjoin another from using the mark, based on ITU, because you have not yet perfected your rights. BUT at end of 4 years, if your rights are perfected, they will be barred from continued use of the mark if it’s likely to cause confusion.

Two actions to bring in TM suits(1) opposition to registration (after ITU filed)(2) cancellation proceeding (after TM issuance)

- Kodak v. B&H – Intent to use means goods haven’t actually been used in commerce yet. So the court here barred an opposition based on descriptiveness, saying that until the goods are actually used in commerce, it has no way of making a decision whether the goods are inherently descriptive (registrable) or merely descriptive (not registrable). SO, you are not allowed to make an opposition motion for/during an intent to use doctrine.

- Warnervision Entertainment v. Empire of Carolina- Issue: whether the creator of a mark who files an ITU application

can be preliminarily enjoined from engaging in the commercial use required for full registration on motion of the holder of a similar mark who commenced commercial use subsequent to the ITU application but prior to the ITU holder’s commercial use.

- held that ITU applications must be used to defend against injunctions, b/c if they are not valid defenses, then the ITU applicant would effectively be barred from ever being able to show the use necessary to achieve registration. The court felt that this result would encourage unscrupulous entrepreneurs to look in the record for new intent-to-use applications by large companies, rush to make a few sales under same mark and sue the large company, asking for a large settlement to permit the ITU applicant to proced on its plans for use. This vulnerability to pirates is precisely what the ITU enactments were designed to eliminate.

C. Principal Register and Supplemental Register Supplemental Register is for merely descriptive marks The reason you want to register on supplemental register is to give notice of

product you’re developing in order to establish secondary meaning. Upon establishing secondary meaning, you can register mark on principal register.

D. Service Marks1) Trademarks are marks for goods

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2) Servicemarks are marks for services You must designate on your application which kind you wish to register Except for use, trademarks and servicemarks are equivalent Use is more complicated in case of servicemarks As long as service is bona fide and the effect on the sale of goods is only

incidental, there is no reason to refuse registration of service mark To constitute a service mark, a word, phrase or device must be

something more than simply the business name of the enterprise. The test is the use to which the mark is put. The mark must do more than identify the enterprise as a business organization – it must identify and distinguish the service rendered.

E. Collective & Certification Marks – both collective and certification marks are owned by groups, not manufacturers. The owner of both collective and certification marks may not be the producer or provider of the services or products with which the mark is used. (these marks can’t be used by owner or owned by user.)1) Collective marks – signifies group ownership.

- Indicates either that goods or services are produced by members of a collective group or simply indicates membership in a particular group.

- Indication of association with a group primarily defines the collective mark and distinguishes it from a certification mark. While a certification mark generally certifies a characteristic of the product, a collective mark merely indicates association of its producer with a group.

2) Certification mark – certifies characteristic- Used in connection with goods or services to indicate that those products

or services originated in a particular region, or that they are of a particular nature, quality or characteristic, or that they were produced by a member of a particular organization.

- Roquefort cheese case (NO BAR AGAINST GEOGRAPHICAL NAMES FOR CERTIFICATION MARKS) – the bar against geographical names applicable to most trademarks does not apply to certification marks. But cert marks are subject to all other requirements of trademark law, including distinctiveness. So even if cert mark is geographically descriptive, it must be distinctive of geographical region or otherwise distinctive to signify and identify the possession of the particular characteristics for which the mark stands. It is possible for a geographically descriptive term to become ineligibly generic or nongeographically descriptive and lost registrability. For instance, if the term Roquefort no longer identified cheeses that came from a distinct region of France, but instead became descriptive of particular TYPE of blue-veined cheese or generic as indicating a general type of cheese, then the French owners of the mark Roquefort would have no right to registrability.

VII. BARS TO REGISTRATIONA. Lanham § 2(a) – which marks not registrable?

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1) NOTE: proof of distinctiveness cannot avail an applicant who is refused registration under § 2(a). The bar is absolute.

2) False Association Marks – 2(a) prohibits the registration of mark if it “consists of for comprises matter which may falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.

In re White- Applicant used “MOHAWK” on cigarette.- 2(a) was designed to protect the name of an individual or

institution which was not a technical TM or trade name upon which an objection could be made under section 2(d).

- To support objection under 2(a), examiner has burden to1. Mark is the same as or close approximation of the name or identity previously used by another person or institution2. Mark would be recognized as such, in that it points uniquely and unmistakably points to that person or institution3. The person or institution named by the mark is not connected with the activities performed by the applicant under the mark. 4. The fame or reputation of the institution is such that, when the mark is used with the applicant’s good or service, a connection with the person or institution would be presumed.

The court in this case found that Mohawk is the same or close approximation; points uniquely to the Indian tribe; public will think of the tribe when they see and purchase the cigarette.

As for the controversial third question, the court found that even though applicant is member of the tribe, general commercial connection between the applicant and institution is insufficient, rather, it has to be specific commercial connection related to the goods and services – such as endorsement and sponsorship of the goods and services whether written or implied.

3) Immoral marks – In re Bad From Brewery (NON-VERBAL GESTURES ARE

OFFENSIVE ENOUGH TO BAR REGISTRATION) –(1) The giving a figure frog case. TM examiner refused registration based

on immorality(2) The idea is that “is the substantial composite of public offended?”(3) The tribunal did not find the mark offensive because it is a frog, not a

human, and it is not giving a figure to a particular individual or group. 4) Scandalous and Disparaging

Harjo v. Pro Football Inc. (TO DETERMINE IF SOMETHING IS SCANDALOUS, YOU ASK THE WHOLE COUNTRY; FOR DISPARAGEMENT, YOU ASK THE TARGET GROUP) – plf

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arguing that the Washington Redskins trademark is scandalous and disparaging. RULE: ultimately, trademark law should be concerned with how

the public perceives the word – contextual approach Scandalous – applies to general population. Question to ask is,

would the general population perceive the mark as being scandalous?

Disparagement – applies to targeted group. Question to ask is, would the targeted group be disparaged?

Things to think about:o Think about the word in relationship to the marko Thing about the word with respect to marketplace. Place

the term as best you can within marketplaceo Consider all the information to see how the word or design

is qualifiedo Look at how the mark is used

Two step testo What is the likely meaning of the matter in question,

taking into a count not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods or services, and the manner in which the mark is used in the marketplace in connection with the goods or services; and

o If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

McDermott v. San Francisco Women’s Motorcycle – Requirement for opposition of TM on scandalous and immoral base.

A lesbian women group field to register the term “Dykes on Bikes”. A man filed notice of opposition alleging that Dykes offends males, and it is scandalous and immoral.

The court held that an opposer must satisfy TWO JUDICIALLY CREATED REQUIRMENT:

o Must have a REAL INTEREST in the proceedingo Must have a REASONABLE basis for his belief of

damage REASONABLENESS of belief can be supported by TWO

WAYS:o Opposer possesses a trait or characteristic that is “clearly

and directly implicated by the proposed TM”o Using OBJECTIVE EVIDENCE, such as surveys,

petitions or affidavits from public interests groups, to show that others share the reasonableness of the opposer

The court held that the opposer failed to prove reasonableness because the mark is subjectively offensive to him (no

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characteristic or trait), and he failed to provide any objective evidence.

In re Squaw Valley Development Company The term “SQUAW” has an offending meaning to Native

American women, but it is also famous in terms of skiing , SQUAW valley.

The Board of Patent and Trademark Appeals ruled that the term “SQUAW” can be disparaging to Native American women, and there can be cause of action.

However, when the term is used in relation to skiing and ski equipment, public perceives that term in relation to skiing and Squaw valley that it is not offensive and just means a geographic location.

On the other hand if the term is used in other items than skiing, then the term is offensive and disparaging when you apply to commercial items, you have to hold you to the higher standard

o (It is how the public perceives the term to be…)5) § 2(a) Deceptiveness – 3 prong test. This is an absolute bar and cannot be

rescued by showing that the mark has become distinctive through a showing of secondary meaning.

(1) Is there some misdescription of the character, quality, function, composition or use of the goods?

(2) If so, would consumers believe the misdescription / what does the product convey to the consumer?

(3) Whether consumers belief is material to their purchasing decision? The third factor is ultimately the key issue. It’s only deceptively

misdescriptive under § 2(a) if the misdescription is not material to the purchasing decision.

Lovee Lamb case – court found that car seat covers made from synthetic materials was deceptive as the term misdescribed a characteristic of the product (which was not made of lambskin), a fact which purchasers were likely to believe and which was likely to be important to purchasing decision.

- If only the first two prongs are answered in the affirmative, then the mark is deceptively misdescriptive

In re ALP of South Beach Inc.- A New York restaurant wants to register the name “Cafeteria”,

but the restaurant is not a cafeteria style but serving style. Examiner refuses to register

- Test to see if Deceptive under 2(a)1. Is the term misdescriptive of the character, quality, function, composition o ruse of the goods or services?2. If so, are prospective purchasers likely to believe that the misdescription actually describes the goods or services?3. If so, is the disdescription likely to affect the decision to purchase?

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The court finds YES to all three questions.6) 2(d) Confusion – consists of or comprises a mark which so resembles a mark

registered in the Patent and Trademark Office, a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…

NutraSweet Co. v. K&S Foods, Inc. NutraSweet is a registered TM, and K&S tries to register

“NutraSalt” Both are in flavoring market, and court sees “nutra” not giving

information but source of information. KS failed to provide enough information on why the term is not

exclusive – could have provided survey results. The court ruled in favor of the NutraSweet that it is easier for

the consumers to be confused because it is not something they research and buy – they grab them out of way from market.

o I nfringement under § 2(d) Marshall Field & Co. v. Mrs. Fields Cookies

MF owns several TMs such as Marshal Field’s, Marshall Field’s Gourmet, Field’s, Field Gear, and Field Sport. Applicant is a cookie maker and tries to register Mrs. Field’s and MF opposes.

Unlike NutraSweet, the court here found that Marks are not much similar, and they are distinguishable.

MF is a famous to public for department store and although it gourmet department, it makes/sells cookies only once a year around Christmas Court is not convinced that MF is famous in baking – Sporatic activity

On the other hand, Mrs. Field has been in business in many years and has achieved significant degree of fame and has no bad will. Cancellation denied

7) §2(e)(1) deceptively misdescriptive – 2 prong(1) is it misdescriptive?(2) Would consumers believe it?

Registration is more easily refused under this section. But, unlike § 2(a), you can overcome § 2(e)(1) deceptive

misdescription with a showing of secondary meaning8) §2(e)(2) primarily geographically descriptive (can overcome with 2(f))

you can overcome § 2(e)(1) deceptive misdescription with a showing of secondary meaning

registration of marks that would be perceived by potential purchasers as describing or deceptively misdescribing the geographic origin of the goods may be denied under § 2(e)(2).

In re Joint-Stock Company “Baik”o Baik, a Russian company, tries to register “Baikalskaya”,

which means “from Baikal”, for a vodka. Registration was denied based on 2(e)(2) that it is primarily

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geographically descriptive. Applicant argues that Americans have limited knowledge of world geography that it is not understood as geographic term

o The court asks two questions under 2(e)(2): Whether term in the mark sought to be

registered is name of place known generally to the public

Whether the public would make a goods/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place.

o The court finds that the term is primarily geographic and merely descriptive of where it comes from. Court is also not persuaded by the ignorant stupid American argument since there are thousands of Russian originated people living in US.

o T he court is also worried about protecting competition – there are other producers of vodka from that region.

Nantucket case – Tshirts had Nantucket on them. Court said you must ask 3 questions.

(i) Is it primarily a geographic meaning? Is it known to consumers?

(ii) Is it misdescriptive?(iii) Is geographic location known for the goods→is

there a goods/place association?o Court held that if there’s no goods/place

association, then the mark is arbitrary when considered against the goods and thus cannot be refused under § 2(e)(2).

o The court however did not require a showing that the goods/place association was material

o NOTE: examples of goods/place association are Seattle/coffee & Florida/oranges & Buffalo/chicken wings

9) §2(e)(3) primarily geographically deceptively misdescriptive (2(a) plus geographic) – New Test

2 Tests(i) California Innovations Case - NAFTA TEST (NAFTA

CHANGED LANHAM ACT BARRING REGISTRATION IF PRIMARY SIGNIFICANCE OF MARK IS A GENERALLY KNOWN GEOGRAPHIC LOCATION, THE PUBLIC WOULD BELIEVE IT CAME FROM THAT LOCATION AND IT WOULD INFLUENCE THEIR DECISION TO PURCHASE)

o NAFTA obliterated the distinction b/n geographically deceptive marks and primarily geographically deceptively

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misdescriptive marks. After NAFTA, geographically deceptively misdescriptive marks are treated the same way as geographically deceptive marks. Both focus on the deception or fraud of the consumer.

o The relatively easy showing of a goods/place association without proof that the association is material to the decision is not justified. Now, the denial of registration by the PTO is not justified unless there’s a showing that the goods/place association made by the consumer is material to the consumer’s decision to purchase those goods.

o if secondary meaning has been acquired by Dec. 9, 1993, then you look to:1) whether its primarily geographically significant (is

primary significance of mark a generally known geographic location)

2) would consumers believe its from that place?3) Is it material to their decision?

o If no secondary meaning by 12/9/93 – it mirrors § 2(a) test4) Is the term misdescriptive of the geographic origin

of the goods?5) If so, are prospective purchasers likely to believe

the geographic misdescription?6) If so, is the geographic misdescription likely to

affect the decision to buy? (this is the new edition)10) Geographic terms connected with wines and sprits (1/1/96)

Before 1996, these terms were OK, but not now.11) §2(f) – NAFTA Amendment – If you have established secondary meaning in

geographically deceptively misdescriptive mark before December 8, 1993, you will not be barred from registering your mark.

“Except as expressly excluded in subsection (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.”

B. Lanham § 2(e)(4) – marks that are primarily merely a SURNAME are per se not federally registrable. (need secondary meaning)

In re Quadrillion Publishing Ltd. – Refusal on basis of surname Intent to use application was filed for the mark “BRAMLEY” for

books, magazines, and stationary items, but the examiner refused based on that it is a surname.

Once the examiner makes a prima facie case that the mark is primarily surname, the burden shifts to the applicant to prove otherwise.

UNDER 2(e)(4), THERE ARE FOUR FACTORS (from Benthin case):

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(1) The degree of surname rareness(2) Whether anyone connected with applicant has the surname(3) Whether the term has any recognized meaning other than that of a

surname(4) The structure and pronunciation or “look and sound” of the surname The court held that Bramley appears to consumers as primarily merely

surname, even if there are relatively few people in the US with this surname; no one with the surname is connected to the applicant’s organization; Bramley has not acquired significant meaning among public; and the meaning of the surname is remote in England and nonexistence in US. FAILS THE TEST

ONLY REGISTRATION BARRED UNDER 2(e)(1)(2) & (4) – (merely descriptive , deceptively misdescriptive; primarily geographically misdescriptive; primarily merely surname) - CAN BE OVERCOME WITH SECONDARY MEANING. WITH THESE YOU ONLY ASK TWO QUESTIONS. THERE’S NO REQUIREMENT OF MATERIALITY. IT’S EASIER TO BE BARRED FROM INITIAL REGISTRATION BASED ON THESE PROVISIONS, BUT IT’S NOT FATAL, BECAUSE YOU CAN OVERCOME THE INTIAL BAR BY SHOWING THAT THE MARK HAS ACQUIRED SECONDARY MEANING

C. Functionality § (2)(e)(5) – trademarks may be refused registration if the mark comprises any matter that, as a whole, is functional.

Definition of legally functional – a product’s feature is functional and cannot serve as a trademark if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant, non-reputation-related disadvantage.

You can’t overcome functionality with secondary meaning Major policy reason: you can’t register functional marks b/c it would result in

major anticompetitive issues Mere possession of functional attributes is insufficient to bar registration. The

question is not whether the device is functional but whether its sole purpose is utilitarian.

In re Morton-Norwich (SPRAY BOTTLE DESIGN NOT FUNCTIONAL, THUS REGISTRABLE) – existence of an expired utility patent which disclosed the utilitarian advantage of the design sought to be registered as well as the originator of the design touting advantages through advertising may be viewed as evidence of functionality. The court held here that the design was not functional and that they could register the shape of the bottle. Basically, the court reasoned that since the policy for barring registration of functional goods lies in its effect on competition, the case here turned on whether there were other alternatives available. Since the court found that there were, the court found that the shape could be registered as trademark.

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1) De Jure Functional – not protectable as TM2) De Facto Functional – although design is directed to particular performance, it

may be legally recognized as indication of source In re Babies Beat (BABY BOTTLE IS DE JURE FUNCTIONAL AND

NOT REGISTRABLE) – TM office has the burden of showing that design is truly functional if they want to bar registration.

In re Weber (ROUND SHAPE OF GRILL WAS REGISTRABLE B/C THERE WAS AT LEAST 1 SUITABLE ALTERNATIVE DESIGN) – court found that the round shape of the grill could be registered by applicants. Court determined that the evidence indicated that a wide variety of alternative designs existed. The rule is that as long as there is at least one suitable alternative, the registration will not be barred on functionality grounds. The court said that the possibility of eventually “running out” of other shapes did not matter; as long as there is one left, competitors are not disadvantaged

Aesthetic Functionality (BLACK MOTORS ON BOATS COURT HELD WERE FUNCTIONAL AND NOT REGISTRABLE) – essential to visual appeal of the goods or services. Best example of this is a case dealing with motors on boats. One company makes black motors and wants to trademark the black motors. The applicant says that the color indicates source of the maker of the motors, but this color will be the most sought after for various reasons. Thus, they did not get the TM.

In re Howard Leight Industries LLC - share of earplug is functional and not registerable as TM (de jure)

(a) Applicant wants to register shape of earplug as TM(b) Four factors when considering functionality and deciding de jure

functionalityo The existence of a utility patent disclosing

the utilitarian advantages of the designo Advertising materials in which the

originator of the design touts the design’s utilitarian advantageso The availability to competitors of

functionally equivalent designso Facts indicating that the design results in a

comparatively simple or cheap method of manufacturing the product.

The court in this case found that the design of the ear plug is purely functional which is necessary for the operation/function of the good, and thus it is not distinct.

o The expired utility patent supports the design’s functionality – patent is vital significance.

In re Gibson Guitar Corp. – shape of guitar not registerable as TM.o Same 4 factor testo The court decides first and last factors do not apply to the case, but

the second and third factors do:

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o The advertisement of the Gibson guitar describes about utilitarian advantages of the shape, and even though it is not clear whether there is alternative design, the applicant did not show that other shapes which could produce similar sound, which competitors need not explore.

TrafFix Devices Inc. v. Marketing Displays Inc.o T wanted to register shape of spring juxtapositions and its dual spring

design.o Court finds it unregistrable because of previous utility patent, and

also that the dual spring design is the reason that the device work, and that the other designed need not be attempted.

VIII. THE REGISTRATION PROCESSA. Initially

1) What are people’s attachment to the mark? Why does this person want this mark?

2) Think about bars to registration (literally § 2 of Lanham Act)- Is it generic?- Is it surname?- Is it geographic?- Is it name of someone famous?

3) Clearance search – look to see if mark is being used- Federal searches- State searches- Business records (common law usage)- Domain name searches

4) USPTO “knockout search” – If there’s something directly on target that precludes you from registering mark, why continue

B. Filing Registration- Don’t need to be an attorney- Can E-file- There’s no necessary form for a TM application- You can apply for the same mark in different TM classes- Cost: 335 per TM class. Cost is something to take into consideration when

determining how many marks to apply forC. Maintaining registration

- Renewal statements and fees at precise times- Affidavits stating you’ve continuously used mark

D. Refusal- You usually get some kind of initial refusal- But you can respond and use the case law to your advantage- You can work with the TM office at this step to determine exactly what you need

to fix

IX. LOSS OF TRADEMARK RIGHTS

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A. Genericism You cannot get a TM for something that’s generic, no matter how distinctive of

the owner’s goods or services it becomes. It inhibits competitors from being able to describe their own products.

A generic term actually defines the product or service. Bayer (CONSUMERS KNEW ASPIRIN ONLY BY NAME AND NOT BY

MANUFACTURER, THUS BAYER LOST TM RIGHT) – Bayer Drug sues party for use of the word aspirin. Court says the test for genericism is whether consumers think first of the product aspirin coming from its source, Bayer or whether they believe aspirin is the name brand. Court said if they allow Bayer to continue a monopoly over aspirin, it will deprive the defendant and the pharmaceutical trade in general of the right to market the drug in the only description consumers understand.

1) Key Questions to Ask - What do consumers think of the word?- How have TM owners themselves used the word- Survey evidence – what does actual consumer think?

King-Seeley Thermos Co. v. Aladdin Industries – K has been using “Thermos” for over fifty year, but survey reveals that the mark has been turned in to public domain to mean vacuum bottle or container – 75% of survey pool were not aware of TM significance of Thermos. Court allowed K to use Thermo with capital T, but allowed Aladdin to sue thermos without T and words such as genuine or original.

E.I. DuPont de Nemours & Co. v. Yoshida International Inc. The “TEFLON” non-stick cookware coating. One of the

surveys show that substantial majority of the public believes that the term is brand name. The court acknowledges the TM distinctive and not in pubic domain.

- Is the word in the dictionary?2) Failure to police against genericism – one factor that may have influenced the

court in Aspirin case is the trademark proprietor’s failure to us the term in a trademark fashion or failure to police other’s use of the term.

- Cellophane case (CELLOPHANE GENERICIZED DUE TO COMPANY’S FAILURE TO POLICE)– failure of Dupont Cellophane Co. to police use of term cellophane led to genericism of the TM.

3) De Facto Secondary Meaning: Two situations: 1) the public knows the source of the good, but does not recognize it as brand name – when there is only one producer either patent or others unwilling to compete; 2) generic term acquires meaning as brand name after extensive advertisement and marketing. HOWEVER, THERE IS NO TM PROTECTION IN BOTH CASES.

- a generic term cannot be converted into a trademark by means of de facto secondary meaning.

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- If the term initially was or has become the common name of the goods, competitors must be able to describe the goods by their commonly recognized names

- Reflects the legal conclusion that even if the public is aware that there has been only one source for the goods whose term is at issue, or even if the public further perceives a term as a brand name, that term must be held free for competitive use if it is in fact the commonly recognized name of the goods.

- Examples include “lite beer” & “hogs” for motorcycles- America Online Inc. v. AT&T Corp. (EVEN WHERE COMPANY

REPEATEDLY USES WORDS OR TERMS TO DESCRIBE PRODUCT OR SERVICE, THOSE WORDS CANNOT BE TM-ED IF USED IN THEIR RECOGNIZABLE, EVERYDAY SENSE)– court held that AOL’s use of “you have mail, buddy list, IM” fell within the heartland of common usage and meaning and therefore AOL could not exclude others form using the same words in connection with their e-mail service. Based this on 2 things. First, AOL uses “you have mail” functionally – consistent with that phrase’s common meaning – to tell its subscribers that they have e-mail. Second, others in the relevant industry use and continue to use “you have mail” or a similar phrase to announce presence of an e-mail message.

o Rule : repeated use of ordinary words functioning within the heartland of their ordinary meaning and not distinctive, cannot give AOL a proprietary right over those words, even if an association develops b/n AOL and those words.

- Harley Davidson v. Grottanellio Court finds that the term “hog” is generic because it was in use

among motorist before HD adopted the term- TE-TA-MA Truth Foundation v. World Church of the Creator

o Court find “Church of Creator” descriptive, not generic, and rules that giving exclusive right over the term is not problematic because there are many other alternative terms.

- Dial 1-800-[G-E-N-E-R-I-C]o Dial-a-Matress: M-A-T-T-R-E-S and 1-800-M-A-T-T_R-E-So P does not lose the right to protection against D ’ s use of a

confusingly similar number and a confusingly similar set of letters that correlate with that number o n the telephone dial just because the letters spell a generic term.

o The principles do not require that a competitor remain free to confuse the public with a telephone number of the letters identifying that number that are deceptively similar to those of a first user.

- Teflon; Thermos, etc. – look to what the words’ primary significance is to consumer. Does it indicate the product or the source?

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B. Abandonment – a mark is deemed only to have been abandoned if acts of abandonment as well as actual intent to abandon are present. Nonuse does not constitute abandonment without an intent not to use. Even if an owner has failed completely to use its mark, the abandonment exception will not apply unless the owner has no intent to use the mark anymore. But 3 consecutive years raises presumption of abandonment.1) § 45 – mark shall be deemed abandoned when:

(a) its use has been discontinued with intent not to resume such use. Intent may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment

(b) 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

(c) Presumption of abandonment can be rebutted2) Intent standard – looks to intent of TM owner. If they intend not to resume

use, that’s all you need. Intent not to use can occur in under 3 years (i.e., if you have an express statement of intent)

3) Doctrine of excusable nonuse – You can not use mark for over 3 years and still not have abandonment. What matters most is intent, not duration of time. The reason for nonuse can be explained away and is referred to as “excusable non use”

4) Rebuttable presumption – upon showing of 3 years of nonuse, the burden to rebut the presumption is on the prior user who must demonstrate an intent to resume use

Silverman v. CBS Inc. (INTENT NOT TO RESUME USE IN REASONABLY FORESEEABLE FUTURE IS ABANDONMENT) – CBS phased out racist comedy show Amos and Andy. Appellant Silverman wanted to create a musical comedy based on Amos and Andy characters. CBS said that they had not intended to abandon, but were planning on using characters at some point in the future.

o Held : this case clarifies the intent standard. The intent to not to resume use within the reasonably foreseeable future will be deemed abandonment. Time is relevant. A mark is abandoned once use has been discontinued with an intent not to resume within the reasonably foreseeable future. This standard protects against the forfeiture of marks by proprietors who are temporarily unable to continue using them, but also prevents warehousing of marks, which impedes commerce and competition.

o Note : noncommercial use such as licensing and challenges to infringers will not equate to use. Such uses do not sufficiently rekindle the public’s identification of the mark with the proprietor, which is the essential condition for trademark protection.

C. Nonuse

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1) 1) Marks that have been abandoned but still have meaning – even long after a producer has ceased exploiting a mark, the term may continue to carry considerable residual goodwill. Most often, the mark’s goodwill continues to go to the benefit of the producer. Even though the mark is no longer being used, the public continues to associate it with its former user.

MLB Proprs. V. Sed Non Loet Denarious (Brooklyn Dodgers case)(ONE CANNOT RECLAIM RIGHTS AFTER ABANDONMENT IF THEY DISCOVER THEIR ABANDONED MARK HAD VALUE)– the mark still has value, but that does not mean a trademark owner can reclaim the mark when it realizes later that it’s still valuable. In this case the court held for the diner and claimed mark had been abandoned

Indianapolis Colts Inc. (Baltimore colts case)(WHERE 2 COMPETITORS TRYNG TO USE SAME MARK, LAW WILL BLOCK NEWCOMER FROM CLAIMING ABANDONMENT) – where competitors are trying to use the mark, the result will come out differently. The defection of the Baltimore Colts to Indianapolis, while sudden, did not constitute abandonment such that a new team in the Canadian Football League could be named the Baltimore Colts

D. Assignment in Gross – generally an assignment of a TM and its accompanying goodwill will entitle the assignee to “step into the shoes” of the assignor, gaining whatever priority the assignor might have had in the mark. But where a TM has been assigned “in gross” (without the accompanying goodwill), then the assignment is invalid and the assignee must instead rely upon his or her own use to establish priority1) Clark v. Heartland (GOODWILL IS ONLY TRANSFERRED TO

ASSIGNEE WHERE THE MARK MEANS THE SAME THING TO CONSUMERS BEFORE AND AFTER TRANSITION) – two competitors wanted rights to use the name Heartland in connection with their business operations. Although plaintiffs began using the name Heartland after defendants, plfs claimed priority b/c they had acquired an assignment of the Heartland name from Sears.

Rule : The key question is whether plfs produced a product “substantially similar” to that of the assignor such that customers would not be deceived or harmed. It is not merely the quality of the product but its similarity to that produced by the assignor that determines whether goodwill has been transferred. You must carry on business such that the mark means the same thing to customers

E. Naked Licensing – when a registrant authorizes others to use the mark without any regard for either how it is used or with what products it is used and its quality, this is naked licensing and will constitute abandonment. In TM, there’s the idea that mark is representative of consistent service or product. Licensing of goodwill can be under narrow circumstances.1) Barcamerican International USA Trust v. Tyfield Importers, Inc (TM

OWNER CAN GRANT LICENSE, BUT NEED QUAILITY CONTROL

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OVER THE LICENSEE OR IT IS NAKED LICENSING AND DEEMED ABANDONED) – B granted license if TM ‘Da Vinci’ to Renaissance, but without any quality control provision. B played no meaningful role in holding the wine to a standard of quality, and thus created naked licensing.

Rule: failure to engage in adequately quality controlled licensing constitutes naked licensing abandonment that negates any prior use that earlier owner established

First thing to look for in licensing agreement is quality control must be constantly maintained by TM owner

F. Failure to Police – Acts or omissions that cause the mark to lose significance include failure to police. When a registrant allows a mark to be used in such a way that it loses its distinctiveness, legal abandonment may occur even though there’s no intent to discontinue use.

X. STATUTORY DEFENSES / INCONTESTABILITYA. Statutory Definition § 15 – the right of a registrant to use a registered mark in

commerce for the goods or services on or in connection with the mark that has been in continuous use for 5 consecutive years subsequent to date of registration and is still in commerce shall be incontestable. 1) allows registrant who has complied with incontestability provisions to bring an

infringement action and forecloses the defendant from defending on the basis of any defense other than those in statute

2) allows registrant to plead incontestability in response to claims of another3) Park-n-Fly (INCONTESTABILITY CANNOT BE CHALLENGED ON

BASIS THAT MARK IS MERELY DESCRIPTIVE) – even though TM office made a mistake by registering the mark in the first place, the court will not cancel the mark simply because it’s merely descriptive, b/c it has established incontestability. Congress expressly provided in §33(b) and § 15 that in incontestable mark could be challenged on specific grounds and one of those grounds is not mere descriptiveness.

Rule : holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that mark is merely descriptive

B. Defenses to Incontestably Registered Marks § 33 – provides that a registration is prima facie evidence of the registrant’s right to exclusive use of registered mark in connection with the goods or services covered by registration subject to the exceptions set forth in §33(b). §33(b) gives 8 exceptions to a registered mark’s incontestable status as acquired under §15.1) Fraudulent acquisition of TM registration or of incontestable right to use

mark – encompasses only deliberate falsehoods intended to deceive the PTO in connection with registration proceedings or the incontestability, continuing use or renewal affidavits

2) Abandonment of the mark – always grounds for canceling a mark at any time and may also be raised as a defense in infringement suit

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3) Use of mark to misrepresent source – intentionally false and misleading designations of origin, nature or ingredients of registrant’s goods. Courts construe this narrowly.

4) Fair use5) Limited territory defense – available to a junior user who adopted the mark

innocently before the senior user registered it, and who has used the mark continuously ever since. The benefits of the defense are restricted to the area of continuous use by the junior user prior to the plf’s registration

6) Prior registration by defendant – where alleged infringer registered and used the mark prior to the registration of plf and did not abandon it, the senior user may continue to use its mark, but only within the area where it was used prior to registration by plf

7) Antitrust8) Equitable principles – includes laches, estoppel and acquiescence

C. Other defenses or challenges to incontestability1) Prior state rights (§15)2) Continuous use3) Generic (§15(4)) no one can compete4) Functional - no one can compete5) Abandonment 6) Collective and certification marks (§4) if merchant and owner are the same, you

can cancel even if mark is incontestableD. Lanham Act §14 – Cancelation of Registration

You can cancel the mark within five year window, but you can cancel try to cancel the mark anytime if:

1) Generic2) Functional3) Abandoned4) Fraud5) Misrepresentation of the source/use

E. Lanham Act § 33 - Defenses to Incontestability Mark was obtained fraudulently Mark has been abandoned Used by or with permission of the registrant Misrepresents the source of the goods or services Names, descriptive terms, geographic origin Limited territory defense Prior registration by D Violation of Anti-trust Equitable principals – Laches Functionality

F. Lanham Act § 2(e) – IF YOU WANT TO CHALLENGE INCONTESTABILITY, DO IT IN FIVE YEARS, BUT IF YOU WNA TO CHALLENGE THE GENERLA VAILIDITY OF THE MARK, DO IT ANYTIME

§ 2(a), (b), (c)

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G. These claims are trumped by incontestability. These are the only grounds barred when someone has incontestable mark.1) descriptiveness2) merely a surname3) geographically descriptive4) geographically deceptively misdescriptive

H. Policy behind incontestability is that it provides an incentive for those in the industry to challenge entrants into the market early. After 5 years in the market, they cannot assert challenge because of presumption of incontestability.

I. LATCHES - § 33 (b)(9) Defense of “you waited too long to sue me” – no exact time frame Policy: laches is founded on the notion that equity aids the vigilant and not

those who slumber on their rights. Pro-Football, Inc. v. Harjo

Seven American Indians filed petition to cancel the TM of Redskins. Pro-football uses latches as one of the defenses

Pro-football has burden to prove:1. Lack of diligence by the party against whom

the defense is asserted2. Prejudice to the party asserting the defense

Court says latches is a defense to § 14 cancellation, and it runs only from the time a party has reached his majority, not at the time of registration

Legal/trial prejudice- Consider which the delay resulted in a “loss of evidence or

witnesses supporting D’s position Economic prejudice

- Consider owner’s investment in the marks during the years, and whether the owner would have taken a different court of action, such as abandonment, had the petitioner acted more diligently in seeking cancellation.

Progressive Encroachment A has TM, then B uses similar TM. A does nothing because he thinks

TM is not in conflict, However, Their TMs may change over time and uses will also change. A can use progressive Encroachment.

Ex) Tony the tiger cereal and Exxon mobile tiger- At some point, Kellogg determines not to sue Exxon. However,

Exxon tiger increasingly become more familiar to Kellogg and starts selling food at their gas stations including cereals

- Exxon: you should have acted before. We have been suing this tiger for long.

- Kellogg: Progressive Encroachement

THERE IS LATCHES CONCERN IN ALMOST EVERY TM CASE

XI. INFRINGEMENT

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A. When alleging infringement Use in commerce (interstate commerce) Likely to cause confusion about the source of TM

Relevant customers would be confused Customers are confused about:

When consumers recall of a TM it does/not give confusion with other TM

Has to do more than recalling TM to establish actual confusion when customers see the mark- It has to make people recall the mark and think either than

company is running the business or the company allowed the other to use the mark (very narrow)

B. Litigation of Likelihood of confusion §32(1) – any person who without consent of the registrant uses in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive…shall be liable in a civil action by the registrant.

If you are owner of the registered mark, you can claim an infringemento Does not work to those who are just using the mark, but not

registered The infringer has to be using the mark – Commercial Activity The question is: What are the good and businesses, and would it cause

confusion? [§ 40(a): right of TM owners who did not register (has to be in

commercial use)§ 43(a) cause to create confusion, deceive…]

C. What is confusion? Corel v. MedicAlert (CONSUMERS IN RELEVANT MARKET

NEED TO BE CONFUSED) – if its just legal authorization, then that’s not actual confusion. The question is: by its use, do consumers in the relevant market believe MedicAlert endorsed Corel’s product? If so, its not a source of origin issue.

D. Who needs to be confused? The relevant consumersE. What is “likelihood of confusion”? You can bring an action against a defendant

who hasn’t yet used mark in commerce, but has plans to. The standard is that the confusion has to be more than possible, but must be probable.

F. The Test of Confusion - The Polaroid Factors (COURTS USE 8+ FACTORS TO ANALYZE LIKELIHOOD OF CONFUSION BY RELEVANT CONSUMERS) – 2d circuit laid out 8 factors for evaluating likelihood of confusion b/n nonidentical goods or services1) Strength of plf’s mark. The stronger the mark, the greater the greater

protection. Look to consumer recognition or secondary meaning. Look to spectrum of distinctiveness. If arbitrary and fanciful with strong secondary meaning, then its strong mark.

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Ice Breaker case – even though the mark is strong on spectrum of distinctiveness, the use of “ice” by multiple third parties extensively in the same type of market, this third party use decreased secondary meaning and thus Ice breakers is a weak mark, entitled to little protection.

2) Degree of similarity b/n plf’s and def’s mark Similarity of marks is examined on 3 levels – sight, sound and meaning.

Do the marks sound alike? Do they look alike when written? These elements are interrelated so that they are additive (there is a

greater likelihood of confusion as more of these similarities exist. These elements are also each independently sufficient, although not

necessarily so The greater the similarity, the greater the protection against infringers

3) The proximity of goods or services Even to the extent that marks may not be very similar, proximity of

goods or services may be so great as to tip the balance. But marks that are nearly identical may be noninfringing if they are used

on entirely unrelated goods or services. Proximity of goods is determined by inquiring whether the products

or services are similar in the eyes of the average consumer From the standpoint of the consumer, goods are proximate when they

serve the same purposes, relate to the same activities, or fulfill the same needs

The broader the market and product definition are, the more likely it is that goods will be found proximate

4) Likelihood that plf will bridge the gap The issue here is whether the 2 companies are likely to compete directly

in the same market. This occurs where the first user sells its products in one field and the

second user sells its products in closely related field, into which the first user might expand, thereby “bridging the gap”

Expansion of goods to unrelated fields5) Evidence of actual confusion.

Evidence of actual consumer confusion provides strong support for a finding of likelihood of confusion (ex. Survey). But the failure to prove instances of actual confusion is not fatal and not determinative.

6) Def’s good faith in adopting mark Intent may be relevant in the close case. Where intentional act is

involved, a court might justifiably conclude in a close case that confusion is likely

Did D accidently come up with the TM, or was it a calculated attempt?7) Quality of def’s product or service8) Sophistication of buyers

What kind of level of care are the consumers going to put in discovering who the manufacturer is. (not level of consumers’ education, but there is room to play)

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When dealing, for example, with impulse buying in a supermarket where goods are stocked closely together and where the consumer may be relatively inattentive, confusion may be likely and common

When considering purchases where consumers exercise sophisticated judgments, such as cars or technical equipment, confusion may almost never exist

9) Other factors(a) channels of marketing(b) nature of senior users’ priority(c) senior users delay(d) harm to defendant (equitable)

Note: this list is not exhaustive Courts pay most attention to the first 3 factors E&J Gallo Winery v. Consorzio Del Gallo Nero (WINE

PRODUCER BANNED FROM USING GALLO MARK ON BOTTLE, PRIMARILY B/C IT WAS SIMILAR PRODUCT AND SIMILAR CHANNELS OF MARKETING) – action for infringement brought by E&J Gallo brought against defendant Gallo nero for use of plf’s mark Gallo. Evaluation under Polaroid factors.

o Strength of plf’s mark – plf spent enormous amount of time and money on sales of advertising. Def argues that Gallo is only a surname, but court finds plfs expenditures are enough to overcome merely a surname argument

o Similarity of marks – Gallo for botho Sophistication of buyers – the American wine buyers are

the relevant consumers. Gallo primarily caters to low-end wine purchasers. This is place for argument. Usually the less sophisticated consumers are, the more likely they are to be confused

o Proximity – both are involved with wine, although different brands

o Marketing channels – both are sold in wine stores and other retail establishments. But you can make an argument that one is high end and other is low end.

o Evidence of confusion . Survey evidence said at least some evidence

Banfi Products corp v. Kendall-Jackson Winery Ltdo Similar to Gallo case but the court did not find

infringement using the same test

G. Relevant public / secondary confusion. NOTE: For exam, you want to clearly identify whether the confusion occurs initial interest, post-sale or point of sale.1) Initial interest confusion

D uses P’s mark to cause initial interest in order to get the customers on to their site (internet particularly)

However, at the point of sale, customer not confused

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Occurs where even though consumer is not confused at purchase, they got their foot in the door by initial interest confusion on part of the consumer

Thus, at some point, we still hold infringer liable Blockbuster case (FOOT IN THE DOOR DOCTRINE - W HERE

CONSUMER EVEN IN STORE B/C OF THE GOODWILL OF ONE’S MARK, THIS MAY CONSTITUTE SOME ACTION IN CONFUSION) – Videobuster is a bad actor in this case. Consumer is not actually confused in this case. But consumers decided that it was to their benefit to buy from Videobuster, so the idea is that Videobuster is stealing the goodwill of Blockbuster and gaining an advantage from them.

Not necessarily just the point of sale, but also the degree of likelihood that customers would be initially attracted to a similar product based on the goodwill built up of familiar mark.\

Mobile Oil Corp v. Pegasuso D uses word “Pegasus” instead of Pegasus picture of P.o D says he did not know that P’s logo was a Pegasus but the court

does not buy this argumento The court uses Polaroid factors and rules that meaning of the

picture and the word is very similar, and even though mobile is not using Pegasus is oil trading market where D is, the market carries over to that market an still causes confusion Strength or mark very important

o D used P’s mark to get initial interest Playboy Enterprises Inc. v. Netscape Communications Corporation

o PB holds two TMs “Playboy” and “Playmate”. D registers over 400 sex-related domain names including these two.

(1) No initial interest confusion(2) The words, as part of the English language, cannot be said

to suggest sponsorship or endorsement of either websites or banner ads

o Holder of a TM may not remove a word from the English language simply by acquiring TM rights in it.

1-800-Contacts, Inc. v. WhenU.com Pop-up advertisement case Whether whenU’s pop up add that appears when computer user

type to access 1-800’s website constitute “use” and infringes 1-800’s TM.

The court says it is not use because it pops up a lot of other advertisement and does not “sell” keyword, and it is not an infringement.

800-JR Cigar, Icn. V. Goto.com, Inc. et al.o Relevant factors of initial interest confusion:

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Product relatedness (whether they are similar and directly compete)

The level of care exercised

2) Post-sale confusion Could be a reputational harm (like dilution) founded on initial

confusion In a post-sale confusion case maybe we should be looking at the

quality of the D’s goods(1) Doesn’t seem like a good rule though(2) You don’t want to entrust your reputation to the hands of another This theory does not have widespread acceptance. It does carry weight

in counter-fitting cases(1) Could he harm regardless of quality because of the rarity/aura of the

item(2) Takes control away from the trademark owner about how their goods

are viewed(3) Confusion not of the purchaser, but instead of other people seeing the

purchaser with the counter-fit goods (not knowing they are knock-off) and how that relates to the company

Mastercrafters Clock (INTENTION TO REAP FINANCIAL BENEFITS OFF OF ANOTHER’S GOODWILL CONSTITUTES UNLAWFUL POACHING) also trade dress case – connecting your trademark with shoddy product could tarnish the reputation. Luxury goods succeed in their scarcity. When knockoffs come along and make a shoddy product, the goodwill of the luxury product diminishes. This case is all about theft of goodwill.

o Held : evidence showed at least some customers would buy plf’s cheaper clock for the purpose of acquiring the prestige gained by displaying what visitors thought was prestigious good. And plf’s intention to reap financial benefits from the poaching of reputation of def’s clock. Where the copying is unlawful (the products are similar) then the intent of the copier becomes relevant: it gives rise to a powerful inference that confusion is likely and puts the burden on the alleged infringer to put forth proof that it was no intentional

3) Point of sale confusion rule is that the relevant concern through a side-by-side comparison, but

whether confusion is likely when only one product is the only product on the shelf.

Foxworthy (NOT SIDE BY SIDE, BUT ASSOCATION AT TIME OF SALE B/N 2 SIMILAR PRODUCTS THAT COUNTS) – Trademark is style of humor. Knockoffs simply reworded statements by Jeff Foxworthy. But the rule is that the relevant concern through a side-

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by-side comparison, but whether confusion is likely when only one product, is the only product on the shelf.

H. Reverse confusion – this occurs when plf has already been using the mark in commerce and defendant who is more well known adopts the similar trademark. (Think of Amazon.com example and lesbian bookstore)

Reverse confusion is when the senior user is a small, not well known user, and the junior user is a large well known user that gains the reputation fast. Generally, it is hard for the small senior user to win without good theory – bad faith, strength never seem to work out for big guys.

Sr user sues junior user People think Senior user infringed Less focused on protecting consumer

2) Dreamwerks (IN REVERSE CONFUSION, THE STRONGER THE DEF’S MARK, THE BETTER CHANCE PLF HAS) – senior user uses mark for Sci-Fi goods. Steven Spielberg comes along and starts DreamWorks studios. If you analyzed this action under traditional Polaroid confusion factors test (strength, similarity, etc.) then Spielberg would undoubtedly win. So they establish notion of reverse confusion so that the big junior user won’t always win.

o In reverse confusion you flip the way you look at things. You look solely to def’s mark. The stronger the def’s mark, the better the case for the plf

o Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc.o one is show one is sportso one has a regular season, one is hired out for showo consumers are sophisticated, they know their teams and playerso no bad faith. Why would Washington want to be associated with

harlem wizardso Attrezzi v. Maytag

o Both sell kitchen ware and appliances, court finds Maytag reverse infringed:

D knew of the mark and decided to use it, sells similar products, marks are similar, uses similar channel, has strong strength of mark.

3) Harms in reverse confusion(i) possibility that senior user would be seen as infringer(ii) may lost right to expand business or use of TMs(iii) may lost control over meaning of mark (associations, connotations

completely taken over by junior user)4) How to handle case differently to allow senior user to win

(i) look only to strength of Junior user’s mark(ii) don’t consider bad faith(iii) Stronger the strength of Jr. user, more likely that the harm is to occur(iv) Similarity factor – house mark helps plaintiff (Sr. user)

I. Contributory infringement – 2 theories of liability

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1) Contributory liability – occurs when defendant has knowingly contributed to another’s infringing acts or intentionally induced another to commit infringing acts. Contributing some means. You’re providing something infringer needs to be able to infringe.

Example: flee market – the person who rents the space to the sellers could be contributorily liable

2) Vicarious liability – occurs when defendant has knowingly contributed to another’s infringing acts or intentionally induced another to commit infringing acts. There is an ability to supervise, but if you fail to supervise, you may receive financial gain. If someone under you is infringing and you could prohibit it but don’t, you could be vicariously liable.

AT&T – Winback sales representatives caused users to believe that Winback was a subsidiary of AT&T.o Rule : hen a principal authorizes its independent contractor agent

to conduct and conclude a transaction with their parties on the principal’s own behalf, and the principal benefits financially from the contracts, the principal will be held liable in an action brought pursuant to § 43(a), based on the agents’ FORESEEABLE infringing actions upon which it would be reasonable for the third party to rely, provided that the third party has no notice that representations are unauthorized.

o It’s required that the misrepresentations be foreseeable and that reliance be reasonable.

3) Negligence vs. willful blindness – Hard Rock Café Case – flea market operator has a policy of cooperating with any TM owner that reports possible infringing activity, but there is no evidence that this policy is ever enforced. HRC inspector saw low-quality, cheap knock-offs of their t-shirts being sold at the flea market and brought infringement action. Court held that in order to hold flea market operator liable, they must suspect wrongdoing and deliberately fail to investigate.(a) negligence – where defendant did not take reasonable steps to detect or

prevent the sale, this suggests mere negligence(b) willful blindness – where a person suspects wrongdoing and deliberately

fails to investigate. They have no affirmative duty to take precautions against sale of counterfeits.

4) Reverse passing off – you’re selling someone else’s goods and trying to pass them off as your own.

Dastar – Dastar copying old WWII programs, changing them minimally and marketing them as their own. Fox challenges this action, saying that Dastar’s sale of these videos infringes upon Fox’s exclusive rights in a book upon which the videos were made

o Held: b/c Dastar was the “origin” of the videos it sold as their own, for purposes of TM law, Fox has no claim under Lanham Act

o § 43(a)(1)(A) – b/c the statute contains the words “by another person”, the SC limits actions to forward passing off only.

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Forward passing off occurs when you put a label on your goods, trying to get consumers to think that someone else’s goods are yours.

o Court determines that the most important issue for TM law in this case is determining what the source of origin is. Here, the court determined that the most natural understanding of the “source of origin” is the producer of the tangible product sold in the marketplace – in this case the tapes sold by Dastar. Stretching that all the way to connote the person or entity that originated the ideas or communications that goods embody would not only stretch the text of Lanham Act but would be more akin to Copyright law. The words of Lanham Act should not be stretched to cover matters typically of no consequence to consumers.

XII. SECTION 43(a)(1) & UNREGISTERED MARKSA. §43(a)(1) – any person who uses in commerce (1) any word, term, name symbol or

device or any combination thereof or (2) any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which:

(A) is likely to cause confusion … as to 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 goods, services or commercial activities shall be liable…

1) NOTE : this language is broader. Uses “any person” and thus allows an unregistered mark holder to bring an infringement action.

2) If you want to bring a § 43(a) action in federal court, but you don’t have a TM, you need to establish(a) use in commerce(b) distinctive use

(1) inherently distinctive(2) acquired secondary meaning

(c) burden on plf to show nonfunctionality3) DC Comics v. Powers

DC owns Superman comic, and Superman has “Daily Planet” newspaper in the story. Powers makes a Daily Planet newspaper.

DC did not register Daily Planet because they could not have intended to use it in commerce, and it was part of package of what DC licensed to other companies. Damage for fictional character becomes real.

The court found infringement due to likelihood of confusion. In order for a unregistered TM owner to win, need to prove:

a) Same eight factors of infringementb) D uses a designationc) Interstate commerce

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d) Connection with good and servicese) Likely to cause confusion, mistake or deception as to origin,

sponsorship or approval of D’s goods or servicesf) P likely to be damaged

4) Reverse passing off – you’re selling someone else’s goods and trying to pass them off as your own.

Dastar – Dastar copying old WWII programs, changing them minimally and marketing them as their own. Fox challenges this action, saying that Dastar’s sale of these videos infringes upon Fox’s exclusive rights in a book upon which the videos were made

o Held: b/c Dastar was the “origin” of the videos it sold as their own, for purposes of TM law, Fox has no claim under Lanham Act

o § 43(a)(1)(A) – b/c the statute contains the words “by another person”, the SC limits actions to forward passing off only. Forward passing off occurs when you put a label on your goods, trying to get consumers to think that someone else’s goods are yours.

o Court determines that the most important issue for TM law in this case is determining what the source of origin is. Here, the court determined that the most natural understanding of the “source of origin” is the producer of the tangible product sold in the marketplace – in this case the tapes sold by Dastar. Stretching that all the way to connote the person or entity that originated the ideas or communications that goods embody would not only stretch the text of Lanham Act but would be more akin to Copyright law. The words of Lanham Act should not be stretched to cover matters typically of no consequence to consumers.

theory of Reverse Passing Off Im selling your good as mine Im pepsi, buying cans of coke, relabeling and

selling it as pepsi Why?

Token use That’s about it. It doesn’t come up very

often 20th century said reverse passing off is what happened in this case—

dastar took off the trademark and then resold the product as dastar’s own there is no false/misrepresentational use of a

trademark here though simply seems unfair 9th circ said this was “bodily appropriation”—does not Polaroid test;

said it was simply reverse passing off defines “origin”

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scalia says that origin means the producer or manufacturer of the thing

here that is Dastar (this is probably the wrong theory) maybe it should be the “holder of goodwill” in the

mark case is very clearly about making a line between copyright and

trademark making sure that 43a is not a catchall

B. Trade Dress1) Taco Cabana – elements of trade dress include vibrant colors, garage doors,

awnings and umbrellas, paintings murals, artifacts, neon, etc. Two Pesos and Taco Cabana both had similar motifs. Two Pesos expanded rapidly into other markets where Taco Cabana was located. Taco Cabana sued Two Pesos for trade dress infringement under § 43(a).

Held : The general rule regarding distinctiveness is that an identifying mark is distinctive and thus capable of being protected if it is EITHER (1) inherently distinctive OR (2) it has acquired secondary meaning. Here, court will not require secondary meaning be acquired to a particular trade dress – product packaging - in order to bring an action under § 43(a). Trade Dress can be inherently distinctive .

The reasoning behind courts decision: For TM’s, if inherently distinctive, then it identifies source and no showing of secondary meaning is required. For Trade Dress, the same statutory scheme is present under § 43(a). Thus, naturally, the same analysis should apply to trade dress.

The is good policy because (1) this kind of rule is good incentive for people to choose inherently distinctive marks / makes it less anticompetitive and (2) where you pick something arbitrary and fanciful, you’re taking less from competitors

NOTE : a restaurant’s design can be considered product packaging. And product packaging can be inherently distinctive.

2) When is design inherently distinctive? Wal-Mart (baby clothes case) – trade dress at issue was a seersucker suit with appliqués of hearts, flowers, etc. Here the court narrows what kind of trade dress can be inherently distinctive.

Courts have held that trade dress can be distinctive in 1 of 2 ways under § 43(a):(a) if it is inherently distinctive – if its intrinsic nature serves to identify

particular source(b) if it has acquired distinctiveness through secondary meaning- in the

minds of the public, the primary significance of mark is to identify source of the product rather than product itself

Held : product design or configuration, like color, is not inherently distinctive. The fact that product design almost invariably serves

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purposes other than source identification renders inherent distinctiveness of product design problematic and more harmful to consumer interests

Product design or configuration applies to children’s clothes and color (Qualitex) and for product design, there can be no inherent distinctiveness. You must show secondary meaning. Thus Trade Dress for product design is only protectable upon showing of secondary meaning .

C. Trade Dress - Functionality Revisited1) §43(a)(3) – in civil action for trade dress infringement, person who asserts the

protection has the burden of proving that the product sought to be protected is not functional.

2) Traffix Devices – product design at issue was a sign with springs to keep it upright. Plf had a utility patent and when patent expired, def copied the design. Plf brought case claiming trade dress infringement.

Held : person who asserts protection has the burden of proving that the matter is not functional. This burden of proof gives force to the well-established rule that trade dress protection cannot be claimed for product features that are functional.

Court here found that utility patent is strong evidence that the features claimed are, in fact, functional. Thus, the burden for the person claiming protection is high in cases where there was a utility patent on the design.

Functionality defined(i) in general, a product’s feature is functional and cannot serve

as a TM if it is essential to the use or purpose of the article (ii) product’s feature is functional if the article or if it affects the

cost or quality of the article(iii) a functional feature is one where exclusive use of the feature

would put competitors at a significant non-reputation related disadvantage

3) Aesthetic Functionality – When aesthetic considerations play an important role in the purchasing

decisions of prospective consumers, a design feature that substantially contributes to the aesthetic appeal of a product may qualify as functional.o Mens Health v. Mens Fitness

The ultimate test of aesthetic functionality, as with utilitarian functionality, is whether the recognition of TM rights would significantly hinder competition.

Courts, who are afraid of trade dress, would tend to err on side of product configuration and thus would require a showing of secondary meaning in order for party to gain the protection sought.

D. Trade Dress Infringement1) Best Cellars case – a wine retailer in New York had a very recognizable store,

including its racking system, its categorization of wines, its lighting, etc. The court in this case conducted a Polaroid-like confusion test to determine whether there was likelihood of confusion b/n trade dress of 2 companies.

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Held : in this case, the court latched onto the bad faith aspect of defendant’s actions. The court felt that the defendant copied the investment and efforts of the plf. Business models are not protectable under any IP regime, but if you think of this in terms of trade dress or property, then you can consider the def’s actions more like stealing and fashion an equitable remedy.

Trade dress has a broad meaning and includes all elements making up the total visual image by which a product is presented to customers, as defined by its overall composition, design, including size, shape, color, texture and graphics.

2) MAJOR POINTS FROM TRADE DRESS INFRINGEMENT(i) the Wal-Mart / Taco cabana requirement that secondary meaning be

shown for product configuration . But product packaging does not require a showing of secondary meaning.

(ii) There’s a disadvantage where a party has a utility patent, b/c it creates a presumption of functionality

XIII. DILUTIONA. Definition: the whittling away of an established trademark’s selling power and

value through its unauthorized use by others upon dissimilar products. Frank Schechter is the father of dilution law The likelihood of dilution occurs when the use of a name or mark by a

subsequent user will lessen the uniqueness of the prior user’s name or mark The essence of dilution is a watering down of the potency of the mark and the

gradual debilitation of its selling power Dilution refers to a loss of distinctiveness, a weakening of a mark’s propensity

to bring to mind a particular product, service or source of either Likelihood of dilution is unnecessary to a finding of dilution Dilution is occasionally found unlikely, because the accused use involves

different goods, although use of the same or a closely similar mark on different goods traditionally has been considered the gravamen of a dilution problem and in spite of the statutes’ express provision for relief “notwithstanding” the absence of competition b/n parties.

The dilution issue raises no question of mistake, deception or confusion. Quite the contrary, the diluting effect can only occur when confusion as to source or origin is absent.

Dilution results when use of a mark by others generates awareness that the mark no longer signifies anything unique, singular or particular, but instead may or does denominate several varying items from varying sources.

Dilution is more conceptual – think about issues fundamentallyB. Trademark Dilution Revision Act of 2006: Section 43(c)

1) The owner of a famous mark that is distinctive, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark in commerce that is likely to cause dilution. Need to Prove:

It is famous

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Term is distinctive D is using your mark in commerce Your fame had to come before their use Likely to cause dilution/confusion

C. Fame vs Distinctiveness 1) Distinctiveness – considered in terms of whether it causes dilution. (can be

inherent or acquired through secondary meaning) Achieving secondary meaning merely establishes the minimum threshold

necessary for TM status: dilution requires a great deal more2) Fame

is a more specialized form of secondary meaning is more than inherently distinctive and more than a showing of secondary

meaning Trademark review commission noted that showing of fame required

employment of a higher standard than fame among an appreciable number of persons in order to be eligible for dilution remedy

Under FTDA, even if a mark is famous, there is no relief unless that mark has been diluted

D. Two Kinds of Dilution – can have any of them even if there is no likelihood of confusion

Dilution by Blurring Association arising from the similarity between a mark and a famous

mark that impairs the distinctiveness of the famous mark.a) Have to show that likely will become diluted – cognitive recall will be

impaired and be slower. Dilution by Tarnishment

Association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark

a) Ex) Tiffany has a secondary meaning, and has one source- upscale luxury. When you impair the upscale source, you are diluting it by tarnishment

b) Ex) Harley-Davidson is one company and produces wide variety of things from motorcycle to toilet paper and put their name on these product. They are no upscale – no tarnishement.

E. Ty (Beanie Babies) – 3 possibilities of dilutiono Blurring – concern that consumer search costs will rise if a trademark

becomes associated with a variety of unrelated products. Consumers will have to think harder-incur as it were a higher imagination cost-to recognize the name as the name of the store. Legislative history has stated that there is a need for the dilution act to prevent such hypothetical anomalies like (Buick aspirin, Schlitz varnish, Kodak pianos)

o Tarnishment – analytically, it is a subset of blurring, since it reduces the distinctness of the trademark as a signifier of the trademarked product or service. For example, if Tiffany’s were the name of a strip club, consumers will not think that the strip club is under common ownership with the jewelry store, but because of the inveterate tendency of the

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human mind to proceed by association, every time they think of the word Tiffany, their image of the jewelry store will be tarnished by the association of the word with the strip joint.

o Free ride – though neither blurring nor tarnishment, someone is still taking a free ride on the investment the owner put into his TM. If appropriation of an aura is forbidden by an expansive concept of dilution, then the benefits of, for example, Tiffany’s jewelry store’s investment in creating a famous name, will be internalized and they will realize the full benefits rather than sharing those with others.

o J. Posner : has a problem with stretching dilution law. Whatever it is, it is certainly not a remedy against a user who threatens to make the mark generic. Although there is a social cost when a mark becomes generic, the trademark owner has to invest in a new TM to identify his brand, there is also a social benefit-namely the addition to ordinary language. An interpretation of dilution law as arming trademark owners to enjoin uses of their mark that while not confusing, threaten to genericize the mark may not be in the public interest. Such a dilution theory exposes parties to endless amounts of litigation

F. Louis Vuitton Mallertier S.A. v. Haute Diggity Dog, LLC LV sued HD for use of the mark “Chewy Vuitton” that it violates LV’s

trademark, trade dress, and copyright. LV seeks an injuction under the FTDA. HDD alleges parody.

Issue here is Dilution – whether HD’s use amounted to dilution of LV’s mark The court found that LV’s mark was neither diluted by blurring nor by

tarnishement In case of Parody, 2nd circuit held many times that “the use of famous

mark in parodies cause no less of distinctiveness, wince the success of the use depends upon the continued association with the plaintiff”

The strength of LV’s mark is not likely to be blurred by a parody dog toy product

No tarnishment here, as when the association is made through harmless or clean puns and parodies, tarnishement is unlikely.

G. 3 Big Dilution Cases – were not in reading but talked about them in class..1) Ringling Bros (4th Circuit) – Circus sues state of Utah under federal law

claiming that Utah’s tourism slogan, “The Greatest Snow on Earth” is so popular because it makes people think of the circus. The issue becomes whether this mental association amounts to dilution.

the end harm at which the dilution statute is aimed is a mark’s selling power not its distinctiveness

the court in interpreting the federal Act require for proof of dilution(i) a sufficient similarity b/n the junior and senior marks to

evoke an instinctive mental association of the two by relevant universe of consumers

(ii) which is the effective cause of

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(iii) an actual lessening of the senior mark’s selling power, expressed as its capacity to identify and distinguish goods or services

court held that proof of dilution under FTDA(old law) requires actual consummated harm and that the fact that there is no phrase “likelihood of dilution” in the statute must be given Congressional deference.

2) Nabisco (2d Circuit) – court here describes dilution as death by 1000 beestings. Court asks at what point do we allow an action for dilution. If you can’t come to court until your mark is actually diluted, its too late for the aggrieved party. The remedy is only injunction and if you can’t get a remedy until you can show actual dilution, then it’s already too late.

Court holds that the absence of the word “likelihood” in FTDA(old law) means something, but that its absence does not mean you must show actual dilution (must be distinctive + )

Court fashions a multi-factor test to use to determine if party is on brink of being harmed. These are factors court may consider, but they’re not limited to just these factors:(i) distinctiveness of mark(ii) similarity of marks(iii) proximity of products(iv) actual confusion(v) sophistication of consumers(vi) geographical limitations(vii) defendant’s predatory intent(viii) interrelationship among distinctiveness of senior mark,

similarity of junior mark and proximity of products(ix) whether def’s use is descriptive or an appropriation of the

TM(x) senior user’s prior laxity(xi) delay in legal action taken by senior user (how long did it

actually take senior user to sue?) it sounds as if the court here is muddling the confusion factors.

But the response to this by courts is generally good and generally adopted. Courts like tests where they can apply factors.

3) Victoria’s Secret (old law) – went to Supreme Court to decide split b/n circuits as to whether you have to show actual dilution or likelihood of dilution. Court ultimately did not agree with either Circuit.

The Court said that it’s more than just likelihood because the statute says a famous mark owner is entitled to relief against another person’s commercial use of a mark or trade name if that use “causes dilution of the distinctive quality. Court says this unambiguously requires a showing of actual dilution.

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But at the same time, the Court said that actual loss does not require proof of economic loss.

Considerations – how would you show actual dilution?- Economic damage like extreme drop-off in sales- Survey evidence showing a diminished view of TM

holder (generally 15% from survey will be credible enough for court)

- Proof of strong mental associationH. What is cost of overbroad dilution interpretation?

1) ability to use certain marks would be limited (if anytime person had to worry about diluting other’s marks, the pool would eventually get smaller as more marks are granted)

2) would be easy to bring dilution claim (would not have to spend lots of money prior to bringing claim to gather great deal of evidence in order to show actual dilution)

3) it would be hard to start a new business4) TM rights would become a boundless monopoly (you might get rights over

those who have protected 1st Amendment rights)

XIV. INTERNET DOMAIN NAMESA. § 43(d)(1)Anticybersquatting Consumer Protection Act (ACPA)

1) push for legislation in response to pressures from parties who were litigating against those who bought domain names of registered TM holders and were selling the domain names back to holders for a profit.

Not limited to gTLDs(generic top level domains – com, net, info, org) but also ccTLDs (country code top level domains – ca, de, kr, jp…)

2) Obectives:a) to protect business owners’ property online; not about actually protecting

consumersb) to protect TM holders against bad faith actorsc) you can bring an action under the ACPA even if you’re not a TM holder,

but you have a property interest in something that’s TM-like3) Test Under ACPA – whether defendant’s domain name is confusingly similar

or famous. It’s mostly a visual test – how similar are the two marks? TNN case (NO CONFUSION B/C THE REASONABLY PRUDENT

CONSUMER WOULD NOT BE CONFUSED) – CBS acquired rights to the Nashville Network and assigned rights to TNN to a subsidiary. TNN.com as started by a guy running a business called the network network that provides consulting an IT training.

o Held: traditionally, likelihood of confusion test is Polaroid test. But that only applies to goods or services that the public would reasonably think possibly came from the same source or though to be affiliated, sponsored by or connected with. Here, court said that a rational buying public could not possibly be confused, because the products are wholly distinct. (no similarity of products and no overlapping channels of marketing)

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o Thus, the test is not whether anyone could possibly be confused but rather would the reasonably prudent consumer be confused.

4) Defendants requirementsa) registers, traffics in or uses domain name

5) plaintiffs’ requirementsa) bad faith – the person’s intent to divert consumers form the mark

owner’s online location to a site accessible under domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of site

(1) Good faith factors- TM or other rights of registrant- Whether name is legal name or nickname- Prior use of domain with bona fide offering of good and

services- Bona fide noncommercial or fair use of mark on website

(2) Bad Faith factors- Intent to divert customers in a way that could harm good will

or tarnish or disparage the mark by creating confusion on sponsorship of the site

- Offer to sell name to TM owner or any third party, or prior pattern of such conduct for financial gain

- ownership of other TM-related domain names- providing false or misleading contact info

b) distinctiveness and fame of markc) confusingly similar or dilutive effect if mark is famous

6) ACPA Remedies Traditional Lanham Act remedies(1) Injunction(2) Actual damages/D’s profits(3) Attorney’s fees(4) Transfer or cancellation of name(5) P may elect recover statutory damage of $1000 to $10000

7) ACPA – In Rem Action Action against domain name where(1) Registrant is not subject to personal jurisdiction or(2) Registrant has provided false contact info and cannot be found

through exercise of due diligence In in rem jurisdiction, it is only required that the state has jurisdiction

over the domain name and that P was not able to find the owner/infringer with due diligence

8) Morrison Foester – plf owned TM rights to firm name. defendant bought this domain name and all others that sounded phonetically like it. Def was harassing the firm publicly, b/c for a moment, those looking for the firm when to def’s

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websites and saw ugly, disparaging, and offensive comments. But once they got to site, there was no possibility of confusion that this was the actual law firm site.

Held: the pivotal question in this case was whether def acted in bad faith. When addressing this question, court looked at following things

o Whether def had any IP rights to any of the domain names he registered

o Whether any domain names consist of the def’s legal name

o Whether there is evidence of prior use by def of domain names

o Whether there’s bona fide noncommercial use of the mark

o Whether there is an actual intent to divert customers from the firm’s online site

o Whether there’s an offer to sell or transfer name for financial gain

o Whether def complied with rules regarding domain name registration

o Adoption of other marks that are confusingly similar to plf’s mark

o Extent to which the mark is or is not distinctive or famous

9) Sporty’s Farm – under ACPA must take several stepsa) first determine whether the mark is distinctive or famous and thus

entitled to ACPA protection (i.e., whether you can sue under 43(a) or under the common law to get protection

b) whether domain name is identical or confusingly similar to plf’s mark or has dilutive effect

c) whether there is a bad faith intent to profit10) Lucas Nursery and Landscaping Inc. v. Grosse

D was unsatisfied with P’s landscape work and made a website named “my lucas landscaping experience”, and put up complaints. D threatened to sue P, D closed the website, then after finding out that P did not have TM of their company name, P opened the website again

Court uses 9 factors of bad faith test in ACPA, and finds no bad faith in Grosse, and rules in favor of Grosse.

11) Note : 4th circuit is important jurisdiction. Internet Solutions who dominates domain name registration is located in Herndon, VA. So the provision for in rem jurisdiction is met when cases are brought within jurisdiction of 4th Circuit.

Harrods – the problem with the def’s use of the mark is not just the bad faith registration. But also that widespread use of the mark will dilute the reputation of Harrods. Court here looks at jurisdiction issue of whether or not in rem jurisdiction gives parties the right to use ACPA provision to bring other claims.

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o Issue : what is the scope of the in rem provision of ACPA §43(d)(2)?

o Held : you can use ACPA provision and get jurisdiction over parties for other kinds of harm, outside of those harms specifically listed in ACPA.

o RULE : the in rem jurisdiction provision of ACPA is not limited to claims of bad faith registration with the intent to profit under ACPA, but also authorizes in rem actions for certain federal infringement and dilution claims.

12) § 43(D) and “GRIPE” sites Lucas Nursery TMI v. Maxwell

- After unsatisfactory experience seeking home to purchase, M posted his complaints at www.trendmakerhome.com. TMI sued for cybersquatting and dilution, but the court ruled that M’s conduct is not the one protected under ACPA.

Mayflower Transit LLC v. Prince- Unsatisfied with P’s service, D made several website in relation

to P’s company name and posted complains. The court ruled in favor of D and held “there was no bad faith intent to profit, and genuine cybergripers are not covered under ACPA”.

Coca-Cola Company v. Purdy- A gripe site that was unrelated to the products or services sold by

the owners of TMs used in the contested domain name. D used abortionismurder.com, my-washingtonpost.com, drinkcoke.com, mycocacola.com, mypepsi.org and others to sell his products.

- The court held against D and found bad intent to profit because the content of website contained no reference to plaintiffs, their products, or their position on abortion.

Bosley Medical Institute, Inc v. Kremer- D made www.BosleyMedical.com to post complaints about his

hair transplant service. The court held that D’s site did not violate Lanham act because it was not in commerce, but remanded ACPA claim for trial noting that section 43(d) does not expressly require commercial use and that other circuits had interpreted it to make non-commercial as well as commercial cybersquatting actionable .

13) Criticism sites –These are OK. Bally Total Fitness Holding Corp. v. Faber

- D permitted to use “Bally’s Sucks” and Bally’s logos on website Crown Pontiac

- Court preliminarily enjoined D from operating a website using the name Crown, Pontiac, Nissan in text or a domain name to divert traffic form P’s site

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- Public Citizen litigation Group got involved and the court granted D’s motion to dissolve the preliminary injucntion

14) Liability of Domain Name Brokers and Domain Name Auctioneers Ford v. Greatdomains.com

- F bought suit against G, an auction site who lists domain names for sale in return for a commission.

- Issue is whether G registers, traffics in, or uses the domain names.

- G did not register or uses domain names so real issue left is “traffics in”

- Traffics in is “referring to transactions that include but not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration”

- The court finds G does not Traffics in, holding that only persons directly transferring or receving a property interest in the domain name can be liable as cybersquatters.

- Court find G merely facilitate transfers and receipt and statute does not cover this.

- Policy: if congress wanted include auctioning, they could have done so. Also prohibiting G’s kind of service significantly hinder the case-by-case analysis in balancing the property interests of TM owners with legitimate interest of internet users, and those who lawfully seek to use others’ TM.

B. ICANN’s Uniform Trademark Domain Name Dispute Resolution Policy (UDRP)1) Took effect on Jan 1, 20002) Applies only to gTLDs (.com, .net, .org, .biz, .info, .name)3) Does not apply to ccTLDs but many ccTLDs have similar dispute policies and

some are administered by WIPO and NAF4) Dispute providers: WIPO, National Arbitration Forum(NAF), and others5) sets forth terms and conditions in connection with a dispute b/n person and any

party other than registrar over the registration and use of an internet domain name

6) this is meant as a vehicle for TM owners7) 85% of time, TM owner wins, but success is lower with three panelists. The

result is not only cancellation of the domain name, but a transfer of the rights to the name to the actual TM owner

8) this is fast process – generally, these actions are resolved in 60 days, and also inexpensive administrative proceeding

9) requires registration of domain name in bad faith and use of domain name in bad faith

world wrestling – this was first UDRP case. the defendant had no rights in the use of the domain name and offered to sell it to wrestling fed only

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3 days after registration. But the name must not only be registered in bad faith, but it must also be used in bad faith.

o Held: in these kinds of cases, courts will often look for a form of “use” outside of our traditional notions of use in order to find bad faith use. For example, here, the intention to sell the name for a profit equaled bad faith use by the def.

o The UDRP policy itself says that the activity of offering for sale is bad faith use.

o This case, in effect, said wherever there’s 1) a registration of a domain name and 2) attempt to sell, that satisfies the registration and use requirements of UDRP

D. How it works As plf, you get to pick the arbitration center Then you get to decide if you want 1 or 3 panelists to decide matter

(strategic decision – 1 is cheaper, but it may depend on who defendant is) This is much lower in cost than bringing litigation in federal court The forum is WIPO (world intellectual property organization), an

international arbitration forum There’s no requirement that the panelists follow the rules or other prior

decisions No requirement that decisions by same panelists be consistent Registrant has 10 business days to file lawsuit against complainant in court

of specified jurisdiction to stay adverse decision Where registrant is located or Where registrar is located

C. UDRP Test (Dial-A-Mattress Operating Corp. v. Moakely and Estate of Frank Gorshin v. Martin)

Name is identical or confusingly similar to mark in which complainant has rights, AND

Registrant has no rights or legitimate interest in name, AND Name registered And used in “Bad Faith”

High standard of use- Use in letter- Use in any other way may satisfy (e.g. just offering to sale)- Simply registering it would not be enough

Demonstrating Rights or Legitimate interest in domain name Prior use or preparation to use domain name corresponding its domain

name for bona fide offering of goods/services OR Owner commonly known by domain name OR Making legitimate noncommercial or fair use of name

Demonstrating Bad Faith Offering to sell or rent name to complainant or competitor for a profit

OR Preventing complainant from using mark in corresponding domain

name, provided there is a pattern of such conduct, OR

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Registered the domain name primarily for the purpose of disrupting the business of a competitor OR

Intentionally using the domain name in an attempt to attract, for commercial gain, internet users to its website or other on-line location, by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or services on its website or location.

D. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona D created Barcelona.com to promote tourism, he says, and the city of

Barcelona sued What is the best argument that the city owns the TM when it is geographic

mark? Ex) People know the name as source of tourism and study abroad

location They own bunch of other registered TMs that have Barcelona in them.

The district court ruled in favor of the city saying bad faith based on UDRP But 4th Circuit court reversed:

UDRP decision entitled to no weight (different jurisdiction…here is US)

District court should have applied US law as required by ACPA City had no US trademark rights in “Barcelona” – geographically

descriptive, and no evidence of secondary meaning.E. Remedy: Transfer or cancellation of name

Almost always transfer Timing: decision in 40 to 75 days Costs

a) Filing fees depend on dispute provider, number of domain names, and whether 1 or 3 panelists (e.g. WIPO charges $1500 for 1-5 names and single panelist)

b) Attorney fees typically range between $2000 - $10000F. How UDRP differs from ACPA

1) in UDRP, you must show bad faith in registration AND use of mark2) in UDRP, def has no rights3) under UDRP, plf must have registered mark (either from USPTO or from any

TM office anywhere else in world)4) must be confusingly similar5) UDRP is international forum6) Remedies are different – under UDRP, you only get the domain name. no

punitive damages7) If a mark is not registered in bad faith, then the complainant will not win under

UDRP8) ACPA is Expensive and conventional litigation opposed to cheap arbitration9) UDRP does not include ccTLDs, ACPA does.

XV. RIGHT OF PUBLICITY & RELATED CLAIMS

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A. § 43 (a) - The Right of Publicity affords more sweeping protection to the commercial interest that a celebrity has cultivated in his identity. It grants to that celebrity an exclusive right to control the commercial value of his name and likeness and to prevent others from exploiting that value without permission.

(right of a person whose identity has commercial value – usually celebrity- to control the commercial use of that identity)

B. Celebrity needs some sort of confusion theory D is doing something actionable – damage! (commerce, etc…)

There has to be some sort of connection that the confusion caused the damage

Not damage to consumers but to the celebrityC. Definitions

Prosser’s 4th torts of privacya) Appropriation (taking over) for commercial benefit of the P’s name of

likeness Restatement of law of unfair competition

a) Use without consent of the commercial value of a person’s identity for the purpose of trade.

D. What must individual show? 1) that name or likeness had publicity value;2) that celebrity has himself exploited his name or likeness by acting in such a way

as to evidence his own recognition of the commercial value of his name or likeness and manifested that recognition in some overt manner; and

3) that defendant has appropriated this right of publicity, without consent, for advertising or trade purposes

E. Rationale: celebrities build an image for themselves through prudent, careful decisions and for anyone to just appropriate their image and put it in any context destroys celebrities’ ability to control their own image.1) Allen v. National Video Inc. - Woody Allen case(endorsement theory) –

there’s an advertisement in plf’s store where someone is obviously not Woody Allen, but supposed to look like him. The headline on the advertisement read “We’ll make you feel like a Star.” Woody Allen is certainly distinctive as a celebrity and he’s not typically the kind of celebrity that endorses products.

Court held : in order to win a claim under §43(a), plf must show:(a) likelihood of confusion (use Polaroid test)(b) that the celebrity’s likelihood is used on goods or services in

interstate commerce(c) that plf has some kind of trademark property in their person

2) Midler v. Ford Co. – case centers on the protectability of the voice of a celebrity where the celebrity did not give consent and the copier was told to actually sound like Midler when she sang.

RULE : human voice is one of the most palpable ways identity is manifested. Voice is as personal to a person as their face is. Court extends the right of publicity to include voice and says that when a distinctive voice of a professional singer is widely known and is

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deliberately imitated in order to sell a product, the sellers have appropriated what is not theirs and will be liable.

Also, the bad faith actor here was also significant to the analysis of infringement.

3) White v. Samsung Electronics America Inc. – Robot had similar aspects of Vanna White (hair, jewelry, stance, gowns). They did not however use her name or likeness. Court here(California) held that the common law right of publicity may extend to other reaches beyond name or likeness. The specific means of appropriation are relevant only for determining whether the defendant has in fact appropriated the plf’s identity. The right of publicity does not require that appropriations of identity be accomplished by particular means in order to be actionable. The court tends to extend rights of publicity where there’s a strong association; does not necessarily have to be name or likeness. Thus, this case survives summary judgment.

a. Fame and fortune disputei. Samsung used wheel of fortune concept to advertise, and had robot version

of White in the advertisement.b. You got reference of the celebrity but not picture, signature, or name of the

celebrityc. Is there a celebrity at issue?

i. If no one is recalling you, it won't work d. In order to avoid large amount of money to pay celebrity, companies reference

celebrity but not have them in the advertisemente. Issue is how to allow White to bring suit when there is no picture or material of

her in the advertisementi. Whether White had TM

ii. Whether her image is usedf. It is may be easier to claim TM infringement by saying "people pay me to be in

their advertisement"g. California has right of publicity rule…..

i. Some other places have this as common law h. it is preferable to sue under federal law because if win under fed law, you get

national wide injunctioni. The court finds that right of publicity reaches means of appropriation other

than name or likeness, but that the specific means of appropriation are relevant only for determining whether the defendant has in fact appropriated the plaintiff's identity.

j. So in this case, celebrity image has commercial value, so it is a property.. And the issue is that if Ds appropriated the propertyi. In regular TM case, under TM infringement theory, you need source of

confusion, commerce, and etc…k. Samsung paid to use Wheel of Fortune program…. They could argue that the

advertisement was based on the show, and they paid for it.l. Key reference for White is that the robot is doing what she does at her spot

in the show..

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m. Dissent makes a slippery slop argument that how much are we going to allow celebrities to claim to references (right of publicity). Are all references subject to such violation?i. Thinks it is a bad policy

ii. Thinks majority is making new lawiii. But does not do good job of explaining main issue: why is this not an

appropriationn. White wins even though she does not have any claim on fed or state statute, but

state common law, right of publicityi. The decision is not based on the likeliness but identit y

F. Free Speech and Right of Publicity1) Rogers v. Grimaldi, – court here held that titles of words because they are

artistic works require more protection that the labeling of ordinary commercial products. The court here deals with 2 conflicting interests (the celebrity’s interest in controlling image/their property) and the speakers’ rights in artistic free speech (1st A).

Held : Court concedes that there will be some confusion, but the interest in artistic speech will outweigh confusion where the confusion is minimal. The rule is that Lanham Act protection applies only where the public interest in avoiding consumer confusion outweighs the public interest in free expression, and in the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance but explicitly misleads as to source or content of work.

No alternative test – argument that 1st amendment concerns are implicated only when a title is so intimately related to the subject matter of a work that the author has no alternative means of expression what the work is about. Courts find that this argument does not sufficiently accommodate public’s interest in free speech.

The underlying rule is whether the use of celebrity likeness is artistically relevant to the work.

2) ETW Corp. v Jireh Publishing (Tiger Woods case) – man did painting of Tiger winning Masters claiming violation of right of publicity. Tiger exploits his TM more than most celebrities, so this case is particular strong in his favor. However, courts are very concerned about chilling artistic speech.

When can a person’s image act as TM?- One consistent image- Person him/herself is not a TM but image of the person can be a

TM Court ultimately held that nothing about the painting that should create

confusion that is great enough to outweigh artistic speech.- This is an artistic expression because there is a message about the

historical moment.

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- This is not an advertisement where you sell celebrity’s image to capture customer’s attention, and cash in.

3) Parks v. LaFace Records Rosa park, a civil rights icon, sued Outcast and the record company

for using her name as a title for one of their songs The court finds cause of action under 43(a), and applies the Rogers

test:(1) Artistic Relevance Prong

- Whether there is any artistic relationship between the title and the underlying work

(2) Misleading Prong- Whether title explicitly misleads as to the source or the

content of the work The court find in favor of P for first prong and in favor of the D for

second prong For the right of publicity issue the court uses Rogers opinion that titles

are protected unless “wholly unrelated” to the content of the work or “simply disguised commercial advertisement for the sale of goods or services”- The court finds D’s are not entitled to such protection.

4) Three stooges – artist did charcoal drawing of Stooges and transferred drawing onto other goods, like ties, coffee mugs, etc. Court looked to what was being sold. You ask the question of whether it’s artistic speech or if it is the celebrity’s property. Here, the court found that the likeness of the stooges was not necessarily just artistic speech, but that they were trying to gain money of celebrity’s likeness. Stooges win.

G. Common law Right of Publicity vs. §43(a) Statutory Claim1) Common law right – elements

(a) that celebrity has personal or publicity value(b) someone is exploiting the commercial value of the celebrity(c) defendant appropriated value for commercial purposes without permission(d) damage may not be as clearly defined here as it would be federal claim

2) Statutory claim – elements(a) goods/services used by defendant(b) used in interstate commerce(c) likely to cause confusion (endorsement theory)(d) there’s actual damage, either commercial or economic

XVI. TRADEMARKS & FREE SPEECHA. Fair Use Doctrine (narrow)

1) Statutory Fair Use § 33(b)a) “Conclusive evidence of the right to use the registered mark shall be

subject to proof of infringement as defined in § 32 AND shall be subject to the following defenses or defects:

(1) incontestability

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(2) abandonment(3) used with permission(4) fair use

Statute is essentially saying you have to show confusion AND they cannot prove fair use

2) Classic Fair Use - CODIFIED – to see that the TM can still be used if it is descriptive.

a) Elements of Test / what def needs to show Good faith use Using mark to describe goods or services of defendants Use by def in a way other than a TM NOTE: if these circumstances are met, defendant has a valid

classic fair use defense to infringement actionb) U.S. Shoe v. Brown Group (pump/sneaker case) – plf spent a lot of

money in marketing their product under slogan “looks like a pump, feels like a sneaker.” Defendant has a similar idea, but does not adopt plf’s slogan, just the words pump and sneaker.

o Held : a user of descriptive word may acquire the exclusive right to use that descriptive word as an identifier of the product or source, but this does not justify barring others from using the words in good faith for descriptive purposes pertinent to their products. (Classic fair use definition)

o Fair use is possible if the term is used otherwise than marks – non source identifying way

o Three prong test Not being used as mark Using it descriptively Good faith

For Polaroid factors, it is intent to deceive

For fair use, it may be just taking advantage of good will by the TM holder

o Policy: we use fair use test instead of Polaroid factors in this case because the law disfavors the grant of exclusive monopoly rights, and we want people to be able to describe their products in words without interference of law

c) Car-Freshner Corp. v. Johnson &Son Inc. (Tree CarFreshners) – plf sold air fresheners for cars in shape of pine trees. Def sells glade plug-ins and over Christmas season, made glade plug-in in tree shape and with pine scent. Plf brought action claiming that def’s sale of pine tree shaped plug-ins violates plfs TM rights in the tree shape of plfs’ air freshners.

o Held : the public’s right to use descriptive words or images in good faith in their ordinary descriptive sense must prevail over exclusivity claims of TM owner. This is about public access to language and competitors’ access to words they need to use in

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order to compete in the marketplace. (protects against monopolies)

3) Nominative Fair Use – use meant to refer to the owner of the TMa) Elements of Test / what def must show

The product in question is not readily identifiable without use of the TM

Only so much of the mark as is reasonably necessary to identify the product is used

The user of the mark did nothing that would suggest sponsorship by trademark holder

b) KP Permanent Make-Up Inc. v. Lasting Impressions I, Inc. – court distinguishes b/n the classic fair use and nominative fair use

Held : when analyzing nominative fair use, it is not necessary to address likelihood of confusion because nominative fair use test replaces the confusion multi-factor analysis

But when defense of classic fair use is raised, then it is still necessary to analyze likelihood of confusion. The fair use test only “complements” the likelihood of customer confusion analysis. Thus, only if it first passes the confusion test, do you even need to get into a fair use analysis. BUT…once you pass the confusion test, there’s no need for a defendant to raise a fair use defense, b/c it’s already been established that there’s no confusion (that plf asserting infringement has lost). The court, in this decision, essentially mooted the classic fair use test.

c) New Kids on the Block v. News American Publishing – court determined that newspapers’ use of 900 number and use of the band’s name and TM in a telephone poll is fair use. And that nominative use of a mark, where the only word reasonably available to describe a particular thing is pressed into service, lies outside the strictures of TM law. In such a case, it does not implicate the source-identification function that is the purpose of TM. Also, it does not constitute unfair competition.

Held : where the defendant uses a TM to describe the plf’s product rather than its own, a commercial user is entitled to a nominative fair use defense provided

(i) the product or service in question is not readily identifiable without use of TM

(ii) only so much of mark is used as is reasonably necessary to identify the product or service

(iii) user must do nothing that would indicate sponsorship or endorsement by TM holder

nominative use may also be commercial (here, the small profits the newspapers made on polling did not negate the fact that it met all other nominative fair use requirements

There should be some exemption and way to use the TM in dilution too.

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d) Playboy – court held that playmate’s use of the Playmate Enterprises is nominative. Banner advertisements use only trademarked words and not the font or symbols associated with trademarks

Held : uses that do not create improper association b/n a mark and a new product, but rather merely identify trademark holder’s products should be excepted from the reach of antidilution statute, b/c these uses do not cause any harm.

B. Trademarks as speech1) Gay Olympics case – TM-like rights are crafted by Congress through Amateur

Sports Act. The Act grants the US Olympic Committee the right to prohibit certain commercial and promotional uses of the word Olympic and various Olympic symbols. The court addressed the issue of whether the restrictions on the First Amendment are greater than necessary to further the public interest in promoting the activities of amateur athletes.

Held : the court minimized any first amendment problems. And found that the possibility for confusion as to sponsorship was obvious. And that it was clear that any commercial magnetism of the Olympic words and symbols might be undercut by the unauthorized use by other parties.

Rule : expressive use of the words cannot be divorced from the value that USOC’s efforts have given to it and the mere fact that party is claiming an expressive use, as opposed to a commercial use, does not give it a First Amendment right to appropriate

2) Pink Panther case (NOTE: prof likes arguments made in this case) - gay rights group used the name pink panther which also happens to be a TM owned my movie company. Although ordinarily this matter would not find confusion in traditional sense, confusion may also arise out of coordination or affiliation of these groups

Court held:(i) plf’s mark is strong and distinctive which increases

likelihood of confusion and entitles mark to broad cloak of protection against infringers

(ii) similarity b/n marks is great (both pink panther(s))(iii) proximity of the products b/n junior and senior user can

greatly decrease likelihood of confusion in some circumstances, especially where the 2 use the mark before separate and distinct consumer groups or where the different nature of the products clearly suggest lack of relationship b/n the two users. But here Proximity of goods was established because both entities use the media as a channel of reaching the public

(iv) in terms of bridging the gap, the court found that the gap is not so large where both users are promoting mark in same marketplace – the general public for TV entertainment and news

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(v) absence of actual proof of confusion is not fatal to finding of likelihood, especially where junior user has only been in the market for relatively short time

(vi) not necessary to show bad faith. Where there is an element of piggybacking the adoption of a name where another’s commercial efforts have made that name famous, this suffices as bad acting.

(vii) In terms of sophistication, the plfs consumers encompass everyone, many of whom are unsophisticated. The more substantial the population of unsophisticated consumers, the greater the likelihood for confusion

(viii) The court disagrees with the def’s argument that it should be accorded greater deference b/c it is political speech and thus should be less subject to TM laws. Court here says that the seriousness and virtue of a cause do not confer any greater rights to use TM of another

C. Parody1) RULE: Parody must convey 2 simultaneous messages: (1) that it is the

original and (2) that it is not the original and is instead a parody. To the extent that it does only one or the other, it is not only a poor parody, but also vulnerable under TM law, b/c the consumer will be confused

2) Mutual of Omaha (8th Cir) - defendant made things similar to Mutual’s TM. The court here is concerned that there might be confusion. Parody is a form of protected speech. But if it doesn’t work and ends up confusing people, it gets no protection. If it confuses, its not parody and thus no protection. Again, we look to see if there’s confusion.

Held : if there’s confusion, the speech will not be protected. Court went through a classic confusion analysis and determined that TM rights did not need to yield to First Amendment rights. This is especially so where the def had other avenues to express his views.

3) Cliff Notes Inc. v. Batam Couble day Dell publishing Group Inc.(2d Cir) – plf filed a suit seeking enjoinment of def’s distribution of a literary parody of Cliffs notes.

Held : parody is a form of artistic expression, protected by the First Amendment. BUT TM protection is not lost simply b/c the alleged infringing use is in connection with artistic work.

Held : the court said two things, first that the balancing approach of weighing public interest in free expression against public interest in avoiding consumer confusion is appropriate and second, the emphasis on construing Lanham Act narrowly when first Amendment values are involved.

Court says, as you go through Polaroid confusion test, be sensitive to parodies. If you find some confusion at end of analyzing Polaroid factors, then weigh that confusion against interest in protecting free speech. Not just confusion, but can we tolerate confusion in order to get benefits of free speech – confusion eventually goes away because

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it shows that work is not really indicating the source of confusion (we value free speech in our society).

Dual Theories (used instead of Polaroid or fair use test)o Free speech can tolerate some confusiono Effective parody does not convey confusion anyway.

4) Mattel, Inc v. Universal Music International (Barbie Case) – think about what a parody is supposed to do. If there is confusion, it’s b/c parody doesn’t work. The confusion has to be “particularly compelling” to overcome First Amendment concerns. This opinion is more dilution than confusion. Dilution does not have exception that would accommodate commercial use.

Held : What does noncommercial use mean here? Artistic speech, parody. Given broad exception to dilution. Because it is speech, it’s given broad exception and cannot be diluted. The court here determined that the song is a parody.

Held : in this case, the central issue was whether defendant’s can use the word Barbie in the title and lyrics of their song. Court found that although some consumers will inevitably believe that the mere existence of the words in the title connote sponsorship, these few people, this risk, is outweighed by the danger of restricting artistic speech.

5) Lamparello v. Falwell Reverend Fall, a nationally known reverend, has expressed negative

opinion on gay people, and L created www.fallwell.com and expressed his opposing opinion and criticism.

The court here refused to accept initial interest confusion theory because there was no profiting off.

Instead the court held that for gripe sites like this we have to look at allegedly infringing domain name and also the underlying content of the website. When we do, there is no likelihood of confusion here.

A mark holder cannot shield itself form criticism by forbidding the use of its name in commentaries critical of its conduct

“Just because speech is critical of a corporation and its business practices is not a sufficient reason to enjoin the speech”

6) PETA – peta asserted claims of infringement, cybersquatting, unfair competition and dilution. def claimed his website, people eating tasty animals (peta.org) was a parody.

Court found several different things:(i) the use in connection with goods or services does not

mean that def actual had to have sold or advertised. It was enough to have prevented users from obtaining the actual legit PETA’s goods or services. AND, not only that but def had links to at least 30 commercial websites. By providing these links, def’s use of PETA mark was in connection with sale of goods or services

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(ii) parody must contain 2 simultaneous and contradictory messages. Here, these messages cannot be simultaneous, b/c one is conveyed by the domain name and another by reading the content

(iii) court considered all the def’s bad faith actions and determined that he did in fact act in bad faith in registering domain name

7) Louis Vuitton Mallertier S.A. v. Haute Diggity Dog, LLC LV sued HD for use of the mark “Chewy Vuitton” that it violates

LV’s trademark, trade dress, and copyright. LV seeks an injuction under the FTDA. HDD alleges parody.

Issue here is Dilution – whether HD’s use amounted to dilution of LV’s mark

The court found that LV’s mark was neither diluted by blurring nor by tarnishement

1. In case of Parody, 2nd circuit held many times that “the use of famous mark in parodies cause no less of distinctiveness, wince the success of the use depends upon the continued association with the plaintiff”

2. The strength of LV’s mark is not likely to be blurred by a parody dog toy product

No tarnishment here, as when the association is made through harmless or clean puns and parodies, tarnishement is unlikely.

8) Parody analyzed – there is no separate test as a defense. Courts have dealt with it differently. Some courts very sensitive to speech issues. Other courts don’t mention speech but simply enjoin wherever there’s confusion. They rely on theory that if parody were working, there wouldn’t be confusion. It all depends on the court, political factors, and actors involved and how the matter is analyzed.

XVII. REMEDIESA. NOTE: to get a remedy, plf does not have to show actual harm. The standard is

“likelihood of confusion.” However, the stronger the remedy you seek, the more harm you must show.

B. Injunctions § 341) The most common injunction is order to stop using mark. 2) But there’s an effort to narrow remedy as much as possible to remedy the

confusion.3) Examples of injunctions are disclaimers. In a particular situation, a disclaimer

could cure any confusion. 4) Limited use in particular market5) Allow group to use mark in descriptive sense and not as a trademark (can use

words, but not slogan or symbol of TM owner)6) Other requests

Recall

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Replacement (new sticker over mark) Corrective advertising (publicize fact that party was infringing)

C. Monetary Damages (There is theory of equitable remedy)1) In TM law, all of the monetary damages are supposed to be designed to

compensate plf and not to be a punishment to the defendant2) Actual lost sales by plf – difficult b/c its speculative and there may be a lot of

other reasons why the sales plummeted. However, the burden shifts to the defendant to show that there are other reasons.

3) Defendant’s gain – same problems here. Could be attributed to many diff reasons. Burden again shifts to the defendant.

4) Where the verdict would exceed what’s required to compensate plf, the plf will not get those damages. The court would fashion a remedy that would combine plf’s lost sales and def’s gain in order to come up with an equitable remedy to compensate the plf.

5) Courts have been particular restrictive about awarding plf defendant’s gains. The court requires a showing of economic proof that the defendant gained from use of plf’s mark. Courts, by and large, demand more proof rather than less.

6) Plfs can get treble damages (inconsistent with theory that this is equitable remedy). In courts discretion, they will increase to treble, since they think that best represents plfs total loss.

7) Plfs don’t always get attorneys fees in cases; only in exceptional cases. “Malicious, fraudulent, deliberate or willful cases.” Although the language is exceptional cases, its probably the exception that plf’s attorney does not get fees. All you have to show is that def meant to use plf’s mark, not that def meant to injure consumers.

8) Defendant’s attorneys can get fees only in cases that the court deems harassing. This is a high standard and doesn’t happen often.

D. Preliminary injunctions – is there irreparable harm?E. §§ 36-7 & 42 are other specific remedies

1) §37 is demand that Federal Trademark Office cancel a registration. Very particular to TM law

2) §42 allows owner of registered mark to bar infringing imports at the border through customs. Surprisingly easy for TM owner to do

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