TM

TM Policy

1. Protect the public from mistake / deception by identifying who puts out a product 2. Protect the trademark owner's goodwill - reputation - a valuable asset 3. Facilitate competition and increase economic efficiency

Infringement

(1) DEFENDANT'S USE IN COMMERCE AND --Basically just enough of a hook so that federal law applies --Some connection to commerce that is less. (2) LIKELIHOOD OF CONFUSION

Three types of garnishment cases

(1.) You can bring one b/c D's product is unseemly (adult oriented, drugs). Those tend to be successful. [Guns'R'Us] (2.) Making fun of ™, make ™ look bad. Not so successful. John Deere won but harder to prove. (3.) Association that is going to hurt reputation (Nordstrom). These cases are not sustainable. Really going to have to show a likelihood of confusion.

9th Circuit Test for "nominative use defense"

(ALL 3 Required for slam dunk) (1) Product or service in question must not be readily identifiable without use of the trademark. Necessary to use TM to identify product. • This is why ads refer to Super Bowl as "the big game" • No way to ID New Kids w/o using "New Kids" (2) Only so much of mark may be used as reasonably necessary to identify product/service • If a distinct logo used, might think that maybe band is approving use. Would think that one can't just use a logo without someone's approval. • Brand of ice cream with chocolate inside. Ice cream that has brand of ingredient showing that both companies have something to do with the product. using the Logo could cause readers to think that this is something put out by the band. • ∆ doesn't use New Kids logo to ID group • Don't use logos or anything else to aggregate (3) User must do nothing, in conjunction with the mark, that would suggest sponsorship or endorsement by mark holder • ∆ doesn't suggest sponsorship and doesn't use logo to attract impression. • If some other context that shows original or genuine poll, or teaming up with New Kids to provide poll; that might create a different commercial impression Burden of Proof on P It is irrelevant ∆ profits from nominative fair use as long as ∆'s use doesn't suggest it's sponsored by π

ANALOGOUS USE

(Advanced Usage of Mark) • May confer priority but does not trump prior bona fide use in trade • Analogous use is NEVER ENOUGH for Registration o Party developed some recognition before product is sold o If product is sold, product can be dated back to when it was developed • PRIORITY = Bona Fide Use in Trade 1st

Genericide

(Haughton Elevator - ESCALATOR found to be generic) • Public use TM as a generic term --Primary significance to the public is what matters • Mark as a term for the general product • Used as noun rather than adjective modifying term

Test for Distinctiveness of Logos:

(Seabrook v. Bar-well Foods) • Is it a common basic shape or design? • Is it unique or unusual in a particular field? • Is it mere refinement of a commonly-adopted and well-known form of ornamentation for the goods? • Is it capable of creating a commercial impression distinct from the words? [Matters the most] o If, when viewed in context, it is not immediately obvious that the mark is being used as an indication of origin, then it is probably not Star Indus. v. Bacardi & Co. (2d Cir. 1995) - Star sued Bacardi for using Orange O logo • Holding: D was NOT infringing, especially because other aspects of label o Not common basic shape b/c stylized, colored o Inherently distinctive BUT weak only "thin" protection ♣ Don't want P to monopolize the basic shape ♣ Only protecting stylization and color o No likelihood of confusion - vodka vs. rum • Don't need secondary meaning to be protected or registered BUT only limited protection Amazing Spaces, Inc. v. Metro Mini Storage (5th Cir. 2010) - star design logo • Issue: What test should be applied to determine whether the design is inherently distinctive of P's services? o Abercrombie test failed to indicate whether mark's intrinsic nature serves to be an identifier of goods/services o Applied Seabrook ♣ Used by a lot of business - Lone Star state • Can be geographically descriptive ♣ Commercial impression - Not immediately obvious that mark is used for TM purposes ♣ NOT inherently distinctive • Holding: No secondary meaning not protectable TM o Star not prominent in logo, not tied into marketing messaging

Tarnishment elements

(Starbucks) 1. Link: P's TM is linked to D's related goods 2. Poor quality/context: D's products are of shoddy quality or portrayed in unwholesome or unsavory context 3. Association: Link causes public to associate lack of quality/prestige of D's goods w/ P's related goods 4. *Actual harm not required: Only need to show likelihood of tarnishment Note: --Rebuttable presumption for semantic association (Victoria Secret): A new mark used to sell sex toys is likely to tarnish a famous mark if there is a clear semantic association between the two marks. --Negative impressions + mark association (Starbucks): A mere association between mark combined w/ negative impression of D's name is insufficient to establish likelihood of dilution by tarnishment b/c there's no effect on π's products!

2(c) PERSONAL NAME / PORTRAIT OF UNCONSENTED LIVING PERSON

(or deceased President during life of spouse) • A trademark may be denied registration if it: • Consists of or comprises o a name, portrait, or signature identifying a particular living individual except by his written consent, or o the name, signature, or portrait of a deceased US President during the life of his widow, if any, except by the written consent of the widow. • Per TMEP 1206, consent is needed only if the person is o associated with the goods o publicly connected with the business; or o so well-known public would reasonably assume connection • Consent can be inferred from individual's actions o Apply to reg Noah's Bagel (Noah Alpert real person + gave consent)

LSU Agricultural / Mechanical College v. Smack Apparel * 7 Factors for showing 2nd meaning -

1) Length and manner of exclusive use of the mark or trade dress --5 years = prima facie case of 2nd meaning 2) Volume of sales --# of Consumers / Established place in market 3) Amount and manner of advertising --prominent, "branding style," draw attention? 4) Nature of use of the mark in newspapers, magazines, and media --Can get secondary meaning even if a mark used for a product becomes wildly popular overnight as the latest fad 5) Consumer-survey evidence --Significant # of consumers: does NOT have to be majority! --Approx 60% 6) Direct consumer testimony, and 7) Defendant's intent in copying the mark --Proof of intentional copying bc brand has value

Power of Symbol/Quality

1. PRODUCT CONFIGURATION Makes an association / Identifies source then it can be a TM Ex. LOUBOUTIN RED HEEL 2. SOUNDS Used via repetition, associated with logo / source of the movie you are about to watch Ex. Sound that you hear before the start of 20th Century Fox films Ex. AOL "You've Got Mail", Intel Inside sound, NBC sound, etc. 3. SLOGAN PHRASE / PLAY ON WORDS Cannot be completely descriptive Can be Alliteration, rhymes, repetition over time Ex. Taco Bell: "Think Outside the Bun" play on words for "think outside the box" to be memorable 4. DIFFERENT INDUSTRIES Ex. Dove - Chocolate v. Soap 5. PICTURES / PITCHMAN Right of publicity protects against commercial use of one's persona Individual in picture is representative of that brand. Doesn't matter if fictional or real (Jared Subway guy / Steve Jobs Apple).

DIFFERENT VARIETIES OF CONFUSION

1. INITIAL INTEREST CONFUSION / INTERNET ADVERTISING

Six nonexclusive factors for dilution by BLURRING ONLY

1. Similarity: Degree of similarity of the marks --No requirement of substantial similarity (Starbucks): Federal statute doesn't require marks to be substantially similar, as long as they're similar --*Caveat: If other factors weigh in favor of dilution, then dissimilar marks may still dilute. --Need enough to create association that reduces uniqueness of senior mark 2. Distinctiveness: Degree of inherent of acquired distinctiveness of the famous mark 3. Exclusive use: Extent of P's "substantially exclusive use" of the famous mark --Approximates Schechter's uniqueness 4. Recognition: Degree of recognition of the famous mark 5. Intent: Whether D "intended to create an association" with the famous mark --No requirement of bad faith intent (Starbucks): Determination of "intent to associate" does not require additional consideration of bad faith intent 6. Actual association: "any actual association" between the marks by consumers --Do you know someone is using your mark? - Doesn't help for confusion but helps for dilution *Actual harm not required: Only need to show likelihood of blurring

Sleekcraft factors

1. Strength of the plaintiff's mark a. Conceptual Distinctiveness b. Marketplace Distinctiveness 2. Proximity (relatedness) of the parties' goods 3. Similarity of the marks - in context, subjective 4. Actual confusion (don't need actual proof) 5. Marketing channels used by the parties a. Advertised in the same media, sold in the same venues? 6. Type of goods and care exercised by the purchaser a. Sophisticated purchaser -> less confusion likely 7. Defendant's intent in selecting the mark 8. Likelihood of expansion of the product lines

DISTINCTIVENESS SPECTRUM

Abercrombie Fitch v. Hunting World (2nd Cir. 1976) - TM rights in SAFARI apparel • Holding: SAFARI mark was generic so no rights to protect o Created a spectrum trademark distinctiveness divided into classes with differing degrees of protection ♣ Descriptive terms require acquired secondary meaning ♣ Generic terms get no protection ♣ Fanciful/Arbitrary and suggestive terms have inherent distinctiveness FANCIFUL/ARBITRARY ----- SUGGESTIVE ----- DESCRIPTIVE ----- GENERIC

CYBERSQUATTING

ACPA - Lanham Act § 43(d) • One will be liable to a mark or personal name owner if he or she o Has a bad faith intent to profit from the mark or the name and o Registers, traffics in, or uses a domain name that ♣ If the mark was distinctive, is identical or confusingly similar thereto ♣ If the mark was famous, is identical, confusingly similar, or dilutive ♣ Is a Red Cross or Olympic marks- regardless of confusion or dilution • Bad faith factors include: o IP or name rights of the defendant in the domain name o Extent to which the domain name is the defendant's own name o Prior use of the domain name in bona fide offer of goods/services o Bona fide noncommercial/fair use of mark on a site using the DN o Intent to divert consumers from mark owner's site o Offer to sell the DN for profit with no bona fide intent to use it o Provision of false/misleading contact information at registration o History of cybersquatting o Extent to which the mark in the domain name isn't distinctive or famous • Reasonable belief that use was fair/lawful defeats bad faith Uniform Dispute Resolution Policy - no need for lawsuit and cheaper • Requires bad faith use and registration of a domain name • A summary proceeding - decided on complaint and response • Arbitrators appointed by WIPO • Decisions issued quickly • Most result in transfer Sporty's Farm v. Sportsman's Market, Inc. (2d Cir. 2000) - P registered SPORTY; D registered sportys.com and sold it to its sub; P sued for declaratory judgment; ACPA passed before appeal and was applied • Mark was distinctive DN and mark were "confusingly similar" • Bad faith shown by: o Lack of bona fide use of mark o Intent to compete with P in the catalog business o Evidence supported D registered DN to keep from P • Court ordered transfer of DN

Liability Before Lanham Act

Borden Ice Cream v. Borden's Condensed Milk (7th Cir. 1912) - BORDEN ice cream vs. condensed milk • Holding: no competition of any kind doctrine of unfair competition is not applicable o Confusion of public is not the fundamental question - irrelevant o Personal names not protected unless they have secondary meaning ♣ BUT secondary meaning is irrelevant unless parties sell the same goods ♣ Didn't matter that use of name was deliberate o Confusion due to relatedness of goods too speculative and remote

RIGHT OF PUBLICITY

Cal. Civ. C. § 3344 • Any person who knowingly uses another's name, voice, signature, photograph, or likeness, • In any manner, on or in products, merchandise, or goods, • Or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, • Without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, • Shall be liable for any damages sustained by the person... Common law Broader than § 3344 - protects the person's "identity" White v. Samsung Electronics (9th Cir 1992) - Vanna White in the future • Not likeness under CA law BUT appropriated her identity = violated common law right of publicity • No parody defense - not making commentary on Vanna White o Difference between fun and profit

Generic terms

Can never be protected by TM - prevent monopolization of terms Considerations: • "Who are you/what are you" test o What are you? generic/descriptive o Who are you? not generic • A combination of generics is not necessarily generic o STARTGROLAY - unusual combination o SURGICENTER - nothing unusual or distinctive = generic • "Anti-dissection" rule - mark must be considered as a whole • KEY is how the term is understood by the consuming public Filipino Yellow Pages v. Asian Journal Pubs. (9th Cir. 1999) • Unregister TM = no presumption of validity P had to prove that mark was not generic • Evidence supported finding of genericness o P used its own term generically o Failed to police competitors' use of the term o Media used it generically Mil-Mar Shoe Co. v. Shonac Corp. (7th Cir. 1996) - WAREHOUSE SHOES/DSW SHOE WAREHOUSE • Issue: Is "shoe warehouse" protectable or generic? o Not using literal meaning - term developed connotation of where you can save money and buy goods for a lower price • Holding: Mark was still used in a generic sense o No rule that mandates only the primary definition of a word can qualify as generic

Post-1989 Use

Constructive Use and "Intent to Use" Applications • Rationale behind 1988 amendments to Lanham Act o Disparity between US and foreign law o Foreign applicants didn't have to prove use to apply or register o Disadvantage for US businesses • Changes o "Intent to Use" applications became available o Token use no longer permitted

Descriptive

D uses P's mark to describe D's goods (Ex. This book is about the biology of the AMAZON) Fortune Dynamic v. Victoria's Secret Stores (9th Cir. 2010) - D used DELICIOUS on tank top • Did VS use mark as a trademark? o Used DELICIOUS very similarly to its TM PINK and VERY SEXY - fact question • Did it use the term "only to describe its goods/ and services? o Jury could find it suggestive o Playful self-descriptor could be fair use - but something with more "descriptive purity" is more likely to be fair use ♣ Not just describing the product but the customers • Good faith? o TM searches are normally done - Jury could conclude failure to search was carelessness • VS could've put Beautyrush brand right underneath to make purely descriptive o Ex. Beautyfush is delicious o Or get consent from company Kelly-Brown v. Winfrey (2d Cir. 2013) - OWN YOUR POWER • Use other than as a mark can be "use in commerce" o Use as recurring catchphrase could be an effort to create association • P alleged slogan was not used to describe the magazine and that there was knowledge/constructive knowledge • On remand: o P's mark was not protected (disclaimer, P's use was descriptive with no secondary meaning) o P failed to prove likelihood of confusion o D's established fair use ♣ D did not use term as a mark or to get attention ♣ Used descriptively as a common motivational statement ♣ No showing that D intended to confuse good faith

GEOGRAPHIC LIMITS ON TRADEMARK RIGHTS: Federal registration

Dawn Donut Co. v. Hart's Food Stores, Inc. (2d Cir. 1959) -P sued D for infringement of registered DAWN mark; D argued P failed to sell in area = regional abandonment • Registration gives nationwide constructive rights o Use of mark anywhere avoids abandonment • BUT use in two geographically separate markets means confusion unlikely o No expectation that P would expand into D's market ♣ If P could prove intent to expand - entitled to enjoin D's use o No likelihood of confusion -> injunction denied Online commerce businesses may be able to establish presence in many geographic markets Burger King of Fla. v. Hoots, 403 F.2d 904 (7th Cir. 1968) - D est. common law rights in Illinois before Burger King's federal registration or use in Ill. -> BK has nationwide rights everywhere except D's market

Which marks require secondary meaning?

Descriptive Deceptively misdescriptive (not materially deceptive) Primarily geographically descriptive (orange coast based on orange county) Surnames

Disparaging

Disparages a substantial composite of a referenced group Test: • What do the marks mean in the context of the registrant's services? • Is the meaning one that may disparage the referenced group? [during relevant time frame] Harjo v. Pro-Football Inc. (TTAB 1999)/ Blackhorse v. Pro-football Inc. (TTAB 2014) - petition to cancel REDSKINS on scandalous and disparaging grounds • Marks refer to Native Americans o Alternative meaning as team name doesn't eliminate original meaning • Examine term's use in publications, dictionary usage and survey evidence to determine whether Native Americans found it disparaging o 30% = substantial composite • Laches does not apply where there is broader public policy concert at issue o Equitable defense - difficult to balance "financial interest" and "human dignity"

Exclusions for fair use

Fair use, nominative or descriptive fair use, other than as a mark for D's goods or services --Nominative use - to refer to P's product --Comparative advertising - to compare parties' products --Criticism - to criticize P pr its goods --Parody - to conjure up the original to poke at it News reporting and commentary Any noncommercial use of the mark

Dilution exceptions

Fair uses - nominative, comparative advertising, criticism/parody News reporting Any noncommercial uses

Fanciful v. arbitrary v. suggestive v. descriptive v. generic

Fanciful: Invented words and symbols (Kleenex; Xerox; Exxon; Kodak; Google) Arbitrary: Mark's meaning is unrelated to product (Apple / Blizzard games / Amazon / Oracle) Licorice Pizza for vinyl phonograph records (Black circle that looks like a record), Sunshine for Gas Suggestive: Indirectly describe item BUT must use imagination (Greyhound / Showtime / Paypal) City of Angels for LA sightseeing tours maybe but descriptive because well-known synonym for LA Descriptive: Sports Illustrated. Surname is descriptive unless it gets secondary meaning. --Cartoon Network is descriptive but they can turn it into distinctive with very unique logo + not use it descriptively --Sombrero for hats --Hollywood Fries not descriptive (geographic term is only descriptive if geography is assoc with goods) Generic: smartphone, IPA (standard abbreviation) can never be monopolized as trademarks --What are you → generic / descriptive --Who are you → not generic -Combo of generics is NOT always generic --STARTGROLAY - unusual combination --SURGICENTER - nothing unusual or distinctive = generic -"Anti-dissection" rule - mark must be considered as a whole --KEY is how the term is understood by the consuming public

Fraud: TM Office

Fed Cir: ™ is fraudulently obtained "only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.

Deceptive

Federal Circuit Test for Deceptiveness: (In re Budge Mfg. - LOVEE LAMB for synthetic auto seat covers) • Is the term misdescriptive of the character, quality, function, composition or use of the goods? • If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? • If so, is the misdescriptiveness likely to affect the decision to purchase? -> Misdescriptive mark can be registered as long as it does NOT confuse customers 2(a) Deceptiveness v. §2(e)(1) deceptive misdescriptiveness • Deceptive marks absolutely barred from registration • BUT Deceptively misdescriptive marks registrable with secondary meaning Test for deceptively misdescriptive only includes first two prongs: • Is the term misdescriptive of the character, quality, function, composition or use of the goods? • If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

DILUTION

Federal Trademark Dilution Act of 1995 - Lanham Act §43(c) • The owner of a mark that is "famous" • Can enjoin a mark first used after its mark became famous, if it • "[C]auses dilution of the distinctive quality of the mark" • Nonexclusive factors for "distinctive and famous" are: o Degree of inherent or acquired distinctiveness o Duration and extent of use of mark for the goods/services o Duration and extent of advertising and publicity o Geographical extent of the trading area o Channels of trade for the plaintiff's goods o Degree of recognition in the trading area and the channels of trade o Nature and extent of third party use o Whether the mark is on the Principal Register Trademark Dilution Revision Act of 2006 - Lanham Act §43(c) (after Moseley v. VS Catalogue - sex toys) • Famous = Widely recognized by the general consuming public of the US o Factors: ♣ Extent of advertising, 3rd party publicity ♣ Amount, volume, geographic extent of sales ♣ Extent of actual recognition ♣ Whether mark on the Principal Register • Factors for dilution by blurring o Degree of similarity of the marks o Degree of inherent/acquired distinctiveness of the famous mark o Extent of P's substantially exclusive use of the mark o Degree of recognition of the famous mark o Whether D intended to create an association with the mark o Any actual association between the marks • Dilution by tarnishment = association that harms the reputation of the famous mark • Exclusions for fair use o Nominative or descriptive fair use, other than as a mark ♣ Comparative Advertising ♣ Parody, criticism, comment on the famous mark owner o News reporting and commentary o Any noncommercial use of the mark • Burden of proof as to trade dress o P must prove ♣ Nonfunctional AND is famous ♣ Fame of the trade dress is separate from that of any mark contained in it • Willful infringement -> Monetary remedies, seizure/destruction VERY SUBJECTIVE but • Don't need identical mark • Look at all factors in context • Actual dilution is not required • Fame among general public • Can be either inherently distinctive or descriptive with acquired distinctiveness

Liability under the Lanham Act

Fleischmann's Distilling v. Maier Brewing (9th Cir. 1963) - BLACK & WHITE beer vs. whiskey • Holding: No competition required to find likelihood of confusion o Beer and whisky related enough • Lanham Act eliminated requirement that goods be identical o If products are exactly the same presumption of actual harm • Confusion could be as to whether the parties had some connection (ex. whiskey co. is parent co.) • Possible purpose of using the mark was to capitalize on the popularity of the name

"FIRST SALE" DOCTRINE

Gray Market Goods (Parallel Importation) • New cars that don't meet local safety/emissions standards • Foodstuffs that have a different formulation in other countries • Products shipped in ways that would cause deterioration • Health aids that don't meet governmental requirements • Electric goods that don't meet safety standards • Electronics that aren't compatible with local standards • Goods that are materially different from the local version Champion Spark Plug Co. v. Sanders (S.Ct. 1947) - D sold repaired/reconditioned CHAMPION spark plugs • Champion marks need not to be removed BUT had to stamp with Repaired or used o OK to use original part numbers if CLEAR that plug is used and reconditioned • Full disclosure required

LIKELIHOOD OF CONFUSION

Infringement of a Registered Mark § 32 (15 U.S.C. ¶ 1114) • Anyone who uses an imitation of a registered mark • "In connection with the sale, offering for sale, distribution, or advertising of any goods or services" • Where "such use is likely to cause confusion, or to cause mistake, or to deceive" • "Shall be liable in a civil action" False Designations of Origin § 43(a) (15 U.S.C. ¶ 1125(a)) • Anyone who uses any trademark, or false designation of origin, or false or misleading statement of fact • Which "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association" • "Or as to the origin, sponsorship, or approval" of his/ her products • "Shall be liable in a civil action"

Inherent distinctiveness

Inherent Distinctiveness Tests: (Zatarain's) • Classification - Abercrombie factors o Look at dictionary definition • "Imagination" test - imagination, thought, and perception needed to determine what the goods are • Competitive need test - whether competitors need to use the term to describe their products • Use in the marketplace - whether competitors are using the term to describe their products o Use by others indicates descriptiveness

Fair Use and Confusion

KP Permanent Make-Up v. Lasting Impression (S.Ct. 2004) - incontestable mark MICRO COLORS used by D in advertising • ONLY when P proves likelihood of confusion is a fair use defense needed o Burden on proving infringement on the P o §33(b)(4) fair use defense says nothing about likelihood of confusion D does not have the burden to negate confusion • Implications: o D can assert fair use even if there is likelihood of confusion ♣ That's the risk one takes when adopting a descriptive mark o "Likelihood of confusion" is relevant to determine whether a use is "objectively fair" ♣ If trying to confuse -> no good faith

Commerce

Lanham Act 45: • "Commerce" means all commerce which may be lawfully regulated by Congress • "Use in commerce" means the bona fide use of a mark in the ordinary course of trade --> NO TRADE, NO TRADEMARK

Substantive grounds for refusal

Lanham Act Section 2 • 2(a) - immoral, deceptive, scandalous, disparaging, false connection with person/institution, brings one in dispute, geographical indication • 2(b) - government flags, seals, and symbols • 2(c) - name, portrait, etc. of living person without consent (or deceased president during life of spouse) • 2(d) - likelihood of confusion with earlier-filed mark • 2(e) o **(1) Descriptive or deceptively misdescriptive o **(2) Primarily geographically descriptive o (3) Primarily geographically deceptively misdescriptive o **(4) Primarily a surname o (4) As a whole is functional Astricked = exceptions - acquired secondary meaning -> no refusal based on these grounds

INCONTESTABILITY

Lanham Act §14 - Cancellation of Registration Lanham Act §15 - Incontestability Lanham Act §33(b) - Incontestable mark, evidence Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. (S.Ct. 1985) - incontestable registration for PARK 'N FLY, P sued DOLLAR PARK AND FLY; D challenged that P's mark was generic/descriptive • Holding: §15 Incontestability can be used offensively to enjoin others from using similar mark o §14 already protects against cancellation o Makes presumptions conclusive - exclusive right to use the registered mark o Infringement action may not be defend on the ground that the mark is merely descriptive - has to be because something listed in §14(3)

FAIR USE

Lanham Act §33(b)(4) (15 U.S.C. §1115(b)(4)) • Conclusive evidence of right to use incontestable mark is o Subject to proof of infringement o And subject to defenses, including: ♣ 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

USE AS A PREREQUISITE FOR ESTABLISHING RIGHTS

Lanham Act §45 - "Use in Commerce" • A mark shall be deemed to be in use in commerce... o (1) On a good when - ♣ (a) It is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and ♣ (B) The goods are sold or transported in commerce... o (2) On services when - ♣ It is used or displayed in the sale/advertising or services and • The services are rendered in commerce, or • The services are rendered in more than one State or in the US and a foreign country and the person rendering the services is engaged in commerce in connection with the services • Shown by totality of circumstances • Distinction: In other countries, you need to register first, then use

Literal falsehood

Literally false = no need to prove any effect on customers.

VICARIOUS LIABILITY

More like a joint venture. 2 people come together to engage in nefarious scheme that will bring financial benefit to both (joint venture) but only one is action. Both should be held liable. REQUIRES: • Knowledge of the underlying infringement and control of the infringer • A direct financial benefit from the infringement o Like joint tortfeasors o D has ability to control infringer's conduct o and derives a direct financial benefit from the infringement. --e.g. I know you're selling knock-offs. Just slip me a $100 and we good = Direct infringement --If financial benefit is just renting stall and cost is same whether they sell stall or not, that is incidental and likely indirect infringement.

Corporate name

Name of the entity for legal purposes

Pre-1989 Use

No "Intent to Use" Doctrine • Mark had to be in use before registration Needed to prove that goods/services identified in the registration were used in commerce before filing date • Use in commerce" doesn't require that the products have been sold, but that the use has been sufficiently public for some of the public to associate the mark with the product • Token Use - nominal amount of use in order to register the mark o Ex. ship one order of a good

Evidence of lack of bona fide intent to use

Numerous ITU applications --to register same mark for many more new products than are contemplated --for variety of trademarks intended for single new product --incorporating descriptive terms relating to new contemplated product --to replace prior ITU applications that have lapsed --Excessive number of ITU applications to use marks that were not ultimately used.

Actionable Use Requirement

One must use the TM to be liable Holiday Inns, Inc. v. 800 Reservations, Inc. (6th Cir. 1996) - variation of vanity number was used by D to capture people that misdialed • Holding: No USE of the actual HOLIDAY mark in commerce - just used a mis-spelling no infringement o Did not create confusion - just capitalized on existing confusion ♣ Cause of action is created when the consumer is drawn to the D's brand because of the unauthorized use • Unfair competition doesn't require use of TM (broader law) - decision may have been in P's favor

Abandonment for Non-use

Owner ceases use with intent not to resume • Trademark registration will be cancelled if the affidavit of use required for maintenance or renewal is not filed o BUT owner may still have common law rights Lanham Act §45 • A mark shall be deemed "abandoned" if... o Its use has been (1) discontinued with (2) intent not resume such use ♣ Intent not to resume may be inferred from circumstances ♣ Nonuse for 3 consecutive years shall be prima facie evidence of abandonment ♣ "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark must be greater than token use • Intent to resume must be in the reasonably foreseeable future o To prevent warehousing of marks Emergency One v. American FireEagle (4th Cir 2000) - AMERICAN EAGLE case remanded • Two parts to determining abandonment: o Cease use? ♣ AFE proved 3 years of nonuse = prima facie evidence of abandonment ♣ Burden on P to rebut presumption - did not prove use of the mark o Intent to resume use in the reasonably foreseeable future? ♣ Continued to promote brand on ancillary items, executives considered the name, mark listed in a business plan, delay due to skittishness in introducing a brand

International TM Protection

Paris Convention Principles • National treatment: Equal treatment of citizens and foreigners; each member of the Paris Union gives the same treatment • Minimum protection: Each member gives basic protection for certain rights = baseline of minimum protection (well-known marks, against unfair competition, etc.) • Convention priority: An application filed within six months of filing in member country has priority as of the original filing date o Prevents others from grabbing marks in other countries • Administrative framework: Creates a legal entity in international law to carry out certain tasks = WIPO Madrid Protocol (US joined 2003) • A mechanism for facilitating registration in several countries o Applicant files an intent-to-use application in the U.S. o Asks that it be extended to designated member countries o Fees are in U.S. currency o PTO sends application data to WIPO o WIPO issues International Registration; sends extension requests o Each designated country does its own examination o Local attorney necessary only if application is refused abroad o If home registration fails, IR can be transformed into national registrations • Limitations o Foreign registration will only survive if the home registration happens make sure you have use o Only get foreign protection for the things your US filing covers ♣ Can have broader application if you apply first in other country European Community Trademark (CTM) • Registration has uniform effect in all 28 EU member states • Applications can be filed by Paris Convention members • Filed in one of the official EU languages • And in one of the trademark office's official languages o English, French, German, Spanish, Italian • Examination on "absolute" grounds only o Doesn't look at conflict with prior marks • Office search is sent to prior registrants for information only o So you get the chance to write opposition • One with senior rights may oppose within 3 months of publication

Territoriality of US Rights

Person's Co. v. Christman (Fed. Cir. 1990)- P uses PERSON'S mark in Japan; D uses mark in US knowing P's use; P sells some goods in US; D gets registration of mark; D learns of P's US sales; confusion occurs - P petitions to cancel D's registration • Foreign use has no effect on US Commerce - confers no priority • D's awareness of foreign use didn't prove bad faith o Not a case of a famous mark or attempt to block planned expansion Grupo Gigante v. Dallo & Co, Inc. (9th Cir. 2004) - P owns GRUPO GIGANTE chain in Mexico, D opens Gigante Market in SD; P opens store in LA • Famous Mark exception to territoriality principle o Test: Whether a substantial percentage of consumers in the relevant American market is familiar with the foreign mark ♣ More than just secondary meaning Bayer Consumer Care AG v. Belmora LLC (TTAB 2014) - FLANAX, name for Aleve in Latin America, registered by D in US; P sued for misrepresentation of source (§14(3)) • TTAB: D trying to capitalize on the goodwill of P's goodwill that spills over from Mexico; D's use causes P to lose ability to control reputation • District Court holding: o (§14(3) requires USE in US commerce by P o P failed to plead economic injury or harm to business reputation -> in favor of D • Unclear if foreign rights support source misrepresentation

Geographic Names

Primarily Geographically Descriptive §2(e)(2): • Primary significance of the mark is a generally known geographic location • Goods or services originate in the identified place • Purchasers would be likely to believe the goods or services originate there If yes to all three -> must show secondary meaning for TM registration Burke-Parsons-Bowley v. Appalachian Log (6th Cir. 1989) - APPALACHIAN LOG STRUCTURES vs. HOMES • Holding: P's mark is primarily geographically descriptive with no secondary meaning In re Hollywood Lawyers Online (TTAB 2014) • Examiner refused primarily geographically descriptive b/c Hollywood is well-known, applicant is located in LA, services/place association is presumed o Immediate perception is online database of attorneys based in Hollywood o Applicant's address elsewhere in LA eliminate association

Dilution policy

Protect the OWNER's interest against blurring and tarnishment Purpose: Famous mark owners are entitled to relief against commercial use in commerce of a mark or trade name that causes dilution of distinction quality of mark; lessening of the capacity of a famous mark to ID and distinguish goods or services, regardless of the presence or absence of... --Competition between famous mark owner and other parties; --Likelihood of confusion, mistake or deception Reasoning: --Protect selling power of marks that evoke automatic association with mark owner and favorable imagery --Protect consumers' ability to identify themselves with the image of trademark --Judicial reluctance to apply: Since no consumer confusion required, it's arguably anti-competitive

Reverse confusion

Protects brand owners AND consumers When consumers think that a junior user, which has more resources for advertising, is the original use -> Senior user investment in its goodwill overwhelmed Change in Factor Analysis: (A & H Sportswear v. Victoria's Secret Stores - MIRACLESUIT vs. MIRACLE BRA expanding from lingerie to swimwear) • Actual Confusion - need to see if senior user is facing confusion o Evidence of actual confusion -> survey customers of senior user ♣ Ex. evidence that consumers thought Miraclesuit was from VS (vice versa for forward confusion) o Disclaimer on junior user doesn't matter in reverse confusion; senior user would have to put disclaimer but this would probably hurt them • Similarity of the marks - house marks of junior user doesn't dispel confusion • Strength of Marks o Commercial Strength: look at advertising of the junior user ♣ Commercially strong junior user is favorable for P o Conceptual Strength: look at senior user's mark (but courts go both ways on this) ♣ Conceptually strong senior user is favorable for P • D's intent in adopting the mark - only matters if large company has predatory intent o Trying to create harm by overwhelming in the market place; push P out of the market • Length of coexistence without evidence of actual confusion -> Need evidence that shows there will be saturation of the market by the junior user Cohn v. PetSmart, Inc. (9th Cir. 2002) - WHERE PETS ARE FAMILY vet vs. pet supply store • P failed to offer sufficient evidence of reverse confusion o House mark was important and prevented confusion ♣ Don't look at marks in isolation, look at context o Different advertising/marketing channels o No evidence of actual confusion despite 6 years of coexistence ♣ Market tends to sort itself out -> gotta act fast! o Attentiveness of pet owners - would notice the difference • No likelihood of confusion even though parties use same mark for similar goods/services

Post-Sale Confusion

Protects brand owners, not consumers False Designations of Origin § 43(a) doesn't have "in connection with sale" language [broader than §32 claim] Ferrari S.p.A. Esercizio v. Roberts (6th Cir. 1991) - D's body shell kit mimics Ferrari body shape (purchases were not confused, D did not try to market product as Ferrari) • Holding: Lanham Act protects against post-sale confusion o Protection not limited to confusion at point of sale ♣ 1967- Congress deleted "source of origin" language o Ferrari's reputation could be damaged by the replicas ♣ Protect against the cheapening and dilution of the genuine product (Rolex) • TM in this case is trade dress for product configuration -> need secondary meaning but no discussion • Dissent: focus of factor test should only be on potential purchases in the marketplace • Applying confusion factors: o Just looking at the general public o Purchaser sophistication and care doesn't even come into play ♣ Mere observation of the general public o Intent is irrelevant

Trade name

Public-facing name of a business enterprise

Puffing

Puffing is NOT false advertising • Will a reasonable buyer be confused by this? If not, then it is mere puffing. Not actionable • Ex. • Grossly-exaggerated claims no reasonable buyer would believe • General Claims of comparative superiority over another's product o Such as a matter of opinion (finest, improved, America's favorite) o And claims that aren't objectively measurable o But provided that contest doesn't give objective, quantifiable meaning o Definite and measurable claims are not puffing

Surnames

Registrable on proof of secondary meaning per §2(f) Whether mark is perceived to the relevant purchasing public as primarily a surname Primarily Surname §2(e)(4): (In re United Distillers - HACKLER) • Whether surname is rare o Yes, weighs in favor of not primarily surname • Whether anyone connected with the applicant has that name o Yes, weighs in favor of primarily surname • Whether it has any other recognized meaning o Yes, weighs in favor of not primarily surname • Whether it has the "look and feel" of a surname o Yes, weighs in favor of primarily surname If primarily surname -> must show secondary meaning for TM registration

In-Use

Section 1(a) • Mark must be in use in commerce for the identified goods/services at the time of filing • After PTO examines and nobody opposes, mark will be registered

Intent to use

Section 1(b) (since 1989) • Applicant must have a bona fide intention to use the mark for the identified goods and/or services • After PTO examines and nobody opposes, mark will be allowed for registration contingent on proof of use of mark in commerce

Scandalous

Shocking, offensive to a substantial composite of the general public Test: (Harjo) • What is the likely meaning of the mark? • Is it scandalous/shocking to a substantial composite of the general public?

Tarnishment

Similarity / Association that harms the mark's reputation of famous mark When D's product bearing D's mark would affect the positive impressions about π's product bearing P's mark (usually sexually or drug-related products) Sometimes when the famous mark itself or defendant's goods are disparaged Toys "R" Us, Inc. v. Akkaoui (N.D. Cal. 1996) - ADULTS "R" US for sex toys • "R US" mark is strong in the market place • Association with line of sex toys is inconsistent with P's image Tarnishment • Once a TM has become diluted, it has lost the strength it once possessed = irreparable harm Starbuds Dispensary • Immediate association with something that is not legal everywhere - marijuana culture and drugs • Not consistent with what Starbucks wants to be associated with • No likelihood of confusion Toys "R" Us, Inc. v. Feinberg (S.D.N.Y. 1998) - WE ARE GUNS and gunsareus.com • Unlikely that D's website will be associated with Toys R Us o Differing product areas o Marks are not similar enough - absence of distinctive "R" o Sells only to firearms dealers

Blurring

Similarity / Association that impairs the mark's distinctiveness of famous mark --Determined by 6 nonexclusive factors Perfumebay.com v. eBay Inc. (9th Cir. 2007) • So many "BAY" companies -> losing uniqueness -> suffix may become generic to mean "online marketplace" • Don't need marks to be substantially identical under CA law • No on was confused but harm to brand was important Starbucks Corp. v. Wolfe's Borough Coffee (S.D.N.Y. 2011) - CHARBUCKS; TRDA of 2006 was passed right before appeal case remanded to reconsider case under new statute (relied on existing facts) no likelihood of dilution • STARBUCKS = highly distinctive, substantial exclusive use, highly recognized • Factors favoring P didn't take into account D's use o Bad faith irrelevant to intent to create association with STARBUCKS o Marks were minimally similar in context - black bear [Prof disagrees] o Survey evidence - 30% actual association BUT far less than 70% (Visa)

False advertising test

Southland Sod v. Stover Seed (9th Cir) (1) False statement of fact by defendant in commercial ad about its own or another's product (2) Statement actually deceived or has tendency to deceive substantial segment of its audience for the ad (3) Deception is material, i.e. likely to influence/affect purchasing decision o Does it affect address a product feature or concern to consumers? o Are they likely to rely on it? o Does the false statement depart from the facts to a non-trivial degree? (4) Defendant caused its false statement to enter interstate commerce (5) Plaintiff has been or is likely to be injured as result of false statement, either by o direct diversion of sales from itself to defendant or o by loss / lessening of goodwill associated with its products

Defenses to infringement

Statutory Defenses: 1. Incontestability 2. Cancellation 3. Fair use 4. Functionality Judge-made Defenses: 1. Nominative fair use 2. Comparative advertising

Extraterritorial Enforcement of US Rights

Steele v. Bulova Watch Co. (S.Ct. 1952) - US citizen D registered BULOVA mark in Mexico; spurious and defective watches were purchased by US customers; Mexico cancelled registration • Jurisdictional scope: Lanham Act has broad jurisdictional grant o Congress can govern conduct of US citizens abroad o Congress can protect US citizens from foreign trade practices • Activities weren't confined to Mexico o Bought parts in US o Products came into use harm P's reputation • Okay to apply US law No conflict with law of Mexico Vanity Fair Mills, Inc. v. T. Eaton Co., Ltd. (2d Cir. 1956) - VANITY FAIR used in Canada; unfair competition • Paris convention gives no cause of action for foreign unfair competition o Only requires that countries give the same protections to foreign nationals • Bulova doesn't apply - 2 of 3 factors not present o Defendant's conduct must have a substantial effect on U.S. commerce - YES o Defendant was a U.S. citizen; Congress can regulate citizens' conduct - NO o No conflict with foreign law - NO • Conflict with Canadian law because D had legitimate registration Sterling Drug, Inc. v. Bayer AG (2d Cir. 1994) - P had rights to BAYER vs. BAYER AG; P claimed D violated agreement establishing regional rights • Uses in the US were at issue o Lanham Act is a shield against foreign uses that affect US commerce • Remanded for more tailored injunction McBee v. Delica Co. (1st Cir. 2005) - CECIL MCBEE musician vs. Japanese clothing brand; D owned trademark; policy not to sell to US; website in Japanese • Test: o Is the D a US citizen? ♣ US can still have jurisdiction on foreign D b/c Congress' power to regulate US/foreign commerce o If NO, did the conduct have "substantial effect" on US commerce? ♣ Substantial effect = impacts a sufficient character and magnitude to give US reasonably strong interest in litigation • There was jurisdiction, BUT no likelihood of confusion -> no injunction to enjoin US sales • Website had no substantial effect on commerce (In Japanese, couldn't be used to sell products to US)

FIRST AMENDMENT LIMITATIONS ON TM RIGHTS

TM is subject to right of free expression Balance between free expression and avoiding confusion. Parody Other 1st Amendment Limitations

Surrogate Use

TM use by someone other than the trademark owner, which may inure to the trademark owner's benefit. Board recognizes that abbreviations and nicknames of TMs used only by the public give rise to protectable rights in the owners of the TM Coca-Cola Co. v. Busch (E.D. Pa. 1942) - P had no TM for abbreviation Coke which was created by the public; D marketing a product called Koke-up • Cause of action: Unfair competition; D taking advantage of public abbreviation create consumer confusion o Not TM infringement claim because no TM for COKE • P had to prove that the public used COKE solely in designation of P's product • Holding: COKE is equally protected as the TM o D's use and emphasis on KOKE was "palming off" Nat'l Cable Television Ass'n v. Am. Cinema Eds. (Fed. Cir 1991) - ACE had no TM registration but members/public used initials • Public use can be reasonably deemed use "by" that party in the sense of a use on its behalf o Goodwill established by the fact that everyone is using initials to refer to the claimant (consumer recognition consistent with TM rationale) • Similar to a license - inure to licensor's benefit Illinois High School Ass'n v. GTE Vantage (7th Cir. 1996) - MARCH MADNESS used by IHSA and NCAA • Injunction denied b/c both parties had rights in the term in their respective spaces • No likelihood of confusion

Distinctiveness of Nonverbal Identifiers

Test for Distinctiveness of Logos Test for Secondary Meaning Trade Dress

Contributory Infringement

Test: (Inwood - P claimed D conspired with pharmacists; Tiffany - counterfeit sold on eBay) • If D intentionally induces another to infringe a TM or • If D continues to supply goods/services to who it knows or has reason to know is engaging in TM infringement (knowledge + material contribution) o Requires more than generalized notice, must have knowledge of specific instances of actual infringement, and fail to act ♣ No need to engage in efforts to monitor conduct (Tiffany) o Willful blindness = actual knowledge ♣ Subjective awareness of high probability of infringement and active effort to avoid obtaining specific knowledge o Service providers - must show that D had sufficient control over the means of infringing conduct

Bottom line: to get incontestable status:

To obtain incontestable status for a mark, the owner must file an affidavit with the PTO stating that the mark has been registered and in continuous use for at least five years, that there has been no final decision questioning the owner's claim of ownership, and that there are no pending proceedings questioning such ownership.

False suggestion of a connection

To prove, a plaintiff must show that the mark or trade name in question is unmistakably associated with the plaintiff's persona (living or dead) or company. Hornby: Plaintiff must show that: (1) the competitor's mark is the same or very similar to the plaintiff's persona or name, (2) the mark is recognizable as associated with the plaintiff, (3) the plaintiff is not connected with the competitor's activities, and (4) a consumer would presume a connection between the competitor's products and the plaintiff because of the plaintiff's fame or reputation at the time of the mark's use by the competitor. Uniquely point to them in this context/industry

Where do TMs come from?

Trade-Mark Cases (US 1879) - constitutionality of federal TM counterfeiting law • Government's argument: Article 1, §8 o Promote progress of science and useful arts (copyrights and patents) o Regulations of commerce with foreign nations and interstate commerce o TM are a necessity in interstate commerce - need to know where the product is coming from • Holding: specific transaction was not interstate; also not authorized by Patent/Copyright Clause; statute was struck down o Only common law protection available ♣ Inconsistencies between states = difficult to have uniform national system o "Exclusive right to trademark grows out of its use, not it's mere adoption" ♣ Some kind of recognition/goodwill is necessary for protection ♣ Policy rationale: prevent consumer confusion

Unfair Competition

Trademark infringement is a subset of unfair competition -> Unfair competition is broader Protects common law trademark (don't need federal registration) and against false advertising Lanham Act §43(a) • Anyone who uses in commerce a TM or false designation of origin, or false or misleading description or representation of fact, which o Is likely to cause confusion, mistake, or deception as to ♣ Affiliation, connection, or association with another, or as to ♣ Origin, sponsorship, or approval of his/her goods, services or business, or o In commercial advertising misrepresents the nature, qualities, or geographic origin of his/her goods or services • Shall be liable in civil action

FEDERAL TM REGISTRATION PROCESS

US states generally have "registration" systems • File something and get TM registered US has an "examination" system - substantive examination • "Relative examination" - with a register search for conflicts o More intense examination -> get legal presumptions o U.S., Canada, China, Japan, Mexico, Korea, Australia, Brazil, Norway • "Absolute examination" - no register search o Approved if meet all technical requirements, let the public oppose if there's likelihood of confusion o E.U., E.U. member states, Argentina, Switzerland Registration Process • Application is filed o Filing basis - use, intent to use, foreign registration o Identification of goods and services o A "drawing page" showing the mark • In about three months, assigned to examiner who o Checks for compliance with technical requirements o Considers whether the ID of goods/services is clear o Considers whether the mark is distinctive or not o If application is use-based, checks specimen for compliance o Performs a search of active U.S. applications and registrations o Issues an office action in case of deficiencies, conflicts • Office actions o Applicant has six months to respond o If examiner is satisfied, will approve mark for publication o If not, will issue a final office action o Applicant can respond to final office action o Or appeal to the Trademark Trial and Appeal Board o TTAB decision reviewed ♣ By appeal to Federal Circuit ♣ Or civil action in district court • Letter of protest during examination o Filed by an interested third party o To bring to the examiner's attention issues such as ♣ Descriptiveness/genericness ♣ Likelihood of confusion with an earlier-filed mark o Supervisor decides whether or not to give to the examiner • Publication o Application is published in the Official Gazette o An interested party can oppose within 30 days (extendable) o If nobody opposes, mark will be ♣ Registered (if filed "in-use" or use declaration or foreign reg is filed) ♣ Allowed for registration pending proof of use (if intent-to-use) • Six months to submit Statement of Use and specimen • Can be extended for a total of three years • Opposition o Filed with the Trademark Trial and Appeal Board ♣ Typical grounds: Likelihood of confusion with an earlier mark, fraud on the PTO, no bona fide intent to use, genericness, functionality o Procedure is like a federal court lawsuit under Fed. R. Civ. P. o Discovery is taken as under the Federal Rules o The "trial" is by a paper submission o A hearing before a panel of three TTAB administrative judges • Cancellation o Like an opposition, but challenges issued registrations • Appeal - two options o Appeal to Federal Circuit o Trial de novo in district court • Maintenance - TM lasts as long as mark is still in use o Use declaration - between 5 and 6 years from registration ♣ File declaration of incontestability o Renewal declaration every 10 years from registration

GEOGRAPHIC LIMITS ON TRADEMARK RIGHTS: Common law

United Drug Co. v. Theodore Rectanus Co. (S.Ct. 1918) - REX used in Mass. and Ky.; 25-30 years of good faith use in own territories; P ships product to Ky. • Common law rights are based on use • Adopting a mark doesn't project protection ahead of extension of trade • No trade in a state -> no TM rights • Prior remote adoption is immaterial UNLESS 2nd adopter was in bad faith (stealing goodwill, blocking trade) [Hanover Milling] Nat'l Assn. for Healthcare v. Central Ark. (8th Cir. 2001) - P first to use CARELINK with TM application pending; first to use in Ark. but one de minimis sale; D first to use in 6 counties in Arkansas and had state registration; P tried to sell in 6 counties • Rights extend only to actual trading are (Rectanus) - registration NOT issued so only common law rights o Relevant market area = 6 counties where D trades o P never made sales here and early sale in Ark. was de minimis o -> No likelihood of confusion inside AND outside area • D had common law rights in 6 county region -> entitled to injunction in against uses ONLY in this area causing likelihood of confusion o No evidence that D planned to extend outside region so not entitled to statewide injunction

Other 1st Amendment Limitations

Univ. of Alabama v. New Life Art (11th Cir 2012) - Paintings of football team; calendars, mugs and mundane products • Licensing rights did not prohibit depicting uniforms • 1st amendment rights under Rodgers trumped infringement claims o Depiction of University uniforms had artistic relevance o No evidence Moore marketed them as "endorsed" or "sponsored" • Remanded on mundane products - fact questions about acquiescence Brown v. Electronic Arts (9th Cir. 2013) - NFL athlete claimed use of likeness in Madden violated §43(a) • Game was an expressive work, with characters, plot, dialogue, etc. • Motion to dismiss granted per Rogers o Use of Brown's likeness was artistically relevant to "extreme realism" ♣ "The '65 Cleveland Browns cannot be" [depicted] without Brown o No allegation of "explicitly misleading" consumers • Rodgers test applies to more than just titles

Expressive use of TMs

Using ™ in artistic setting as long as it is not misleading Is trademark used as title of expressive work? --If so, proceed to #1. --If not, apply 2nd Cir likelihood of confusion test. Trademark rights give way to First Amendment. We want to encourage free expression. (1) Does title have any relevance to the underlying work / content of work at all? • Very low threshold for determining how much artistic relevance is needed - must have more than zero • If #2 is met, no trademark infringement unless #3 below is met. (2) If it has SOME relevance, does title explicitly mislead as to source or content of work? • Requires something more than merely using mark • 9th Cir- Brown v. EA: Evidence must relate to nature of behavior of identifying material's user, not impact of use • 9th Cir- ESS Entertainment v. Rock Star Videos: Would consumers think that trademark owner is somehow behind or sponsors defendant's expressive work?

2(d) LIKELY CONFUSION

W/ EARLIER-FILED MARK • Denied registration if it: o Resembles --a mark registered in the Patent and Trademark Office, --or a mark or trade name previously used in the United States by another and not abandoned, o as to be likely, --when used on or in connection with the goods of the applicant, --to cause confusion, or to cause mistake, or to deceive • Provided, that the PTO may issue concurrent registrations o if it determines that there is no likelihood of confusion o based on specified limitations on use

Nominative fair use

When ∆ uses TM to describe and refer to π's product, rather than ∆'s own, but ∆'s ultimate goal is to describe own product. Necessary to use a mark for purposes of comparison / criticism. D uses P's mark to refer to P's product (Ex. You can buy it on Amazon) R.G. Smith v. Chanel, Inc. (9th Cir. 1968) - duplicate of CHANEL NO. 5 • Lanham Act permits use of another's mark in comparative advertising - Rationale: o TMs exist to serve public purpose of competition o Competition is hindered if one can't ID the competing product o Can't use TM law to get patent-like protection in perpetuity New Kids on the Block v. News Am. Pub. (9th Cir. 1992) - "Who is your favorite New Kid?" • Test: o The product can't be readily identified without using the mark ♣ Survey wouldn't make sense without the name o Only used as much of the mark as needed for identification (no logos) o User didn't do anything to suggest sponsorship or endorsement Century 21 Real Estate v. LendingTree (3d Cir. 2005) - D used P's name among network of brokers • Nominative fair use is just a defense to infringement o Likelihood of confusion must be considered first o Drop strength and similarity of marks factors Toyota Hypo - if there is a claim for ™ infringement - Toyota suing automobile maker for using Lexis. D raises nominative fair use defense by saying I'm not calling my product Lexis, I'm calling their's. P has to prove that the D is using name in a misleading use by going into Nominative fair use. • Sleekcraft factors don't apply until we determine it is nominative fair use.

Qualitex test

Would exclusive use put competitors at a significant non-reputation-related disadvantage?

Descriptiveness & Secondary Meaning

Zatarain's, Inc. v. Oak Grove Smokehouse (5th Cir. 1983) - P held TM for FISH-FRI and CHICK-FRI; D started marketing Fish Fry and Chicken Fry Holding: describes what the product is so NOT suggestive o Needs secondary meaning ♣ Fish-fri: YES - advertising, polls showing association to P's brand ♣ Chick-fri: NO - no evidence, product hasn't been around long o D has fair use defense ♣ Ordinary descriptive words "fish fry" are not protectable, only protect FISH-FRI

Test for Functionality

[In re Morton-Norwich Products, Inc. (C.C.P.A. 1982) - Attempt to register trade dress of spray bottle shape] • Is claimed trade dress covered by utility patent? o Yes -> presumed to be functional • Does the owner tout its utilitarian advantages? • Are alternative designs available to competitors? • Does the design make manufacturing simple or cheap? -> Effect on competition is the most important consideration

Trade dress

characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers Two Pesos v. Taco Cabana (S.Ct. 1992) [Store Design] • If inherently distinctive [capable of identifying products/services as coming from a specific source] don't need to find secondary meaning • Rejected notion that trade dress always requires secondary meaning to be protected o Rationale: don't want to burden entrepreneurs/small business with unique, distinctive look; economic balance o More like product packaging Qualitex v. Jacobson Products (S. Ct. 1995) -green-gold color TM registered with PTO [Color] • Rule: Color alone can be a TM provided that it has secondary meaning and therefore can identify/distinguish a particular brand o Color can't be inherently distinctive • Arguments against registration of "color alone" as TM o Shade Confusion how will others determine whether they are infringing on the exact shade? ♣ Counter: courts will figure it out o Color depletion run out of colors if people monopolize ♣ Counter: functionality doctrine would bar protection to colors that competitors required Wal-Mart Stores v. Samara Brothers (S. Ct. 2000) - D copied P's clothing design [Product Configuration] • Product design can never be inherently distinctive o Design usually intended to make the product more useful or appealing, NOT to identify the source o Consumers should not be deprived of the benefits of competition with regard to utilitarian/esthetic purposes ♣ Don't want to monopolize functional or aesthetic aspects o Patents offer protection for design • Seabrook test doesn't apply - too indefinite o Without secondary meaning requirement, too easy for parties to sue in court • Rule: Product design is only distinctive if you can prove secondary meaning

A successful parody may...

may not be blurring; it may o reduce the blurring factor of degree of similarity o enhance, not impair, the famous mark's distinctiveness o enhance its recognition, too o ™ use can NOT be in the same industry as Famous mark

Loss of Rights

through Abandonment or Uncontrolled Use (Naked License)

Constructive notice exception

• "Remote area" Exception; Elements (Sweet 16): Jr. user has right to continued use of an otherwise infringing mark in a remote geographic area if that use was est. prior to the other party's fed. reg - o Prior use: Jr. user adopted mark before π's fed. registration; o Lacked knowledge/Good-faith: No knowledge of fed. reg.'s use; o Remote area: Jr. user's trade is in remote area; o Continuous use: Jr. user has continuously used mark in remote area.

CONCURRENT USE

• 2 companies with rights to one mark. ASSUMING NO LIKELIHOOD OF CONFUSION, users who in good faith make concurrent use of trademark in remote locations may continue to use in their respective territories of use is reflected in trademark registration practice. 1.) Each party made more than a token use of mark in commerce 2.) Concurrent use must not create a likelihood of confusion to the source of parties' goods 3.) Respective territories must be restricted to

Cancellation

• A petition to cancel may be filed: (1) Within five years from the date of registration [under Lanham Act] (3) At any time if the registered mark o Becomes generic o Is functional o Has been abandoned o Was obtained by fraud o Did not comply with section 2(a)(b), or © (a) Immoral, deceptive, scandalous, disparaging, false connections, disrepute, G.I., etc. (b) Flags, government symbols (c) Name, portrait, signature of living individual/deceased President* without consent o Is used to misrepresent the source of the goods or services (5) If certification mark requirements not followed • After 5 years, mark can not be cancelled for o § 2(d) Likelihood of confusion --Out for 5 yrs, marketplace will figure it out o § 2(e) Descriptiveness and lacking secondary meaning --We don't want to relitigate. We want to quiet title. o § 43(c) Likelihood of dilution o Registrant's lack of ownership of the mark • This is so regardless of § 15 incontestability status o Things that protect finality are protected by incontestability

Lanham Act §14 - Cancellation of Registration

• A petition to cancel may be filed: o (1) Within five years from the date of registration [under Lanham Act] o (3) At any time if the registered mark ♣ Becomes generic ♣ Is functional ♣ Has been abandoned ♣ Was obtained by fraud ♣ Did not comply with section 2(a)(b), or (c) • (a) Immoral, deceptive, scandalous, disparaging, false connections, disrepute, G.I., etc. • (b) Flags, government symbols • (c) Name, portrait, signature of living individual/deceased President (if spouse is still living) without consent ♣ Is used to misrepresent the source of the goods or services o (5) If certification mark requirements not followed - mark placed by organization that indicates it meets some standard (ex. organic) • After five years the mark can't be cancelled for (regardless of incontestability status) o §2(d) Likelihood of confusion o §2(e) Descriptiveness and lacking secondary meaning o §43(c) Likelihood of dilution o Lack of ownership of the mark -> Balancing of property rights and public interest • After 5 years registrants property rights are more important •. Safe from attack UNLESS: (1) makes registration vulnerable through own actions, (2) never entitled to registration to begin with

Geographic descriptors

• A trademark may be denied registration if it:Consists of a mark which... when used on or in connection with the goods of the applicant is o primarily geographically descriptive of them, --except as indications of regional origin may be registrable under section 1054 of this title [collective and certification marks] o primarily geographically deceptively misdescriptive of them • These two types were treated the same before NAFTA o Geographically descriptive marks are still registrable on proof of secondary meaning per §2(f) o Since NAFTA (Dec. 8, 1993), geographically deceptively descriptive marks are absolutely barred from registration

Equitable Defenses

• Acquiescence - Aware of other's use of ™ but later go back on practice (unfair) • Laches 33(b)(9)- deny remedy if they don't bring claim promptly because unfair to know you have claim but let them continue to infringe (so that you can collect more damages later). Unfair to sue company later? Subjective question as to whether the delay was unreasonable. o Pro-Football v. Harjo (D.C. Cir. 2009) o Harjo et al. petitioned to cancel REDSKINS registrations o Youngest plaintiff waited nearly 8 years after turning 18 to sue o Court held that laches barred the claim because ♣Delay made it harder for Pro-Football to get evidence for its defense ♣And Pro-Football invested in the mark in reliance on the lack of a claim o Then a group of young plaintiffs (Blackhorse, et al.) petitioned • Estoppel - o Big company becomes aware that small company operating in remote region. Sends them letter. No response. Years later, small company has huge sales. Unfair to sue company 5 yrs later. If delay is reasonable, then it is ok that you didn't take action. Big comp often has infringement targets. o If you wait longer than statute of limitations, then your delay is not reasonable.

Lanham Act §7 - Federal Registration

• Acts as prima facie evidence of o Validity of mark o Ownership o Exclusive rights to use it for goods/services identified in the certificate Constructive use (notice) as of filing date, with nationwide right of priority (except as to prior user or registrant)

What is a TM?

• Any word, name, symbol, or device, or any combination thereof • Used by a person •. To identify and distinguish his goods/services from others' and indicate their source

INITIAL INTEREST CONFUSION / INTERNET ADVERTISING

• Bait & Switch: put something out that isn't exactly what it is. • Becoming disfavored It's based on outmoded notions of use of the Internet • Also applied inconsistently - does it require a sale or not? • Potential purchaser is led to defendant's product or service by initial confusion regarding good or service, but subsequently discovers that good or service is not that of trademark holder's before purchase --Some courts say initial interest confusion is actionable regardless of whether consumer actually makes purchase

When is 43(a)(1)(A) useful?

• Broader than federal unfair competition law • Useful when you o don't have fed registration o can't get fed reg (no use in US Commerce) o confusion is in the nature of a false endorsement --nationwide injunction is only available if you seek remedy under federal law • It can complement a 32 claim or right of publicity claim o If your registration is vulnerable to attack o If the state law has limitations --Such as the geographic extent of the injunction (statewide only) --Or if you may not fall squarely in the statute (e.g., actual photo not used)

Color as Functional

• Brunswick Corp. v. British Seagull (Fed. Cir. 1994) - TM of color black for boat motors rejected o Color is de jure functional ♣ Make the motor look smaller ♣ Competitors need to be able to sell black motors o Color serves non-trademark purpose • Inwood Laboratories v. Ives Laboratories (S.Ct. 1982) - functional blue/red pill capsules patent expired; pharmacists put generic is similar capsules o Product feature is functional if it is ♣ Essential to the use and purpose of the article ♣ Affects the cost or quality of the article • Qualitex v. Jacobson Products (S. Ct. 1995) - green-gold TM o Where color serves significant non-trademark function, courts will examine if exclusivity stifles competition o Test for aesthetic functionality: ♣ Essential to the use or purpose of the article or affects the costs or quality of the article? ♣ If no Would put competitor at a significant non-reputation-related disadvantage

Lawful use in commerce

• Business legal only under state law do not get federal protection o Ex. medicinal marijuana • Exercise common law rights - sue for unfair competition • Register TM for ancillary goods/services which are lawful under federal law o Ex. Holistic services, counseling, etc.

2(b) GOV, FLAGS, SEALS, SYMBOLS, & INSIGNIA

• Examples of marks that can't be registered: o the flag or coat of arms or other insignia of the United States, o or of any State or municipality, o or of any foreign nation, o or any simulation thereof. • Can register LAPD because it is not the official city seal

Lanham Act §15 - Incontestability

• Except for o A mark cancellable on a §14(3) or (5) ground or o A mark that infringes a common law mark senior to its registration • A mark in continuous use 5 years after registration is incontestable, provided: o (1) There has been no adverse decision as to ownership or validity o (2) There is no pending proceeding challenging rights o (3) An affidavit of continuous use has been filed with the PTO (submit after year 5 - show that use was substantially exclusive & continuous) o (4) No incontestable right shall be acquired where the term is generic

Secondary liability

• In order to be liable for contributory infringement, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. • like aiting and abetting • derives financial infringement for infringement. 1. VICARIOUS LIABILITY 2. CONGRIBUTORY LIABILITY

Incontestability

• Kind of like quiet title • A plaintiff can also use it to defend attack by defendant • Shouldn't make a mark "stronger" but 6th and 11th Cirs. say it does • How? o Continuous, substantially exclusive use for 5 consecutive years after reg, AND ♣ Continuous because we want meaningful (not sporadic) use ♣ There has been no final decision adverse to owner ♣ No pending challenges in PTO or in court ♣ Registrant files affidavit of continuous use for 5 years ♣ And the mark isn't generic for goods/ services in the registration --Impt bc this incontestable status turns presumptions of descriptiveness into conclusiveness Can not get incontestability if it is generic o Files an affidavit to that effect AND o Can't be under challenge

Abandonment for Naked License

• Lack of control over licensee's use Mark no longer identifies the source of the product - TM must ID a single source o What matters is consistent standard of quality, not "high" quality • Treated as abandonment of TM Stanfield v. Osborne Industries (10th Cir. 1995) - Stanfield licensed his name to OII • Agreement contained no quality control provisions • There was no actual quality control • No special relationship that would justify reliance on other party to quality control Eva's Bridal Ltd. v. Halenick Enterprises, Inc. (7th Cir. 2011) - P licensed TM to D; license expired, D kept using mark • Agreement had no quality standards, P never controlled/supervised D's services • P's argument that control was unnecessary because D had high standards was rejected • Holding: TM abandoned due to naked license Univ. Book Store v. Univ. of Wis. Regents (TTAB 1994) - University attempted to register Buck Badger despite uncontrolled 3rd party use • Holding: registration allowed because public identified BB logo with the University o 3rd parties used marks for uses different from what the registration sought o Quality of licensed goods met standards even without licensing program

Residual goodwill

• Legacy ability of a trademark to identify the source of a product after it is no longer produced o Gives the new user instant recognition o When applied to inferior goods, may tarnish previous owner's reputation • Rebuts the presumption of abandonment o De minimis use, continued recognition or little elapsed time since the use ended

Test for Secondary Meaning:

• Length and manner of use of mark • Volume of sales • Amount and manner of advertising • Nature of use of mark in newspapers and magazines • Consumer survey evidence • Direct consumer testimony • Defendant's intent in copying

Specific benefits of incontestability

• Mark cannot be challenged because it is only descriptive • Distinctiveness (defendant in infringement proceeding cannot claim that incontestable mark is descriptive and lacks secondary meaning) o Can be used as both shield in cancellation proceedings and as sword in infringement litigation proceedings • No need to establish ITU in a remote area! • Priority o Senior user of mark in particular geographic area may continue to use that mark in area of prior use - however, senior user cannot challenge incontestable mark outside this geographic area. May be able to lock down priority in every region where unregistered user hasn't est. rights.

Other types of "confusion" not caused by TM imitation:

• Marks are similar because they describe similar goods • Media will get the name wrong • Internet confusion - go to wrong website by mistake

Should incontestability make a mark "strong"?

• Most courts: it says nothing about how customers perceive it o But 6th and 11th Circuits call such a mark presumptively strong • Wrong. You have to prove that the trademark is distinctive conceptually and in marketplace.

Can you attack an incontestable mark as void ab initio?

• No - voidness for no use at filing is not an enumerated defense. Quiet title type situation where we won't go back and challenge it. • But this scenario could amount to fraud on the PTO

Trademark Rights

• No property right in the mark per se -> merely a protection for the good-will (Hanover Star Milling Co.) o Use is what creates the good-will • TM law recognizes the psychological function of a symbol and its attention power (Mishawaka Rubber) o Value in the both identity and positive connotation created by good-will; allows brand to draw consumers • Quality control (Yale Electric Corp.) o Borrowing another's reputation lack of control in quality

Parody

• Nominative use that pokes fun, criticizes • Parodying a famous mark is protected by fair use defense only if parody is NOT a designation of source for person's own goods or services. o Exception to exception: If user uses famous mark as designation of goods or sources, then may still be liable Anheuser-Busch, Inc. v. Balducci Publications (8th Cir. 1994) - "One taste and you'll drink it oily" ad in humor magazine • Parody is a defense = must prove confusion first (infringement) • Absent steps to make it clear it's parody -> likely to confuse o D was indifferent to possibility of confusion • Must weigh public interests: free expression vs. consumer confusion • Test: A parody must convey two simultaneous - and contradictory messages o That it is the original and o Instead is a parody. • No 2nd message -> vulnerable to TM law since consumer will be confused Dr. Seuss Ent. v. Penguin Books (9th Cir 1997) - Dr. Seuss style commentary on OJ simpson trial • Dilution by Tarnishment and NOT PARODY - not making fun of Dr. Seuss, making fun of something else • Can't use someone else's IP as gimmick to get people to buy commentary on something else o Need to make fun of the thing you're taking from (the original) • Writing "A Parody" is not enough Mattel, Inc. v. MCA Records, Inc. (9th Cir. 2002) - Barbie Girl song title • TM law only protects "source-identifying function" o Can't use TM to quash expression or points of view o Prof: judge looked at it too narrowly ♣ More generally, TM can't be used to stifle competition • Endorsed Second Circuit Rogers v. Grimaldi test - no violation unless o Title has "no artistic relevance to the underlying work" or ♣ Title "clearly is relevant" to the underlying work o If it has artistic relevance, it "explicitly misleads" as to source or content ♣ Doesn't suggest that Mattel was involved E.S.S. Ent. 2000 v. Rock Star (9th Cir 2008) - Pig Pen vs. Play Pen in GTA • Rodgers rule is not limited to titles o Use had "artistic relevance to defendants' twisted, irreverent image of urban Los Angeles" o Use of trade dress and mark "does not explicitly mislead consumers as to the content of the game" o "Pig Pen" did not appear in promotional material or on exterior packaging

First Amendment exceptions to disparaging marks:

• Non-speech (i.e. false advertising, fraud, obscenity) • Content based (government targets particular subject matter or viewpoint - subject to strict scrutiny and almost always struck down) vs. content neutral (regulation regardless of subject matter or viewpoint - subject to intermediate scrutiny and almost always upheld) • Commercial speech • Government speech (sometimes private speech sponsored, paid for, or endorsed by federal government is considered government speech - i.e. specialized license plates) • Private rights and definitional balancing: Granting of private rights that limit free speech rights of others passes constitutional scrutiny when law includes free speech safeguards

Comparative advertising

• OK - a nominative use o Comparing product to that of P • LHA does not prohibit a commercial rivalry's truthfully denominating his goods a copy of a design in public domain, though he uses name of designer to do so.

Principal v. Supplemental Register

• PRINCIPAL REGISTER o Mark must be distinctive and actually used in commerce o bona fide intention to use in commerce? o (a) identify and distinguish goods or services, including a unique product, from those manufactured or sold by others; and o (b) to indicate source of the goods, even if source is unknown o Advantages: ♣ Nationwide protection from filing date ♣ PTO may cite mark against app for junior mark likely to confuse ♣ If in use for five years, it's "incontestable" (defenses limited) ♣ Provides notice - a warning to others ♣ Can be registered with Customs to block imports ♣ Enhanced remedies against counterfeits ♣ Evidentiary advantages ♣ Presumptions of distinctiveness, nonfunctionality ♣ Use of the ® symbol ♣ Confirms ownership and validity ♣ Can support foreign trademark filings • SUPPLEMENTAL REGISTER o Marks that are descriptive but potentially distinctive that have not yet acquired secondary meaning - must actually be used in commerce as well (and satisfy all other requirements besides distinctiveness) ♣ Descriptive marks ♣ Geographic marks ♣ Surnames o Advantages: ♣ Listing of mark in USPTO's online database ♣ Can be cited by USPTO examining attorney against later-filed application to register confusingly similar mark to related goods/services (including on Principal Register) ♣ Right to bring action in federal court for infringement of mark (would have to be under §43(a) for common law rights in unregistered marks) - gets mark owner jurisdiction but not necessarily victory - must show secondary meaning to succeed on infringement claim ♣ Ability to use registration as basis for trademark application in many other countries/jurisdictions (Paris Convention) ♣ Right to use registered symbol with its mark when mark is used on or in connection with covered goods and/or services (and thus to deter potential infringers)

Aesthetic Functionality

• Pagliero v. Wallace China Co. (9th Cir. 1952) - D copied P's china pattern which was main selling point of plate o If a product feature is highly desirable (pleasing) and serves no purpose but to attract purchasers, it can't be protected by TM law in the interest of competition ♣ Regardless of availability of other designs ♣ Commercial success of aesthetic feature automatically destroy TM interest ♣ Could be protected through copyright o Designs primarily adopted for purposes of identification may be protectable on proof of secondary meaning • Wallace Int'l v. Godinger Silver Art (2d Cir. 1991) - Baroque design on silverware o Rejected Pagliero test b/c it didn't consider market foreclosure o Functionality defense applies where: ♣ Design is important - consumers find it pleasing AND ♣ TM protection would foreclose competitive alternatives • Necessary for others to compete in the marketplace o Takeaway: Functionality applies to purely ornamental features if they are essential to competition • Aesthetic functionality doctrine is going away (9th Circuit) o Look to utilitarian functionality doctrine

Functionality Doctrine

• Patent are limited monopolies vs. trademark are perpetual, if used continuously o Kellogg v. National Biscuit - patent on pillow shape expired no trademark protection for the shape • Trademark should not be used to inhibit competition o Tetley v. Republic of Tea ♣ Argue that round tea bag was functional Competitive necessity, no good way around it, advertised about functional aspects o North Face v. Extreme Sports - Exact copy of color-blocking look ♣ Color & design in fashion is functional ♣ Fashion design is not a source-identifier no protection for clothing design • Functionality is a defense - reached only after P establishes infringement

What does incontestability do for you?

• Presumptions of registration become conclusive under 33(a) • Eliminates defenses to: o Validity (distinctive source identifying) of the registered mark and of the reg o Registrant's ownership of the mark o And exclusive right to use the mark for goods/services in the reg • But subject to these defenses under 33(b) o Fraud against PTO where people get powerful rights in the wrong way. Requires intent to deceive, must be proven "to the hilt" o Abandonment because by definition it shouldn't be incontestable and trademarks is about identifying the source of the product o Misrepresentation of Source by P which harms consumers due to deceptive purpose. Registrant using mark to misrepresent source of the goods o "Classic" fair use when using someone else's ™ but not using it to refer to them / as a source identifier. (Non-trademark non-commercial way). Defendant using it not as a mark and descriptively or own name o Innocent use in a limited territory (rare - used pre-internet, when business was localized) o Prior registration because we want to respect previous reg rights. Defendant has a prior registration for its mark o Violating of Antitrust Laws - don't want P's use of incontestable mark to trump antitrust laws. ™ is a monopoly on a single source; Okay when identifying single source. o Functionality - we don't want to prevent someone from utilizing same functionality because someone has a ™ o Equitable Defenses - laches, estoppel, acquiescence. These defenses survive when a case is brought by ™ infringement of incontestable mark because remedy is usually injunction. Therefore, you want equitable defenses for injunctions because injunctions are equitable remedies.

Purposes of TM Law

• Prevent consumer mistake or deception • Protect the owner's goodwill in a trademark • Facilitate competition and increase economic efficiency

Policy: Incontestability

• Provide some certainty after a period of time (like statute of limitations to cut off claims) • Claims get cut off at a certain point in debtor/creditor law o e.g. quiet title and adverse possession

BASES (5) FOR REGISTRATION

• Requirements Recap: o A specimen of use - labels etc. for goods, ads for services o And actual sales or shipment o In interstate commerce o Use must be lawful, too. • BASES (5) FOR REGISTRATION o 1(a) Used in Commerce ♣ Bona-fide sale in the ordinary course of trade o 1(b) Bona Fide Intent to Use in US commerce ♣ Can't just file to reserve a name ♣ Need verified statement of use in commerce to get reg o 44(d) Files within 6 months of its foreign application + intent to use in US commerce ♣ US application treated as same day you filed in foreign country for purposes of priority o 44(e) Foreign Reg + intent to use in US commerce ♣ Must state a bona fide intent to use the mark in US commerce ♣ Don't need actual use in US commerce to get reg o 66 Reg under Madrid Protocol (WIPO) + intent to use in US commerce ♣ Must demonstrate"Bona fide intent to use" a mark in commerce - focuses on objective good faith test to establish that intent is genuine. ♣ Benefits: Ensure no one takes mark while spending time to invest and develop marked products; reserve mark btw. registration and actual use

Dilution summary

• Serves brand owners, not consumers • Protects marks that are famous and distinctive before defendant's use • No competition or likelihood of confusion necessary • Elements: • Fame and distinctive: Mark is famous / distinctive - widely recognized by general consuming public o Widely recognized by the general consuming public --No niche fame - this means everyone, nationwide --But state dilution laws may not require national fame e.g. CA o Distinctive: inherently or through acquired distinctiveness o Duration, extent, geographic reach of advertising and publicity of mark o Amount, volume and geographic extent of sales of goods or services under mark o Extent of actual recognition o Circuit split in level of fame: --General fame: Must be famous among general population --Niche fame: May be famous among particular niche or subpopulation

Statutory exceptions to incontestability

• Statutory exceptions (i.e. generic, functional, abandoned, misrepresentation, fraudulent procurement, §2 exclusions) • Strength of mark o Incontestable status goes only to trademark validity - scope of protection in terms of likelihood of confusion analysis is not affected by incontestable status of mark • Only for specific goods or services for which incontestable mark has been registered

Standing for 43(a) claim

• Test: Plaintiff must plead (and ultimately prove) injury is (1) in the zone of interests covered by the Lanham Act , and (2) the Lanham Act violation proximately caused harm o (to sales or business reputation proximately by defendant's misrepresentations.) • Don't have to be a direct competitor to have cause of action. o Sect. 45 broad statement of intent o Act covers injury to commercial interest in reputation or sales o SCC not an injured consumer but an injured person engaged in commerce o Zone / Harm to commercial interest: no standing for consumers or businesses misled by suppliers into purchasing inferior products --Similar to trademark infringement claims - even though purpose of law is to protect consumers, competitors serve as proxies for consumer interests o Proximate causation: When party claims reputational injury from disparagement, competition is not required for proximate cause - true even if defendant's aim was to harm immediate competitors and plaintiff suffered collateral damage. --However, proximate cause is generally not shown when deception produces injuries to fellow commercial actor that in turn affect plaintiff. Firm forced out of business by its competitor's false advertising ordinarily would satisfy inquiry, while firm's utility company, for example, ordinarily would not.

Lanham Act §1

• The owner of a TM used in commerce may request registration of its TM

Effect of Patents on Functionality

• TrafFix Devices v. Marketing Displays, Inc. (S.Ct. 2001) - utility patent for sign expired o Utility patent is "strong evidence" features are functional ♣ P has burden to overcome inference of functionality ♣ Unless, technology is totally obsolete nonfunctional o Patented or not, trade dress may be functional if it is: [Inwood] ♣ Essential to the use or purpose of the article ♣ Affects the costs of the article • Valu Engineering v. Rexnord Corp. (Fed. Cir. 2002) - Conveyor belt design o Issue: Whether you consider functionality as to a particular use or all uses o Morton Norwich factors are still valid after Traffix ♣ 3rd factor focuses on alternatives o Holding: functionality can be established based on one application • Eppendorf-Netheler-Hinz v. Ritter (5th Cir. 2002) - syringe and tip color and design o No registration P's burden to show non-functionality o Applied Inwood Test ♣ Essential to the use = functional as a matter of law unnecessary to consider design alternatives • Competitive necessity is only a secondary test • Jay Franco & Sons, Inc. v. Franek (7th Cir. 2010) - round towel design registered as TM; sued to invalidate registration on ground of functionality o Design deemed functional applying Inwood o Expired utility patent someone else had for round towel • Christian Louboutin v. Yves Saint Laurent (2d Cir. 2012) - P claimed infringement of red sole registered TM o No functional purpose to red sole = aesthetic aspect o Look at need for competitors to be able to make a red sole (Qualitex) o Holding: Color in an unusual context can be protectable ♣ Red sole's contract with upper made it distinctive - secondary meaning only extends to a contrasting outsole

Why get federal registration?

• Uniformity • Legal benefits that help you defend and litigate (Lanham Act §7) • Basis for registration in foreign countries

Preventing genericide

• Use as adjective, not noun or verb • Capitalize it • Display it prominently in distinctive stylization or logo • Use TM symbol or R if registered • Add "Brand" after TM (ex. Band-aid Brand) • Trademark notice: "x is a registered trademark of x" • Educate the public and press Murphy Door Bed v. Interior Sleep Systems (2d Cir. 1989) - MURPHY became generic term for wall bed • Not a term that was generic to begin with public had appropriated term o Presumption of non-genericness because it started out as a true TM, even when not registered o Burden on D, not TM owner • Policing against genericide is NOT sufficient at the mercy of the public Elliott v. Google, Inc. (D. Az. 2014) - P argued that GOOGLE is generic b/c used as a verb for "internet searching" • P had burden of proof b/c mark was registered • Test: What is the primary significance of the registered mark to the relevant public? o If primary significance to public is generic term mark is generic • Holding: Not generic - people know that Google is a search engine and that multiple other search engines exist o "Google it" referred to the specific use of Google o Term is not dictionary as a generic term • Mark may have dual purpose o Use as a verb does not mean that the primary significance is a generic noun

Secondary meaning

• When descriptive mark takes on a new meaning as a single source • How do you prove it? o Substantial advertising expenditures - but not to the extent of the promotion, but its effectiveness o Survey evidence o 3rd party and media evidence o Actual confusion - when people are looking at the product that has a descriptive name and are thinking of a single source rather than the category o Manner of use - prominent, "branding style," draw attention? --"look-for advertising" o Intentional copying - copying because it has value as a brand o Section 2(f) - 5 years of continuous, substantially exclusive use -> prima facie secondary meaning

Limits on TM rights

• When mark is used in a way that does NOT deceive the public = not infringement (Prestonettes v. Coty) o Court will not prevent TM used to tell the truth • Comparative advertising (ex. comparing generic to name-brand product) o Just saying product is similar, not trying to pass off as original • Criticisms of product • Resale = First Sale Doctrine • Ordinary use of the words (ex. "Just do it")

Fair Use summary

• alleged infringer has used a term in good faith primarily to describe a product, rather than to identify it with a particular source. • In such a circumstance, the use will be held not to infringe the P's trademark that it resembles. o Factors: 1. Prominence, style, and placement on ∆'s labels, packaging or advertising 2. Whether ∆ emulated π's style of presenting mark or π's packaging 3. Whether ∆ predominantly displayed its own, differentiating mark 4. Relevance or accuracy of word/symbol's primary meaning in describing ∆'s product or service 5. Whether ∆ took precautionary measures to avoid consumer confusion

Lanham Act §33(b) - Incontestable mark, evidence

• ncontestable registration is conclusive evidence of o Validity of the registered mark and of the registration - mark is distinctive, not merely descriptive or generic o The registrant's ownership o The registrant's exclusive right to use the mark in commerce • Only for the goods/services covered by the affidavit • Subject to certain defenses o Registered mark was obtained fraudulently o Registered mark was abandoned o Registered mark is used to misrepresent source of goods or services o Challenged term is person's name, not used as a mark, or descriptive o Challenged mark adopted without knowledge of plaintiff's mark and used in trading area prior to plaintiff's registration priority date o Challenged mark was registered and used in trading area prior to plaintiff's registration priority date o Registered mark being used to violate the antitrust laws o Registered mark is functional Laches, estoppel, acquiescence

False advertising

• ™ Infringement is one type of false advertising o Consumer deception that can be --The result of a literally false statement -----In which case plaintiff doesn't have to prove the statement was deceptive --Or the result of a true but misleading statement -----In which case plaintiff must prove it deceived or tended to deceive • Deception must also be material to the buying decision • It's misrepresentation as to the source of the product • Other types of false advertising are a Misrepresentation about o characteristics of a product o geog origin of a product o who endorses or sponsors a product • Like ™ infringement, false advertising doesn't need intent o But, an intent to deceive can be aggravating factor • An ad can give rise to liability if it is o Literally false, OR o True, but misleading --HYPO: Avis has more new cars than Hertz - of those new cars, the count included current years that have been removed from rental and about to go out for auction. Customers would think they have more cars available to rent • An objective claim lacking substantiation can be a false ad