LEGL 4200 Test 2

Blurring

"Which nike are we talking about?" We start to blur who is selling the product under the name Nike

Scent Marks

- "Flowery musk scent" in Verizon store - Vanilla scents for file orders - Floral scents for fuel additives - Bubble gum scent for sandals

Dilution

- "The gradual whittling away or dispersion of the identity and hold upon the public mind of [a] mark or name by its use upon noncompeting goods." - Occurs when D's use of the identical or substantially similar mark diminishes the value of "famous" senior mark - ex: nike bathmats

Slogan

- A registrable slogan is one that is used in a trademark sense and functions as a trademark or service mark - if the slogan is generic, descriptive, or informational, it must be refused (ex: We sell hammers) - Valid ex: Quality through Craftmanship

Common Law TM

- Created through use - Restricted to the locality where the mark is used & to the area of probable expansion

TM (or sm)

- Gives notice that you are using a word/phrase/etc. as a trademark (even if you haven't obtained registration). - Gives notice of alleged state or common law rights. - Unregistered TM

Hasbro v. Internet E'ment - Facts: - "Internet Entertainment Group [has' been diluting the value of Hasbro's CANDY LAND mark by using the name CANDYLAND to identify a sexually explicit Internet site[, namely Candyland.com]." - Would you be confused?

- Hasbro now owns the Candyland.com site. - If you can't sue for TM infringement, you can sue for dilution

Zatarain's v. OG Smokehouse Facts: - Zatarain's alleges TM infringement by OG Smokehouse's use of the term "Fish Fry" - Zatarain argues that "fish fri" (their mark) is suggestive (don't have to prove acquired distinctiveness) - OG Smokehouse argues that Fish Fri is generic, or at best, descriptive Q: How do we tell the difference between a descriptive and suggestive mark? What are their marks?

- Held: "Fish Fri" is descriptive - Rule: Descriptive terms are not protectable by trademark absent a showing of secondary meaning in the minds of the consuming public. - Through surveys, Zatarian's has shown that the mark has secondary meaning. SO fair use applies Rule: To use someone else's TM that is descriptive, you can use it only if you are using it to describe the product, using only as much as necessary, and not causing confusion

Rescuecom v. Google Facts: - Google runs AdWords and Keyword Suggestion Tool. Companies can use Keyword Suggestion Tool to identify Google searches for which the company wants its advertising to appear in conjunction with via AdWords. - Google has sold the keyword "Rescuecom" to other computer repair companies, whose ads came up when someone searches their name. (Someone is looking up your brand by name and Mike's computer repair comes up.) Q: Is this TM infringement on google? Rule: To establish infringement, the defendant must have used the allegedly infringing mark in commerce. Q: Is Google using the Rescuecom mark in conjunction with a sale or advertising of Google's Adwords (with suggestions from the Keyword Selection Tool)?

- Held: The selling of advertising spots that appear after you search for "Rescuecom" is a use in commerce - Caveat: However, to win, Rescuecom must show that people are being confused into clicking on other company's advertisements, thinking that they are actually clicking on Rescuecom's website. - Resolution: In March 2010, Rescuecom discontinued further proceedings against Google, filing a statement of dismissal and issuing a press release declaring victory in the case. However, it isn't clear if Google changed anything.

Touch marks

- ex: louis vuitton malletier: distinctive man-made textured pattern utilized as a surface feature" for luggage and related leather products

Circumstantial Evidence examples of secondary meaning

- exclusivity, length, and manner of use - amount and manner of advertising - amount of sales and number of customers - established place in the market - proof of intentional copying

Word marks

- if you want a word to stand out as a TM, make it obvious

Legal Use in Commerce

- in order to have a TM you have to have LEGAL USE in commerce - you cannot get a TM in respect to marijuana goods

Geographical Descriptive Marks

- include marks that appear to describe the geographic region from which the goods or services come - ex: TX Roadhouse, KFC - Could these words be anything other than source-identifying in a relevant industry? YES!

Surname Descriptive Marks

- include marks that marks that constitute a person's surname - Commonly adopted because they directly say something about the brand - ex: Barry Sanders, famous running back - Q: Could these words be anything other than source-identifying in a relevant industry? YES! - just bc it is your name does not mean you have absolute right to use it as a TM

Suggestive v. Descriptive

- is imagination required in order to see a connection? - do other producers need to use the term in order to compete effectively? - has the mark been used extensively by competitors?

Descriptive

- it is descriptive but secondary meaning has been achieved through acquired distinctiveness - ex: raisin bran, frosted flakes - will never be inherently descriptive, you have to prove that they have a higher distinctiveness Q: Could these words be anything other than source-identifying in a relevant industry? YES

Suggestive

- it takes a minute for you to find the connection - indirectly describe the product/service - ex: insomnia cookies - inherently distinctive

Genericide

- mark becomes generic for the goods or services - ex: escalator, velcro

General requirements for acquiring ownership of marks

- must be first to use it in trade and - must continue to use it thereafter

State common law TM

- no registration needed as long as you use in commerce - limited in geographic scope

State statutory law TM

- registration system - limited in geographic scope

Federal Statutory

- registration system - national in scope - there are many benefits associated with registration

Where will TM rights apply when you have them in state law and when you have them federally?

- state law: apply only in that state - federal law: apply all over

Harmed parties can seek to cancel a registration if

- they think it was wrongfully registered

When does TM law require "use"

- to obtain any TM rights - for registration - in determining which firm used a mark first - in determining whether a mark has been abandoned - in determining types of actionable use for infringement claims

Trade dress

- total image or design of product or its overall packaging - ex: pink restaurant in Texas with the palm trees - a trade dress cannot be protected if generic or descriptive (ex: plain doughnut shop vs. doughnut shop with lime green walls, pink lights, trapezoid tables)

Arbitrary

- two words mashed up that don't have any apparent connection - taking a word we already know & using it for another purpose - do not describe - ex: apple computers - inherently distinctive

What can be registered as a TM?

- words and numbers - drawings & other forms of art/design - trade dress

Dilution Defenses

1. All forms of news reporting and commentary (Nike uses child labor) 2. Fair use in comparative advertising (truthful comparative advertising btw Pepsi & Coke) 3. Use was non-commercial (engaging in social commentary)

Approaches to determining whether a mark is descriptive (rather than suggestive/arbitrary)

1. Dictionary definition - (Fish Fry - "1. a picnic at which fish are caught, fried, and eaten; . . . . 2. fried fish.") 2. Imagination Test: Does a term require imagination and thought to determine the nature of the goods 3. Competitive Need: Do competitors in this field need to be able to use this phrase in order to effectively compete? (fish fry - yes) 4. Third party uses - Many other firms sell fish fry

Relevant factors to see if/when a mark is famous

1. Duration, extent, & geographic reach of advertising 2. Amount, volume, & geographic extent of sales 3. The extent of actual recognition of the mark 4. Whether the mark was registered under federal law

Nominative Fair Use

1. Necessity - The product or service in question must be one not readily identifiable without use of the trademark; 2. Scope - Only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and 3. Confusion - The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder

3-part test for nominative fair use

1. Not readily identifiable without the use of the TM 2. Use so much of the mark as necessary; and 3. No suggestion or sponsorship or endorsement by the TM holder

3-part test for descriptive use The mark must be used:

1. Other than as a mark (i.e. not to identify the product's source) 2. In a descriptive sense, and 3. In good faith

Three goals of TM

1. Protect the *reputation* of sellers 2. Prevent *consumer confusion* about who made the product 3. Promote *competition* in the market by allowing firms to engage in non-misleading advertisements (ex: coke & pepsi)

A Trade Dress may be protected as a mark if:

1. it makes separate commercial impression and 2. its impact on consumer is primarily to identify or distinguish the product (not merely to serve as decoration)

For TM infringement, the P must show 3 things

1. mark is valid 2. P is the senior user of the mark 3. & use of the mark creates a likelihood of confusion in the minds of consumers about the source, affiliation, or sponsorship of goods or services

Two ways to register on the Lanham act principal register

1. use application 2. intent to use application

Rule: Generic terms (standing alone) (can/cannot) be a trademark Rule: You (may/may not) include a generic term in your mark, but you (do get, do not get) protection over the word alone.

CANNOT MAY DO NOT GET

Pinterest v. Pintrips Facts: - Pinterest - social media company that permits users to view, post, and organize content by creating pins on a virtual pinboard. They own several TM registrations. - Pintrips - travel service that allows users to monitor price fluctuations of flights by pinning itineraries to a Tripboard. - Pinterest sued Pintrips for TM infringement and dilution by blurring. Infringement Q: If consumers are likely to mistakenly believe that Pintrips is affiliated with Pinterest? Is this dilution?

Court: While Pinterest is a strong mark (suggestive), the markets are too different for confusion. No infringement. BUT they still have anti-dilution case - To establish dilution, Pinterest must prove: 1. The mark is famous 2. The D is making use of the mark in commerce *3. The D's use began after the mark became famous* 4. The D's use of the mark is likely to cause dilution by blurring or dilution by tarnishment - 2011 - Pintrips first used its name in commerce - 2012 - Pinterest enjoyed very rapid growth in its user base in a short period of time, which made the relatively new company arguably famous - Held: No dilution bc Pinterest became a famous mark after Pintrips first used its mark in commerce

Laches

Delay or negligence in asserting one's legal rights.

What are the two different kinds of fair use?

Descriptive & nominative

Ex of Tarnishment

Enjoy Coca Cola, Enjoy Cocaine

Louis Vuitton v. Haute Diggity Dog

Even as Haute Diggity Dog's parody mimics the famous mark, it communicates simultaneously that it is not the famous mark, but is only satirizing it. Thus, this does not impair the distinctiveness of the LV mark.

Tarnishment

I am going to use your mark in a way that will create negative associations to the original brand

Parody/Art Rule

courts should apply the Lanham Act to artistic works only where public interest in avoiding consumer confusion outweighs the public interest in free expression

Things that cannot be registered

descriptive marks with a false connection to an individual or organization; false fact - ex: Micheal Jordan approved sneakers if he's never heard of you - THCTea

Rule: If a mark is to be protected it must be _________

distinctive

Evidence of a bona fide intent to use

est marketing, graphic design work, business plans, permitting, obtaining domain names, correspondence discussing the mark, etc.

Rule: You can't successfully sue someone for TM infringement using a mark on the supplemental register unless you

establish secondary meaning

Lanham Act

federal TM law

Are decorations a TM?

it is not used in commerce to source identify so no

Service Marks

similar to ordinary trademarks but used to identify the services or intangible activities of a business rather than a business's physical product

Rule: An alleged TM must serve what purpose?

source-identifying purpose

Distinctiveness

the capability of a TM to identify the goods of a particular merchant & to distinguish those goods from others

Use in commerce defined

legitimate (bona fide), ordinary course of trade, on goods or services

If you can show ________ then you can show TM infringement

likelihood of confusion

Rule: TM owners have the right to prevent the use of a mark where such use is

likely to cause consumer confusion about who is producing the product

Rule: TM rights in the US come from

use in commerce

A TM answers the question:

Who made this?

Can there be TM infringement if marks are sufficiently similar that consumer confusion is likely & goods are competitive with each other? ex: Ford cards vs. Frod cars

Yes

Can the same mark be used by different firms if it does not cause consumer confusion?

Yes ex: bass ale, bass pro shops

New Kids v. New Am Facts: - New Kids on the Block - pop band. Own the "New Kids" servicemark - New America Publishing - national newspapers. Ran a national poll asking "Which one of the New Kids is the most popular?" It included a photo of the band. Responses collected via phone call costing $0.50. Proceeds went to charity. - New Kids allege trademark infringement through New Am.'s use of their name - Newspaper says we fall under fair use - Distinction: we are not talking about descriptive words, but their actual TM Q: Do we need to recognize a defense allowing others to use a trademark to identify a particular commercial entity or product? How do the factors of nominative fair use apply here?

Held: Nominative fair use applies here. Held: TM doesn't give the New Kids the right to channel fans' enthusiasm only into items licensed by them.

Two Pesos v. Taco Cabana Q: Should we protect trade dress?

Held: Taco Cabana's trade dress may include the shape, and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the décor, the menu, the equipment used to serve food, the servers' uniforms and other features reflecting on the total image of the restaurant Trade dress includes the image of a restaurant or store front

WAB, VA v. Whataburger TX Facts: - 1957: Whataburger TX registers - 1958+: What-a-Burger (WAB) VA starts using the name (disputed) - Who had first dibs in VA? -Whataburger TX - 1970s: Whataburger tells WAB VA that it owns the TM - WAB VA never quits using the mark & Whataburger TX doesn't sue - 2000s: Whataburger expands in the south - 2002: Whataburger tells WAB VA that it may be infringing (again). - 2002: WAB VA sues, asking the court to determine that it has common law rights and priority Q: Who has priority in VA?

- Held: Whataburger has priority in VA due to its constructive use from the federal registration. - WAB VA defense: We allege laches (unreasonable delay in making a legal claim, leaving the party unable to later assert the claim) - Holding: Whataburger waited 30+ years after finding out about WAB VA to demand that it changes its name. That is too long, and Whataburger is precluded from asserting infringement because of laches. Rule: Laches applies to "a plaintiff who, though having knowledge of an infringement, has, to the detriment of the defendant, unreasonably delayed in seeking redress."

Ex of blurring

- LexisNexis (legal research) & Lexus (car dealership) - Lexus cannot sue for TM infringement but they can sue for anti-dilution measures

Benefits of supplemental register

- May be cited against future applications - May be detected in search reports of others considering similar marks - May provide basis in some foreign countries - It gives you "effective" rights by scaring people off even though you don't have legal rights

Trade dress: color

- Needs secondary meaning, but can't be functional - ex: tiffany blue answers the question who but a black suit does not - a TM will not be given to someone who's competitors need that color to compete

Old Rule for Disparaging Marks

- No marks for "matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute" - Ex: Washington RedSkins is disparaging & the TM needs to get canceled

Old Rule for scandalous marks

- No marks for that shock the conscience or moral feelings, or are shocking to sense of decency or propriety - the Fuct case goes all the way up to USSC. ruled as unconstitutional as well

Limitations of dilution

- Only provides protection against a famous TM - No damages - injunctions only - If i have a famous mark & you are using it in a way that takes away the uniqueness -> (NO NEED TO SHOW CONFUSION)

Supplemental Register

- Parking lot for descriptive marks until they acquire distinctiveness - Doesn't give you any actual rights - For descriptive marks, you have to prove secondary meaning. If they have not proved secondary meaning, you can register them with the supplemental register.

Advantages of registering on the Lanham Act Principal Register

- Provides constructive notice of user's claim to mark - Provides a right to assistance from the U.S. Customs Service (So there aren't knockoffs coming in the country) - Creates a presumption of mark ownership and validity that eases the burden of litigation (Makes it harder for someone to prove you don't have a TM) - After 5 years, difficult to challenge registrant's right to mark - Allows owner to sue in federal, rather than state, court - Broader geographic scope

Circle R ®

- Registered with U.S. Patent & Trademark Office (principal or supplemental) - Rule: If you don't provide notice of registration (use ®), can only recover profits and damages if you can show D had actual notice of registration

Kelly Svcs v. Creative Harbor Facts: - 2013 - Creative Harbor comes up with idea for an employment-related app called WORKWIRE (We are going to make money by hooking up employers and employees) - 2/19/2014 - Creative Harbor files an intent-to-use app for WORKWIRE for many uses. They list many different areas that they want to use this word in - 2/20/2014 - Kelly Services distributes an employment-related app via Apple's App Store called WORKWIRE - 3/2014 - Creative Harbor sends a cease and desist letter (Hey, we have first dibs with this TM so stop using it) - Kelly thinks the intent to use is BS bc there's so many uses/business models in the ITU that had not been pursued

- Rule: A person who has a bona fide intention (more than just a subjective belief), in good faith, to use a trademark in commerce may request registration of its trademark. - Rule: An intent-to-use application can create nation-wide priority (assuming a valid application). - Court decision: we are going to give you first dibs from the date of filing of the ITU, but only for things that you can prove you actually intend to use Rule: An intent-to-use application is only valid with regard to fields of commerce that you actually have a bona fide intent to use the mark in. Applied: Creative Harbor had a bona fide intent to use the mark regarding apps, so it has a valid ITU application for that field.

Mattel v. Walking Mtn Prods Facts: - Mattel - makes Barbie - Walking Mountain Productions (AKA Thomas Forsythe) - created food chain Barbie. His work Critiques the objectification of women associated with Barbie and lambasts the conventional beauty myth and societal acceptance of women as objects. - Makes Barbie look bad Q: Is Forsythe engaging in expressive speech here? Q: Is the government engaging in a restriction of his speech by applying TM laws here? Q: How does TM and freedom of speech interact?

- Rule: Courts should apply the Lanham Act to artistic works only where public interest in avoiding consumer confusion outweighs the public interest in free expression. TM only limits art where there is a likelihood of confusion

Common Law TM & Fed Registration TexCo later secures a federal TM registration. Where does TexCo have rights?

- Rule: Federal registration gives you "constructive use" across the country. Thus, you are treated as using it nationwide (and thus, obtaining TM rights nationwide). - Rule: A registration cannot take away earlier rights obtained by another through earlier use. - Applied: TexCo has rights in the entire US, except for Massachusetts

Sound Marks

- Sound marks function as source identifiers when they "assume a definitive shape or arrangement" and "create in the hearer's mind an association of the sound" with a good or service - ex: lion roar at the start of movie

Example - WonderDown pillows

- TTAB agreed that Wonder Down is deceptive for bedding that contains down alternatives - Its fake feathers so they are deceiving people - "The examining attorney maintains that use of the term 'DOWN' in Applicant's proposed mark is deceptive because Applicant's goods feature 'down alternative' and do not comprise down." BUT, just b/c the TM office does not agree to register your TM does not mean you cannot use it

Tiffany & Co v. Costco Facts: - Tiffany sued Costco bc Costco used the name "Tiffany" on in-store signs advertising diamond engagement rings - Costco argued that Tiffany is a generic term for a ring setting & that Costco was used this term as a description, not as the TM - Question: Does a tiffany mount answer the question what?

- The appellate court held that a reasonable jury could find that term was generic (& thus not a valid TM) - That even if not wholly generic, the way it was used by Costco was not likely to create confusion (and thus, no TM infringement) Rule: Where the D establishes it used the allegedly infringing term "(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith," no infringement has occurred.

Romag Fasteners v. Fossil Facts: - Romag sells magnetic fasteners. Fossil sells purses - Factories in China making Fossil products used counterfeit Romag fasteners. - Fossil did not know that they were committing TM infringement. Q: Should they have to pay damages?

- The district court rejected Romag's request for an award of profits because the jury rejected Romag's accusation that Fossil had acted willfully. Rule: There is NO mental state requisite for collecting damages in a TM case -- Increased damages are possible for willful violations

Fair Use

- This defense applies only to descriptive terms and requires that the term be used fairly and in good faith only to describe to users the goods or services of such party, or their geographic origin. - Only applies to descriptive marks

Intent to Use Application

- When you have a bona fide intention to use the mark but have not done so yet - Have up to a year to establish use - You can get those rights, but only if you prove you intend to use it within a year

Generic Terms

- a word that identifies the type of product or service involved - answers the question "what" is being sold

Restrictions on use of certification marks

- can't certify own goods or services - must apply standards in allowing others to use the mark - must be objective & cannot discriminate

Certification Marks

- certifies that goods or services have a particular attribute (ex: quality, accuracy, etc)

Fanciful

- completely made up - no meaning other than their TM meaning - ex: Nike - inherently distinctive

Direct evidence examples of secondary meaning

- direct consumer testimony - consumer surveys

Starbucks v. Wolfe Coffee Facts: - Starbucks wants enjoin Wolfe's Borough Coffee from using the marks: "Mister Charbucks" and "Charbucks Blend." - Starbucks sues for dilution by blurring Q: Does the fact that another company is using charbucks take away the uniqueness of the starbucks mark?

6 factors the court may consider in blurring cases: 1. The degree of similarity btw the mark or trade name & the famous mark 2. The degree of inherent or acquired distinctiveness of the famous mark 3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark 4. The degree of recognition of the famous mark 5. Whether the user of the mark or trade name intended to create an association with the famous mark 6. Actual association between the mark & the famous mark (only 1/3 of people thought of starbucks after saying charbucks, but the physical look of it is not similar either) Held: Minimal associations. There is no dilution after considering all factors

Kraft v. Cracker Barrel Facts: - Kraft - sells cheeses under the trademarked "Cracker Barrel" label. - Cracker Barrel Restaurant (CBR) - low-price restaurants. Planned to sell a variety of food products (not including cheese, however), such as packaged hams, in grocery stores under its logo, "Cracker Barrel Old Country Store" - Kraft objects to the use of the mark in grocery stores (but not in restaurants). Kraft sued for TM infringement. Rule: A trademark does not entitle its owner to prevent all other uses of similar or even identical marks. Q: Is there a likelihood of confusion? - Kraft seeks a preliminary injunction, arguing that it will be irreparably harmed without an injunction. - It has to show a likelihood of victory and harm.

CBR Argument: - Packaging looks different - Located in different areas of the store; would a consumer forget the differences since they are not next to each other? - Both are inexpensive products; same consumers? Kraft Argument - Harm: If CBR products are inferior to what the consumer expects (if a consumer has a bad experience with a CBR product and blames Kraft, thinking it the producer) Kraft's sales of Cracker Barrel cheeses are likely to decline Held: Preliminary Junction granted. The likelihood of confusion seems substantial. The risk to kraft of the loss of valuable goodwill is palpable. Rule: confusion may be found, even if a side-by-side comparison would show the marks to be different.

Constructive Use

Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect

Louis Vuitton v. My Other Bag

Infringement? - Obvious differences in the mimicking of LV's mark, the lack of market proximity, and minimal evidence of consumer confusion compel a finding of no infringement. Dilution by blurring? - This parody differentiates itself from original (as it is obviously not an LV bag), and it creates some element of satire and amusement. Thus, this bag will not diminish the distinctiveness of the LV mark.

First Sale Doctrine ex A Minnesota college student drove 4 hours to Iowa every weekend to buy Krispy kreme doughnuts for resale in Minneapolis. Does he need permission?

Limitation: FS Doctrine doesn't apply when reselling goods that are materially different from original

MassCo & TexCo common law TM

MassCo - starts using "The Lottery" Frisbees in MA. It doesn't file a national application - they have the exclusive right to stop anyone else from the using the mark in a confusing way in that state TexCo - Later starts using "The Lottery" Frisbees in Texas. It doesn't file a national application. - they have the exclusive right to stop anyone from using the mark in a confusing way in TX they find out about each other. do they worry about it? - no, not unless they can prove consumer confusion

Are generic terms a valid mark?

NO

Munters Corp v. Matsui Am Facts: - Munters - owns TM for "HoneyCombe" for dehumidifier - Matsui - truthfully described part of its dehumidifier as "honeycomb-shaped" - Munters sued for TM infringement Q: is there any evidence of actual consumer confusion? Is this descriptive fair use?

No evidence of actual consumer confusion - Munters uses a capitalized (HoneyCombe) term with an extra "e" - Matsui uses a lower-case with the usual spelling - Matsui does not use the mark in a source-identifying manner, but rather to describe a facet of its product. Three-part test for descriptive fair use: the mark must be used 1) other than as a mark (i.e, not to identify the product's source) 2) in a descriptive sens 3) in good faith Held: This is descriptive fair use. No infringement

Can there be TM infringement if the goods are totally unrelated? - ex: The lottery frisbees & the lottery jeans

No, but maybe dillution

Christian Dior v. Alexander's Facts: - Christian Dior - high end clothing manufacturer - Alexander's - department store known for its low prices. They sells copies of Dior clothes, saying that they were copies of Dior models. Hang tag: "Original by Christian Dior— Alexander's Exclusive— Paris— Adaptation" - Dior alleges TM infringement Q: Does nominative fair use apply where the D is making a commercial use of P's mark?

Nominative Fair Use: - Necessity: Yes, they only took as much as necessary - Scope: fair - Confusion? court says no likelihood of confusion Held: There is nothing false/confusion about a statement that a garment is a copy of Dior clothing Rule: Comparative advertising is a normative fair use if truthful and doesn't create consumer confusion

How long is registration good for on the lanham act principal register?

Registration good for 10 years, with renewal in 10-year periods as long as mark remains in commercial use

Hollister v. Am Eagle Facts: - Hollister fictitiously claims a 1922 founding. - AE starts to use the #22 as well Hollister alleges that it has TM rights in the number 22. - AE says you have used ~50 different numbers on clothing - Hollister sued AE for TM infringement associated with AE's use of '22.' - AE argues: Hollister "has not used the number '22' as a trademark." - Numbers CAN be source identified & be a TM but only if it is used in commerce that answers the question of whom Q: Has Hollister used the number in commerce to answer the question of whom?

Rule: A P must show that it has actually used the designation at issue as a TM to accrue rights If defendants didn't use the mark as a trademark (e.g., used it as decoration), then no confusion could occur (and thus no infringement). Held: P had failed to present sufficient evidence from which a reasonable jury could find that the parties made TM use of the number 22. Judgment for AE

Elliot v. Google Facts: - Elliott went to PTO & said that google is a generic term and that the TM should be canceled - PTO says no, he appeals all the way up to 9th circuit - Elliott argues that Google is generic & should not have TM rights - Rule: "Genericide occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source." - Standard: Does the word answer the question "who" or "what" - Elliott had a survey done to try & bring evidence that google is generic - Q: Is this evidence important to the question of whether "google" is now generic?

Rule: A TM only becomes generic when the "primary significance of the registered mark to the relevant public" is as the name for a particular type of good or service irrespective of its source. Held: Google is used in a new way (verb), but this doesn't show that "google" is now what people call search engines (You would not say "I want to start up a new google")

Stone Brewing v. MillerCoors Facts: - Stone: owner of "STONE" mark for craft beer - MillerCoors - owns the "KEYSTONE" mark and had begun using the words "KEY" and "STONE" on separate lines in branding - Argument: Stone argues that its mark is being diluted (by blurring) through use as part of the (Key)STONE logo. - Argument: MillerCoors argues that STONE beer is not famous! - Court: TM dilution is a cause of action reserved for a select class of marks-those marks with powerful consumer associations - P's evidence supports its STONE mark has attained a level of national recognition among craft beer consumers - Q: Is this enough?

Rule: A famous mark must be widely recognized by the general consuming public of the United States. (No niche fame, No local market fame)

First Sale Doctrine

Rule: Once a brand owner releases its good into the marketplace, its right to control the distribution of the good is exhausted. Example: I own a Louis Comfort Tiffany Necklace, and I want to resell it. Do I need permission? No, people resell goods all the time

Lois S'wear v. Levi Strauss Facts: - Levis has used a distinct back-pocket stitching TM for many years. - Lois has adopted a similar stitching pattern, but adds many tags when sold to identify it as not Levis. - There is some evidence that the firms target the same jeans consumers. - Levis alleges trademark infringement - Lois asserts that it avoids confusion through other tags, etc. - There are two possible points of confusion here: 1. the likelihood that jeans consumers will be confused as to the relationship between Lois and Levi 2. the likelihood of confusion as to the source of the jeans when the jeans are observed in the post-sale context.

Rule: Post-sale confusion as to source is actionable under the Lanham Act. Here, post-sale confusion would involve consumers seeing appellant's jeans outside of the retail store, perhaps being worn by a passer-by. In this post-sale context, Lois's (now-discarded) tags will be of no help. If you see a pair of Louis jeans rip that you think are Levis Held: Lois is infringing

Aycock Engr'r v. Airflite Facts: - Airflite wants to get TM rights in that phrase - They do a search in the US PTO and find that Aycock has a TM registered with that name - Aycock intended to allow solo passengers to arrange flights on private jets for less cost - He formed Airflite & obtained 2 toll-free numbers for reservations - Aycock invited virtually all air taxi operators to join his operation as providers of the trips. Several operators signed up and paid him fees. - Despite his efforts, the operation never got off the ground. - Aycock never marketed the AIRFLITE service to the general public. Aycock never gave the public a chance to use the toll-free phone numbers to book reservations, and he never arranged for a single passenger to fly on a chartered flight Q: Did Aycock ever use the mark in commerce?

Rule: Use in commerce requires an "open and notorious public offering of the services to those for whom services are intended." Held: Aycock never used the mark in commerce and thus, registration of his mark was improper.

TradFix Devices v. MDI Facts: - Tradfix claims trade dress protection over the dual spring configuration of its mobile traffic signs. - Tradfix argues that its signs are identified by the dual spring configuration - MDI asserts that the dual spring configuration is functional, and thus is not protectible under TM law. - Q: Is this functional? How would you know? - TrafFix obtained a patent for a dual-spring mechanism to keep outdoor signs upright despite windy conditions. The patent expired, meaning anyone can use this technology

Rule: a product feature is functional, and cannot serve as a TM, if it is essential to the use or purpose of the article, or affects the cost or quality of the article

What does acquired distinctiveness mean?

Secondary meaning

Matal v. Tam Facts: - Tam is the front man for a rock band, all asian american people that called themselves "the slants" - Wanted to own this word to take it back - They start to do well & acquire a service mark registration - It is denied bc it is a disparaging term - Tam said they are not using it in a disparaging way, goes up to US Supreme Court Q: Why should they be able to secure service mark registration?

They overturned this law & said it was a violation of the first amendment. It was showing preference for one type of speech over the name of Tam's band Held: the disparagement clause of Section 2(a) of Lanham Act was unconstitutional, as it gave preference to certain messages over others.

Functional

a feature is functional if exclusive use of it would put competitors at a significant non-reputational disadvantage.

Collective Membership Marks

adopted for purpose of indicating membership in an organization

Brand vs. mark

branding is broader, it includes a combo of tangible & intangible elements that include the mark, logo, design, concept, image, & reputation

A descriptive mark is not protected UNLESS

the mark has obtained a secondary meaning (acquired distinctiveness)

What is one of the first uses of product placement?

the red triangle on the bass ale drink in the painting