Trademarks & Publicity Rights Test

Reasonable Secrecy Measures

(1) external physical security measures to protect the plant from incursion; (2) internal physical security measures to prevent employees and visitors from gaining access to areas in which proprietary information is kept; (3) confidentiality agreements or clauses for all employees, customers, suppliers, and other third parties who have access to any trade secret information; (4) prohibiting persons who are not bound by these agreement from gaining access to trade secret information; (5) requiring employees with access to proprietary information to sign reasonable covenants not to compete; (6) keeping trade secret information "under lock and key," including securing all documents and insuring that computers have password protection; (7) identifying and labeling all confidential information; and (8) maintaining a policy of informing all incoming and departing employees of the firm's trade secret policies and of the particular types of information considered to be trade secrets (and to which the employee has had or will have access).

Trademark Dilution Revision Act of 2006

(1) reversing the Moseley case's actual dilution standard, and putting into place a likelihood of dilution standard somewhat akin to the Mead Data Central approach under the New York dilution statute; (2) expressly recognizing a dilution by tarnishment claim; (3) more precisely defining a famous mark, which must be famous to general consumer audiences in the United States; and (4) setting forth factors for determining whether a mark is famous and whether it has been blurred by the defendant's mark.

Analyze trademark infringement by analyzing consumer confusion w/ likelihood of confusion factors

(1) the strength of the mark; (2) the degree of similarity between the two marks; (3) the marketplace proximity of the two marks; (4) the likelihood that the senior user of the mark will bridge the gap; (5) evidence of actual confusion; (6) the junior user's bad faith in adopting the mark; (7) the quality of the junior user's goods; and (8) the sophistication of the relevant consumer group. *If you apply these factors to the facts of a case and decide customers would be confused about the products coming from the same company, trademark infringement has occurred and one of the outcomes from the previous slide will occur. •If you apply these factors to the facts of a case decide customers were not confused, everyone gets to keep operating.

Becoming Generic

*Danger that a term is already descriptive can become generic, but so can a mark that is arbitrary, fanciful, suggestive *The acquisition of secondary meaning through use and successful marketing can lead to protection for a descriptive (or otherwise weak) mark, but even that strong de facto consumer recognition does not lead to legal protection in the case of generic marks

Qualitex (Green Steamer Pad Case)

- Functionality doctrine prevents trademark law from inhibiting legitimate competition by allowing a producer to control a useful product feature - If a products functional features could be used as trademarks a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever

Burger King v. Hoots - Limited Area Exception

- Issue of trademark priority and the geographic scope of trademark rights in the case of a nationally known company with a federal trademark registration and a good faith local trademark owner registered under state law - Federal Law takes over - *court acknowledges and protects the right of good faith local trademark owners to continue their use of a trademark in their market area as it existed at the time the other party obtained federal trademark registration* **Despite having registered its mark under Illinois statute local restaurant did not have rights to the entire state only where it had operations

Trademark Registration with USPTO

- You want to get your trademark registered w/ federal government - When you do that you ask if any other company has a trademark registered that would make consumers think the two products come from the same company (compare similarity in trademarks and similarity in goods and services) **Ask whether it is confusingly similar with the word or product ***POLAROID factors not used for registration only used in a law suit****

William R. Warner & Co. v. Eli Lilly & Co

-- Plaintiff was entitled to prevent the defendant from marketing a chocolate and quinine tonic under a name that was confusingly similar to the plaintiff's brand, and to prevent the defendant from inducing druggists to substitute the defendant's product for that of the plaintiff. -- Trademark owners can assert harm to their own commercial interests, but they have a more compelling case when they can show that consumers have been defrauded or deceived in some way. -- A store could also sell a cheap knockoff under an expensive name and charge a premium. --The plaintiff was unable, however, to obtain an injunction barring the defendant from selling the product at all. **Trademark law does not prevent competitors from advertising and competing honestly. ***This highlights the difference between trademark rights as distinguished from patent protection, which does provide an exclusive right to make, use, sell, or offer to sell the product itself. In other words, trademark law focuses on deceptive marketing, but does not provide exclusive rights to sell the product itself. **Trademark law does not offer exclusivity with regard to selling the product itself. It only protects the brand or trademark.

Prosser's four privacy torts

1) Intrusion upon the plaintiff's seclusion or solitude, or into his private affairs 2) Public disclosure of embarrassing private facts about the plaintiff 3) Publicity which places the plaintiff in a false light in the public eye 4) Appropriation, for the defendant's advantage, of the plaintiff's name or likeness

What the Patent Trademark Office Does NOT Do

1. Decide whether you have the right to use a mark - no law requires that you federally register your mark in order to acquire right sin the mark 2. enforce your rights in the mark or bring legal action against infringer 3. conduct trademark searches for the public 4. comment on the validity of registered marks 5. assist you w/ policing your mark 6. assist w/ recording mark w/ customs 7. answer questions prior to filing on whether a mark/type is eligible 8. offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims

Five Categories of Trademarks

1. Generic: refers to or has come to be understood as referring to the genus of which the particular product is a species - UNREGISTERABLE (least protectable) 2. Descriptive: identifies a significant characteristic of the article; conveys an immediate idea of the ingredients, qualities or characteristics of the goods - UNREGISTERABLE WITHOUT "secondary meaning" 3. Suggestive: requires imagination, thought and perception to reach a conclusion as to the nature of the goods 4. Arbitrary: Use of a common word applied in an unfamiliar way 5. Fanciful: words invented solely for their use as trademark (most protectable)

Trademark Infringement Polaroid Factors

1. Market place proximity of the two marks: how close are the two companies geographically and how close are the two product lines? 2. the likelihood that the senior user of the mark will bridge the gap - what are the chances that the company that used the mark first is likely to extend into the junior user's geographic area or product line?

Principal Objectives of Trademark Law

1. Protect the good will and reputation of sellers 2. Prevent consumer confusion or deception about who produced the goods/services they have purchased 3. promote competition in the market by allowing non-misleading advertising by competitors *** Protects against Counterfeiters, pirates, imitators, consumer deception/confusion as to the source of the goods/services

Purpose of Trademarks

1. Regulate the marketplace and avoid consumer constitution 2. Protected under both state and federal law 3. Operates under the Commerce Clause **NOT about protecting investment for societal progress

Trademark Basics

1. Two identical marks can coexist as long as the goods and services are not related (Ex: Delta Airlines v. Delta Faucet) 2. Trademarks are earned through use in commerce (show that consumers associate the mark with the goods/services) 3. Two Categories of trademarks: common law trademarks and federally registered trademars ****Anyone can tack on TM to anything and put the world on notice that they consider their word, phrase, image to be a trademark ****Circled R is used to identify federally registered trademarks

Defenses to Trademark Infringement Overview

1. You are not actually infringing - there is no consumer confusion (analyzed by applying the Polaroid factors)! 2. Abandonment - the other party has abandoned the mark 3. Generic terms - the mark is not protectable 4. Comparative advertising - we are just competing and talking about your product, not confusing consumers 5. Fair Use - We are just talking about it

To establish the existence of a protected trade secret

1. information must be sufficiently secret that the firm derives some economic value or advantage, either actual or potential, from the information (the information must not be generally known to other persons who can obtain economic value from its disclosure or use) 2. the firm possessing the trade secret must make efforts that are reasonable under the circumstances to maintain its secrecy or confidentiality (focuses on affirmative steps taken by a company to protect its trade secrets)

Elements to prove either type of defamation

1. the plaintiff must prove that the defendant made a false and defamatory statement concerning the plaintiff 2. the plaintiff must prove that the defendant made an unprivileged publication to a third party 3. the plaintiff must prove that the publisher acted as least negligently in publishing the communication 4. in some cases, the plaintiff must prove special damages

Distinction b/w 1.8.8 and 1.8.3

1.8.3 (Commerce clause) is silent regarding timelines; meaning that trademarks can theoretically last forever if they are properly maintained

Attribution & False Advertising Claims

A catch all that is often used for unregistered trademarks

Descriptive Marks and Secondary Meaning

A descriptive term can be protected as a trademark if it has secondary meaning (i.e. acquired distinctiveness) *Est. when a mark has come through use to be uniquely associated with a specific source "To establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." **The issue of whether secondary meaning is present is SEPARATE from the question of whether a mark is descriptive *****Often difficult to est. that a highly descriptive term is entitled to trademark protection because it may be deemed generic and may be difficult to prove that it has attained sufficient recognition as a brand to have secondary meaning (acquired distinctiveness) ----A number of factors go into determining whether a mark has sufficient recognition that warrants a finding of secondary meaning including: "the amount and manner of advertising, volume of sales, length and manner of use, direct consumer testimony, and consumer surveys."

Secondary Meaning

A descriptive term can be protected as a trademark if it has secondary meaning (i.e. acquired distinctiveness) Secondary meaning is established when a mark has come through use to be unique associated with a specific source ** To est. secondary meaning a manufacturer must show that in the minds of the public the primary significance of a product feature or term is to identify the source of the product rather than the product itself.

Functionality Doctrine and Secondary Meaning

A functional feature that has attained secondary meaning (i.e. acquired distinctiveness) through the success of the product - and perhaps by virtue of patent monopoly Louboutin S.A. v. YSL (red soles only allowed on all red shoes - no one else can do red soles on black shoes)

Advantages of a Federal Registration

A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state and common law rights exist only for the specific area where the mark is used **Public notice of your claim of ownership of the Mark **Listing in USPTO Online databases **Ability to record the U.S. registration w/ customs to prevent importation of infringing goods **right to use the federal registration symbol R **ability to bring an action concerning the mark in federal court **the use of the U.S. registration as a basis to obtain registration in foreign countries

Dilution - 15 U.S. Code Section 1125

A mark is famous if it is widely recognized by the general consuming public of the U.S. as a designation of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors including the following: 1. Duration, extent, geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties 2. the amount, volume, and geographic extent of sales of goods or services offered under the mark 3. the extent of actual recognition of the mark 4. whether the mark was registered under the act of march 3, 1881, or the act of february 20, 1905 or on the principal register ****Only famous trademark owners can sue for dilution - dilution has no consumer confusion component

Incontestability

A party cannot challenge a federal trademark registration if it has been registered for more than 5 years; give trademark owners peace of mind up to a point that their registration and rights are secured **Challenge to registration usually is b/c the mark is descriptive but no secondary meaning **Solely about validity of registration not about consumer confusion

Qualified Privilege

A qualified privilege exists and actual malice must be proved, regardless of whether the publication is true or false in the following situations: 1. where the publication or expression is fair and true report of any judicial, legislative or other public or official proceeding or of any statement, speech, argument or debate in the course of the same 2. where the publication or expression is a comment made in the reasonable belief of its truth, upon - the conduct of a person in respect to public affairs; or - a thing which the proprietor thereof offers or explains to the public 3. where the publication or expression is made to a person interested in the communication, by one who is also interested or who stands in such a relation to the former as to afford a reasonable ground for supposing his motive innocent 4. where the publication or expression is made by an attorney or party in a judicial proceeding

Protection for Surnames

A surname or personal name is considered to be a descriptive term and is protected as a trademark only upon showing secondary meaning (i.e. acquired distinctiveness) **In order for a mark to be considered a personal name it must be understood as such by ordinary consumers **Bona fides of intentions do not change the principles; objective facts of unfair competition and injury to business are determinative not the defendants subjective state of mind (Findlay Inc. v. Findlay) **The right to use one's own name for trade purposes is often said to be "sacred" but the case law demonstrates that this right can be limited to dispel consumer confusion

The Functionality Doctrine

An aspect of a product or trade dress is legally functional and thus unprotected under trademark law, if it is one of a limited number of efficient options available to competitors and free competition would be unduly hindered by according the design trademark protection **Helps assure that competition will not be stifled by the exhaustion of a limited number of options for product packaging or design ****Product feature deemed functional and CANNOT serve as a trade mark "If it is essential to the use or purpose of the article or if it affects the cost/quality of the article" ***The person seeking to register a trade dress has the burden of proving that the matter sought to be protected is not functional

Common Law Trademark Use

Blue Bell: When neither companies have a federal trademark the person who wins is the one to put the goods bearing the mark on the market first - exclusive right to trademark belongs to one who first uses it in connection w/ specified goods

Trademark Registration

Can be registered at the state and federal levels (examination processes are different); you do not need to choose between the two; you get different rights with each registration

Trade Secret

Can involve almost any kind of proprietary information that has value to a firm that is maintained making use of reasonable secrecy measures and that is not common knowledge *The subject matter of trade secrets is extremely broad *A trade secret can involve any type of information such as technical or non-technical data, a formula, a pattern, a compilation, a computer program, a device/product, a drawing, a process, financial data, a list of actual or potential customers, prospects, or suppliers **To the extent that the manufacturer takes steps to protect this information it may have a legal claim if anyone unlawfully attempts to obtain or use the process *Similarly a new product may be a trade secret at least until the product is placed on the market * A company might seek to claim patent protection for aspects of its product that will be apparent or easily reverse engineering upon marketing and sale of the product while retaining trade secret protection on aspects of the manufacturing process that are not readily reverse engineered

If someone is registered for more than 5 years...

Can't challenge the registration (exceptions still apply)

Confidentiality Agreements

Confidentiality agreements also called Non-disclosure agreements *one party agrees to not disclose any secret or confidential information, knowledge, or data belonging to the company *agreement generally requires that the party agree not to disclose any information either directly or indirectly unless the party has the express, written permission of the company allowing him to do so

Perks of a Federal trademark

Constructive Notice & Incontestability

Defamation

Defamation laws protect the reputations of individuals and other entities from untrue statements; It is the malicious publication or expression in any manner, to anyone other than the party defamed, of anything which tends: 1. to expose any person to hatred, contempt, or ridicule or to deprive him of the benefit of public confidence or social intercourse; or 2. to expose the memory of one deceased to hatred, contempt, or ridicule; or 3. to injure any person, corporation, or association or person in his or their business or occupation Whoever commits the crime of defamation shall be fined not more than five hundred dollars or imprisoned for not more than six months or both

Spectrum of Distinctiveness

Degree to which a mark is distinctive and can thereby serve a source-indicating trademark function Generic (least protectable) Descriptive Suggestive Arbitrary Fanciful (Most protectable)

Trade Secret Infringement

Does not automatically allow recovery against parties who are making use of information claimed to be a trade secret; to prove violation of trade secret law: 1. it must be est. that the information qualified as a secret 2. the company must show that the trade secret was misappropriated or taken by some unlawful means rather than independently developed or lawfully obtained from third source 3. the company must show that the trade secret was used in the appropriator's business or at least obtained or disclosed in an unlawful manner

Deciding if Abandonment occurred

Either: 1. when its use has been discontinued with intent not to resume (can be inferred). Nonuse for three consecutive years shall be prima facie evidence of abandonment. "use" of mark means bonafide use of mark made in ordinary course of business 2. when any course of conduct of owner including acts of omission as well as commission of mark causes it to become the generic name for the goods/services in connection with which it is used or otherwise lose its significant as a mark

Defenses: Comparative Advertising

In order for a new/small competitor to sell its product in competition with large well known branded products it is often helpful to mention the famous brands name *Ability of competitors to make reference to the trademarks of others for purposes of comparative advertising is helpful to competition and consumers **Competition in the marketplace requires that a firm be able to make truthful statements about its competitor's product, including claims of equivalence

Dilution Overview

In some instances even though the ordinary consumer would not be confused there was still some damage done to the distinctive quality of the plaintiff's brand name

If senior user sues junior user

Junior user could get completely shut down

Trademark Infringement

Likelihood of Confusion Standard: to est. a classic claim of unfair competition or trademark infringement the trademark owner must show a likelihood that ordinary purchasers will be confused regarding the source, sponsorship, affiliation, or origin of the goods/services in question **Each Federal Circuit is different

Word Marks and Logos

Logo can be used as a trademark in addition to the words itself EX: Coca Cola - the design over the logo is also covered under copyright law because subject to the originality requirements

Constructive Notice

Nobody can claim ignorance of your federal trademark registration; prevents someone from being able to claim good faith and being allowed to carry on with using the mark **Critical to understand if the senior user or junior user (or neither) has a federal trademark **If they start suing each other these can be some of the results 1. if junior user has a federal trademark senior user might get squeezed into a geographic area 2. If the senior user has a federal trademark the junior user may get completely shut down

False Light

Occurs when someone offensively publishes a true fact that recklessly places someone else in a false light *False light might occur if a newspaper displays a photo of a person and then places a headline near the photo that readers might mistakenly think applies to the person in the photo *You might think of the relationship b/w false light and defamation as analogous to literal falsity and falsity by necessary implication *Defamation applies to false assertions of fact, while false light applies when everything said is true but the combination nevertheless creates a false impression

Acquiring Secondary Meaning

Often difficult to est. that a highly descriptive term is entitled to trademark protection because it may be deemed generic and because it may be difficult to prove that it has attained sufficient recognition as a brand to have secondary meaning **Number of factors go into determining whether a mark has sufficient recognition that warrants a finding of secondary meaning including "the amount and manner of advertising, volume of sales, the length and manner of use, direct consumer testimony and consumer surveys

Defenses: Abandonment

Once a mark is abandoned it reverts back to the public domain and can be appropriated by anyone who adopts the mark for his own use; thus a party is found to have abandoned its mark is deprived of any claim to priority in the mark before the date of abandonment and may regain rights in the mark only through subsequent use after the time of abandonment

Trade Dress

Product packaging cases are relatively uncontroversial - largely an extension of ordinary trademarks found on products such as logos and brand names

Inherently Distinctive Marks

Registrable, grouped together for analysis: 1. Suggestive 2. Arbitrary 3. Fanciful

What Incontestability does not shield

Registrations are subject to cancellation at any time based on any of the following: 1. genericness 2. functionality 3. abandonment 4. fraud on the USPTO 5. immorality, deception or scandalousness 6. disparagement 7. false suggestion of a connection 8. geographical indications on wines or spirits meeting certain requirements 9. representation of a flag/coat of Armys of any nation 10.representation or name of a living person without his/her consent or of a deceased president without the consent of his widow

Statutory Trademark Rights and Incontestability

Rights from the trademark statute that was passed under the commerce clause Include constructive notice and incontestability - the pair permits a federal registrant to obtain preemptive rights over any post-registration users of confusingly similar trademarks

Arbitrary and Fanciful Marks

Same words, different uses, different spots on spectrum

If the junior user sues a senior user

Senior user may get geographically locked in if the junior user has a federal trademark If there is no federal trademark whoever was first user in commerce probably wins

Trade Dress: Two Pesos v. Taco Cabana

Taco Cabana had ownership of trade dress in its restaurants Jury found that trade dress was not functional, that is was inherently distinctive, that it lacked secondary meaning and that the defendant had caused a likelihood of consumer confusion as to the source or association of the restaurants' goods and services Trade dress of a product is essentially its total image and overall appearance - involves the total image of a product and may include features such as size, shape, color, or color combinations, texture, graphics, or even particular sales techniques **Trade Dress (the way something looks) = protectable as long as it is not functional

Defenses: Fair Use

That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin

Intent to Use Trademark Application

The intent to use provisions of the Lanham Act essentially enable a party to obtain temporary preemptive rights to a mark that is intends in good faith to use in commerce in the reasonably foreseeable future allows you to file a registration application before using it in commerce and you can renew it every 6 months for up to 3 years **File before you actually use in commerce and test to see whether likelihood of confusion

Parody, Satire, and Other Expressive Uses

The likelihood of confusion test focuses in part on the proximity between the plaintiff's product market and that of the defendant as well as the likelihood that the plaintiff will "bridge the gap" by entering the defendant's product market If the plaintiff has entered a number of different product markets (and registered its mark in those markets) it may be able to lay claim to exclusivity in a wider range of markets

Ambush Marketing - a type of infringement

The practice by which a rival company attempts to associate its products with an event that already has official sponsors Hashtags and other slogans for major sporting events are likely trademarked

Right of Publicity

The right of publicity is one of four "privacy" torts identified by Warren and Brandies - The four privacy torts protect the right to prevent publican of embarrassing private facts, the right to prevent being portrayed in a false light, the right to be free from intrusion into one's personal space and the right of publicity **The right of publicity generally focuses on the right to prevent one's name or likeness from being used for commercial purposes **Only apply to individuals; companies/other business organizations rely on trademark law and related doctrines **If a person's name develops secondary meaning in association with commercial offerings, people can develop trademark rights in their name to complement their publicity rights ***CONSUMER CONFUSION IS IRRELEVANT TO PUBLICITY RIGHTS CLAIMS

Absolute Privilege

There shall be no prosecution for defamation in the following situations: (1) When a statement is made by a legislator or judge in the course of his official duties. (2) When a statement is made by a witness in a judicial proceeding, or in any other legal proceeding where testimony may be required by law, and such statement is reasonably believed by the witness to be relevant to the matter in controversy. (3) Against the owner, licensee or operator of a visual or sound broadcasting station or network of stations or the agents or employees thereof, when a statement is made or uttered over such station or network of stations by one other than such owner, licensee, operator, agents or employees.

Polaroid Corp. Likelihood of Confusion Factors

This case set forth a balancing test for determining the likelihood of confusion, consisting of the following factors: 1. the strength of the mark 2. the degree of similarity b/w 2 marks 3. the marketplace proximity of the two marks 4. the likelihood that the senior user of the mark will bridge the gap 5. evidence of actual confusion 6. the junior user's bad faith in adopting the mark 7. the quality of the junior user's goods 8. the sophistication of the relevant consumer group

Public Disclosure of Private Facts

This occurs when someone publicizes a true but private fact without a sufficient public interest; for example: publishing photos of a critically injured person as she is being wheeled from an ambulance into the emergency room can be a public disclosure of private facts; although the facts are true and they were visible in a public place there may be weak justifications for publishing the photos of a person in a medically vulnerable condition

Descriptive or Suggestive: Where on the Spectrum?

Three possible ways to analyze: 1. Whether imagination is required in order to see a connection b/w the mark and the product 2. whether other producers need to use the term in order to compete effectively (competitive need) 3. Wether the mark has been used extensively by competitors other than the purported trademark owner (third party use)

Trademark Infringment

Two companies are using the same trademark in commerce and one company sues the other for infringement with the goal of stopping the other company's use **To win there HAS TO BE consumer confusion otherwise both companies can continue to operate - UNLESS one trademark is famous and dilution is appropriate

Presumption of malice

Where a non-privileged defamatory publication or expression is false it is presumed to be malicious unless a justifiable motive for making it is shown. Where such a publication or expression is true, actual malice must be proved in order to convict the offender.

What is a trademark?

Word, phrase, symbol, design that identifies/distinguishes the source of the goods/service of one party from those of another *Prevents confusingly similar from entering the market

Likelihood of Confusion

exists when both: 1. the marks are similar, and 2. the goods/services of the parties are related such that consumers would mistakenly believe they came from the same source

Statutory Rights: Limited Area Exception

permits one business continuing to conduct business in the market area that it had staked out at the time; bars another from conducting business in anothers' market area to avoid confusion

Defamation laws

protect the reputation of individuals and other entities (such as businesses) from untrue and damaging statements *Libel refers to statements that can be seen while slander occurs when defamatory statement is spoken or otherwise audible

Defenses: Generic Terms

trademark can always be attacked on the ground that it has become generic

Qualitex Co. v. Jacobson Products

•The manufacturer of dry cleaning and laundry press pads sued a competitor, alleging that the defendant's imitation of the green-gold color of the plaintiff's pads constituted trademark infringement and unfair competition. •The plaintiff had used the color scheme since the 1950s and had obtained a federal trademark registration for the color. HOLDING: 1. No special legal rule precludes color alone from serving as trademark and that the green-gold color of a manufacturer of dry cleaning press pads could in itself be registered as a source-indicating trademark. 2. The court required that the trademark owner establish secondary meaning (i.e., acquired distinctiveness), in effect treating the color trademark in the same manner as other descriptive marks.