Trademark Law

Define a trademark according to the Lanham Act.

"...any word, name, symbol, or device or any combination thereof- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce..."

What is the requirement for a mark to make it onto the Supplemental Register?

"...capable of distinguishing the applicant's goods or services." But haven't obtained a secondary meaning sufficient to be on the principal register.

Define "use in commerce" according to the Lanham Act.

"...the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark."

15 U.S.C. § 1125(c)(2)(B) → dilution by tarnishment;

"A trademark may be tarnished when it is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context, with the result that the public will associate the lack of quality or lack of prestige in the defendant's goods with the plaintiff's unrelated goods."

What is meant by "fair use" of a trademark?

"[T]he use of the name, term or device charged to be an infringement is a use, otherwise than as a trade or service mark...of a term or device which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party or their geographic origin." United States Shoe v. Brown

"Use in commerce" for services looks like..

"displayed in the sale or advertising of services"

"Use in commerce" for goods looks like...

"placed in any manner on the goods or their containers" OR "on documents associated with the goods or their sale..."

For a trademark to be registered, the Lanham act requires that the good/services be...

"used in commerce"

What does the Dawn Donut case stand for?

(1) Even with federal registration, first user in one geographic market may not enjoin junior user's use in other market where first user has no presence. (2) However, federal registration enables registrant's rights to trump common law use in another geographic market upon registrant's entry into that market. (3) Injunction to prevent confusion will be narrowly tailored to avoid confusion

What is likelihood of confusion? How is it tested?

(1) strength of the mark; (2) degree of similarity between the two marks (3) proximity of the products; (4) likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) good faith of defendant; (7) quality of product; (8) sophistication of buyers

When are goods "used in commerce"? 15 U.S.C. § 1127

(1) when placed on goods or containers or if placement on goods is impractical, then on documents associated with goods; AND (2) the goods are sold or transported in commerce.

Abercrombie & Fitch v. Hunting World

(Facts irrelevant); Recites the four different categories of terms with respect to trademark protection: Generic; Descriptive; Suggestive; Arbitrary/Fanciful → Professor Cumbow separates arbitrary and fanciful as two separate terms;

What is cybersquatting? What remedies are available against it?

(a) Use of someone's ™ in a domain name. (b) can get injunctive relief.

Geographically terms do not have trademark protection if...

(a) the term is merely descriptive; (b) the term is deceptively mis-descriptive;

How are trademark rights acquired?

1. By USE for 5 years if there is no challenge (2F Lanham Act); 2. By REGISTRATION with the PTO office;

When is it OK to use the trademark of another in promoting your own business?

1. Descriptive Fair Use ("sweet, tart") 2. Collateral Use (Champion) 3. Comparative Use (Chanel) 4. Nominative Fair Use

What must a dilution plaintiff show?

1. Fame + Priority + Validity + Association 2. Commercial use 3. Likelihood of dilution

The Spectrum of Distinctiveness

1. Generic; 2. Descriptive; 3. Suggestive; 4. Arbitrary; 5. Fanciful;

What are grounds for denial of a trademark?

1. Immoral, deceptive or scandalous matter/matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols or bring them into contempt or disrepute; 2. Name, portrait, or signature identifying a particular living individual except by his written consent; 3. Mark that too closely resembles an already registered mark (similar enough that it is likely to cause confusion); 4. Merely descriptive, without second meaning;

When is trade dress protectable?

1. Nonfunctional 2. Distinctive a. Inherent b. Acquired

What is "nominative fair use"? How is it tested?

1. Party cannot be identified without using the mark 2. Use no more than necessary to name party 3. No suggestion of sponsorship or endorsement

What is protected by §43a of the Lanham Act?

1. Passing off (false designation of origin) 2. Deceptive advertising 3. False endorsement 4. False association

What three types of trade dress has the Supreme Court identified?

1. Product packaging 2. Product design (always requires secondary meaning) 3. "Tertium Quid" (distinctive atmosphere or "look and feel," as in Two Pesos)

What law applies in a right of publicity case?

1. Statutory Law 2. Common Law Tort 3. Decisional Law 4. Often accompanied by 43a false endorsement claim 5. State law only; no federal protection

What does each type of IP protection protect?

1. Trademark = marks of trade; 2. Patent = inventions; 3. Copyright = creative expressions; 4. Trade Secret = information;

What are the 4 IP protections?

1. Trademark; 2. Patent; 3. Copyright; 4. Trade Secret;

What must a trade dress infringement plaintiff show?

1. Valid, protectable trade dress 2. Priority 3. Likelihood of confusion

What is the test for genericness?

1. What are the goods or services? 2. Is the proposed mark a term by which the goods/services are commonly known?

What is a domain name?

A domain name is not a URL or a Web site • Demanding that a party stop using a domain name is not the same as demanding that the party shut down its Web site!

What are the ways that trademark conflicts arise?

Administrative (PTO): (a) refused by PTO; (b) objection by third party; Civil (marketplace): (a) challenged in court based on: infringement, dilution, or cybersquatting.

What is naked licensing?

Approving another's use of one's trademark without exercising control over the quality of the goods/services provided under the mark.

What is trademark infringement?

Confusion of consumers in the marketplace.

If a TM is approved, when do the rights start?

Date of application. *If registrant used TM before filing application and another person innocently began using a similar mark before the registration application was filed, the registrant may be limited in the geography of their protections.

Dastar Corp. V. Twentieth Century Fox Film Corp.

Facts: Fox did not renew its copyright on a film about WWII such that the film entered the public domain. Fox subsequently renewed the copyright. Dastar made a television series using clips from the film without acknowledging Fox. Fox alleged that Dastar "reversed passed off" in violation of the Lanham Act. Issue: does § 43 of the Lanham Act prevent the unaccredited copying of an un-copyrighted work? Holding: No. Analysis: The court focused on phrase "origin of goods" in § 43 of the Lanham Act and reasoned that the term relations to the tangible product not the originator of the work.

Kellogg v. Nabisco

Facts: Nabisco and Kellogg both make shredded wheat. Nabisco brought suit against Kellogg contending that Kellogg infringed on Nabisco exclusive right to use the term "shredded wheat" and to sell its shredded wheat in a pillow-like shape violation of the Lanham Act; Issue: Did Nabisco have the exlusive right? Holding: No Analysis: (1) term "shredded wheat" was generic and consumers did not associate the term with Nabisco; (2) patent on the machine that makes the shredded wheat in pillow form had expired.

Define "used in commerce."

Goods → Mark is on container, display, tags, label, etc. Sold in interstate commerce; Services → Rendered in more than one state and engaged in commerce in connection with services;

15 U.S.C. § 1125(c)(2)(B)(i)-(vi) → dilution by blurring;

I. degree of similarity; II: inherent distinctiveness; III: substantially exclusive use; IV: Degree of recognition of the famous mark; V: intent to create an association; VI: actual association;

What is the "doctrine of equivalence"? Provide an example.

If it generic in one language, then it is generic in all languages; Example: Cirque du Soleil. "Cirque" is the french word for circus. Since the term is generic in french, the term can not be a trademark in English.

What is the Rogers Test?

Is the title or image artistically related to the work? (Rogers v. Grimaldi) A title of the work that uses the mark does not violate Lanham Act "unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work." Mattel v. Universal Music (Barbie Girl case)

What is the Supplemental Register?

Marks that are merely descriptive may be put on the Supplemental Register. The SR provides no substantive rights, but ensure that the mark will appear on search reports, prevents anyone else from getting a Principal Register registration of the same mark;

What if you don't put people on notice that your ™ is registered ®?

May be a bar to an award of profits or damages in an infringement suit.

What is a "descriptive" term? Can it be a trademark?

Merely describes, does not do anything more; Can become a trademark only if it acquires a "secondary meaning";

What is a "fanciful" term? Can it be a trademark?

Not real words, invented words; Trademark from day one because inherently distinctive;

What is a "arbitrary" term? Can it be a trademark?

Real words/real phrases BUT that have nothing to do with suggesting or describing the product they are used with; Trademark from day one because inherently distinctive;

What is a "generic" term? Can it be a trademark?

Refers to the "genus" of which the particular product is as a "species"; No, never a trademark;

Define "reverse passing off."

Representing someone's goods/services as your own.

What is the right of publicity? What does it protect?

Right of an individual to control the commercial exploitation of » Likeness, image » Name » Personal attribute

What is a "suggestive" term? Can it be a trademark?

Suggests something about the goods; Trademark from day one because inherently distinctive;

What use must a defendant make to be liable for infringement or dilution? §43 (15 U.S.C. § 1125)

That use of the mark is: (A) is likely to cause confusion OR (B) misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities.

Bayer v. United Drug

The Asprin case; It is the general public who will determine whether the term has become generic;

What does trademark law protect, and why?

The exclusive right to use a mark, logo, package design, etc.

What is initial interest confusion? Why is it controversial?

The likelihood that an allegedly infringing trademark will attract an initial interest from consumers based on the reputation of another party's trademark.

What are the defenses to a claim of descriptiveness?

The term is... (a) Suggestive, not descriptive; (b) Ambiguous; (c) Leap of imagination; (c) Mark considered as a whole; (d) Secondary meaning;

What is "trade dress"?

Total image of product ♣ Includes size, shape, color combinations, texture, graphics, design ♣ Elements combine to create whole image presented to customers ♣ Originally limited to packaging (product "dressing") ♣ Now expanded to restaurant décor, menu and style; distinctive dress and performing style of rock group or professional wrestler; distinctive methods

What is meant by "use" of a trademark? 15 U.S.C. § 1127

USE IN COMMERCE: "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark."

What is meant by priority? How is priority determined and applied?

Under common law, trademark rights are given to the senior user of the mark even if the mark is registered by a junior user. The downside is that the senior can not expand beyond the territory where they have priority, while the junior user can.

What is cybersquatting?

Use of someone's ™ in a domain name.

What is dilution? What does it protect against? What policy does it serve?

Use of the mark that lessens the uniqueness of the mark. ONLY applies to famous marks. Prevents others from riding on the free will of the mark holder.

When are services "used in commerce"? 15 U.S.C. § 1127

Used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than on State or in the United States and a foreign country and the person rending the services is engaged in commerce in connection with the services.

Saderup TEST FOR RIGHT OF PUBLICITY STATUTE CLAIMS

Was the work transformed into more than a mere likeness or imitation? Was it bought for the image or for an artist? (not interested in likelihood of confusion, focus is if someone is unfairly profiting from another's image)

What is trademark dilution?

When someone uses a famous mark to as a mark for another type of product. Example: can't make Cadillac shoes.

What is "genericide"?

When the owner of a trademark loses trademark protections and rights because the name becomes widely and indiscriminately used.

What is meant by "reverse confusion"?

Where a senior user's mark is mistaken for the mark of the junior user.

Paleteria La Michoacana v. Productos Lacteos Tocumbo

Where the court held that a Mexican company could not obtain ™ protections in the U.S. because the product was not sold in the U.S. and U.S. consumers would not have been likely to be confused on another company's use of the mark.

What is meant by "blurring" of a trademark?

Whittling away distinctive quality of the mark.

Why did the parody defense prevail in Vuitton?

• "Trademark parodies . . . do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark. The message also may be a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner." Citing L.L. Bean,Inc. v. Drake Publishers,Inc. • "MOB's tote bags would not make their point, and certainly would not be funny, if the obverse of the tote merely depicted some generic handbag. Such a tote would confusingly communicate only that 'my other bag . . . is some other bag.'"

What is the significance of the Four Seasons holding?

• Appeal form PTO who denied Four Seasons ™ for "Four Seasons Biltmore." The PTO denied on the grounds that there was a possibility of confusion with the ™ for "Biltmore Los Angeles." Both entities are hotels; • The appellate court scolds the PTO for denying the registration because both parties had entered into agreement that Four Seasons hotel could use the trademark given certain conditions; • The appellate court, in a repetitious manner, states that where the parties, who know their markets and their marks better than the PTO office, have consented to an agreement for the use of the mark, the PTO office should give the agreement the benefit of the doubt and grant the registration.

What is an assignment? What restrictions are placed on the assignment of a trademark?

• Cannot assign an intent-to-use (ITU) applications. o Intent-to-use applications do not assign a trademark because, by nature an intent-to-use application means that the mark has not been used yet and cannot have gained goodwill. • Assignment must include goodwill.

What problems are presented by sound, olfactory, tactile, and taste trademarks?

• How to describe and distinguish a sound, smell, tastes; • How to distinguish from functionality;

What was the claimed trademark in Louboutin? How did the court analyze the case and justify its holding?

• Mark is functional if its protection would put competitors at a significant non-reputation related disadvantage; • Test for functionality: • 1. "Essential to the use or purpose"; • 2. "Affects the cost or quality"; • 3. "Essential to the use or purpose"; • Noted that the trademark is not the red sole itself, but how the red sole contrasts against the rest of the shoe; • Ground: consumer petition is protected. What is recognizable is the distinguished red sole; o No trademark for red sole on its own; o No trademark for any other color contrasting sole; o Trademark for contrasting red sole;

What is a license? What restrictions are placed on a trademark license?

• Permission of the trademark holder for another party to use the mark; o Must own the trademark rights in order to license the marks;

What is meant by "tarnishment" of a trademark?

• Ridiculing/distorting competitor's mark for commercial advantage • Associating another's mark with negative values (drugs, hate, porn, unlawful activity, poor-quality merchandise) • Must tarnish the mark, not the company, its products or reputation

How did the Supreme Court resolve the tension between likelihood of confusion and a descriptive fair use defense in KP?

• The Court held that a party raising the fair use defense did not need to negate any likelihood of confusion. • Burden of proof is on the party bringing the infringement action. • Congress "said nothing about likelihood of confusion in setting out the elements of the fair use defense."

What is the significance of the Qualitex holding about color as a trademark?

• The court held that the Lanham Act protects trademarks that are purely colors. • The court reasoned that the language of the statute is not restrictive and the plain language of the statute (""word, name, symbol, or device, or any combination thereof") would suggest that color should be protected as a trademark.

What was the claimed trademark in Rock 'n' Roll Hall of Fame? What was the alleged infringement? How did the court analyze the case and justify its holding?

• The shape of the building that is the Rock 'n' Roll Hall of Fame; • Alleged infringement was photographer selling prints of his photograph of the building; • The court held that the District Court abused its discretion by treating a "Museum's building design" as a protectable trademark without considering "whether and to what extent the Museum's use of its building design served the source-identifying function that is the essence of a trademark." • What always guided the court's decision? o There is nothing that precludes this from being a trademark; o BUT....There must be consistency;

What must an infringement plaintiff show?

• Valid protectable mark • Priority • Likelihood of Confusion • Accused mark used in commerce

When should a First Amendment defense to trademark infringement prevail?

• When communicating ideas or a point of view.

What is the significance of the 9th Circuit's Toyota holding?

• Yes, a trademark can be used in a domain name without infringing the rights of the owner because... o Sophistication of consumers who shop online know that trademarks are commonly used within domain names even though the website is not sponsored or endorsed by the trademark holder; o The landing page is what should be scrutinized for consumer confusion, not the domain name; o Cites to Kp Permanent Make-up → burden of proof is on plaintiff to show that there is a likelihood of confusion after the defendant has established that the defendant only used to trademark to reference the goods/services; o Mark must not actively suggest sponsorship or endorsement to be permitted via nominative fair use;

What are the risks of licensing a trademark, and what precautions should you advise trademark owners to take to avoid them?

♣ Avoid perpetual licenses (long-term burden on Licensor) ♣ Avoid exclusivity (preserve Licensor's right to use and to license to others) ♣ Preclude Licensee from registering domain names containing the Mark