Trademark Law

When is geographic term used in a descriptive way?

1. If the good are actually made in the geographic place designated by the mark 2. If there is a good place association (Appalachian Log Structure people would perceive the logs to be from the Appalachian)

Test for Disparagment

1. What is the likely meaning of the mark 2. Is that meaning disparaging (does the term dishonor persons living or dead, institutions, national symbols by comparison with what is inferior, injury by unjust comparison) 3. In determining this we will look to views of the referenced group, not a substantial composite of the general population **intent to disparage not relevant

Spectrum of Distinctiveness

A highly distinctive mark means that there is little or no capacity to describe the product from the name (ie. Bobo for pens); whereas a less distinctive mark describes the goods to be sold (ie. Waffle House)

Foreign Trademark Holders

A person may come to US and use their foreign registration as a basis for US reg. and have priority over an American user if they have a bona fide intent to use the mark within a reasonable time.

Scents

A scent can be trademarked where the product is not bought, sold or purchased for the purpose of the fragrance. In re Clarke: a woman wishes to trademark the floral scent of her thread and yarn, can be an arbitrary nonfunctional scent serve as a trademark. Court found that woman has presented a prima facie case of distinctiveness.

Secondary Meaning

A substantial segment of the public has come to view the words in question as denoting a single and unique source of goods, rather than merely providing information about the product.

Abercrombie v Hunting World (Case)

Abercrombie wanted to protect its use of the word "Safari" for clothing. Court held that the term "Safari" applied to clothing that has become generic. Therefore, Abercrombie cannot protect it.

Dilution by Blurring

An association that IMPAIRS the distinctiveness of the famous mark. 1) Interferes with free association of the product. Free Association is when you see/hear the name or mark and instantly associate it with a product. Porsche-cars Nike-shoes Rolex Watch. Blurring is where the other product could make it so you see the name and are not sure where the product is. 2) Distinguish from confusion- a confused customer believe that the mark he or she is looking at comes from the same source. A blurry eyed customer knows there are multiple users of the same mark. Nabisco v. PF Brands- Nabisco produces goldfish shaped crackers that are included in its "Catdog snack" boxes. Pepperridge arm sues. Competitors has created a product similar in size, color, taste, and shape. Mead v. Toyota- claim of dilution for LEXUS. Court said NO dilution. Mark of Lexis is distinctive only to attorneys. No blurring. Factors considered: similarity of marks, similarity of products covered by mark, sophistication of consumers, predatory intent Ty Inc. v Perryman- Perryman is selling products on the internet with the doman name bargainbeanies.com. Ty sues taking issue with the domain name She is selling products other than merely Ty products on her website. No dilution in referring to Beanie Babies as Beanies.

When is a mark geographic?

Any recognizable place on earth will be treated as geographic in nature. Geographic features, rivers, motions are included; but if a remote, obscure location that does not convey place, then it may considered arbitrary. World is not considered geographic because it is not specific enough. Any source in outer space is not geographic.

Senior user registers after junior use begins.

Burger King v. Hootz- Section 33 provides a defense for a good faith junior user who adopts a mark without prior knowledge of its use. Note- junior user's defense is limited to the area of its continuous use prior to the registrant's filing or registration date. BK's right did not trump Hootz in the same Illinois locality. The court considered good faith.

Extaterritorial Enforcement of US Trademark Rights

Congress has the power to regulate commerce, which has a substantial effect on commerce between the states or between the US and foreign nations. Threshold Question: Where does infringing use occur? Bulova 3 Part Test: 1. Did the conduct of the Def have substantial effect on US Commerce? 2. Is the Def a US citizen? 3. Must be an absence of conflict with foreign law.

Reverse Confusion

Consumers are likely to conclude that the senior's goods or services actually originate with the junior mark user. Test: degree of similarity, strength of marks (where commercially strong junior user's mark and a conceptually strong senior mark weight in senior's PI favor)

Harjo v. Pro Football

Court affirm Native American claim that "Redskins" is disparaging but deny claim of scandalous. A substantial composite of the referenced group must demonstrated that it was disparaged. Court held Yes. Is this a referenced group? The term Redskins is directed to Native Americans. Is the term disparaging? Yes-- check the dictionary

Rescue.com v Google

Ct. focused on Google profiting from the sale and display of marks. " Google displays, offers, and sells Rescuecom's mark to Google's advertising customers when selling its advertising services. Infringer will argue that mark is not valid or did not infringe. Case settled.

Indicators (Secondary Meaning)

Direct: evidence of the consumer's understanding; surveys, questionnaires, interviews Circumstantial: (1) Length of the use of the phrase: (longer the phrase has be used exclusively, the more likely it is that consumer have come to associate the mark with that particular merchant) Lanham Act: 5 years of use is prima facie evidence of secondary meaning (2) Sales Volume: the more goods sold, the more likely association (3) Advertising and Promotional Activities: how much you spend on advertising and promotional products (4) Evidence that a Defendant knowingly copied the mark: if a competitor copied the mark, tends to show that they recognized the inherent value and that the mark acquired secondary meaning PTO registration gives rebuttable presumption of validity.

Utilitarian Functionality

Does the design make the product superior? If the product was made more useful, efficient, more economical by the design-- if it helped the thing work better, its functional

DaStar v. Fox

Doubleday published and copyrighted work giving exclusive TV rights to Fox. Fox failed to renex the copyright and it entered the public domain. DaStar moved some stuff around and redistributed the original TV series. Fox claims that DaStar is creating a false designation of origin. S. Ct. says that origin refers to manfacturer or producer of physical goods, not to the creator of the underlying intellectual property. Reverse "passing Off" occurs when you blatantly remove a trademark and resell it under your own label or no label at al Post DaStar- the definition of Passing Off has narrowed completely to only encompass the act of complete appropriation of another product without modification

Peta v Doughney

Doughney registers the domain name peta.org for people eating tasty animals. commercial use requirement for ACPA satisifed where man had linked to commercial sites from his site.

Use of Another's Trademark on Genuine Goods

First Sale Doctrine: right of a producer to control the distribution of a trademarked good does not extend beyond the first sale of the product. No infringement for subsequent sales. Genuine trademarked goods may be resold to others without removing the trademark. *Genuine means that to the extent that the producer has quality control measures in place, the reseller observed them. Maintaining certain items in a certain way. A defense to likelihood of confusion claim: D must show they've made the appropriate disclosures and maintained quality controls. Factors for repackaging/resale: (1) must disclose that it was repackaged (2) must declare their own name (3) declare that they are not affiliated with the trademark owner (4) must not give undue prominence to the trademark. Champion Spark plugs- Def reconditioned the spark plugs and sold them in the original boxes. Having reconditioned the spark plugs, was it permissible to continue to use the champion mark? The ct. says this is okay. Use of housemarks- A house mark is D's own mark. Some courts hold that the addition of the hosue mark actually increases the likelihood of confusion. (most success with house marks to avoid infringement when the house mark is strong relative to the trademark)

Defenses to Incontestability Claim (Section 33)

Fraudulent use, abandonment, deception of consumers

In re Dial-A-Mattress

Holding that 1-888-Mattress is protectable, even though 888 and Mattress standing alone are generic

Blinded Veterans Assn. v. Blinded American Veterans

Holding that even where the company's name is generic, and not entitled to trademark protection, they can enjoin junior user from "passing itself off" as senior user. Court may require competitor to take steps to distinguish itself or its product.

MilMar Shoe v Shonac

Holding: Warehouse Shoes is a generic term for shoe stores

Murphy Door Bed Co.

Holding: the term "Murphy Bed" has become generic and therefore the infringement claim has failed.

Holiday Inn

Hotel chains infringement of 1-800-Holiday when another used 1-800-405-4329 (which is the numerical translation of Holiday) Court found D never used "Holiday Inn's" trademark so there is no infringement. 1-800-Holiday is just a mark not a number. Defendant only advertised a number.

Lockheed Martin v. Network Solutions (cite Inwood and Hard Rock just like if the flea market learns their infringement it triggers their duty to do something)

In Lockheed, the plaintiff sued the domain name registrar for selling rights to the domain name: skunkworks, co. skunkwrks.com and skunkwerks.com Plaintiff owned the mark, Skunk Works. Similarly Network Solution should have a duty to investigate infringement claims. In Hard Rock, there is a landlord tenant relationship which is continuous whereas here the Domain Name Registrar does not have control over the domain name holder/applicant. It is a one time transaction, no ongoing relationship.

Burden of Proof (Functionality)

In alleging infringement of an unregistered trade dress, Plaintiff has the burden of proving non-functionality. If trade dress. If trade dress was registered, then there is a presumption of non-functionality and it is up to the Defendant to prove that the component was functional.

Elvis Presley v. Capece

In order to have a successful trademark infringement claim, you have to ask "Was the use of the trademark likely to cause confusion in the mind of ordinary consumer as to source, affiliation, sponsorship?" Court held that intent to confuse trumps intent to copy. Parodies do not infringe trademark.

Sounds

In re General Electric Broadcasting: Sounds may function as source indicators, where they assume definitive shape or arrangement and used in a manner to create an association of the sound with a service and cannot be FUNCTIONAL.

Assessing Functionality

Inquiring is whether all elements taken together are functional

Name Marks

Lanham Act 2(e)(4) permits denial if "primarily merely a surname." Under 2(f) surnames may be registered if it has become distinctive Personal Names and Surnames are protected only if secondary meaning acquired, because they are generally regarded as descriptive terms.

Ferarri v Roberts

Man was making body kits which copied Ferrari. There is a right to copy so long as you identify the source of the product. Court said that since design was not essential to the function it was not functional. Customers were not confused when they purchased the body kit but others who see it on the road will pull it down.

Inwood Test for Third Party Liability

Manufacturer or Distributor is liable if: (1) intentionally induces another to infringe a trademark (2) continues to supply its product to one who it knows or has reason to know is engaging in trademark infringement

Use [under Lanham Act]

Marks must be used in interstate commerce before they will be afforded protection. [A] "Use in Commerce": bona fide use of mark in the ordinary course of trade, not merely to reserve a right to use in a mark." (1) Interpreted as (a) mark affixed to products/labels/tags and (b) sold/transportated (3) to actual end users (2) Inconsequential use or sporadic use of the mark is insufficient-- court will not recgonize de minimis use (No warehousing) [B] Commerce is coextensive with Congress's power to regulate under the Commerce Clause. [C] may file registration on an intent to use a mark, if have not yet achieved actual use (constructive use)

Acquired Distinctiveness

Merely descriptive marks that give direct information about the product or the service it is descriptive (ie. Hour after Hour, Steak n' Shake), must acquire secondary meaning in order to be distinctive.

Test for Use

Must be actual bona fide use (sale for consideration) in trade plus sufficient kind of use and sufficient amount of use

Substantial Segment (secondary meaning)

Need not be majority, but an appreciable significant number of the consuming public. Do they know the exact product you are talking about when you hear the phrase.

Prima Facie Evidence of Abandonment

Nonuse for 3 consecutive years

Emergency One v. American Fireeagle

One American Eagle truck in over three years is no more than token use. When fire trucks last for twenty years which standing alone is legally insufficient to disprove abandonment.

Hard Rock Cafe v Concession Services

Operator of Flea Market was sued for the activity of counterfeiters in selling trademarked items from one of the booths at the flea market. *There is no affirmative duty to discover--if the trademark holder wants to investigate and inform the flea mark owner that the booth is engaged in infringement, that will suffice as the basis of owner knowing or having reason to know about trademark infringement.

Burden of Proof (Secondary Meaning)

Party seeking protection has the burden of proving secondary meaning

In re Oppedahl

Patent.com for a website that tracks patents is descriptive, .com does not make it descriptive here. Tennis.nets for a store that sells tennis courts but not online is not descriptive of a internet store.

Promotional Good

Problem arises when company registers a mark, but only for the good or product they produce. Other than attach that mark to promotional goods. Argument: These goods are aesthetically functional. Cannot trademark designs that are aesthetically functional.

CyberSquatting

Process by which entrepreneurs seize the opportunity to purchase domain names. Senior use mark is famous and cybersquat took place after mark became famous (Lebron James--lebronjames.com) Commercial use of the mark (trying to profit off the mark by selling it back to the owner of the mark)

AntiCybersquatting Protection Act

Prohibits registration of domain name that is confusingly similar to a distinctive or famous mark with a bad faith intent to profit from that mark.

Scandalous or Disparaging Marks

Public Policy: Government out not to accept marks that are offensive to society (immoral, scandalous, deceptive or disparaging) Standing: Any citizen has standing to raise an objection--need not have a specific commercial interest Opposition process- allows the public a chance to oppose and present evidence as to why the mark should not be registered.

Incontestability

Registration offers a conclusive presumption of registrant's exclusive right to use the mark. Test: registered mark in continuous use for 5 years from registration date and remains in use at time incontestability claims. (within a year must file affidavit attesting to continuous 5 years) Exception: proof that registration was obtained by fraud, generification, proof of deception of consumers. Park N' Fly- holder of a registered mark may rely on incontestibility to enjoin infringement and that such action may not be defended on the grounds that the mark is merely descriptive. Extratextual defenses beyond Section 33 not allowed.

ETW Corp v. Jireh

Rogers test is not limited to only paintings. It can used under the Lanham Act for any work of artistic expression. The Court agreed with the trial cour tthat this was Valid Fair Use.

Lanham Act (Secondary Meaning)

Secondary meaning does not appear in the Lanham Act but the Act does say that descriptive marks are not eligible for protection until they have acquired distinctiveness

Inherently Distinctive

Sole function of the mark is to designate the brand. These words are protected because it is unlikely that doing so will burden a competitor in advertising/marketing their products.

Steel v. Bulova

Sup. Ct. gives Lanham Act extraterritorial application against acts committed in Mexico by an American. The US Citizen purchased parts and manufactured Bulova watches in Mexico. Court ruled that conduct in Mexico can be regulated by Congress and therefore falls under the Lanham Act because (1) components of watch were purchased in US and (2) effects were felt in the US upon Bulova

Lanham Act requires filing of affidavit of continuing use every ____ years in order to renew registration.

Ten.

Marks identifying Particular Living Individuals 2(c)

Test: 1. person so well know that public would reasonably assume a connection. FAME required or person must be publicly connected with business 2. No consent of Famous person In re Sauer- "Bo ball" identified Bo Jackson without his consent. [a] person may argue "fair use' in an attempt to use their own name, even if shared by a well known person [b] - Section 2(a): can't register if "falsely suggest a connection with a a person of sufficient fame" -People are likely to connect the mark and product with Bo Jackson [c] Section 2(c) can't register if "comprises a name...identifying a particular living individual."

Use

The right to trademark protection of a mark comes from ACTUAL or CONSTRUCTIVE USE. * required for both registration and protection of unregistered mark. *Other countries do not employ first-to use- approach, only require adoption Underlying concept of use is that the "mark has to travel with the goods" in order for the public to become FAMILIAR with your mark and ASSOCIATE the mark with that particular good. Old Rule- Association was accomplished through affixation [merchant must affix the mark to the product/service] Modern Rule- Consumers are able to make an association through advertising though they may never have actually seen the production. Advertising must be of sufficient clarity and repetition to create the required identification and must have reached a substantial portion of the public.

Comparative Advertising

The use of another's trademark in the advertising or marketing of products or services is permitted. (1) Truthful disclosure (2) No likelihood of confusion Policy: to permit owners to discuss their product in relation to other producers. KP Permanent MakeUp v Lasting Impression: the party claiming fair use does not bear the burden of negating the likelihood of confusion

Confusion based Trademark Liability Theories

Unauthorized "use" Prerequisite: Before question of likelihood of confusion must be certain that infringers activities constitute "use in commerce." We must look to consumer perception. If what consumers perceive is a symbol or telephone number that can be turned into a mark that is not enough. - Look at it plainly and determine what the consumer perceives. If it is just a string of numbers, that is all it is.

Abandonment by Third Party

University Book Store v. Wisconsin Board of Regents- Regents was seeking to enjoin the bookstore of unauthorized use of their trademarks. Wisconsin's tactic acquiescence to prior uncontrolled uses of the mark did not support the claim of abandonment.

Classic Fair Use

Use of a trademark as its primary meaning is classic fair use. The primary meaning is the common descriptive sense of normal use of the word. Eg. Target For classic fair use, defendant must prove: (1) its use of the mark was not as a trademark or service mark; and (2) its using the mark "fairly and in good faith;" and (3) it is using the mark only to describe its good or services *Personal name where the D uses his own title which happens to be P's trademark, D can argue that the use refers fairly to himself. Good faith.

Analogous Use

When a nickname has acquired secondary meaning, and its use is likely to cause confusion, it is protectable under the unfair competition. [a] unfair competition allows the mark owner to step in, claim the nickname the public has given the product and prevent competitors from using it Coca Cola v. Busch [Koke as a nickname] - Coca Cola did not use the work koke with reference to its product, the public at large adopted and used the nickname to refer to Coca Cola. The public's use of shortened version of marks is enough to allow the putative owner of the mark to adopt the public's use of that nickname to prevent others from using it. Illinois High v. GTE: [March Madness] Illinois high has used March Madness for high school playoff since the 40s. GTE (NCAA) used March Madness to promote the College playoffs and on videogames. IHSA couldn't enjoin GTE from using the mark because the public associated march madness as the NCAA basketball tournament through widespread media coverage. Ct didn't prevent either from using the mark the Ct. just created a dual use where both parties can use the same mark to promote the same kinds of services

Priority Disputes about Use

Where two companies have adopted same/similar marks for similar/same use. Company with prior use is entitled to protection. Blue Bell v. Farrah [priority dispute over "Time Out" for men's clothing.] Court tells us that shipping products to sales managers is not bona fide use. Must be a genuine sale (not internal) to end user. Moreover, right product must be sent with right goods.

Test for Scandalous

Whether a substantial composite of the general public would find the mark offensive Two step analysis: (1) Determine likely meaning of word (in context) (2) Whether in view of this meaning, the matter is scandalous to a substantial composite of the general public *Intent is irrelevant in circumstances where a mark is susceptible to two interpretations one that is vulgar and one that is not, registration is usually allowed.

Surrogate uses

Who is the user for trademark purposes? Creator and user are not always the same. Uses by Affiliates: (1) Doctrine of related companies- where substantial relationship between controlling entity and using entity, a subsidiary's use will inure to the benefit of the parent (first use by subsidiary is the same as the first use by the parent company) The Boogie Kings V. Guillory- Drummer splits from band but wants to keep the name. Court held that the name was vested in the unicorporated association which has propiertary interest in the name and thus the name belongs to the association as a whole. Warner Vision v Empire- cannot enjoin ITU applicant from making the use necessary for registration if another party has used the mark subsequent to fikling.

To have a claim for Reverse Passing off (Post DaStar)

a person must have (1) Stripped off an identifying mark (2) Passed off the product as their own (3) without making any modifications to it.

Inwood Test (Most common functionality Test)

a product feature is function if it is essential to the use or purpose of the article of it is affects the cost or quality of the article.

Existence of patent on a design feature creates

an irrebuttable presumption of functionality. *The mere fact that something is functional means it is free to use as long as it doesn't infringe on a patent

Section 43(a) provides a cause of action against:

anyone using a false designation of origin which is likely to cause consumer confusion as to the origin of his or her goods

Trade Dress [Section 43(a)]

collective appearance of a product, overall visual image, can include decor of product, shapes, color

Aesthetic Functionality

consumers purchase based on looks (i.e jewelry, silverware, etc.) Here a particular design is the selling point, the utility of the item is secondary. *Red heart shaped box for chocolates-- though there is nothing utilitarian about this shape for the box and it has only aesthetic functionality, it cannot be trademarked. ie. Qualitex Co.--color of a dry cleaning pad. Is the color functional? It is really aesthetic functional.

Tiffany v. Ebay

eBay is on notice of the counterfeit activity. eBay has generalized knowledge of the counterfeiters. Court analyzed under Inwood (2). As established in Inwood, if a manufacturer or distributor intentionally induces another to infringe a tradmark, or if it continues to supply its product to one whom it knows or has a reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.

Political Speech

equal noncommercial use often protected over trademark owner's rights. First Amendment protection really High

Zatarain's v Oak Grove

holding that although Fish Fri and Chick Fri were descriptive terms, Fish Fri had acquired secondary meaning. Deal with each mark independently for infringement inquiry (1) Is the mark valid? (2) Did the defendant infringe? Fish Fri has two arguments: Fish Fri is a suggestive mark because they have been using it for a long time; Fish Fri had acquired secondary meaning Court considered the evidence presented: advertising dollars, volumes of sales, increased sales, surveys of consumers, dictionary Court held that the mark is valid but the mark was not infringed.

Traffix v. Marketing Display

issue: Is dual spring component of a patented road sign stabilizer design trademark protected, even after the patent expires. 6th Circ. ruled that despite utility patent there still may be trademark protection. Because the device was a part of the claims for the patent, it can be presumed that the item is functional. A utility patent is strong evidence that the feature therein are functional; the party seeking trade dress protection thus will have to prove that the feature is merely ornamental, incidental or arbitrary aspect of the device.

Illegal Acts on the internet

meta tags, cybersurfing, and keying

Presumption of abandonment is rebutted by a showing that

nonuse is due special circumstances that excuse nonuse and is not due to any intention to abandon the mark (burden of proof is on defendant--must show intent to resume use in the reasonably foreeseable future. nature of the industry will determine what sort of time span is reasonable.)

Flavor

normally hard to trademark because it is Functional (Medicine), however if it something not normally consumed and you add flavor then maybe.

Nominative Fair Use

occurs when a third party uses someone else's trademark not to describe its own products or services but to refer to the actual trademark owner or identify a product of service of the trademark owner. For nominative fair use, the defendant must prove: (1) the good or service must not be readily identifiable without the use of the trademark (2) only so much of the trademark used is reasonably necessary to identify the good or service. (3) the trademark is not used to suggest sponsorship or endorsement by the trademark owner. (User must do nothing to suggest endorsement by the trademark. ) [New Kids on the Block Test] Beach Boys- Jardine, Former member of "Beach Boys" wishes to play in band (tour) called "Beach Boys Family and Friends" He would argue that he is using his own name or description of himself. This use fails the third prong because use suggests that Beach Boys are sponsoring the band. D bears the burden of proving fair use. Nominative fair use has failed. Name has caused numerous incidents of actual confusion, the phrase Beach Boys was featured more prominently than Family and Friends

Panavision Internional v. Toeppen

panavision had trademark. panavision sued toeppen for its panavision.com

Right of Publicity

right to control your commercial name or identity, likeness or other indicia of identity. Breach of ROP elements: 1) Publicity identies person. D uses Plaintiff's identity. To D's advantage commercially or otherwise without their consent Vanna White v Samsun- Robot dressed like BVanna White violated her publicity rights by appropriating her identity

Parks v. LaFace

summary judgment was inappropriate, it should have gone to jury. The song title's artistic relevance to the content of the song is minimal. Only reference to Rosa Parks is "back of the bus" If the jury finds artistic relevance than Outkast wins but if the jury does not find artistic relevance and then it can move to explicitly misleading to determine if Outcast infringes.

To prevail on a Passing Off Claim, a plaintiff must prove that:

the likely effect of Defendant's actions is to induce the public in to thinking that Defendant is Plaintiff. Intent is probative not determinative

Tests for inherent distinctiveness

(1) Imagination Test: if imagination is require to know what product the phrase refers to, it is suggestive. (2) Hindrance to Competitors: Are competitors likely to need the term in describing their product. If the answer is yes, the mark is descriptive. (Cola)

How does USPTO determine if its a surname?

1. Check the phonebook to see if its rare. 2. Check the dictionary to see if it has another primary meaning 3. Look to see if anyone in the business has that name.

Benefits of Registering Your Mark

1. Confirms the existence of right does not create rights. 2. Provides notice to the public of existence of rights 3. Constitutes prima facie evidence of validity of mark, ownership of mark 4. Exclusive rights to mark in connection with products on file.

Deceptive Marks

Absolute Rule. A deceptive mark under 2(a) will NEVER be registered. While a 2(a) mark can never be registered, a 2(e)(1) can be registered with a secondary meaning.

Defenses

Fair Use First Amendment Parody Political Speech

Abandonment Through Uncontrolled Use

"Course of Conduct" most commonly resulting in abandonment--trademark owner's failure to control uses of the trademark by franchisees or licensees causes it to become generic. To avoid abandonment the owner not only must use the mark but set up controls for quality

A trademark is deemed abandoned for non-use when

"its use has been discontinued with intent not to resume such use." Intent not to resume may be inferred.

Issues with generics usually appear in two forms:

(1) Brand new, previously unknown product (eg. Smartphone) (2) Genericide (starts out being distinctive, but over time stops referring to one single source)

Tests for Generic Terms

(1) Competition Test- Will competitors need the term to market their products? Will protection inhibit the competitors (2) Primary Significance Test: Whether the primary significance in the minds of the consuming public is not the product but the producer (Shredded Wheat) (3) Consumer Universe- for purposes of the test, depending upon how consumers are defined, a phrase may be generic to one group but not another. (4) imagination Test: Does it require imagination to make the stretch.

Parody

(1) Defense to dilution- D's often raise parody defense in tarnishment cases. (2) Defense to Infringement - a non infringing parody is not confusing. Test for Parody- A parody is likely to be successful if the target of the parody is the trademark itself. Commerce v. Comment In commercial context, term/mark is less likely to be found a parody. Is there a comment in the use or is it purely to make money. If no social commentary value, then likely not a parody. Court may also consider whether alternatives were available for the person to comment. More likely to be a successful if you parody the mark itself and not something else. The court must find commercial and noncommercial use in order to come under the Lanham Act to qualify for the parody. Mattel v. MCA records. AQUA uses the parody defense. The target of the parody is the trademark. With the first amendment rights, AQUA prevails. They are not usig the mark to sell anything it is commentary on Barbie.

Analysis of Trade Dress Case

(1) Determine if something is "design/configuration" or "packaging" [Close cases should err on the side of classifying trade dress as product design rather than packaging.] (a) Packaging: think wrapping. When taken off, you still have a product. (b) Design (2) If design, is there secondary meaning? (a) Is there evidence that consumers associate the trade dress with the source [consider: surveys, advertising campaigns, duration of period of exclusive use of the trade dress (3) If packaging, is it inherently distinctive (a) Seabrooks: In determining whether trade dress in inherently distinctive, inquiry is (1) whether the design was a common or basic one; whether it was unique or unusual in the mark that it will automatically be perceived by customers as an indicator of origin (2) consistency across packaging (b) Apply Abercrombie Spectrum: arbitrary, suggestive, descriptive or generic [this is consistent with the Lanham Act whose purpose is to identify source--consumers often rely on packaging to identify source] (4) Yankee Candle Company- Candle company claimed that another company copied its trade dress (its vertical display system, catalogue layout, candle shapes/sizes Court finds that Yankee claims except labels fall under product design configuration and required Yankee to show that trade dress had acquired secondary meaning. The labels were packaging but not inherently distinctive. (a) For labels, use Seabrook or Abercombie: Inherently distinctive? No, if each label looks different must be consistent. (5) In re Chippendales- Was the Costume inherently distinctive? (a) Seabrook Test (1) Is it common generally (2) Is it common in the particular field (3) Is it mere refinement of or variation on existing trade dress in the relevant field. (b) Is this usual style for the adult entertainment outfits? The cuffs (c) Compare to Bunny Costume? Not inherently distinctive in light of Playboy Bunny Costume

Indicators of Functionality

(1) Direct Evidence: cost of the design feature and testimony of how it does or does not improve the performance. (2) Circumstantial Evidence: [a] courts used to consider whether alternative designs would serve the same purpose. if they would, then piece would not be functional. This is no longer valid after Traffix. if the component is functional, doesnt matter whether other designs would work as well. [b] advertisement and what is touted in them may indicate whether the component is functional [c] existence of a utility patent is evidence of functionality. [i] if the patent has not expired, a patent infringement suit would result not trademark. Only if the patent has expired do you end up in trademark court.

Trade Dress Protection Prerequisites:

(1) Distinctiveness [a] Color/Design cannot be inherently distinctive, requires secondary meaning. [b] Packaging can be inherently distinctive. If not, show secondary meaning. [c] If ambiguous as to Packaging/Design, must show secondary meaning (2) Non functionality (3) The trade dress of the two products is confusingly similar

Constructive Use

(1) Intent to Use (ITU) Trademark Reform Act eliminated the requirement that US citizens use a mark in commerce before they can file a placation to register it. [a] within 6 months of "notice of Allowance" must begin actually using the mark and file a "statement of use" subject to extensions. (2) requires "bona fide intention to make use of the mark in the future" [a] bona fide- fair and objective determination of the applicant's intent based on all circumstances (ie test marketing would constitute bona fide intent) [b] good faith intent- for example these qualify: sales in test market, infrequent sales of large or expensive items; these do not qualify: single isolated sale that bears no relationship to a genuine plan for commercially exploiting the mark

To qualify for protection under federal law, trade dress must be both:

(1) Non-functional; and (2) Distinctive *how you describe your Trade Dress is important when determining its distinctiveness

Abandonment through Non Use:

(1) Non-use for an extended period couple with the intent by the trademark owner to relinquish legal rights to the mark (a) Abandonment extiniguishs exclusive rights to the trademark (b) Abandonment is grounds for cancellation of the registration (c) Previously abandoned mark cannot block an application for subsequent mark's registration (2) Abandonment due to some conduct by the trademark owner, a result of which the trademark no longer functions as a designation of origin and no longer helps to distinguish the goods. (a) Naked Licensing: the trademark owner makes no effort to control the quality of the product. Usually the licensee is taking free reign of the mark. (b) Genericide (c) Failure to take legal action action infringers

Public Policy behind Functionality

(1) Prevents trademark law from inhibiting legitimate competition by allowing a producer to control a useful product feature (2) Prevents trademark protection from being a backdoor to indefinite patent protect

To prevail on a Lanham claim, a Plaintiff must prove:

(1) VALIDITY the existence of a trademark and (2) INFRINGEMENT the subsequent use of that mark by another in a manner likely to cause consumer confusion

To enforce validity of a mark, a person must show that the public recognizes the mark as identifying its goods or services by arguing that the mark is either:

(1) inherently distinctive; or (2) has become distinctive through acquisition of secondary meaning.

Test for Aesthetic Functionality [3 elements must exist for trade dress to be aesthetically functional]

(1) item must be purchased for aesthetic reasons (2) specific product or package design used by the Plaintiff must have significant appeal to customers (3) There must be a paucity of viable design alternatives that would have similar aesthetic appeal to customers.

Plaintiff seeking trade dress protection under section 43(a) must prove:

(1) the trade dress of two products is confusingly similar (2) the features of the trade dress are primarily nonfunctional (3) the trade dress is inherently distinctive or has acquired secondary meaning

Actual v. Likelihood of Dilution

(a) actual harm requirement (b) Mere showing of mental association is insufficient- consumers must not only mentally associate the junior user's mark with the famous mark but the association must affect the mark's identifying ability of selling power. Even with no consumer confusion, if it reduce significance as a unique in minds of the public the junior user is diminishing the selling power of the senior's mark. (c) proof of actual dilution: loss revenues, consumer surveys. Victoria's Secret set forth an actual dilution requirement. Identical marks is an obvious case of dilution Mosley v. Victoria Secret Catalog- V. Secret sues Mosley for advertising his store Victor's Secret. No dilution.

3 Provisions For Geographic Marks

1. 2(a) prohibits geographically deceptive marks Though geographic marks are better analyzed under 2(e)(3) 2. 2(e)(2) prohibited primarily geographically descriptive marks. Registerable so long as secondary meaning 3. 2(e)(3) prohibits primarily geographically deceptive misdescriptive marks. protects against a user's false geographic designation of origin. Focuses on deception of consumer. [NEVER REGISTERABLE] *Wine/Spirits Exception absolute bar on geographic indicators that are used with wines or spirits and identify a place other than the actual origin.

Questions to Analyze under 2(e)(2)

1. Is the term misdescriptive of the geographic origin of the goods? 2. Are prospective purchasers likely to believe the geographic misdescription? 3. Is the geographic misdescription likely to affect6 the decision to buy? RULE- if no reasonable consumer would conclude that the goods come from the indicated place, the mark is arbitrary

DECEPTIVE TEST

1. Mark must be misdescriptive (falsely describe goods or services) 2. The misdescription must be one that the prospective purchaser is likely to believe is true 3. The mistaken belief by the buyer must be likely to materially affect the consumer's purchasing decision. Questions to Ask: (a) Is the term misdescriptive of the character, quality, function, composition, or use of the good. (b) if so, are prospective purchasers likely to believe the misdescription (c) if so, is the misdescription likely to affect the decision to buy

Test for Surname

1. is primary significance to public that of a surname. 2. Factors: Whether the surname is rare; anyone connect with applicant has the surname; term has any other recognized meaning; has the look and feel of a surname. 3. Evidence- number of listing in the phone books; if it has a dictionary definition likely not a surname 4. Burden of proof- PTO *In re United Distillers- Hackler is not primarily a surname, has other meaning and is an uncommon surname.

First Amendment

2 Part Rogers Test: literary, paintings, songs, etc. does not violate Lanham Act unless: (1) No artistic relevance to the content of the work (2) Some artistic relevance to the content of the work but explicitly misleads as the source or the content of the work. Note: The court must finds commercial and noncommercial use, in order to come under the act and to qualify for the parody.

University of Alabama v. New Life

Alabama argued that these were their colors. Artist s painting are likely to cause confusion as to the sponsorship (sponsorship of the school for the artist). The stronger your trademark, the more likely tou are to win in the balance. Alabama's crimson and white is a weak mark. Court applied the Roger's test: Paintings, Calendars (1) the trademark uses were artistically relevant to Moore's underlying works and (2) Moore never promoted his works as endorsed or sponsored by the university.

Internet

As a channel of marketing, it increases the likelihood of confusion because consumers encounter products on the same screen at the same time. Internet Trinity (1) Similarity of the marks (2) Relatedness of goods and services (3) Simultaneous use of the Web as a marketing channel Goto.com v. Disney -relies on the internet trinity; strength of the mark unimportant. Web surfers are more easily confused and the nature of the internet is such that lends itself to confusion. Standard of care is not great among internet users, so easier to prove likelihood of confusion.

Dilution by Tarnishment

Association that harms the reputation of the famous mark. 1) Interferes with the "positive association" of a product. (ex. Pilsbury doughboy being used by a pornographic newspaper in compromising positions) 2) Related to positive association, not just free association. Association becomes lower quality or unsavory. [a] Toys r Us v. Akaoui- Person selling sex toys under the name "adultsrus" tarnished the senior user [b] Toyrs r Us v. Feinberg "Guns ARE us" Court does not think mark will be associated with Toys R Us because there is no R.

World Wrestling Federation Entertainment v. Bosman

Bosman registers domain name, worldwrestlingfederation.com then tries to sell it to WWF because the def. offered to sell the domain name, that constitutes use--intention to sell constitutes the use. Bad Faith because he had no legitimate use for the mark--he was just hogging it.

Initial Interest Confusion

Brookfield v. West Coast Metatags are likely to cause initial interest confusion because metatags lead you to a place you didn't want to be. More about protecting the goodwill of a merchant then the mindset of a consumer. Holding: use of another's trademark in your metatag will create liability. may use ordinary terms and comparative advertising in your meta tag

Counterfeiting

Counterfeit is a spurious mark which is identical with or substantially indistinguishable from a registered mark. Foreign Counterfeiting 1978 Custom Acts: goods bearing counterfeit trademarks will be automatically seized by the Customs Service at the border and must be destroyed. Domestic Counterfeiting: Trademark Counterfeiting Act of 1984 and amended in 1996. Criminalized trademark counterfeiting. Judges can grant civil ex parte seizure orders against trademark counterfeiters--gives you the ability to go in and seize the counterfeited goods. Trebele damages and attorney fees. Rolex Watch v. Mitchel- D is reconditioned Rolex watches and using non rolex parts in reconditioned watches. However, he is still selling them as Rolex. This technically is not a counterfeit. The reconditioning affect the basic performance and durability of the watch. It would be a misnomer to call it a Rolex. Applied Champion Sparkplug. -can continue to sell reconditioned spark plugs bearing the original Champion. as long as stamp used or repaired on the plugs and the cartons contained disclosure. How many parts can you take out and still use the original trademark/

The Fame Requirement (Dilution)

Critical element to dilution is that it cannot be dilution of a non-famous mark. Policy: mark must be especially famous to merit preventing all others from using the mark, regardless of whether the marks are in related fields. is it a household name? Factors to Consider: 1. Degree of distinctiveness of Pl's mark 2. Duration and Extent of Pl's use of the mark 3. Duration and extent of the Pl's advertising and publicity 4. Geographic Extent of the Mark's Trading Area 5. Use and Degree of Recognition within the Channels of Trade 6. Nature and Extent of Use of Same or Similar marks by third parties 7. Federal Registration of a Mark 8. Survey Evidence Nearly Always Request

Senior users registers first

Dawn Donut- Dawn Donut registered first, but no injunction granted because no likelihood of confusion from concurrent use of marks given that Dawn Donuts operated in a different county, and D has no intention of expanding there. Junior user may continue in area despite registration by senior user. Court considers likely expansion of junior user

McDonald's v McDental

Defendant's mark (McDental)--30% of the population in survey associated Mc with McDonalds. Infringment found; confusingly similar. Court considered good faith on part of the D's in choosing their name. McDonalds owns the Mc family of marks

Abercrombie (Test)

Generic- No protection and can never acquire trademark protection. A mark that refers to the genus of which the particular product is a species. A mark that was once distinctive may become generic over time (ie. Aspirin, Kleenex) Descriptive- May attain protection if a secondary meaning [distinctiveness] is acquired (Soft Soap, Holiday Inn) *Color, Smell, Sound Suggestive- requires imagination and thought in order to reach a conclusion as to what the product or service is. Entitled to registration outright. Arbitrary or Fanciful- Word that had no relation to product or is made up (Exxon). Fanciful are coined or made up words (ie. Clorox) Arbitrary are actual words but have no affiliation to the product (Apple for Computers)

Geographic limits on Trademark Rights (Common Law)

Geographic Remote Use (Limit on Common Law Rights) 1. Merchant owns its trade mark only in its actual area of trade 2. Even if you are a senior user, you cannot prevent a junior user from using it in its own area. *Area of Trade--any region where reputation and goodwill has spread; allowed to use the mark in another area if it is done in good faith. Good Faith Remote Junior Use- junior user's right to continued use holds if user adopted the mark in good faith. --2 requirements for Good Faith: (1) no prior knowledge what so ever of the mark. If any actual knowledge of the senior user's mark, not good faith (2) look at the intent in adopting the mark (Were you trying to benefit from the reputation/goodwill of the other user)

Indirect and Vicarious Theories of Infringement Liability

Inwood Labs v. Ives Labs- Ives (manufacturer of cyclandelate) patented a drug called Cyclospasmol. When the patent expired on the brand name drug, generic manufacturer began producing the drug in the same color. Ives sued generic manufacturer, claiming that they induced the pharmacists to infringe on their trademark by mislabeling the drugs they dispense. Is the generic manufacturer liable for the action of the Pharmacists? NO, Generic Manufacturer are not the one who put the wrong label on. It was the pharmacist who mislabeled it, but there are circumstances when the manufacturer could be liable even if they didn't have control over the people in the distribution process.

False Advertising

Lanham Act is the national standard for protecting deceptive commercial practices which includes advertising. Prima Facie Case: (1) false or misleading statement (2) that statement either deceived or had the capacity to deceive (3) that the deception was material in that it was likely to influence the purchasing decision (4) product in interstate commerce (5) Plaintiff is likely to be injured as a result of the statement at issue. False Advertising generally divided into 2 categories: [1] Those claims that are literally false (if you can claim that the statement is literally false, then the material prong has been met.) [2] Others that literally true but misleading. Puffery is a statement of opinion and not actionable. Pizza Hut v papa Johns: Pizza hut claims that PJ's slogan of "Better ingredients, better pizza" was falise. Is the slogan puffery or false advertisement. Court says that ads were literally false but Pizza Hut failed to establish that the slogans were material to consumers.

Geographic Limits on Registered Rights

Lanham Act- Registration of a mark will be constructive notice of ownership 1. Filing of application, preregistration constitutes constructive notice and confers right of priority 2. Registration assurance of ownership

Acts Committed by Foreign National

Lanham does not apply to foreign citizens acting under valid trademarks in a foreign country. Analysis: Where did infringing acts occur? Vanity Fair: [underwear/intimates] Canadian cop. with mark in Canada cannot be wholly enjoined from using that mark in Canada, by the owner of the very same mark in the United States. Fails last two prongs of Bulova Sterling: Dist. Ct. distinguishes Vanity Fair to hold that American P may enjoin a foreign D from using the mark abroad where use likely to make their way to American consumers. [a] emphasis on Factor 1 of Bulova: establishes the perimeter as foreign acts that do not have a substantial effect on US commerce. [b] trying to limit foreign trademark uses that reach the United States not trying to control conduct outside the United States

Louis Vuitton v. Haute Diggity Dogg

Louis Vuition sued for trademark infringement, dilution and tarnishment. Parody? For parody, you have to use the mark. is Louis Vuitton the target? The dog toy presents haute couture for casual canine destruction. The satire is unmistakable. Dilution? If a dog were to choke or be harmed by the toy and the story were to make national news, people would think it was LV's product harming these animals.

Microsoft v. Shah

Microsoft's allegation that defendants induced others to violate the law by providing the instructions and software that could assist them in increasing traffic through means that the incorporated the use of Microsoft marks.

Dilution

Owner of a famous mark that is distinctive, inherently or by acquisition, shall be entitled to an injunction against whoever uses their mark (after it becomes famous) which could likely cause dilution by blurring or dilution by tarnishment regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

Geographic Marks

Public policy: common to want to use the name of a state, town or place, so geographic terms are treated as descriptive terms; thus must have achieved secondary meaning in order to be obtain trademark protection. *merchants should be free to reference place of making without fear of infringement because they are often strong marketing tools.

Post Sale Confusion

Though consumers at point of sale were not confused, others seeing the product may have source confusion and form an impression about the brand (fake Rolexes, high end goods)

Territorial Nature of US Trademark Rights

Trademark are protected by national laws. Only priority in domestic commerce relevant. Foreign use ineffectual to create trademark rights in the US. 1. Foreign use cannot be the basis for Priority Trademark rights superior only in the US and not recognized in foreign countries, just as their trademarks are not recognized with priority here. 2. Famous/Well-known Marks (Fame Exception) Where consumers everywhere in the world associate a mark with a certain producer, it would be deceptive and confusing to allow anyone else to use it. --Well known marks consider the knowledge of the trademark in relevant sector of the public (consumers, business persons involved in distribution

Test for Primarily Geographically Deceptive Misdescriptive Marks (Same test for 2(a) or 2(e)(3))

[a] the primary significance of the mark is a generally known geographic location [b] the public is likely to believe the mark identified the place from which the goods originate, the good did not come from there (identify products that purchases are likely to believe mistakenly are connected with that location) [c] Misrepresentation was a material factor in the consumer's buying decision.

Libman

[broom] Sought trademark of broom with contrasting bristles and an injunction against Vinning's copy cat broom. Trial ct. finds likelihood of confusion, focusing on the fact that there were similar product designs, targeting the same purchasers, sold in the same types of places, being advertised in the same medium. App. ct. reverses (Libman failed to prove likelihood of confusion, focused on lack of evidence) No consumer has ever complained about confusion.

Factors Analysis for Likelihood of Confusion (Polaroid)

[1] Actual Confusion: (a) unnecessary, so long as there is a likelihood but this would be particularly relevant (b) affidavits of former employees, consumers, surveys (c) for damages must show actual confusion that resulted in actual injury [2] Strength of the P's mark- stronger the mark, greater likelihood of confusion (a) inherent distinctiveness [arbitrary or fanciful like NYSE New York Slot Exchange] (b) acquired distinctiveness (fame, secondary meaning) [3] Similarity of Marks: marks can be confusingly similar if they look closely alike, sound alike or roughly mean the same thing. (closer they are the more likelihood of confusion) - Presence of House Marks may be enough to show dissimilarity a) Sound- phonetic similarity relevant where consumer is likely to be hearing the mark or making the purchase verbally. ex. Arrow and Airo, Play Do and Fun Dough, Coca Cola and Cup o Cola b) Sight (eyeball test)- whether overall impression is confusingly similar to impression from another mark. An infringing mark can be similar in appearance without being identical. c) Meaning- marks may convey similar meaning, even though they don't look or sound alike Confusingly Similar-- Picture of a Pegasus (mobil) and the word pegasus, beauty rest and beauty sleep, blue shield and red shield, face to face v. cheek to cheek, beer nuts and brew nuts Dissimilar- dawn and daylight, hill billy and mountain mommy [4] Sophistication of Buyers -professional buyers over regular retail consumers less likely to be misled or confused -lower price of produce=greater risk of confusion, greater level of prudence when goods are expensive [5] Defendant's Intent- to confuse the public not to copy the mark (intent is not an element of infringement, bad faith is probative) [6] Relatedness of Goods/Channel of Trades - Goods do not need to be identical or be in competition for a court to find a likelihood of confusion how if it the products are related increases the chance [7] Likelihood that the Plaintiff will bridge the gap -where products sold different, how likely to Plaintiff will sell the products sold by D in the future. [8] Quality of Defendant's product

Franco v. Walmart

[Circular Towel] Franek sued Walmart and Target for infringement. Franco and Sons were the manufacturers of Walmart/Target's circular towels. Franco & Sons countersued Franek contending that they do not have a valid trademark. Franek had mark for over 5 years (according to Lanham incontestable rule that he has to prove distinctiveness) Franek's ad highlights the very thing that the patent covers. It is functional. Court says "Franek wants a trademark on the circle." Allowing this trademark would be negatively affect the competition.

Aycock Eng v. Airflite

[FLIGHT RESERVATION SERVICE] Registered AIRFLITE for "arranging for individual reservations for flights on airplanes." Aycock made alot of preparations to start up the business. But the court focuses on the fact that Aycock booked zero individual reservations for flights. Was this service offered to the purchasing public? Had a toll free number, had brochures, and pilots willing to shuttle. But the court says it never marketed to the purchasing public.

Qualitex Co. v. Jacobson

[Green Color] Color of dry cleaning pads is protectable if it has acquired secondary meaning. It can act as a distinguishing source identifier. Court did not settle whether color could be registered under Lanham.

Star Markets v Texaco

[Grocery store chain] Star Market has 8 grocery store for many year. Texaco is opening "Star" grocery stores in their gas stations. Star market sues. Distinctiveness surveys find that 75% of Hawaiian associate star with Star market. Recognition survey asks "tell me grocery stores of which you know." 96% said Star Market.

Gibson Guitar v. Paul Reed Smith

[Guitar] No confusion when you come up close to it. No point of sale confusion. "Smokey Bar" theory is not confusing, although the guitars sound different that is not the trademark, the trademark is on the shape.

Automobile Gold v. VW

[Keychain brandishing popular car brands] Functionality is limited to product features that serve an aesthetic purpose independent from the source-identifying function. Consumers are likely buying the keychain for its source-identifying function, therefore it is not aesthetically functional.

Walmart v. Samara

[Knock-off ] A product's design (like color) is distinctive and therefore protectable, only upon a showing of secondary meaning. Product design cannot be inherently distinctive, but packaging can be. * Walmart hired Judy Phillipines to make knockoff clothing

Star Indus. v Bacardi

[Liquor Bottle] Georgi O's elliptical orange "O" was a weak mark but Bacardi did not infringe because it was not likely to cause consumer confusion.

Loubotin v YSL

[Monochromatic Shoes] issue Whether the Lanham Act extends protection to a trademark composed of a single color used as an expressive and defining quality of an article to wear produced in the fashion industry. YSL shoes do not infringe. The red sole was aesthetically functional in making a monochromatic shoe. The Court had the trademark office amend Louboutin's trademark to indicate it only applies when it is a contrasting color (Black shoe/Red sole)

Boston Hockey

[Promo products] Company put emblems on NHL without permission. Found that sponsorship confusion was sufficient--extremely liberal application of the analysis. Where a mark is distributed with the knowledge the public will be aware of the mark's origin, confusion is present

Two Pesos v Taco Cabana

[Restaurant Layout] Trade dress of Mexican Restaurant was inherently distinctive and so protectable. Inherently distinctiveness Trade Dress now only applies to packaging.

Amazing Spaces

[Storage Spaces] Raised star mark was generic, but the trade dress, the design of the building, and the placement of the star was protectable even though the start alone was not.

Abercrombie v. American Eagle

[Trade Dress] Abercrombie was claiming its trade dress as certain clothing, store set up and catalogue. Clothing and store setup were aesthetically functional and would negative effect competition. Catalogue was protectable, not aesthetically function, but was not likely to cause confusion.

Basic Principles of Likelihood of Confusion

[i] does not require plaintiff to show actual confusion [ii] show likely confusion either as to: source of goods or sponsorship a) Source confusion- where consumer is likely to think that P manufactured the goods although it was the D. b) Sponsorship confusion- somehow consumer believes that P has endorsed the product though they may not have made it. [iii] show that an appreciable or substantial number of consumers are likely to be confused a) an appreciable number of ordinarily prudent purchasers will be misled or confused as to the source of the goods in question.