Trademarks and Unfair Competition
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TRADEMARKS AND UNFAIR COMPETITION SPRING 2009 INTRODUCTION (1-20) Lanham Trademark Protection Act – 1946 o Infringement . Registered marks – section 32 (these also have procedural advs) . Unregistered marks –section 43(a) COMPETITION o RS (3d) § 1: General Principles . If you harm one’s commercial relations while engaging in bus/trade, you’re not liable unless A) the harm was caused by: o Deceptive marketing o Trademark/ID infringement o Appropriation of intangible trade values (TS, rt of pub) B) the acts are actionable under fed/st law, int’l ag, or CL . not subj to liability for harm resulting solely from mkt participation . Permits seller to divert bus from a particular competitor o Unfair competition laws . Common law that specifies what competitors can/cannot do . Types TM = largest branch (can’t use anything similar + confusable w/ another TS law = not engaging in industrial espionage, etc. False advertising o POLICIES re competition . Encourage innovation . Consumer perspective – drive down prices . Consider: does [X] promote, or harm competition? o Narrow CL rt against misapprop of commercial value (INS v. AP, later disreg in Cheney) . quasi-property right (ag competitors) in dissem of un© info Differences b/w protection of types of IP o TM – protects source IDs (marks of trade) o Copyright – protects original literary and artistic expressions . seeks to promote literary and artistic creativity by protecting ( for limited time) the “writing” of “authors” (protects partic expression of ideas) Must be original, can’t be too elementary . Rights = exclusive rights to reproduce, distribute, display/perform, make derive works, authorize others to do so o Patents – protect new and useful inventions . only granted by fed gov, lets patentee exclude others from making/offering/selling invention within US or importing into US . Doesn’t carry aff rt to make/use/sell/offer item . Types Utility (fxnal/mech’cal) – processes, machines, art’s of manuf, compos Design – for new original + ornamental design for article Plant – new variety of seed or plant or parts . Criteria: Novelty – not previously known or in public use Nonobviousness – to a person having ord skill in art
1 Utility – useful purpose, works, not frivolous or immoral . Trade-Mark Cases – Declared u/c an 1870 act that gave fed TM rights for marks registered with patent office No auth in IPC – TM = right to exclude. Value grows as you PROMOTE it. We protect it for diff reasons (consumer deception, producer goodwill) No auth in CC since no indication that law was meant to reg ISC. o TS – protects valuable secret information WHAT IS A TRADEMARK? (43-44, 49-52, 63-78, 78-96, 44-49, 906-104) RS (3d) § 9 Definitions of TM and Service Mark o Trademark: word, name, symbol, device, or other designation, or combination thereof, that is distinctive of a person’s goods or services and that is used in a manner that identifies the goods/services and distinguishes them from the goods/services of others. . Originally re ownership, then re identification for sale o Words, #s, letters, slogans, pictures, symbols, chars, sounds, graphic designs, product & packaging features, other matter capable of ID’ing and distinguishing goods/services o Use of a TM allows you to acquire some TM rights in area in which you’ve used that TM o Trademark, servicemark, collective mark (re membership in org), certification mark Lanham Act definition: Section 45 (15 U.S.C. 1127) o TM = any word, name, symbol, or device, or any combination thereof – . 1) used by a person, or . 2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to ID and distinguish his goods, including a unique product, from those manufactured or sold by others and to indicate the source of goods, even if that source is unknown. POLICIES of trademark law o Competition o Efficiency, preventing harm o Fairness . Doctrine of nonfunctional features: if you imitate, it imputes same authorship as original (people can’t copy those elements) (Cheney Bros v. Doris Silk) o by preventing others from copying a source-IDing mark, TM law reduces cost of shopping + making purchasing decisions b/c it quickly shows the customer that THIS is it . Also assures producer that IT will reap the reward . Encourages production of quality products . Discourages those who sell inferior products by capitalizing on inab to eval qual Preemption: b/c of fed patent laws, a state may not prohibit copying re unpatentable articles (Sears v. Stiffel – pole lamps, Compco v. Day-Brite Lighting and Bonito Boats – involved 2d mng) o BUT, a state can have labeling requirements, etc. – it just can’t prohibit copying Types o Word marks (Coca-Cola – Coke had acquired 2d signif since deceptively misdescriptive) o Slogans (2d mng; associate slogan w/ product. Sec. 2 LA = reg. of non-graphic marks) o Trade dress (you can TM a color, if nonfxnal – Qualitex – green-gold press pads) . Functionality doctrine – can only get TM on nonfxnl things. Inwood Labs: a feature is fxnal (& not TM) if essential to use/purpose or affects cost/quality (i.e. if excl use of feature would put comp’s at signif non-reputation-related disadv). RS 17 – if a design’s aesthetic value lies in ability to confer signif benefit that can’t be duplicated by use of alt designs, then design is fxnal . Allowing TM for color, etc. serves the purpose of TM law
2 prevent others from copying source ID mark, reduces customer cost of shopping and making purchases assures producers that it will reap the reward, thus encouraging production of quality products and discouraging those who hope to sell inferior products . Color and sound require showing of secondary meaning But taste and touch haven’t been as successful (re fxn of TM) Scent is usually not TM because it’s usually functional CATEGORIES OF WORDMARKS o Inherently distinctive (can be registered w/o any evidence of distinctiveness) . Fanciful – invested solely for their use as TM. (Kodak, Exxon) . Arbitrary – existing words applied in unfamiliar context. (Nike, Apple) . Suggestive – suggestive of some quality or characteristic of goods/servs. Requires imagination, thought, or perception to reach conclusion as to nature. (Klondike) . POLICY re no requirement of secondary meaning Nature of term = perceived as TM (source) Approp of nondesc term for use as TM doesn’t disable comp’s descrip 1st uses + potential comp’s require certainty re TM o Merely descriptive (can be registered only on showing that they’ve acquired secondary meaning, i.e. that public has come to view mark as brand of a particular producer of g/s) . (a term is descriptive of g/s if it conveys an immediate idea of the ingredients, qualities or characteristic of the g/s, e.g. “QuikPrint, “patents.com” . Secondary meaning exists only if a significant # of prospective purchasers understand term when used in cxn w/ particular g/s – not merely in descriptive sense, but primarily as an indication of association with a particular (even if anonymous) source Doesn’t connote subordinate or rare meaning, but subsequent significance added to original meaning of term Can TM where distinctive (proof of subst excl/contin use for 5 yrs . Factors re secondary meaning: Direct evidence: consumer testimony and consumer surveys Circumstantial evidence: Amount and manner of advertising, volume of sales, length/manner of use o Int’l Kennel Club v. Mighty Star – found 2d mng among niche group of consumers; implicitly accepts evid of actual confusion as evidence of 2d mng o Generic – identify the class/type of product rather than particular brand. (brick oven) . Can’t be TMed. If a suggestive/fanciful mark becomes generic, it loses protxn . Might change around a lot (Singer was declared generic, now it’s not) o Problems with categories: depends on context (and may vary/shift/apply differently) SECONDARY MEANING o RS § 13 – word/name/symbol/device/design has 2d mng if: . Inherently distinctive (re nature/context), prosp purchasers likely to perceive as ID as ___ . Design has become distinctive (result of use, pp’s come to perceive as des that IDs goods/servcs/manuf) . Subseq signif added to orig mng – pxn extends only to 2d mng (not orig sense)
3 o Waltham Watch – By being 1st, P could impose burdens on D (dxn re source) o Int’l Kennel – 50 yrs use + ads + activs = 2d mng in relevant mkt (Chicago/doglovers) o Kellogg v. National Biscuit (p. 44) – no excl rts re name or shape of shredded wheat . Only had to take reasonable precautions to avoid confusion o Rock & Roll HOF v. Gentile (p. 96) – no TM b/c just landmark, & it wasn’t used consist’ly OWNERSHIP AND USE (112-126, 140-148, 130-40, 243-47, S. 17-27) Procter & G v. Johnson (p. 112) – though P&G argued valid TMs in Minor Brands Program (defended re commercial reality), this wasn’t bona fide use (which requires minimal sales effort). No bad faith by P&G, but no enforceable rights in Sure tampons or Assure mark. Failed to show established TM rights through BF commercial use o P&G should have tried to show present int in marketing, or shipped more USE IN COMMERCE – 15 USC 1227 (sec. 45 of Lanham) - §1127. Construction and definitions o Commerce - all commerce which may lawfully be regulated by Congress . includes intrastate txns that affect interstate or foreign commerce Larry Harmon Pictures v. Williams Restaurant (p. 123): UIC where Bozo’s mark used in cxn w/ servs rendered to custs traveling across st bounds o TM - any word, name, symbol, or device, or any combination thereof— . (1) used by a person, or . (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown o Use in commerce - bona fide use of a mark in ordinary course of trade, and not made merely to reserve a right in a mark. . . A mark shall be deemed to be in use in commerce: . (1) on goods 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, and . (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in US and a foreign country and the person rendering the services is engaged in commerce in connection with the services. Prob: marketing ppl want ad blitz BEFORE making product available, so sales come fast. But statute says ads alone are not enough for UIC PRIORITY OF USE o Exclusive right to TM belongs to he who first uses it in connection with specified goods . Idea of TM = public associates name with good – so must be available to public Undisclosed, internal shipments are inadequate to show use (Blue Bell) . Even a single use in trade may sustain TM rights if followed by continuous commercial utilization (b/c cost/risk involved in reg system) o Question of use adequate to establish appropriation = case-by-case, and you can establish ownership by evidence showing: . 1) adoption . 2) use in a way sufficiently public (open and bona fide use) to ID/distg marked goods in appropriate segment of public mind as those of adopter of the mark o Bad faith might impact priority of use
4 . BUTE NOTE: Bad faith is not mere knowledge; it’s knowledge that the other country is about to enter the US market (Person’s v. Christman) FOREIGN USE o Default principle: TM law is territorial. Each country has its own laws. Different marks can be owned by different people, even if for the same goods and services o EXTRATERRITORIAL USE . LA - “commerce” = “all commerce which may lawfully be regulated by Cong.” Cong power extends to comm b/w US and another country, but be careful asserting mark used in foreign comm b/c “foreign” doesn’t specify type of comm in which mark is used, does not clearly indicate mark is in use in a type of commerce that Cong can lawfully regulate. Unless “foreign commerce” involves US, no power to regulate o Buti v. Impressa – Mere ads/promo are insufficient to = use, w/o actual rendering in US or in CP (ads for Fashion Café were not test marketing, which may or may not be an exception) o But see Int’l Bancorp v. Societe des Bains de Mer (Monte Carlo) . Since SBM used mark in sale/ad of gambling servs to US cits, b/c rendering of servs to US cits constitute FC, b/c foreign trade is commerce Cong may lawfully regulate, b/c commm under LA comprises all comm that Cong may lawfully regulate, the servs SBM renders under CMC mark to US cits = services rendered in comm, thus satisfying UIC req (LA) for mark’s protectability . NOTE: this blows a huge hole in the default principle that TM law is territorial. Usually, principle of territoriality would make non-US use irrelevant . Territoriality: TM has separate existence under each country’s laws, and proper lawful fxn is not necessarily to specific original/manuf of a good, but to symbolize domestic goodwill of domestic markholder so that consuming public may rely with an expectation of consistency on domestic rep earned for mark by its owner, and owner may be confident that his goodwill and rep (value of mark) will not be injured through use of mark by others in domestic commerce ownership in 1 country doesn’t automatically = exclusive rts in another requires use in US for owner to assert priority rights to mark under LA . Exception: foreign marks doctrine. If mark is well-known (even if not used there) and US junior user has adopted mark after it became famous in US, you can protect against use (Christman – not the case re Person’s clothing) Examples: tourism, crossborder advertising, immigration Paris Convention: well known in that country as being already the mark of a person entitled to the benefits and used for identical or similar goods. (this applies when essential part of mark constitutes a repro of any such wellknown mark or an imitation liable to create confusion therewith) – purpose = avoid reg/use of TM, liable to create confusion with another mark already wellknown in country of such reg/use, though latter wellknown mark is not, or not yet, protected in that country by reg that would normally prevent reg/use of conflicting mark. o Wellknown = more than secondary meaning, but less than fame doctrine doesn’t exist under federal law (as evidenced by the fact that most countries haven’t incorporated Article 6 of the Paris Convention
5 o ITC Limited v. Punchgini – ITC abandoned Bukhara mark for restaurant servs in US (when it closed all US rests w/o concrete plans to continue to offer restaurant servs under Bukhara mark) o State CL has given right to sue for protection, re CL U/C (Maison Prunier and Vaudable) Exceptions to use-based priority (p. 157), where first user’s priority yields to prior applicants o 1) application filed under 1b intent to use procedure – trumps first user if application’s filing date predates 3rd’s actual use. o Appl re foreign mark (based on app filed in foreign country of origin up to 6 mos before US filing) gets priority over TM first used in US b4 US filing, but after date of for. filing REGISTRATION OF TRADEMARKS How to establish rights in a mark o Start using in ordinary course of trade or in cxn w/ g/s o File an intent-to-use app o (SM – must be rendered in fed commerce to be federally registrable – usually means 1+ state, but if in traveled area, UIC can be satisfied) How to obtain federal registrations of a mark o Preparing the application (1(a) = traditional use-based registration) . Applicant’s name / name/address / drawing / ID g/s / filing fee . (dates of use / specimens of use / color features of mark / declaration o Examination by PTO . 6 months after filing, examined by TM atty. Might be unregistrable if: Immoral/deceptive/scandalous matter … disparages … falsely suggests cxn with persons/instits/beliefs/symbols identifying particular living individual except by his written consent so resembles a mark registered or previously used in US by another and not abandoned, as to be likely to cause confusion when applied to g/s If merely descriptive (Non-Stop Music) or deceptively misdescriptive (Jones Sisters) or geographically descriptive (NY’s Own) or a surname (Smith’s), must have 2d mng o Publication for opposition (if it’s allowed) – within 30 days from publication . enables anyone who believes he’ll be damaged by application to oppose its reg. . TTAB. Appealing: either to Federal Circuit or to federal district court Opp for forum shopping, and less use of Fed Circ than patents . If no opp filed, and if intent app, then Notice of Allowance. Then 6 months (can be extended) for applicant to file Statement of Use and filing fee. . Application then matures to reg, and cert issued within ~3 mos from date of pub o CONSTRUCTIVE USE as a defense to opposition . Zirco v. AT&T (p. 190) – opp re DATACEL mark for portable cell data transmission. AT&T argued constructive use: §7c: (c) Application to register mark considered constructive use. Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing-- o (1) has used the mark;
6 o (2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or o (3) has filed for. app to reg mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d) [15 USC 1126(d)] to register the mark which is pending or has resulted in registration of the mark Constructive use is NOT contingent on registration can rely on constructive use when you’ve applied w/ ITU; fits purposes: o Foster filing of ITU apps o Give superior right over anyone adopting mark after filing date (providing it’s later used and registered) o Prevent 3rd from acquiring CL rts after filing date of ITU ap . Warner Vision v. Empire of Carolina (p. 193) – holder of on ITU app can UIC, obtain reg, and secure priority retroactive to date of filing of ITU app. As long as privileges haven’t expired, court can’t enjoin party from making use necessary for reg on grounds that another used mark subsequent to filing of ITU app. Foreign applications o Often registered on country-by-country basis (there are also CommTM, Int’l Reg) o Paris Convention doesn’t automatically protect TM in all Paris countries once its protected in one country (even though TRIPs, etc. used nondisc principle / nat’l treatmt) o Priority date = when file in homeland. Gives you 6 months to get priority dating back. o Ways to register . Under national treatment, if you allege use or file app to use in IC/FC w/ US – can file app on same basis as a US application under 1(a) or 1(b) . Can obtain reg on basis of prior reg in country of origin (where there is a BF and effective indust/comm. estab, or where domiciliary or national) Must state BF intention to use, but actual use not required. Submit copy . May apply to reg in US based on app to reg mark in country of origin – file US app within 6 mos of date of foreign filing. Include statemt of BF intention to UIC Won’t be issued here until foreign reg has issued + true copy USPTO o § 44 benefits for one whose country of origin = party to TM treaty to which US is a party o Once obtained, for. applicant’s US reg is indep of foreign reg. Most foreign countries allow app to be filed without prior use. But you have to start using within 3 years. o 44e – already have reg in home country o 44d – if file app to register in home country o Madrid Protocol Principle Register - § 2 (15 U.S.C. §1052). TMs registrable on PR; concurrent registration o 1) Nationwide protection from date of application (relation-back) o 2) incontestability (if reg’d for 5 years) – limits defenses that can be used against it . Exc: infringement or cancellation . right to UIC for g/s or in connection with which mark has been in continuous use for 5 consecutive yrs subsequent to date/reg, still in UIC, is incontestable if: 1) no final decision adverse to reg’s claim of ownership 2) no pending proceeding involving said rights o 3) warning to others (appears on TM searches, constructive date of first use = filing date, refusal to register other marks likely to cause confusion) o 4) barring imports o 5) protection against counterfeiting o 6) evidentiary advantages (prima facie valid)
7 o 7) use of R symbol (shows proprietary rights, notice – benefit and burden) . TM/SM doesn’t give you any rights o 8) confirms ownership and validity o 9) basis of foreign filings o 10) preemption of state regulation (preserves integrity of fed TM from state law interf) Supplemental Register o Marks not registrable on PR may be on SR if “capable of distinguishing applicant’s g/s” o Thus, terms that are descriptive/geographic/surnames o § 27 does not constitute admission that mark has not acquired distinctiveness . Thus foreclosing args that SR concedes there is not 2d mng o Under § 23, a domestic applicant’s mark is now eligible for SR upon lawful UIC . Intent-to-use regime applies only to PR, but an ITU application can be amended to SR upon filing of amendment to application alleging use o § 44 – permits reg by foreign applicants upon claim of bona fide intention to use mark o § 26 – reg on SR doesn’t receive same powerful statutory advs – but might want to reg there to get in searches/deter others from choosing confusingly similar mark. Notice of registration o Permissive, but has benefits. . 43(e) claim re registered TM: absence of reg notice = bar to award of profits/damages in infringement suit, absent finding that D had actual notice . BUT 43(a) claim re unregistered TM: doesn’t require use of reg notice, thus P could arguably claim profits/damages. Maintenance and renewal of registration – sections 8 and 9 o § 8 – between 5-6 years, file Statement of Use. Anything not included = expires . Must be actual use in commerce, not merely token use (though special circs may excuse nonuse if no intent to abandon, e.g. reg/prohib/fire/illness/catast o § 9 – each reg may be renewed for periods of 10 years from end of expiring period upon payment of prescribed fee and filing of verified app. Every 10 years, Statement of Use . Abandonment is presumed after 3 years of non-use GROUNDS FOR REFUSAL TO REGISTER § 2 Lanham Act - five grounds upon which registration can be refused. First 4 = absolute bar. . But under 2f, marks in subsections e1,2,4 can be registered if they have 2d mng o 2a - Immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest connection with persons, living or dead, inst, beliefs, or nat’l symbols, or bring them into contempt or disrepute . Scandalous: 1) likely meaning of matter 2) whether matter scandalous to subst composite of general public . Disparaging (group into contempt or disrepute) 1) likely meaning of matter 2) whether disparaging to subst compos of referenced/implicated group . For both S/D: consider mark in context. Rel’ship b/w challenged matter and other elements, g/s, manner used . Under 15(3), petition to cancel can be filed at any time if reg was obtained contrary to 2a/2b/2c. thus relevant time period for cancellation on these grounds = time when registration issued (not the present) . Falsely suggests connection 1) mark is close approx of name/ID previously used by another 2) would be recog’d as such b/c points uniquely/unmistakably to other
8 3) person named is not connected with applicant 4) fame or rep is such that cxn would be presumed o 2b - Consists of or comprises flag or coat of arms or other insignia of US, any state or municipality, or any foreign nation, or any simulation thereof. o 2c - COOC name, portrait, or signature ID’ing particular living individual or name/sig/portrait of deceased pres during life of widow, if any; except by written consent of person/widow o 2d - COOC mark which so resembles a registered mark, or a mark or trade name previously used in US by another and not abandoned, as to be likely, when used on or in cxn with goods of applicant, to cause confusion, mistake, or to deceive . Consids: strength of mark, similarity, relatedness of g/s (including channels of trade), evidence of actual confusion, good faith, buyer sophistication o Consists of a mark which (when used on or in cxn w/ goods of applicant) . Is merely descriptive or deceptively misdescriptive of them (compare to 2d, absolute bar for marks which are deceptive) 3-step test re deceptive o 1) is term misdescriptive of goods? o 2) are prosp purch’s likely to believe it actually describes goods? . No merely arbitrary/suggestive . Yes deceptively misdescriptive under 2e1, but may be reg’d on showing of 2d mng o 3) is misdescription likely to affect decision to purchase? . Yes deceptive, can’t be reg’d under 2a . 2(e)2 Is primarily geographically descriptive of them, except as indications of regional origin may be registrable under s.4 (certification marks) . 2(e)3 primarily geographically deceptively misdescriptive of them (3-step test) 1) is primary signif a generally known geographic location? 2) is consuming public likely to believe place ID’d indicates origin of g/s? o No suggestive/arb o Yes look at 3. 3) was the misrep a material factor in consumers’ decision to purchase? o No may still be reg’d (on showing of 2d mng) o Yes geographically deceptively misdesc and barred under e3 . 2(e)4 Is primarily a surname (primary significance of term to purchasers) or . Comprises any matter that, as a whole, is functional Secondary meaning doesn’t help. Absolutely barred Read below for detailed information on specific bars to registration § 2(a): Immoral or Scandalous / § 2(a): Disparaging o What is the meaning of the matter in question? . 1) likely meaning of matter in Q, considering definition and relationship to other elements in mark, nature of g/s, manner of use re g/s o Is the matter suggestive? Would it be disparaging to a substantial composite of the referenced group? . 2) If mng refers to IDable ppl/inst/bel/symbols, whether that meaning may be disparaging to a substantial composite of referenced grp o In re Bad Frog Brewery (p. 204) –not i/s b/c not human so not perceived as giving finger, and such a gesture by an animal wouldn’t be perceived as s/i. Dissent – labels left no doubt. Also, offensive and can’t escape since it’s an animal. o Ritchie v. Simpson (p. 205) – *note – these are just about standing*
9 . §13 – may oppose registration if: 1) Real interest 2) R belief of damage – . Dissent – guy re OJ was a mere intermeddler, no standing. This opens proceedings to satellite lit for moral disapproval o But see Michael McDermott v. SF Women’s Motorcycle (p. 207) – guy didn’t have standing to protest “Dykes on Bikes” since no R belief of harm: . Allege you possess a trait/char that is clearly and directly implicated by proposed TM. He didn’t, as a straight male. . Allege that others share same belief of harm from proposed TM, and oppose is not alone. He didn’t; just personally offended. § 2(a): Disparaging o Harjo 2-prong test re disparagement (Harjo found Redskins to be disparaging) . 1) likely meaning of matter in Q (at time of reg), considering definition and relationship to other elements in mark, nature of g/s, manner of use re g/s Likely meaning when considered by ???? Harjo doesn’t say o Implicitly the first prong is a general public test o Implicitly, second prong is about referenced group . 2) If mng refers to IDable ppl/inst/bel/symbols, whether that meaning may be disparaging to a substantial composite of referenced grp o In re Squaw Valley Development Co (p. 210) – disparaging of women/wife re apparel/retail, but not re skiing. This raises a lot of issues… o The measure of s/i is perception of a substantial composite of the general public; marks disparaging to a particular group are viewed re substantial composite of that group § 2(a): False association o In re White (p. 224) – Application to register MOHAWK re cigarettes (filed by a Mohawk) o 4-prong test re BOP to support a refusal under “falsely suggests a cxn” . 1) mark is same as, or close approx of, the name/ID previously used by another person or institution (yes, based on dictionary def) . 2) mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution (other uses, but bear on NA) . 3) person/inst named by mark is not connected w/ activs performed by applicant under mark (tribemember, but no specific rel), AND . 4) fame/rep of person/inst is such that, when mark is used with applicant’s g/s, a connection with the person/inst would be presumed § 2(a) deceptive terms o ANALYSIS . (1) is the term misdescriptive of the character/quality/fxn/composition/use of goods or services? arbitrary or suggestive . (2) if so, are prospective purchasers likely to believe that the misdescription actually describes the goods (or services)? deceptively misdescriptive (barred unless 2d mng) . (3) if so, is the misdescription likely to affect decision to purchase? deceptive (barred - 2a) o Decide the difference b/w deceptive (which can’t be registered at all), v. deceptively misdescriptive (which can’t be registered at outset but can acquire secondary meaning) o In re ALP of South Beach (p. 217) – applied Budge test re whether a mark is deceptive: . 1) yes, dictionary def = self-serve . 2) showed some actual confusion . 3) likely to affect decision to purchase b/c they wouldn’t go there . Dissent
10 1) record not clear enough on this question 2) RPP unlikely to believe it’s a cafeteria 3) it’s not a bait-and-switch – they’ll know soon enough § 2(b): mark that consists of flag / coat of arms / insignia o An absolute bar; no other showing is necessary o Old Glory Condom Co. (p. 230) – this was allowed. § 2(c): matter that IDs name/portrait/sig of particular individual, or deceased president o If it IDs a particular individual, we assume it falsely suggests a connection. o If they’re dead, you have to show it falsely suggests a connection § 2(d): confusion o It so resembles a mark registered in the PTO, or a mark/trade name previously used in US by another and not abandoned as to be likely, when used on or in cxn with goods of applicant, to cause confusion, or to cause mistaken, or to deceive o Nutrasweet v. K&S Foods (“NUTRA SALT”) (p. 232) . Strength of mark – Comm’l success / fame (but here, manufacturing channel) . Relationship of goods/services – Nutrasweet (sweetener) v. Nutra Salt (salter) . Sophistication of purchasers – not careful since “small” purchase, but same loc . Party use . Actual confusion . [Motive] . [Good/bad faith] o Marshall Field v. Mrs. Fields (p. 235) . “fields” is the most important part of both marks. But neither registered to use only that part (exc MF had it only for other goods/services) . Actual confusion doesn’t matter much unless the mark has been used a lot, in which case a lack of actual confusion is very telling (and helps Mrs. Fields) . Given the fame of MC for department store services and fame of Mrs. for its bakery services, the public will readily recognize the difference on respective g/s and are not likely to be confused as to source of g/s offered thereunder No evidence of trying to trade on good will § 2(e)2 and § 2(e)3: Geographic issues o Used to be 1 thing, now 2 separate things . Idea of preventing reg – allow others in areas to register – it would be confusing to allow 1 to register. (but really obscure ones, e.g. Vittel, probably no prob) o § 2(e)2: primarily geographically descriptive (barred unless 2d mng) . (1) term in mark is the name of a place known generally to the public In re Joint-Stock Company “Baik” (p. 248) – Y – Russian speakers, lake . (2) public would make goods/place association (believe g/s originate there) o § 2(e)3: primarily geographically misdescriptive (barred per se) . (1) primary significance of mark is a generally known geographic location . (2) consuming public is likely to believe the place ID’d indicates origin of goods bearing the mark, when in fact goods don’t come from that place . (3) misrepresentation was a material factor in the consumer’s decision In re California Innovations (p. 253) – only a tenuous cxn re bags/wraps o Geographically suggestive marks . Though they don’t describe place of goods’ origin, they conjure up a variety of desirable associations with the place whose name the goods or services bear § 2(e)4: Surnames and other issues (section 1052) o No registration for mark that is primarily merely a surname
11 . Test: look at primary significance to the purchasing public . Can register if you show secondary meaning o Policy tends against protecting names (ct allowed “Niles” in Ty since policy didn’t apply) . Reluctance to forbid a person to use own name in own business, esp if the first one didn’t establish an association yet . Some names are so common that consumers will not assume 2 products having same name have same source, and they won’t be confused by same name . Preventing a person from using name might deprive consumers of useful info o Benthim factors (used in Quadrillion to affirm refusal re “Bramley” books and mags) . i) degree of surname rareness . ii) whether anyone connected with applicant has surname . iii) whether term has any recognized meaning other than that of surname . iv) structure & pronunciation or “look + sound” of surname Numerals, letters, initials o Model/grade/style designations can be protected if, in addition to specifying quality/style/type of product, it primarily designates source of goods o Can also TM combos of letters or initials (GM, GE, RCA, NBC) Functionality o Basics of function: . Function, utility, competitive need . Affects cost or quantity . Exclusive use puts competitors at significant non-reputation-related advantage o Analysis (from In re Morton-Norwich – reg for spray bottle) . 1) show the product/container configuration is nonfunctional Trad rule: functional if it is essential to use or purpose of article or if it affects cost/quality of article (In re Howard Leight – p. 265 – earplugs) Applicant has BOP to show not functional, but merely ornamental or incidental/arbitrary aspect (and doesn’t serve a purpose) Qualitex altered traditional rule to add a factor: exclusive use would put competitors at a significant non-reputation-related disadvantage . 2) show design functions as indication of source (inher/ distinctive or 2d mng) Inher dist: of such nature that purchasers would inherently perceive it as an indication of origin o 4-step test – Morton-Norwich factos . 1) existence of an expired utility patent that discloses utilitarian advantages of design sought to be registered as TM . 2) Advertising touts utilitarian advantages “round for a reason” = advs, but not functionally sup (Weber-Stephen) o No proof that round grill config is a superior design that other manufacturers need to be able to use to effectively compete . 3) Available alternatives (that are functional equivalents – Howard Leight) Traffix: it’s not a/b compet necessity to copy, if it’s fxnl under trad rule . 4) Partic design results from comparatively simple or cheap method of manuf o products now (Gibson Guitar) would have hard time. bigger emph on compet necessity. o Policy thoughts re functionality doctrine . We have utility patents to cover what’s functional. Police border b/w patent/TM TMs are potentially perpetual. Monopoly should be limited Novelty & nonobv = higher stds for patent (careful re monopolies)
12 If it serves as a TM, there’s no reason for it to expire As long as nonfunctional in utilitarian sense, competitors aren’t necessarily at a disadvantage since they have other options . Right to compete effectively. Balance b/w rt to copy v. rt to protect trade ID Incontestability o ADD HANDWRITTEN NOTES FROM 2/24 o F. LOSS OF TRADEMARK RIGHTS (274-90, 302-5, 305-326) 1) genericism o TM holder may lose TM rights if term ceases to indicate the source of g/s, and instead becomes synonymous with g/s. companies try for TM awareness . Bayer v. Utd. Drug (p. 274) – ads to docs, not people – among them, aspirin had 2d mng. Bottle used it as noun, not in TM form. DIdn’t use as TM or police use. . Stix v. Utd. Merchants (p. 277) – S’s use of “contact,” in whatever from, is a TM use. Not a primary or desc or generic use, but an infr of UD’s mark CON-TACT . King Seeley Thermos v. Aladdin (p. 284) – although Thermos had become generic and it was unfair to restrict use, court issued a decree to balance. Looked at disadvantages/risks. D could use it in certain ways. P retained exclusive right to use it as “Thermos.” This type of crafting is not common o if it’s generic, it can’t be misappropriated. E.g. Lite beer. . Even if it’s anonymous, it’s still a single source (Anti-Monopoly Game (p. 289)) o when cts have used surveys, they prefer ones that focus on absence of TM significance or showing of significance as a brand name . Zimmerman v. National Ass’n of Realtors (handout) – Court considered 6 factors re: o Uncontested generic use by competitors o Generic use by TM holder o Dictionary defs o Generic use in media o T by persons in trade o Consumer surveys probs w/ certain parts of survey: low resp rate, lower total # surveyed, survey pop, gate-keeping Qs, orientation of survey, no “dk” option o principle [or primary] signif to the relevant public (not purchaser motiv) (TEFLON case) o Genericism and confusion / de facto secondary meaning . 1) recognized as a brand name, but public may not know there is only 1 source occurs when only 1 source, but hasn’t been using term in TM fashion . 2) selects generic term but gives it 2d mng (subst ads, TM use, mkt dom, recog) o Generic name can’t be converted to TM by means of DF 2d mng . Improper monopoly – have to be able to call products by recognized names . Even if public is aware there is only 1 source, or even if perceives as brand name, term must be held free for compet use if it’s the commonly recog’d name 2) abandonment (voluntary or involuntary) o When you stop using mark and intend not to resume . (You must have fairly concrete plans re intent to resume) . INTR for reasonably F future (Silverman – Amos & Andy) Exxon v. Humble – E wanted to use nw, so stopped using H. but intended to re-resume, so not abandoned.
13 MLB – “The Brooklyn Dodger” hadn’t been abandoned since NY didn’t want anything to do with LA o But see Colts – had abandoned when team moved (but couldn’t be used since still continuity) . INTR regardless of motive (Silverman) o Types of abandonment . Assignments in gross assignment of a TM and accompanying gw entitles assignee to “step into shoes” of assignor, gaining whatever priority the assignor might have had. But where a TM is assigned in gross, without gw, then the assignment is invalid and the assignee must instead rely upon his own use to establish priority (Clark & Freeman v. Heartland – shoes) . Naked licensing You can let others use the mark, but you need to exercise some type of quality control. If you cease to exercise that control, it’s naked licensing and you can’t claim that you’ve continued TM use (Barcamerica – wine) Invol forfeiture, need not be shown there was subj intent to abandon . Failure to police o Non Use – 15 USC 1125 (LA § 45) . Abandonment: a mark shall be deemed “abandoned” when either occurs: 1) When use has been discontinued with intent not to resume such use. INTR may be inferred from circs. Nonuse for 3 consecutive yrs = PF evidence. “Use” of a mark means bona fide use of that mark made in ordinary course of trade, not made merely to reserve a right in a mark. 2) when any course of conduct, including acts of comm./omission, causes mark to become the generic name for g/s on or in connection with which it is used or otherwise to lose its signif as a mark. Purchaser motiv shall not be a test for determining abandonment . What about where something has been abandoned but there is residual good will? Some courts have said YES, you can use it. But take R precautions to distinguish yourself from former holder o § 33b5 – limited territory INFRINGEMENT (332-52, 355-58, 363-68, 403-05, 408-417, 370-94, 417-28 & TIFFANY, 449-462) § 32(1): any person who shall, without consent of registrant: o (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action by the registrant for the remedies hereinafter provided . LOC part is arguably just a jxnal hook, no TM req. On exam you might say this (using another’s mark to create LOC) should be punished, but Ochoa thinks not. o You can have the same mark on separate goods in separate markets, but the stronger the mark the more likely you’ll have problems Polaroid test (with one amendment) – factors were used in E&J Gallo & Banfi v. KJ Winery) o 1) Strength of P’s mark (use our scale re fanciful, arb, desc…) o 2) Degree of similarity b/w P’s and D’s marks (sight, sound, meaning) . Surrounding terms, etc. (Gallo)
14 . Courts should look at overall impression, context, sizes, logos, typefaces (Banfi) o 3) Relatedness of the products or services / Likelihood that P will bridge the gap . Material differences. (Banfi is cheap, sold in restaurants. Pepi is expensive, sold only by bottle. Thus low likelihood of confusion) o 4) Marketing channels o 5) Evidence of actual confusion o 6) D’s intent, i.e. good faith in adopting the mark . where infringer adopts a name with knowledge of P’s mark, courts presume there was intent to copy (Gallo) . One indication of GF = selection of a mark that reflects product’s chars. (Banfi – conceived at same time, one named re Tuscany and other not related. GF.) o 7) Quality of D’s product or service . Whether the senior user’s reputation could be jeopardized by virtue of the fact that the junior user’s product is of inferior quality (Banfi) o 8) Sophistication of the buyers/users / Degree of care . General impression of ordinary consumer, buyer under normal circs and giving attention as usually given (Banfi) Appealing re the issue of likelihood of confusion o QOF – deferentially (only overturn if clearly erroneous . Most circuits consider LOC to be a QOF o QOL – de novo Summary of likelihood of confusion Issue: whether use of a similar mark on another’s g/s is likely to cause confusion, cause mistake, or deceive (as to origin, sponsorship, or approval of g/s, or as to affiliation, connection, or association with mark owner). Must be likely to cause confusion; a mere possibility of confusion is insufficient. o Relevant market: class of prospective purchasers for g/s. P must show that an “appreciable # or ordinary prudent purchasers” are likely to be confused (Mobil) o Each circuit has a list of factors to be considered in determining likelihood of confusion, named after a case in which they were first set forth. Factors are quite similar, but may be categorized, labeled, or organized differently. Factors o Strength of mark . Consider distinctiveness of sr. user’s mark, ev of 2d mng (length of use, volume of sales, ads). Extensive 3rd uses may limit scope of pxn, but fact that others are infringing is not a defense (unless failure to police rises to level of invol aband’t) o Similarity of marks . Similarity in sight, sound, meaning. Consider in context of mktplace; presence or absence of other distinguishing matter or trade dress may affect similarity o Relatedness of goods . Court must define relevant market. Consider nature of products, price, whether goods substitute for one another, whether products are complementary (used together), and whether producers typically do or do not produce both products. Some courts expressly consider whether sr. user is likely to “bridge the gap” o Similarity of marketing channels used . how g/s are sold; methods/loc of sales, and types of ads used by both parties o Evidence of actual confusion
15 . Evidence of instances of AC is strong evidence of LOC. Lack of actual confusion is probative only if products have co-existed in market for a pd. Consumer surveys are also relevant, but side-by-side surveys are suspect. o Intent . Consider intent of jr. user in adopting mark. If JU intended to confuse consumers, court will presume success in achieving that intent. . Cts may infer intent to confuse from ev that JU adopted identical or very similar mark with knowledge of prior use, esp. where SU’s mark is well known (Mobil) o Quality of junior user’s product . could SU’s reputation be jeopardized b/c JU’s product is of inferior quality? (this factor is not expressly considered in 9th circuit – somewhat circular, b/c rep would be jeopardized only if there is LOC as to source) o Sophistication of purchasers / degree of care exercised . Confusion is more likely where relatively inexpensive, impulse purchases, to which avg unsophist’d consumer doesn’t devote great care or consideration. . Confusion is less likely where relatively expensive, consumers are sophisticated and knowledgeable, and exercise a great deal of care re decision to purchase LIKELIHOOD OF CONFUSION 1) Source o Sponsorship o Endorsement o Affiliation 2) initial interest confusion (Mobil) o By the time sale occurs, no longer confused. But the D received an advantage from the P’s GW/rep in that the customer was confused into talking with the D in the first place . D must be using confusingly similar mark as its identifier. If it’s not no TM use o Mobil: P must show that appreciable # of OPPs likely to be misled/confused as to source o Exceptions: concurring opinion to Playboy. Says it happens all the time and shouldn’t be considered confusion on the internet as well . Playboy v. Netscape – pop-ups generated by metatags = IIC even if not seen 3) post-sale confusion (Mastercrafters – Atmos clock) o not initially confused, but afterward, people who encounter the product may be confused as to its source or affiliation 4) reverse confusion (Dreamworks / Harlem Wizards – focus on strength of junior mark) o Adopts a mark similar to a pre-existing entity, but that entity is small. Thus the adopter is not trying to take advantage of SU. o We consider the strength of the junior user’s mark (confusion arises b/c JU is strong) OTHER ISSUES Use o all commerce that congress can regulate. o Some say just a jxnal hook and it involves all commerce, and that’s all that’s required. o Some point to definition of “UIC” as a phrase requiring that the mark be used on g/s o Advantage of doctrine of TM use = can cut cases up front, say no TM use. If confusion results, that’s not prob of LA (meant to deal w/ TM use only). Not axnable in this form. o Disadvantage: a way to get out of confusing practices, whether or not they’re TM uses o 1-800 Contacts – employmt of popups was not use since it was just a term in a category . Recent decision: Rescuecom v. Google - Google sale of TMs as sponsored links. Distinguished 1800 Contacts and limited to facts. (there, no UIC where software caused competitor ad to appear when user visited P’s website)
16 Dxn: Google sold “rescuecom” as keyword to competitors, and suggested it as a term for competitors as part of “keyword suggestion” program. So when users entered “Rescuecom” into search engine, Google served “sponsored ads” linking to competitor’s site Unlike 1800, where D made no use of TM, here Google is rec’g/selling it. Also, where 1800 did not use or display, here Google did. Non-visible meta tags not automatically non-infringing o 800-JR Cigar v. GoTo – here, advertiser didn’t know words. Accepted bids/ranked = USE. Secondary liability for trademark infringement o Contributory infringement . Inducing infringement or knowingly supplying the means to infringe. . A) the actor intentionally induces the 3rd to engage in infringing conduct . B) the actor fails to take R precautions against occurrence of 3rd’s infringing conduct in circs in which the infringing conduct can be R anticipated. . Inwood: Whether Ps were liable for pharmacists’ infringing acts depended upon whether Ps intentionally induced pharms to mislabel generic drugs or continue to supply to pharms they knew were mislabeling generic drugs Even if manuf doesn’t directly control others in chain of dist, can be resp for infringing activs under certain circs. If manuf/distrib intentionally induces another to infringe TM or continues to supply product to one whom it knows or has reason to know is engaging in infr, contrib resp for harm / result of deceit . Hard Rock applied Inwood. Was the operator of a flea mkt more like manuf of mislabeled good or like a temporary help service supplying purveyor of goods? Licensor? (HR arg – liable) or landlord? (CSI arg – not liable) CSI is responsible for torts of those it permits on its premises knowing or having reason to know is acting or will act tortuously. Thus CSI liable for violations by Parvez if it knew or had reason to know of them. (No.) Willful blindness: suspect wrongdoing & deliberately fail to investigate . Tiffany v. eBay applied Inwood std: did eBay continue to provide its website to sellers when it KOHRTK those sellers were using site to traffic in counterfeit? o RS “reasonable anticipation” std (re whether seller might well have been anticipated by eBay) is not appropriate here When eBay possessed the requisite knowledge, it took appropriate steps to remove listings and suspend service Lockheed: doesn’t matter whether venue is brick & mortar. It’s more about extent of control exercised by D over 3rd’s means of infringement o Vicarious liability . Arises from agency law, outgrowth of doctrine of respondeat superior (where employer is liable for torts of employees) . D derives a financial benefit from the infringement, and especially on its ability to control the conduct of the direct infringer Defenses to incontestability FAIR USE o Statute: 1115(b)(4) . Use of name, term, device charged to be an infringement is a use, otherwise than as a mark, [ ] of a term or device which is descriptive of and used fairly and in good faith only to describe the g/s of such party, or their geographic origin o How do we decide if something is being used fairly and in good faith only to describe?
17 . Strength of mark . LOC . Descriptive nature . Alternate descriptive terms . Third party use o Fair use elements . Descriptive of the goods/services of D (e.g. Car-Freshener – holiday/scent) . Being used as otherwise than a mark . Used fairly and in good faith only to describe the g/s of such party/geog-origin o Congress presumably didn’t intend party to have to prove LOC to assert FU (KP Makeup) . 1115(b) = BOP re LOC is on party charging infr, even if relying on incont. reg . Although arguably if it’s confusing, it’s not fair. FALSE DESIGNATION OF ORIGIN (480-96, 496-506, 515-19) Two different statute sections o 43a: falsely describing the geographic origin. (But over time, courts didn’t limit it to geographic – also meant the source of g/s, meaning the manufacturer) . No presumption of invalidity or incontestability . Same std as 32a Statute: 43(a) Civil action o (1) Any person who, on or in cxn with any g/s, or any container, uses in commerce any word, term, name, symbol, or device, or any combo thereof, or any false designation of origin, false or misleading description of fact, or false or misleading rep of fact, which— . (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person w/ another, or as to origin, sponsorship, or approval of his or her g/s, or commercial activs by another, or . (B) in commercial adv or promotion, misreps the nature, chars, qualities, or geographic origin of his or another’s goods, services, or commercial activities, o shall be liable (civil) by any person who believes that he is or is likely to be damaged o (2) “Any person” includes any State/employee. o (3) In a civil action for trade dress infringement re TD not on PR, the person who asserts TD protection has the BOP re not functional . Tie Tech v. Kinedyne (p. 496) - If only fxnl parts, the whole is not protectable Evidence of alts doesn’t raise material factual issues . Eco Manufacturing – It’s enough that something is useful (need not be essential) . Traffix – dual-spring utility patent gave rise to a strong presumption re fxn. Trad def: essential to use or purpose, or affected cost/quality. o If fxn there, no need to consider other def (nonrep-related advantage) and no need to consider alt designs. If this is something that makes it work, then fxn and can’t be a TM. Trade dress = arbitrary ornamental flourish separate from functional aspects, and can serve as a TM . Value-Engineering Weird. Looked at Traffix, but applied M-N factors, including availability of other designs. This makes sense only if you look at lack of alts. In reviewing denials of reg, apply M-N factors notwithstanding Traffix. Trade dress o Total image. Includes shape / general appearance or exterior, sign, interior kitchen floor plan, décor, menu, equipment, servers’ uniforms and other features re total image o Size, shape, color, color combo, texture, graphics, particular sales techniques
18 Two Pesos (p. 481) o Can trade dress be protected based on finding of inherent distinctiveness, w/o proof of 2d mng? YES. (no reason to treat it differently than normal TMs.) . Jury found non-descriptive. (ct said you must, to find inherently distinctive) o Although TP was SU, they could be enjoined in Houston b/c zone of expansion o Note: the court here basically issued an advisory opinion. Walmart (p. 489) o Under what circs is a product’s design (kids clothes) distinctive, and therefore protectable, in an action for infr of unregistered trade dress under 43a (need inh dist) o Product packaging serves source ID fxn – that’s why colors – to say who made it o Here, “we don’t have any reason to treat them the same.” In TP, the opposite. . tried to distinguish from TP by saying that TP said trade dress could be inherently distinctive, but it didn’t say that product-design trade dress could be DILUTION (613-31, 648-661, 631-35, 641-44, S. 57-69) Schechter (1927): Dilution is the “gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods” o Thought it would work injury to TM owner – a weakening in mind re a particular product Effect on the value of the TM o Ex: Kodak bath tub. TD has a lot to do with it. If both had same look, you’d be confused. o If there’s a fanciful mark, there’s no public harm in allowing it to be used in other ways. Dilution depends on strength. More unique / highly distinct marks are more subject to dilution. o Schecter: re dilution, a mark must have from the beginning had an association o 2 forms of associations: 1) source, 2) product o Ubiquity as a form of dilution (which TM owners might do to themselves) Federal Trademark Dilution Act (1995) o Dilution means the lessening of the capacity of the famous mark to identify and distinguish g/s, regardless of the presence/absence of: . 1) Competition b/w owner of famous mark and other parties, or . 2) likelihood of confusion, mistake, or deception o 43©: the owner of a famous mark shall be entitled . . . to an injxn against another’s commercial use of a mark . . . if such use beings after the mark has become famous and causes dilution of the distinctive quality of the mark . Isn’t any UIC commercial?! . Famous & distinctive (inherently or 2d meaning); blurring or tarnishment o Courts are split. Legislative history suggests likelihood. The point of dilution is that the mere existence of another mark causes injury. If you don’t enjoin, then harm Trademark Dilution Revision Act (2006) o Problems with FTDA Act, shown in Victor’s Secret . Mere association was not enough . Actual harm was not required . Somewhere between = dilution o 43(c): includes likelihood of dilution o Seems to require nationally famous o registration . If you have a federally reg mark, you’re protected and state law is preempted. . If you don’t have a federally registered mark, state law is not preempted. o 43(c)(6) if you’re registered that’s a complete bar from claim by someone for dilution . Bad drafting. (though hasn’t been raised in courts yet)
19 . This was intended as a defense to state law actions, but then it was split into two subsections and the state law reference is only in subsection (a) Section 43(c) of Lanham Act . (1) famous? (2) prior to filing of second TM app? (3) likely to cause D by b/t? o 43(c)(1) . For the owner of a famous mark that is distinctive (inherently or acquired), . Injunctive relief available against one who, at any time after owner’s mark has become famous, commences use of a mark or trade name in commerce that is: Likely to cause dilution by blurring or dilution by tarnishment Regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury o 43(c)(2)(A) Famous? Widely recognized by the general consuming public of the US as a designation of source of g/s of mark’s owner. Consider: . (1) Duration, extent, and geographic reach of advertising and publicity of mark, whether advertised or publicized by the owner or third parties . (2) Amount, volume, geographic extent of sales of g/s offered under mark . (3) Extent of actual recognition of mark Nike – looked at publications, brand surveys . (4) Whether mark was registered under Act of 3/3/1881 or 2/20/1905, or on principle register . Note: the 7-11 survey was good b/c unaided. Asked what they thought of when they heard Big Gulp and they said “7-11.” . Note: show it is famous apart from the mark to which attached. (Hershey) . Note: Fed reg is not a req, but failure counts against a finding of fame (H) TD similar enough to 3rd marks in food industry that court didn’t prelim enjoin Mars’ use. But since P wasn’t relying on trade name, logo, and sawtoothed bar, dress does not seem worthy of protection as famous o 43(c)(2)(B) dilution by blurring association arising from similarity b/w mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Consider: . 1) degree of similarity b/w mark or trade name and famous mark Nike – must be identical or nearly . 2) degree of inherent or acquired distinctiveness of the famous mark . 3) extent to which owner of famous mark is engaging in substantially excl use Nike – limited 3rd use is insuff to defeat showing of subst excl use . 4) the degree of recognition of the famous mark 7-11 – sliding scale. The more famous, the more likely association. . 5) whether the user of the mark or trade name intended to create an association with the famous mark . 6) any actual association b/w the mark or trade name and the famous mark o 43(c)(2)(C) dilution by tarnishment . Association arising from similarity b/w mark or TN an famous mark that harms the rep of the famous mark Types of dilution (Ty found no dilution re beanie’s on secondary market website) o Blurring . Single term activates multiple, non-confusing associations in a consumer’s mind
20 . Consumer search costs might rise if a TM becomes associated with a variety of unrelated products – consumers will have to think harder . Tushnet: good explanation b/c it converts dilution into consumer pxn o Tarnishment . likelihood of injury to business reputation, kind of a subset of blurring since it reduces the distinctness of the TM as a signifier of the TM’d product or service . P’s mark linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering thoughts about owner’s product (seemed like this in Deere, though court didn’t address it) In Hormel v. Henson, not direct competitors and not tarnished. o Free rider . taking a free ride on TM owner’s investment (e.g. Tiffany’s Kuala Lumpur rest) . junior user benefits from good name of senior user Ochoa notes o It kind of makes sense to say fanciful marks shouldn’t be used on other stuff (Kodak) but not arbitrary (Delta)… raises difficult questions. o Context matters (e.g. coke) . Tushnet: marks are easy to recognize as category members without being at top of mind in that category o You don’t confront marks in abstract. So maybe blurring concern doesn’t matter much o are free-riding and dilution always the same? . Dilution = when you hear nike, does anyone think of Nikepal? THAT is dilution. But here, they’re using a free-riding test. (When you hear NikePal, do you think of Nike?) o US has not adopted language that says which direction the association goes o TM law was supposed to be about protection, but now it’s about protecting investment o NOTE: Ochoa thought Goldfish post-sale dilution finding was crap. Post-sale dilution is a ban on copying. They’re saying Pepperidge gets a monopoly on fish-shaped crackers STATE DILUTION o Doesn’t require famousness o Likelihood of harm to business reputation o Examples from NY = Judicial resistance to the concept of dilution o People must have associations w/ you, and if they don’t, they won’t confuse. (Lexis) TRADEMARKS AS SPEECH (816-27, 462-67, 838-55, 859-68, 725-38, 506-515) False and misleading commercial speech can be enjoined (Deception, LOC, etc.) o When TM's are used in normal sourceID sense, no prob enjoining likely confusing use SF Arts & Athletics v. US Olympic Committee (p. 817) o Is it constitutional for Congress to grant exclusive right in the word “Olympic” to the US Olympic Committee? . Section 110 of Amateur Sports Act: granted USOC rights to prohibit certain commercial and promotional uses of the word “Olympic” and symbols . Is this a facial challenge or an as applied challenge? o Problem: usually in TM law, we require confusion. This statute does not require confusion. Also, the unauthorized user doesn’t have the normal statutory defenses. . Does the constitution require that those defenses be there? . Does it require that we show LOC before you can enjoin use? o Looked at type (CN O’Brien – incidental rxns no > than nec to further SGI?) o Cong could R’ly conclude USOC has distinguished “Olympic” through its own efforts. . decision to grant USOC a limited property right in “Olympic” = const
21 o R re USOC shouldn’t need to prove that unauthorized use of “Olympic” likely to confuse New Kids on the Block v. News America Publishing (p. 462) o Courts discusses two defenses / speech-protecting doctrines . Genericism –can’t prevent from using to refer to type of product involved. . [Descriptive] Fair use – use to describe g/s of a party other than holder (33b4) (doesn’t say anything re whether can use to describe P’s product itself) o Nominative fair use (Kozinski invented it here) . Where D uses a TM to describe the P’s product, rather than its own . Where the only word reasonably available to describe a particular thing is pressed into service. This doesn’t implicate source ID fxns; it’s fair b/c it doesn’t imply sponsorship or endorsement by the TM holder. . Requirements The g/s is not one readily identifiable without use of the TM Only so much of mark may be used as R necessary to ID g/s User must do nothing that would (in cjxn w/ mark) suggest sponsorship or endorsement by the TM holder PARODY o Some said going to treat it the same o 8th: applied stiffer std. actual confusion as indicated by surveys was very low. Not enough to get injxn in ordinary TM case. o Ochoa: thinks improper use of LOC to reach dilution by tarnishment. o If parody is being used in expressive work, should be allowed so long as relevant to that expressive work and not confusing o Mutual of Omaha . Property rights need not yield where adequate alts exist. Court gave subst weight to survey showing actual confusion. LOC perm injxn o Cliffs Notes . Balance creative expression v. consumer confusion. Applied Rogers balancing test. Consumer confusion unlikely; on notice of parody. Parody cover of Spy Notes, though it conjures up original and uses similar stuff, raises only slight risk of confusion that is o/w by public interest in free expression, esp in form of expression that must to some extent resemble original o Anheuser-Busch . Threatened to confuse. Survey showed confusion. Confusion was not necessary to purpose of social commentary, thus not permissible under 1st analysis. Still must show not original (To the extent that it does only the first and not the second, it is NOT only a poor parody but also vulnerable under TM law since the customer will be confused). Thus violated o Mattel v. Universal Music International . Not like Dr. Seuss case since targeted original. Rogers rules re titles. Use was not infringement b/c title relevant. Exemption for noncommercial use a form of TM use doctrine for dilution. It doesn’t apply to noncom uses . 2 limits on dilution Depending on strength and dist of mark, TM law grants relief only against uses LTC TM injxn, even broad, is premised on need to prevent consumer confusion. This rationale is consistent with theory of 1st (avoiding harm to consumers is important int indep of SU’s int in protecting bus) . Not purely commercial protected
22 . applies to a use that consists of Noncomm speech for 1st purposes (that which does nothing more than propose a comm. txn) fully const’ly protected speech Merchandising o Fairly recent phenomenon (the saturation, at least) o By making things about ads, we’ve turned TM into something re image. Aesthetic functionality o Au-Tomotive Gold v. Volkswagon (p. 506) . AG selling license plate frames and keychains with VW/Audi TMs. Have disclaimers, but these are not clear and also only on packaging. Is this infringement? Functionality might bar reg, say no infringement. Disclaimer says product may or may not be approved (some are) . AG argued that logos were AF since they were the actual benefit the consumer wanted to purchase. Purely aesthetic features may be protected as a TM where source identifying and not functional. Where an aesthetic product feature serves a “significant nonTM function,” the doctrine may preclude pxn as a TM where doing so would stifle legitimate competition. Court: this was nothing more than naked appropriation of marks. AF not a defense against action to enforce TM against poaching. . Sears/Compco – you can’t use state claims. . ANALYSIS Is the feature functional under Inwood (essential to use or purpose of article, or affect its cost or quality?)? o If so, stop here and feature can’t be protected under TM law. If not, would exclusive use of the feature put competitors at a significant non-reputation-related disadv? (competitive necessity) . Does it solve the problem if the disclaimer is clear? . What type of competition do we want? Only in type of g/s? Here, basically same mkt since VW/A also sold those items . The feature of a product that contributes to consumer appeal and saleability of product is, as MOL, a functional element. AF doctrine is limited to product features that serve an aesthetic purpose wholly indep of any source-ID functions. o Cartier watch case (p. 514) - Good chance of losing, esp if judge is big on free-riding (otherwise, if big on competition policy, might be ok) o Boston Athetic Ass’n v. Sullivan (p. 725) . It’s nominative fair use (but Kozinski hasn’t invented it yet) . Promotional goods issue – focuses on whether purchasing public likely to believe that sponsor of BM produces, licenses, or endorses D’s shirts. Only had to show D was trading on GW (not that public concludes sp) Difficult to tell re authorization Rebuttable presumption of intent . If this were a logo, easy case. Just like AG, and fails NFU test. o WCVB-TV v. Boston Athletic Ass’n (p. 734) . Channel 5 broadcast w/o license. Not enough evidence of confusion. . Rebuttable presumption doesn’t apply here b/c no showing of intent! . No LOC; fair use. Didn’t deceive. Not using as a mark – just as a description. . Ochoa imagines if you tried to televise whole game, you’d probably be enjoined under a combined right (this, + right of publicity, etc.) – but unclear.
23 It’s about free-riding, and depends on court’s attitude about that. . Ochoa likes that Breyer recognizes what’s going on. Recognizes free-riding. Some is ok, some not. BUT he doesn’t give a good framework for dividing. Breyer thinks is is ok since not confusing. As long as disclaimers clear… CONCLUSION OUTLINE I. Introduction o A. Basic principles . Default principle of free competition. Compete w/ someone selling same g/s at lower price. May harm, but that’s fair competition. IP is an exception to principle of free competition (e.g. patents) Grant TM for consumer protection, for TM owner, to easily identify source. Expectation of repeat business, goodwill. . COUNTERBALANCE: misappropriation doctrine. At least in some instances, free-riding can be unfair competition. Traced back to INS v. AP. Systematically taking news from someone else was UC even though it didn’t violate copyright. PROBLEM: this has no ending. But copying has benefits for consumer. Providing same goods at lower price. . Patent preemption. State laws against misapp are preempted by © law. If expired, in public domain. State law to the contrary is preempted by federal patent law (Sears Compco) Appropriate role for TM law here is labeling g/s (not prevention of copying) Over time, courts said product configs could serve as source IDs. o B. rationale for TM protection . Consumer protection . Protect reputation and goodwill of mark owner . Property right or misappropriation II. Subject matter of trademark protection o Definition of TM (§45) . Trade dress (product packaging, product design) . Color as a trademark o Distinctiveness . Arbitrary or fanciful . Suggestive . Descriptive (§2e1) . Generic o Secondary meaning (§2f) o Limits on trademark subject matter . Maybe on product configs, esp those claimed in prior patent (utility or design) Shredded Wheat case . Context (e.g. R&R Hall of Fame) III. Acquisition of trademark rights o Use in commerce and priority (§45) . Cong can only act re commerce or that w/ substantial fx on commerce o Extraterritorial use and foreign commerce
24 . TM law is territorial . Famous marks doctrine – country may enjoin use of mark that’s already well- known as mark of someone else. Treaty obligation not to allow someone else to adopt. But treaty is not self-executing. 9th circuit recognizes doctrine without basis, 2nd circuit rejects it. IV. Registration of trademarks o Advantages of registration . Principal . Supplemental o Intent to use (§1b-d, §7c, §10a) . Under this, you can file an application re intent to use. If registration issues, your right relates back to date the application was filed. . If inherently distinctive, TM office gives notice of allowance and then you have six months to file statement of use (which can be extended for successive periods) o Grounds for refusal of registration (§2) . §2a: immoral, deceptive, scandalous matter; matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute Determined as of time registration issued. To substantial composite of general public Re disparaging: substantial composite of referenced group This is not limited to living persons (unlike 2c) . §2b: flag or coat of arms or other insignia of US, state, city or nation . §2c: name, portrait or signature of a living individual, or of a deceased president during life of widow, without consent of individual or widow Overlaps re state right of publicity laws . §2d: mark is confusingly similar to another registered mark, or to any mark or trade name previously used in US by another and not abandoned TM office will examine re confusingly similar o §2e: five grounds for refusal of registration. Categories (3) and (5) can’t be registered; other three can be registered with showing of secondary meaning. . (1) Merely descriptive or deceptively misdescriptive of goods (compare §2a) Are purchasers likely to believe the misdescription? Thus making it deceptively misdescriptive? . (2) Primarily geographically descriptive Generally known geographic location from which goods have come . (3) Primarily geographically deceptively misdescriptive (compare §2a) Generally known geographic location, and consumers likely to believe goods came from there b/c association . (4) Primarily merely a surname Structure and meaning Pronunciation Etc. . (5) Comprises any matter that, as a whole, is functional A product feature is functional, and cannot serve as a TM, if it is essential to the use or purpose of the article, it affects the cost or quality of the article; or if exclusive use of the feature would put
25 competitors at a significant non-reputation related disadvantage. (Traffix and Qualitex) Federal circuit still uses Morton-Norwich factors o Existence of expired utility patent o Whether any utilitarian advantages touted in ads o Existence of alternatives o Particular design results from comparatively simple or cheap method of manufacture Traffix says if something functional, no need to consider alts But federal circuit finds lack of alts relevant Aesthetic functionality o Intrinsically o Incontestability (§14, §15, §33) . If no pending challenges to registration, can file affidavit with TM office and get it declared incontestable. . Limits the grounds on which it can be contested. . Can’t be contested on grounds that it lacks secondary meaning. . 33b grounds: generic, functional, has been abandoned, or registration was obtained fraudulently or in violation of 2a-c V. Loss of TM Protection o Genericism (§14(3)) . Dictionaries, etc. surveys. Teflon (whether you recognize as name of g/s or as brandname) . A mark could start as a coined word and become generic. Or it may start as a generic term and become a brand name. o Abandonment (§14(3), 45) . Voluntary abandonment Cessation of use, with intent not to resume such use. o (within the reasonably F future) Intent not to use may be inferred from circs 3 consecutive years of no use = presumed abandoned. . Assignment in gross, uncontrolled licensing, failure to police Any course of conduct causes it to lose significance as a mark Not permitted to assign a mark in and of itself. But you have to assign it with some property. That doesn’t have to be tangible (can be assigned with accompanying goodwill of an ongoing business). Court will validate assignment if assignee shows g/s substantially similar to that of assignment. But only matters if there’s a priority contest. If you have AIG, we treat as abandonment and next use. If no one contests it, then new user starts to use mark and no problem. It only matters if someone else starts using it. Naked licensing: use of mark w/o g/s. you have to work pretty freaking hard to lose a mark this way. Sometimes you can rely on long-time business association. But w/o anything, you could have trouble like wine company. NOTE: it is hard to lose a mark involuntarily. . Acquiring mark = exclusive right to use it with g/s, or similar mark w/ similar g/s. The use of a confusingly similar mark is TM infringement. VI. Infringement
26 o Is the use of mark with similar g/s likely to confuse/deceive the public? . Must be likelihood and not just a possibility o Factors for determining likelihood of confusion . Strength of the mark . Similarity of the marks . Relatedness of the goods . Similarity of the marketing channels used . Evidence of actual confusion Lack of actual confusion is probative only if g/s have existed in market for some time Consumer surveys are relevant, but side-by-side surveys are typically suspect since that’s not usually how you encounter the goods in the marketplace. . Intent (of junior user in adopting the mark) Inferred where they adopted with knowledge of the mark . Quality of junior user’s product . Sophistication of purchasers / degree of care exercised o Traditional confusion is confusion as to source o Initial interest confusion . Led into doing business with them b/c of the initial confusion (even if that’s dispelled before the txn occurs). A form of free-riding. . Question whether some things (???) should be considered infringement here o Post-sale confusion . Typically a rationale for counterfeit products . Well-established when we’re dealing with marks, but may be controversial when we’re dealing with product configuration . Functionality should handle that problem. Purpose of functionality is to preserve free competition. o Reverse confusion . Large dominant entity adopts mark of smaller less powerful entity. Senior user loses value of TM, loses corporate identity and control. . Actionable. Reverse test. o Contributory infringement o Defenses . Descriptive fair use (§33b4) Use, other than as a mark… or use descriptive of – and only used to describe the g/s of that party. The idea here is that is descriptive words have acquired a secondary meaning, the person acquires exclusive right to use the words as a mark, but can’t use the words in their descriptive sense. Other parties can use the words to describe their own g/s. o Sneaker case A defense even if there is some confusion . Concurrent use (§33b5) Junior user adopted without knowledge of prior use and continuously from date prior to date of application for registration Thrifty case Dawn Donut rule is different. It says even if use of mark is potentially infringing, won’t issue injxn unless and until ready to enter that
27 geographic area. Even if junior user adopts after reg, there may be no confusion if use is confined to area and there’s no present likelihood of expansion. (no problem if areas are sufficiently dissimilar.) o Resale of trademarked goods . Permitted, so long as reseller informs public that goods are resold . First sale doctrine. Genuine goods bearing TM may be resold without liability. VII. False designation of origin (§43a1A) o Applies to unregistered TM and unregistered trade dress. o Action for infringement of registered mark. But under 43a, action for infringement of unregistered mark. Analysis same. (is mark valid? And if so, does use of similar mark create LOC?) the difference = with registered mark, you get presumption of validity. Without reg, you have to prove you have rights (i.e. prove it is inherently distinctive or it has acquired distinctiveness) o Two Pesos – Unregistered trade dress can be protected even without proof of secondary meaning (but with little guidance as to what inherently dist trade dress was) o Later case limited it re packaging. . Product config, like color, can’t be inherently distinctive and can only be protected on showing of secondary meaning. o Traffix – expired utility patent is strong evidence that features are functional and that party seeking to establish trade dress protection has heavy burden of showing otherwise. Not conclusive, but a very heavy burden. . Reaffirms definition of functionality (c/q). if design is functional under that std, need not consider re competitive necessity or other design possibility . Would exclusive use place at n-r-r disadvantage? Particularly re cases of aesth f. VIII. Dilution o Unlike infringement (which relies on LOC re prospective purchasers), here we are concerned with harm to mark owners. In particular, that value of mark (or selling power) may be diminished if the mark’s uniqueness is not preserved. . If we allow mark to be used on other g/s, even if there wouldn’t be confusion, it might still work a harm to mark owner. . Distinguish Blurring: use of same mark on unrelated g/s Tarnishment: use of same mark on g/s that would be unsavory, would tarnish rep o Federal Trademark Dilution Act (§43c) . Overhauled in 2006. New one is Trademark Dilution Revision Act. Owner of famous mark that is distinctive is entitled to injxn against one who commences use after owner’s mark has become famous. And person’s mark is likely to cause dilution by blurring or by tarnishment. It doesn’t matter whether we have confusion or not. Doesn’t matter re competition, nor economic harm. It’s just about preserving the distinctiveness of famous mark. . Dilution defined Courts say: when you see D’s mark and think of P’s mark, that’s dilution. Ochoa says no, that’s free-riding. But whatev. . Fame and distinctiveness It’s famous if recognized by general consuming public of US as a source of g/s in the market. Niche market fame doesn’t count.
28 o Test re famousness . Proving dilution Multifactor tests for blurring, etc. Tarnishment: association that harms reputation. . Defenses IX. Domain names o Anti-cybersquatting Consumer Protection Act (§43d) . We don’t have to know about this. X. Trademark as speech o First Amendment Principles . We do take this into account (re functionality, genericism, descriptive fair use) . We can enjoin false and misleading commercial speech (since LOC) – there’s not a 1st Amendment problem here. But if we go beyond LOC, it might raise 1st Amendment issues. So far, courts are not having it. . Olympics case. SCOTUS: re commercial uses, Congress could reasonably conclude likely confusing. But also, Congress could enact a statute against misappropriation, etc. but certain expressive uses of “Olympic” might be permissible. o Nominative Fair Use . Use of mark to refer to mark owner. (NKOTB) . Kozinski 3-step test: Readily identifiable without use of mark Only so much used as to reasonably ID Does nothing to suggest sponsorship or endorsement (e.g. 2nd Boston Marathon case, although maybe test didn’t exist then) o Parody o Merchandising and Aesthetic functionality . Automotive Gold rejected arg. Said aesthetic functionality is limited to features that serve an intrinsic & aesthetic purpose wholly independent of source-ID fxn. . instinct against free-riding, e.g. Boston Marathon case, even where guy didn’t use the words “Boston Marathon.” . Sometimes applied without real adjustment. When alternative avenues of communication, can’t use. Balancing test. Should be adjusted to account for special circs. Apply Rogers test. Use of title in artistic work is permissible if there is artistic relevance and if it does not expressly mislead. XI. Remedies . We don’t have to know about this, but it’s here just to have. o Injunctions (§34a) o Disclaimers o Recall and destruction (§36) o Monetary remedies (§35a) . Profits . Damages . Attorneys fees
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