2 Standards for Registering a Tm/Sm on the Principal Register of the PTO
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Valid TMs are protected under common law regardless of whether they’ve been registered with state/federal gvt. Some state TM and unfair competition statutes, as well as sections of the LA, protect unregistered marks as well as registered marks. Lanham Act: -- 2—standards for registering a tm/sm on the principal register of the PTO -- 32—protects federally registered marks against unauthorized uses that are likely to confuse or mislead consumers as to the origin of the goods/svcs -- 43—federal unfair competition cause of action for a party that suffers a competitive injury as a result of false statements made by others in connection with the offering of goods/svcs (including infringement, 43a), dilution of the selling power of famous marks (43c), and cybersquatting (43d); and applies to both registered and unregistered marks infringement/cybersquatting provisions protect consumers from confusion or deception, and allows owner to control reputation anti-dilution provision protects mark owners’ investment in the goodwill of their marks Marks are only protected in connection with the goods/svcs to which they apply rather than to prospective uses. In order to gain protection of exclusive rights to a mark without registration (i.e., under common law and section 43), the owner must have been the prior user of the mark in connection with the goods/svcs and in the geographic area. Statewide or nationwide priority is subject to preexisting common law rights. Trademark Requirements -- Source-identifier -- Non-functional feature A feature is functional if - (1) it is essential to the use or purpose of the article or if it affects the cost or quality of the article [primary test from Inwood]; or - (2) exclusive use of the feature would put competitors at a significant non- reputation-related disadvantage [secondary test from Qualitex; only use if (1) isn’t met; includes aesthetic functionality] Usually, the competitive necessity test (2) results in product configuration or product packaging (trade dress) being non-functional because there are usually many alternative aesthetically pleasing, competitive methods. If there are few superior designs available, it is probably functional. Sometimes trade dress is functional, but rarely. chocolate covering of medicine was functional color (as trade dress) may or may not be functional - sea green press pads in Qualitex—color not functional - color of medicine capsules was functional in helping doctors/patients distinguish meds - blue color of nitrogen-based fertilizer functional - green farm equipment functional because bar on green equipment would create competitive disadvantage since farmers want matching equipment design of streetlamps which attached to functional since the design had to match the buildings because they were attached to them Traffix case—street sign spring trade dress was functional due to limited ways to keep the sign from blowing over; utility patent strengthened functionality argument Color, shape, and size of dippin dots was functional because the size and shape was important to the flash-freeze process and the colors were traditionally used for such flavors (brown for chocolate, etc.) Balance between right to compete fairly through imitation of a competitor’s product and the right to protect symbols which identify the source. Functionality test must be applied to the design as a whole (the whole of what the owner wants to protect under the mark). -- Use in Trade Must be ACTUAL use of the mark in connection with the offering of goods/svcs to the public Except intent-to-use applications under 1b—must use within 6 months, can get extensions totaling 30 months Must be continuous use (no abandonment) Bona fide use may be established prior to actual sales through pre-sales publicity (e.g., pre-sale samples or press conferences) or sales solicitation using the mark (e.g., advertisements), combined with intent to continue the use. Use is established wrt a particular company if another company with a substantial relationship to the particular company uses the mark (e.g., successors in interested and controlled corporations). -- Prior Use The right to exclusive use of a mark is ordinarily founded on priority of use. First in time equals first in right. Wrt the particular goods/svcs for which mark is asserted AND Wrt geography in which mark is asserted - Where similar marks are used in geographic areas that are remote from one another, each user will enjoy exclusive rights within its geographic area; however, where the geographic areas of use are the same or overlapping, exclusive rights belong to the senior user in that market. Under LA, prior use can be established with intent-to-use application. Constructive prior use can be established with state/federal registration, but it does not trump preexisting common law use. Constructive use does not constitute actual use, but actual use is required for a mark to be on the register. Courts will consider the zone of expansion of the prior user when considering whether to grant concurrent use. -- Use in Commerce—LA only Must be use in trade AND use in COMMERCE Commerce = all commerce which may lawfully be regulated by Congress, thus encompassing commerce with foreign Nations, and among the several States, and with the Indian Tribes. - Use exclusively outside US is not commerce; must pass through US. If sales are booked online in America, it is commerce. T-shirts given to Americans for a restaurant in France is not commerce. Broad 4th Circuit view—Advertisements in US is commerce if US citizens are consumers of the foreign company (casino case, had to prove distinctness wrt US consumers); criticized by other circuits. Famous foreign marks are always in commerce—validity questioned. Must be bona fide use in commerce, not merely to reserve a right. Same as use in trade— Bona fide use may be established prior to actual sales through pre-sales publicity (e.g., pre-sale samples or press conferences) or sales solicitation using the mark (e.g., advertisements), combined with intent to continue the use. Intent-to-use applications establish prior use date. Cannot be purely intra-company shipment -- Distinctiveness (distinguishing) Mark must be capable of distinguishing the goods/svcs in connection with which it is used from g/s offered by another source. Distinctiveness = tendency to identify the goods sold as emanating from a particular, though possibly anonymous, source. Spectrum of distinctiveness: arbitrary/fanciful > suggestive > descriptive with secondary meaning > merely descriptive > generic May be inherent or acquired distinctiveness Can be inherently distinctive (intrinsic nature serves to identify a particular source): - fanciful = coined terms with no commonplace or dictionary meaning at all, completely fabricated by the owner Kodak Xerox Aunt Jemima Rolls Royce Toucan Sam Polaroid Exxon Clorox - arbitrary = words in common usage, with dictionary meanings, but that do not in any respect describe the g/s to which they are attached; distinctive only within its product market and entitled to little or no protection outside of that area; commonplace meaning unrelated to its origin-indicating fxn; mismatched to a particular product/service Camel cigarettes Apple computer Mustang models Toucan for cereal Domino sugar Tea Rose flour - suggestive = have a descriptive aspect, but differ from descriptive marks in that they merely suggest, rather than describe, certain qualities of the g/s to which they are attached; requires observer/listener to use imagination and perception - Tide detergent - Citibank for banking services - Goliath for large wood pencils - Safari for ice chests, axes, tents, and smoking tobacco (connoting wilderness expeditions) - Roach motel for insect traps - Q-tips - L’eggs (connoting attractiveness and legginess) - Penguin for refrigerators - Coppertone - Wite-Out - The Real Yellow Pages - Playboy 6-factor test to determine if Suggestive/Descriptive: - (1) How much imagination is required to get a direct message about the quality, ingredients, or characteristics? - (2) Does the mark convey a real and clear idea of some characteristic, fxn, quality, or ingredient of the g/s? - (3) Are others likely to want to use the mark to describe their products? If so, more descriptive. - (4) Are, in fact, other sellers using this term to describe their products? If so, more descriptive. - (5) Is it just as likely to conjure up some other, purely arbitrary connotation? E.g., sugar and spice (for baked goods), Poly Pitcher (for plastic pitchers) - (6) Are buyers likely to regard the mark really as a symbol of origin, or merely as another form of self-laudatory advertising? If symbol of origin, more suggestive. Easier test: If a consumer hears the mark without knowing the associated g/s, is she likely to guess the g/s correctly? If the consumer would guess incorrectly, but would understand the connection once the product is revealed, then the mark is probably suggestive. Can be acquired distinctiveness, i.e., descriptive with secondary meaning (secondary meaning arises when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself). Descriptive = conveys an immediate idea of the ingredients, qualities, or characteristics of the g/s. Cannot be merely descriptive; must acquire secondary meaning. - Personal names and geographic indicators are treated as descriptive; if a name has 2 meanings, only one of which is a personal name, the primary significance of the mark will be determinative - Descriptive marks: Rich-N-Chips cookies After-Tan post-tanning lotion Yellow Pages phone book King Size men’s clothing Best, Superior, or Preferred Coca-Cola McDonalds Gallo Wolfgang Puck Howard Johnson - Secondary meaning Question of fact Factors for secondary meaning: STEMLength ASPCopy - Survey evidence - Direct consumer testimony - Exclusivity, manner, and length of use - Amount and manner of advertising - Amount of sales and number of customers - Established place in the market - Proof of intentional copying by defendant. Can be anonymous source (consumers do not have to know the company), so long as public identifies the source as the producer rather than the product Priority depends on who was the first to acquire distinctiveness in the market/geographic area Cannot be generic or merely descriptive (without secondary meaning). - Where 2 spellings are pronounced the same way, cts have treated these as their descriptive or generic equivalents: Lite beer = light beer (generic), beanee = beany (descriptive for containing beans) - Generic = connotes the basic nature of the g/s or the broader genus of which the particular g/s is a species; incapable of serving as indicator of source; per se ineligible for protection - Test for genericness: whether the public perceives the term primarily as the designation of the article Cereal Bermuda for shorts Shredded wheat Escalator Yoyo Safari for clothing Aspirin Brassiere - A mark may become generic in one market but retain distinctiveness in others. Classification of a mark is a question of fact. Trade dress = distinctive features of a product’s packaging or the distinctive features of the product configuration itself; the total image of the product; may include features such as size, shape, color or color combination, texture, graphics, or particular sales techniques Brown UPS Bottle shapes Shape of household cleaner spray pump Aspects of maple syrup jug Pink color of fiberglass insulation Qualitex seagreen color of press pads - Only protectable if capable of distinguishing, in the minds of the public, the goods or services of one person from those of another - Must be non-functional and distinctive: Plaintiff has burden of proving non-functionality of trade dress in actions against P. - May be registered if meets §2 requirements - Trade dress should be considered as a whole, not as individual elements. - Unregistered trade dress protectable under 43a - Wal-Mart v. Samara: As a matter of law, trade dress protection for product configuration (but not product packaging) may not be obtained on the basis of inherent distinctiveness—must also prove secondary meaning for the design element to get protection/registration. The party asserting trade dress under federal law for an element of its product design/configuration (as opposed to packaging) must establish that the design element has secondary meaning. In contrast, a party may obtain trade dress protection for an element of its product packaging on the basis of either inherent or acquired distinctiveness. Product design/configuration ALWAYS requires secondary meaning Devices such as color, sound, smell ALWAYS require secondary meaning; cannot be inherently distinctive. Artistic, musical, and other expressive works are tricky; ALWAYS require secondary meaning - May qualify if they acquire distinctiveness - Cannot be functional; look out for aesthetic functionality “You might be a redneck” was non-functional, protectable style of a photograph was functional overall appearance of greeting cards was non-functional - Dastar: For purposes of 43a, “origin” of g/s does not refer to their artistic or intellectual origin, but only to their physical origin. Policy: tm law should not be backup protection for copyrights In another case, peter rabbit did not operate as a source-identifier for the publisher; no trade dress protection of peter rabbit (copyright had expired) 43a protection has been extended to unregistered marks consisting of a celebrity’s name, nickname, physical likeness, voice, or characteristics; often combined with right of publicity claims Titles of expressive works: protection is available for series of works, provided secondary meaning is acquired, but federal registration is not permitted for single works because such a title is merely descriptive (however some cts allow protection of single work under 43a as a common law mark) Numbers and alphanumeric combinations can serve as marks if they have inherent or acquired distinctiveness, e.g. 501 jeans When the mark consists of a word or phrase in a foreign language, in some cases the English translation will determine whether the word or phrase qualifies for protection. However, if it is unlikely that the average American purchaser will translate the foreign mark, no translation will be made in determining whether protection is allowed. The translation need not be literal; idiomatic uses are sufficient. -- Ownership Person asserting protection must be the owner of the mark Can be assigned, but no assignments in gross (must include the goodwill of the line of business in which the mark is used) - Valid assignment must be in writing, recorded in the PTO within 3 months - Assignment in gross amounts to abandonment - If part of goodwill is lost, tm only applies to assignment wrt the goodwill that was transferred Can be licensed, but no naked licensing FEDERAL REGISTRATION -- Only one mark per application Benefits -- Under 7b and 33a, registration on the principal register is prima facie evidence of validity and ownership -- Under 7c, registration constitutes constructive use (establishing prior use), if all conditions are met -- Under 33c, constructive notice if on principal register -- Under 15, incontestability available after 5 yrs on principal register -- Broader array of remedies than common law marks under 34d, 35b, and 35c -- Additional cause of action under 32 (but basically same as 43) Bars to Registration -- §2 -- 2a-2d: absolute bars -- 2e: bars until secondary meaning is acquired -- Immoral, deceptive, or scandalous matter (2a1) Immoral or scandalous = would be offensive to the conscience or moral feelings of a substantial composite of the general public (some cts say relevant public) - Vulgarity - Bubby Trap for brassieres - Image of a man and woman kissing with full frontal nudity - Defacating dog - Bullshit - Jackoff - Madonna and Messiahs for wine - Registrable: image of a condom with stars and stripes registrable Deceptive - 3 requirements to be deceptive: FBM: (1) must falsely describe the g/s; and (2) misdescription must be one that the prospective purchaser is likely to believe is true; and (3) mistaken belief must be likely to materially affect the consumer’s purchasing decision. - Lovee Lamb for car seat covers made of fuzzy synthetic material -- Matter that may disparage, or falsely suggest a connection, with persons, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute (2a2) Redskins was registrable as non-disparaging, but it was a very close call It should be considered whether the mark is disparaging as perceived by the relevant group (to whom it will be disparaging) -- Wrt marks used on or in connection with wines or spirits, a geographical indication that is not the place where the goods originated, but only if such use of the mark by the applicant commenced after 1994 (2a3) -- Mark comprises or simulates the flag, coat of arms, or insignia of the US, any state or municipality, or any foreign nation (2b) Does not include statute of liberty which is at most a national symbol subject to evaluation under 2a -- Mark comprising a name, portrait, or signature identifying a living individual, except with written consent (2c1) -- Mark comprising the name, signature, or portrait of a deceased president during the life of his or her surviving spouse, except with spouse’s written consent (2c2) -- Likelihood of confusion, mistake, or deception (2d) PTO focuses on how the marks will be perceived by consumers in the marketplace and considers a long list of factors Concurrent registrations may be issued in equity, with limitations on each - Can consider agreements between the 2 parties - Evidence of likelihood of expansion is an important consideration - Evidence of actual expansion after registration is important -- 2f allows for registration of marks barred by 2e once secondary meaning is acquired, except 2e3 and 2e5 Marks barred by 2e1, e2, e3 (pre-NAFTA only), and e4, but not e5, can be registered on the Supplemental Register until passing 2f, then moved to Primary Register -- Merely descriptive (2e1) -- Deceptively misdescriptive (2e1) Mis-describes the g/s to which it is affixed, and the public is likely to believe the misdescription to be true Must not have a material affect on the decision to purchase, or barred by 2a Glass Wax for glass cleaner containing no wax -- Primarily geographically descriptive (2e2) Must be “primarily” geographically descriptive wrt g/s in question Does not apply when geographic meaning of the mark is obscure or remote, or when the mark has popular significance apart from its geographic meaning Inapplicable to certification marks -- Primarily geographically deceptively misdescriptive (2e3) 2f does not apply if after NAFTA (2003 and later) Only non-absolute if prior to NAFTA (prior to 2003) Test same as 2a: - (1) has as its primary significance a generally known geographic place; and - (2) identifies products that producers are likely to believe mistakenly are connected with that location; and - (3) material factor in the consumer’s decision to purchase the good. -- Primarily a surname (e4) If 2 meanings, test is whether the purchasing public perceives the mark as primarily a surname when used in association with the g/s, or whether other meanings are more significant -- Functional marks (e5) 2f does not apply Comprises any matter that, as a whole, is fxnl Only “de jure” functionality triggers an e5 bar (primary test, not secondary test for fxnality; superior design essential for competition—competitive necessity functionality) E5 not triggered for configurations which merely perform some fxn or utility but are not significantly better than other possible configurations -- 2f Acquired distinctiveness must be proven by a preponderance of evidence (more likely than not distinctive) to overcome 2e bars 5 yr continuous use is prima facie evidence of distinctiveness After distinctiveness acquired, moved from Supplemental Register to Primary Register -- Dilutive Marks Must be hearing under 13 to determine if dilutive Opposer’s mark must have become famous before filing date of application; TTAB says before applicant’s first use TTAB considers: - Similarity— Opposer must prove marks are identical or very substantially similar - Renown of the party claiming fame - Whether purchasers are likely to associate 2 different g/s with the mark even if they are not confused as to the different origins of the g/s Applicant’s prior use of a mark, even in a limited geographic area, bars a registrant’s claim of dilution as a basis for opposing the prior user’s application to register Certification Marks -- §4, 14(5)—cancellation, 45 -- Can be primarily geographically descriptive -- Not a TM/SM, cannot be used as such or will be cancelled -- Cannot be used by the owner -- Cannot be a nongeographic mark that is generic or primarily descriptive because consumers will not recognize it as a certification of quality -- See cancellation situations under 14(5) -- Cannot discriminate -- Must uphold standards -- Must exercise control over use Collective Marks -- 4, 45 -- is a TM/SM -- can be cancelled if the association (rather than individual members) uses the mark or transfers ownership to a member of the group -- association is free to license the mark to nonmembers, but proper control must be maintained (no naked licensing) Registration--§1 Judicial Review--§21 Cancellation--§14 -- 14(3)—generic, 2a, 2b, 2c bars, misrepresentation -- 14(4)—not published -- 14(5)—certification marks -- under §2 if contestable -- dilutive -- grounds for cancellation—preponderance of the evidence Incontestability--§15 -- conclusively establishes validity, ownership, and exclusive right to use in commerce wrt g/s for which it has become incontestable -- exceptions: 14(3)—generic, 2a, 2b, 2c bars, misrepresentation 14(5)—certification marks infringes any common law right established by another’s continuous use of a mark prior to the registration date functional abandoned fraudulently obtained cert/coll marks obtained contrary to §4 requirements -- 2d not grounds for cancellation -- mere descriptiveness short of genericness insufficient for cancellation -- 33b provides defenses against incontestable marks -- incontestability does not mean a mark is strong for purposes of likelihood of confusion test STATE REGISTRATION -- Although the LA makes clear that a federal registrant has nationwide priority, some cts will not enjoin use of a mark by a jr user unless and until the registrant shows a likelihood of entry into the jr user’s trading territory UNREGISTERED MARKS -- Protected by common law and 43a,c,d INFRINGEMENT -- Federally registered marks bring claim under 32 (principal or supp); similar state laws -- Common law marks can bring unfair competition claim under 43a or under similar state unfair competition laws -- 2-step analysis: (1) P must establish mark is valid and enforceable and that P is owner of the mark, with right to priority (waived if incontestable) (2) P must establish D used the mark in connection w/ g/s in a way that is likely to cause consumer confusion as to the origin of the g/s in question (3) if under LA (32 or 43a), P must establish D’s infringing activities took place in commerce (must be sufficient contacts in US if foreign; must have substantial effect on US commerce) -- Step 1 7b—registration is pf evidence of validity, ownership, and exclusive right to use wrt g/s listed in registration if incontestable, conclusive evidence of validity, ownership, and exclusive right to use wrt g/s that are incontestable common law marks/marks on supp register: P must establish ownership of a valid mark - must establish use in connection w/ g/s to the public watch out for tricky priority for particular g/s, and geographic priority issues watch out for tacking – changed marks must be legal equivalent or indistinguishable such that customers see the marks as the same; exceedingly strict similarity standard for tacking - must establish distinctiveness - for unregistered trade dress, P must establish non-functionality; state laws may differ on this bop -- Step 2 Test: likely to confuse the consuming public? I.e., whether an appreciable number of ordinarily prudent consumers are likely to be misled or confused into believing that the jr user’s g/s either originated with the senior user or had some connection to the senior user (such as sponsorship, endorsement, or affiliation) Ordinary prudent consumer Appreciable number is not defined; lower than 15% has qualified Confusion must be probable, not merely possible Can be initial interest, point of sale, or post-sale confusion Totality of relevant facts, including Polaroid factors: - SDPBAGQSPetc. - Strength of sr user’s mark - Degree of similarity - Proximity of g/s - Likelihood prior owner will bridge the gap - Actual confusion - D’s good faith - Quality of D’s product (little attn outside 2d Cir) - Sophistication of buyers - Parody? - Etc. Similarity - Anti-dissection—View marks as a whole; is mark used in conjunction with another mark? If so, consider what the consumer will see. - View marks side-by-side or not, depending on how consumer will see them in the market - Ignore top-level domain names (.com, .org, .net) - Family of marks based on formative (Mc); existence of a family of marks is question of fact based on distinctiveness (including unusual spelling – Citibank instead of citybank), extent of the family’s use, advertising, promotion, and inclusion in a number of registered and unregistered marks Proximity of g/s - Cts consider content, geographic distribution, market position, marketing/advertising channels, and audience appeal - Sliding scale with similarity: if direct competition or even complementary goods like wine and cheese, less similarity required for likelihood of confusion - Where the relationship is tenuous, note that a dilution claim is more likely to be brought or might be more successful Strength of P’s mark - Stronger the mark, more likelihood of confusion - Strength measured by 2 factors: (1) degree of inherent distinctiveness; and (2) degree of distinctiveness in the marketplace - Relevant public is market for the g/s - Strength factors also include evidence of long and continuous use, extensive advertising, sales, and recognition in the commercial field of use, and use on a broad variety of products Actual confusion - May take form of anectodal accounts by actual consumers, or survey evidence - Surveys can be criticized for not being conducted correctly/not trustworthy 7 Trustworthy factors on page 146 - Consider how long infringement has taken place to consider whether there should be proof of actual confusion yet Bridging gap - If fields are closely related, helps plaintiff’s case - Geographic as well as g/s markets D’s good faith - Riding coattails? - Was there a cease and desist letter? - Not to be confused with bad faith intent to profit factors of 43d - Did D know/should he have known? - Other factors bleed into this one Quality of D’s goods - Ambiguous factor - Could lean either way or assess extent of injury - May be more significant in post-sale context since nonpurchasers did not see the price differential Reverse confusion also counts as infringement - Consumers will think sr user’s goods originate from jr user - Happens where jr user has strong mark - Both theories (forward and reverse confusion) can be relied upon - Cts disagree on whether strength of mark is sr user or jr user strength - Do not confuse with reverse passing off Initial interest confusion - Does not matter if confusion is clarified - Look for dilution claims too - Happens a lot on the internet: especially important factors are similarity of marks, relatedness of g/s, and parties’ simultaneous use of the web as a marketing channel - Keying of banner ads can lead to ii confusion - Google ads Point of Sale Confusion Post-sale confusion - Confusion must be commercially relevant, that is, D’s use of the mark could inflict commercial injury in the form of diversion of sales, damage to goodwill, or loss of control over reputation - Actionable even if jr user’s product is not inferior because riding on coattails Reverse Passing Off - 43a applies - D offers the public g/s produced by another person but represents them as his own - May be express or implied (D omits Plaintiff’s origin indicator but does not substitute his own) - Don’t confuse with mere false advertising; the g/s must actually be offered for sale, not just in an ad - Dastar—43a limits claims to false designations of the physical producer of goods, and thus may not be based on failure to identify the origins of ideas or expressions embodied in those goods False Advertising - Federal claim under 43a1B against uses in commerce of any false designation or origin, false or misleading description of fact, or false or misleading representation of fact…which in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or another person’s g/s/commercial activities. - P must prove by preponderance of the evidence: FA/TMCL (1) D has made false or misleading statements as to products; (2) there is actual deception of, or at least a tendency to deceive, a substantial portion of the intended audience (must show literal falsity or actual confusion); (3) the deception is material in that it is likely to influence purchasing decisions; (4) the advertised goods traveled in commerce; and (5) there is a likelihood of injury to the P (declining sales/loss of goodwill). - Must show literally falsity or actual confusion (in the case of ambiguous/implied falsity), but not both; literally false means consumer will unavoidably receive a false message. If not literally false, P must additionally show that (1) D intended to deceive and (2) causal link between false statements and injury. - Puffery not actionable (superior) - False statements regarding specific or absolute characteristics of a product, and specific measurable claims of product superiority that are based on product testing not actionable. (tests prove superiority) - Also false advertising: giving samples of P’s g/s and passing off as own DILUTION -- Protects against the tarnishing, degrading, or diluting of the distinctive quality of strong, well-recognized marks. -- Ordinarily found only if there is at least some subliminal connection in a buyer’s mind btwn the 2 parties’ uses of their marks. -- 2 types of injury: blurring and tarnishment Blurring = the whittling away of an established tm’s selling power through its unauthorized use by others upon dissimilar products Tarnishment = P’s mark is linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context, with the end result that the public will associate the lack of quality or lack of prestige in the D’s goods with the P’s unrelated goods (usually use in connection with porn) - Not limited to shady activities (NYSE could not be used in gambling game) -- Under 43c, P must establish: (1) mark is famous (see non-exhaustive factors in statute; rigorous standard; considered in relevant marketplace) (2) D is making commercial use of the mark in commerce (3) D’s use began after the mark became famous (4) D’s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish g/s (must be actual harm to the distinguishing quality of the mark; can be proven through consumer surveys or other circumstantial evidence such as identical marks) -- degree of similarity must be higher than that of likelihood of confusion test—must be great enough that even a noncompeting, nonconfusing use is harmful to the senior user -- 3 rationales: consumer search costs rise Tarnishment and loss of goodwill Someone is taking a free ride on the investment of the mark -- Marks need not be identical Polaraid Greatest used car show on earth Sacks thrift avenue NOT Lexus and Lexis due to the lack of sufficient fame of Lexis -- Likelihood of confusion unnecessary -- 43c4—exceptions to dilution A: fair use—nominative fair use, comparative advertising - Nominative fair use = (1) D uses P’s mark to describe P’s g/s, even though d’s ultimate goal is to describe the D’s own goods; or (2) where P’s mark is the only practical way to refer to a particular subject matter B: non-commercial speech (fully constitutionally protected speech; even applied to uses that are partly commercial but that nonetheless enjoy a high degree of 1st Am protection—includes gripe sites, songs, presidential candidate’s commercials, OJ Simpson parody with similar characters of insurance commercials) -- 43c2 limits remedies to injxn unless willful intent by D, then §35 damages apply -- State laws differ wrt the strength of the mark required -- Valid federal registration of mark is complete defense to state dilution claims against that mark CYBERSQUATTING -- 43d -- P must show: (1) bad faith intent to profit (2) registers, traffics in, or uses a domain name (3) which is identical or confusingly similar to a mark that was distinctive at the time the D’s domain name was registered; or (2) which is identical or confusingly similar to, or dilutive of, a mark that was famous at the time D’s domain name was registered -- confusingly similar if consumers might think that the domain name is used, approved, or permitted by the senior user; slight differences disregarded, top-level domain name ignored -- bad faith factors listed in statute 43d1Bi gripe sites are tricky—look for bad faith intent to profit camouflaged by griping mere offer to sell domain name, alone, does not constitute bad faith -- 43d1Bii safe harbor for good faith, even partial bad faith not entitled to safe harbor -- 43d1D—liability only for domain name registrant or licensees -- in rem jx allowed; must be limited contacts -- remedies: no damages available in in rem jx (43d2), only injxn/transfer damages available for regular jx (43d1) SECONDARY LIABILITY -- 32, 43a applies to contributory and vicarious liability -- 43c has recently applied to contributory and vicarious liability -- 43d must be registrant or licensee -- contributory liability arises under 32/43a when: - (1) D actively induces another to infringe; or - (2) continues to supply a product to a party that it knows or has reason to know is using the product in an infringing activity applies to manufacturer/supplier, franchisor/frachisee (but no duty to diligently prevent independent acts of tm infringement); lessor/lessee (but lessor responsible only if it knows or has reason to know someone is acting tortiously) willful blindness constitutes actual knowledge domain name registrar not liable unless it directly monitors and controls the activities ISP might be more closely compared to lessor since it provides actual storage and communication for infringing material—still must directly monitor and control -- Vicarious liability Joint tortfeasor analysis: requires finding that the D and infringer have an apparent or actual partnership, have authority to bind one another in transactions with third parties or exercise joint control or ownership over the infringing product Depends on principles of agency law If no agency relationship, must act in concert to commit a tort, pursuant to a common purpose; look for partnership, joint venture, or an employment relationship DEFENSES -- 1ST Am considerations commercial parodies - infringement depends on likelihood of confusion as to source sponsorship, or approval of D’s g/s; look at obviousness/subtlety of parody Polaroid factors—strength of P’s mark favors D; similarity—an obvious parody would sufficiently distinguish them; bad faith— subtlety might show intent to confuse More confusion tolerated when 1st Am considerations are at hand P’s tm must be the object of the parody Some cts focus on whether there were other opportunities for the parody Velvet Elvis bar had to change its name Balance btwn free expression and avoiding consumer confusion Dilution - 43c4B exception for noncommercial use of a mark, which applies to noncommercial expressive works, but not commercial advertising Spa’am muppet character not dilutive Are they competitors? Obvious parodies will not weaken the mark Must be ACTUAL undermining of mark—blurring or Tarnishment If true artistic expressions, not commercial, high 1st Am protection - Balancing test in infringement - Not commercial, so no dilution claim -- 33b affirmative defenses - apply to all marks, contestable or incontestable P Abandonment - Must be (1) discontinued bona fide use with intent not to resume, or (2) genericide - Cts disagree on standard of proof (some cc, some pe) - 3 yrs nonuse is pf evidence of abandonment, otherwise challenger must prove abandonment - includes: naked licensing assignments in gross First Sale Doctrine - Can sale genuine, unaltered good under original tm - If material difference in refurbishing, must notify consumer (material difference = one that consumers consider relevant to a decision about whether to purchase a product; includes complete rebuild) - Gray market goods actionable under 32, 42, 43a, and 43b; must establish likelihood of confusion with material difference Laches - D must show (1) claimant unreasonably delayed in filing suit and (2) as a result of the delay, D suffered prejudice (1)—knowledge of infringing activity matters, knowledge may be actual or constructive - usually only a defense to damages Acquiescence - Must be express or implied assurance that P would not assert tm rights against D - Look to the agreement and changing circumstances Unclean Hands - Illegal conduct – fraud, antitrust violation - any willful act concerning the cause of action which rightfully can be said to transgress equitable stds of conduct - deception Classic Fair Use - 33b 4 - use of P’s mark otherwise than as a mark to describe D’s own goods - good faith - fair use - some confusion must be tolerated in order to preserve the rights of competitors to describe their g/s accurately; especially important where this is the only way to describe g/s Nominative Fair Use - Same as above - Defense to incontestable marks? - 9th Cir New Kids Test: D must establish: - (1) P’s g/s at issue are not readily identifiable w/o using the tm; - (2) D used only so much of tm as reasonably necessary to identify P’s g/s - (3) D did nothing to suggest sponsorship/endorsement need not separately prove lack of likelihood of confusion because this is a separate defense; replaces traditional likelihood of confusion test - Analyze normal nominal fair use defense. Then do NK test if in 9th Cir; separate defense than nominative fair use under the statute. Comparative Advertising - 33b? - truthful comparisons between one merchant’s goods and those of a competitor, provided the use is not likely to cause confusion as to source - must be fair use, no negative portrayal of P’s g/s Federal Preemption Sovereign Immunity REMEDIES -- 34a—permanent or temporary injxns available broad discretion consider extent of injury for both parties, harm to public with concurrent use, good faith/bad faith of D in adoption can allow concurrent use and apply limitations to users prelim injxn: court will consider: - (1) likelihood of success on merits of P - (2) whether P is likely to suffer irreparable harm - (3) whether hardship to P in absence of prelim injxn is greater to hardship of D - (4) whether prelim injxn would serve the public interest -- Seizure 34d4B -- Destruction 36 -- Cancellation 37 -- Disclaimers equitable -- Monetary damages--§35 32a1a, 43a, 43d, or willful violation of 43c profits, damages, and costs up to treble damages prejudgment interest -- Criminal Penalties