Trademark basics

• Signal a common source, or at least affiliation • Words, phrases, logos . . . • Federal / state regimes • Use in commerce • Law of marks is based on use of the brand on goods • Exclusivity derives from that type of use in commerce • Must: • “Affix” the mark to goods • Move the marked goods in commerce • Registration not needed – but Federal registration is highly beneficial • Service marks • Used “in connection with” services to signal common source • Certification / Collective marks

Greg R. Vetter • www.gregvetter.org 1 Trademarks, Spring 2016

Trademarks Service Marks Certification Collective Marks Geographic Marks Indications

Greg R. Vetter • www.gregvetter.org 2 Trademarks, Spring 2016 Trade‐Mark Cases 100 U.S. 82 (1879)

• Act of 1870 (“An Act to revise, consolidate, and amend the statutes relating to patents and copyrights”); Act of Aug. 14, 1876 (“An act to punish the counterfeiting of trade‐mark goods, and the sale or dealing in, of counterfeit trade‐mark goods”) • U.S. Constitution, I.8.8: “[The Congress shall have Power] To promote the progress of science and useful arts, by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries” The right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country and by the statutes of some of the states. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity, with compensation for past infringement. This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement. The whole system of trademark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage. There propositions are so well understood as to require neither the citation of authorities nor an elaborate argument to prove them.

Greg R. Vetter • www.gregvetter.org 3 Trademarks, Spring 2016

http://www.interbrand.com/en/best-global-brands/2012/Best-Global-Brands-2012-Brand-View.aspx

Greg R. Vetter • www.gregvetter.org 4 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 5 Trademarks, Spring 2016

Trademark protection • Distinctive • Not disqualified • Used in commerce

• Not required: • registration • Form of symbol can vary greatly

Greg R. Vetter • www.gregvetter.org 6 Trademarks, Spring 2016 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976)

• Safari mark

• Alleged infringing uses by Hunting World • Safari • Minisafari • Safariland

• Use as applied to products versus in language?

• Continuum of distinctiveness for a word mark

• Application • Generic for clothing • Suggestive or descriptive for boots / shoes • But, “incontestable”

Greg R. Vetter • www.gregvetter.org 7 Trademarks, Spring 2016

Trademark continuum of distinctiveness for word marks Generic DescriptiveSuggestive Arbitrary / Fanciful / Coined

aspirin

“Brilliant” for “Brilliant” for “Brilliant” for diamonds shoe polish canned apple sauce

Greg R. Vetter • www.gregvetter.org 8 Trademarks, Spring 2016 Descriptive?

 character  function  feature  quality  ingredient  nature  purpose  use  characteristics  dimensions, color, odor. . .

Greg R. Vetter • www.gregvetter.org 9 Trademarks, Spring 2016

Genericness

Greg R. Vetter • www.gregvetter.org 10 Trademarks, Spring 2016 Generic‐ness

Greg R. Vetter • www.gregvetter.org 11 Trademarks, Spring 2016

Zatarain’s • Attributes of Zatarain’s marks? • Classification of marks? • Secondary meaning? • “Fair use” defense ‐ 15 U.S.C. § 1115(b)(4)

Greg R. Vetter • www.gregvetter.org 12 Trademarks, Spring 2016 Zatarain’s • Fish‐Fri • Suggestive or generic – either side of descriptiveness • Dictionary ‐ ordinary significance and meaning of the words • Imagination test • Whether competitors need to use the term • Extent of actual use by others to describe/identify • Secondary meaning • What if a mark is incontestable? • Factors / Circumstantial evidence • Amount of advertising and promotion of mark and connection to product • Volume and type of sales (repeat?) • Length and manner of use of mark • Market research ‐ testimony / articles / reviews / surveys • Surveys – most direct and persuasive • Bad faith copying (“NY rule”) • “Fair use” defense ‐ 15 U.S.C. § 1115(b)(4) • Used fairly in good faith only to describe to users the goods or services . . . or their geographic origin. • Impact of trade dress on “fair use” in this case?

Greg R. Vetter • www.gregvetter.org 13 Trademarks, Spring 2016

Zatarain’s • Chick‐Fri • Classification? • Secondary meaning?

Greg R. Vetter • www.gregvetter.org 14 Trademarks, Spring 2016 Innovation Ventures, LLC v. N.V.E., Inc. 694 F.3d 723, 729‐730 (6th Cir. 2012)

Greg R. Vetter • www.gregvetter.org 15 Trademarks, Spring 2016

“Primarily geographically descriptive” marks

• A mark will be deemed primarily geographically descriptive under § 2(e)(2) if: 1. the primary significance of the mark is a generally known geographic location; 2. the goods or services originate in the place identified in the mark; and 3. purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. TMEP §1210.01(a).

Greg R. Vetter • www.gregvetter.org 16 Trademarks, Spring 2016 Certification Marks

• The term ''certification mark'' means any word, name, symbol, or device, or any combination thereof – • (1) used by a person other than its owner, or • (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, • to certify • regional or other origin, • material, • mode of manufacture, • quality, • accuracy, • or other characteristics of such person's goods or services • or that the work or labor on the goods or services was performed by members of a union or other organization. 15 U.S.C. § 1127

• Must be open to any producer that meets the standards.

Greg R. Vetter • www.gregvetter.org 17 Trademarks, Spring 2016

Collective Marks

• The term ''collective mark'' means a trademark or service mark – • (1) used by the members of a cooperative, an association, or other collective group or organization, or • (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, • and includes marks indicating membership in a union, an association, or other organization. 15 U.S.C. § 1127

• Two possible functions of the collective mark with respect to the association, union, cooperative, fraternal organization or other organized collective group using the mark: • As a mark adopted for use only by its members, who in turn use the mark to identify goods or services – mostly treated as ordinary trademarks/service marks • Solely to identify the person displaying a mark as a member of the collective group – a membership mark

• The term ''mark'' includes any trademark, service mark, collective mark, or certification mark. 15 U.S.C. § 1127

Greg R. Vetter • www.gregvetter.org 18 Trademarks, Spring 2016 Classifying other types of marks • Surnames

• Acronyms

• Domain names

• Foreign Equivalents

Greg R. Vetter • www.gregvetter.org 19 Trademarks, Spring 2016

Lanham Act – Important Sections

• Section 1, 15 U.S.C. § 1051: Actual use and intent to use registration process • Section 2, 15 U.S.C. § 1052: Bars to registration • Section 32, 15 U.S.C. § 1114: Infringement of registered marks • Section 43(a), 15 U.S.C. § 1125(a): Infringement of unregistered marks • Section 43(c), 15 U.S.C. § 1125(c): Dilution of marks (registered or unregistered) • Section 45, 15 U.S.C. § 1127: Definitions

Greg R. Vetter • www.gregvetter.org 20 Trademarks, Spring 2016 Acquired Distinctiveness of Source • Rough synonyms Imagine a situation in which Company David, after a • Secondary meaning great deal of market research, adopts an especially • Trademark meaning good descriptive mark and initiates a small‐scale launch of the descriptive mark in the marketplace. • Acquired distinctiveness Company Goliath then becomes aware of Company • Acquired trademark meaning David’s mark, adopts the mark as its own, and immediately spends enormous resources building up secondary meaning in the mark, so that when consumers see the mark, they think of Company Goliath. Which company should be granted rights in the mark? And is this in your view an equitable or efficient outcome? (Part I, pg. 42)

Greg R. Vetter • www.gregvetter.org 21 Trademarks, Spring 2016

Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. (5th Cir. 1983)

• Approaches to determining whether a mark is descriptive (rather than suggestive/arbitrary): • Dictionary definition • Imagination test • Competitive need • Third‐party uses • See also TMEP 1209.03

Greg R. Vetter • www.gregvetter.org 22 Trademarks, Spring 2016 Frosty Treats Inc. v. Sony Computer Entertainment America (8th Cir. 2005)

• Alleged infringement is use in a video game • Sony wins by summary judgment that Frosty Treat’s mark is generic or descriptive lacking secondary meaning • Secondary meaning analysis for FROSTY TREAT

Greg R. Vetter • www.gregvetter.org 23 Trademarks, Spring 2016

Cartier, Inc. v. Four Star Jewelry Creations, Inc. (S.D.N.Y. 2004)

• Discussion of survey evidence as to whether the designs had acquired distinctiveness

Greg R. Vetter • www.gregvetter.org 24 Trademarks, Spring 2016 Summary of Distinctiveness Doctrine So Far

• Distinctiveness and the Abercrombie spectrum • A mark is “distinctive” (of source) if it possesses either “inherent distinctiveness” or “acquired distinctiveness” • Inherently distinctive marks consist of suggestive, arbitrary, and fanciful marks. • Non‐inherently distinctive marks consist of generic and descriptive marks. Descriptive marks may receive protection if they possess “acquired distinctiveness” (i.e., “secondary meaning”). • The mark’s “primary significance” is its “secondary meaning” as a designation of source • The most important borderlines in the Abercrombie spectrum are (1) between generic and descriptive marks, (2) between descriptive marks with secondary meaning and without secondary meaning, and (3) between descriptive marks and suggestive marks • Note that the distinctiveness analysis of verbal marks is different in several aspects from the distinctiveness analysis of non‐verbal marks • Genericness

Greg R. Vetter • www.gregvetter.org 25 Trademarks, Spring 2016

Genericness . . .

Greg R. Vetter • www.gregvetter.org 26 Trademarks, Spring 2016 Genericness . . .

Greg R. Vetter • www.gregvetter.org 27 Trademarks, Spring 2016

Frito‐Lay North America, Inc. v. Princeton Vanguard, LLC (TTAB 2014)

• Category of goods: “pretzel crackers” • Proposed mark is a compound term • Is a “crisp” a “cracker”? • Factors and evidence under the factors

Greg R. Vetter • www.gregvetter.org 28 Trademarks, Spring 2016 Frito‐Lay North America, Inc. v. Princeton Vanguard, LLC, (Fed. Cir. May 15, 2015)

• Compound term proposed as mark versus understanding the term in its entirety • TTAB differentiation of compound term versus phrase

Specifically, as explained below, there is no evidence that the Board conducted the necessary step of comparing its findings with respect to the individual words to the record evidence demonstrating the public’s understanding of the combined term: PRETZEL CRISPS. By failing to do so, the Board took the type of short‐cut analysis we have said is prohibited and ignored evidence that might compel a contrary conclusion (Part I, pg. 78)

Greg R. Vetter • www.gregvetter.org 29 Trademarks, Spring 2016

Thermos Survey

• American Thermos Products Co. v. Aladdin Industries, Inc., 207 F. Supp. 9 (D. Conn. 1962) • Are you familiar with the type of container that is used to keep liquids, like soup, coffee, tea and lemonade, hot or cold for a period of time? • If you were going to buy one of these containers tomorrow— that is, the type that keeps food and beverages hot or cold—what type of store would you select to make your purchase? • What would you ask for—that is, what would you tell the clerk you wanted? • 75% of approx. 3,000 persons interviewed said “Thermos,” 11% said “Vacuum Bottle” and, as a result of follow‐up questions, 12% said they thought that “Thermos” had some trademark significance. • Can you think of any other words that you would use to ask for a container that keeps liquids hot or cold?

Greg R. Vetter • www.gregvetter.org 30 Trademarks, Spring 2016 Teflon Survey

• E. I. Du Pont de Nemours & Co. v. Yoshida International, Inc., 393 F. Supp. 502, 185 U.S.P.Q. 597 (E.D.N.Y. 1975) • I'd like to read 8 names to you and get you to tell me whether you think it is a brand name or a common name; by brand name, I mean a word like Chevrolet which is made by one company; by common name, I mean a word like automobile which is made by a number of different companies. So if I were to ask you, “Is Chevrolet a brand name or a common name?,” what would you say? • Now, if I were to ask you, “Is washing machine a brand name or a common name?,” what would you say? • [If respondent understands continue. If not understand, explain again.]

Greg R. Vetter • www.gregvetter.org 31 Trademarks, Spring 2016

Teflon Survey

Greg R. Vetter • www.gregvetter.org 32 Trademarks, Spring 2016 Lindows . . .

Greg R. Vetter • www.gregvetter.org 33 Trademarks, Spring 2016

Further examples . . . TIDE Laundry detergent BROCK OVEN PIZZA Frozen pizza THE STORK CLUB Restaurant CITIBANK Banking services GOOGLE Internet search service ODOL Mouthwash SNAKELIGHT Light with a flexible neck MORNINGSIDE Financial services CLOROX Bleach NUMBER ONE IN FLOOR CARE Vacuums STREETWISE Street maps MARCH MADNESS Annual basketball SUPREME Vodka tournament PLAYBOY Men’s magazine SPEEDY Bail bond services NO NAME Meat and other food products BEAR Cold weather outerwear BAIKALSKAYA Vodka from Lake Baikal region in HOTELS.COM services . . . temporary Russa lodging . . . KODAK Photographic film QUANTUM Health club GLOW Fragrance, shower gel, body VIAGRA Erectile dysfunction drug lotion 928, 924, 944, 911, 911S, and Automobile model 911SC numbers

Greg R. Vetter • www.gregvetter.org 34 Trademarks, Spring 2016 Overview – Trade Dress • Two Pesos (1992) Trade dress may be inherently distinctive and protectable without a showing of secondary meaning • Rejects 2d Circuit view that unregistered trade dress requires a showing of secondary meaning even if it is inherently distinctive • Qualitex (1995): Trade dress that consists of a color alone cannot be inherently distinctive and must have secondary meaning • Samara Bros. (2000): • Product‐packaging trade dress can be inherently distinctive and does not require a showing of secondary meaning • Product‐configuration trade dress cannot be inherently distinctive and requires a showing of secondary meaning • Partially accepts 2d Circuit view?

Greg R. Vetter • www.gregvetter.org 35 Trademarks, Spring 2016

Two Pesos, Inc. v. Taco Cabana, Inc. (1992) • Footnote 1: “‘Trade dress’ is the total image of the business. Taco Cabana’s trade dress may include the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve food, the servers’ uniforms and other features reflecting on the total image of the restaurant.’’

Greg R. Vetter • www.gregvetter.org 36 Trademarks, Spring 2016 Two Pesos, Inc. v. Taco Cabana, Inc. (1992)

Greg R. Vetter • www.gregvetter.org 37 Trademarks, Spring 2016

Two Pesos, Inc. v. Taco Cabana, Inc. (1992)

Greg R. Vetter • www.gregvetter.org 38 Trademarks, Spring 2016 Two Pesos, Inc. v. Taco Cabana, Inc. (1992)

Greg R. Vetter • www.gregvetter.org 39 Trademarks, Spring 2016

Two Pesos, Inc. v. Taco Cabana, Inc. (1992)

Greg R. Vetter • www.gregvetter.org 40 Trademarks, Spring 2016 Two Pesos, Inc. v. Taco Cabana, Inc. (1992)

Greg R. Vetter • www.gregvetter.org 41 Trademarks, Spring 2016

Two Pesos, Inc. v. Taco Cabana, Inc. (1992) • “There is no persuasive reason to apply to trade dress a general requirement of secondary meaning which is at odds with the principles generally applicable to infringement suits under § 43(a).”

Greg R. Vetter • www.gregvetter.org 42 Trademarks, Spring 2016 Qualitex Co. v. Jacobson Products Co., Inc. (1995) • Can “color alone” be a trademark? • Definition of “trademark” in Lanham act? • Restrictive? (shape, sound, fragrance) • Status of color as a trademark • If it obtains secondary meaning? • If it does not? • Can color be inherently distinctive? • What if the color has functional characteristics? • Interaction with patent law?

Greg R. Vetter • www.gregvetter.org 43 Trademarks, Spring 2016

Qualitex Co. v. Jacobson Products Co., Inc. (1995) • Jacobson’s counter‐arguments • Test for a functional characteristic • Shade confusion • Traditional rule – functional design • Courts can make these • essential to the use or purpose, OR distinctions • affects the cost or quality • Limited supply of colors • Aesthetic functionality • Functionality doctrine • if exclusive use would put competitors at a • No need for color alone to be a significant non‐reputation‐related disadvantage trademark – it can be part of a • trademark and producers can also See TrafFix rely on trade dress • Functional use of color: • trademark is more helpful than • Black for a boat’s outboard motor; green for farm trade dress machinery

Greg R. Vetter • www.gregvetter.org 44 Trademarks, Spring 2016 Wal‐Mart Stores, Inc. v. Samara Bros., Inc. (2000) • Product design acting as an indication of source • Comparison of product design as a source indicator to word marks and packaging • Affixed word marks or certain packaging allow a customer to almost automatically determine that the mark/packaging is an indicator of source • For those items where it is not reasonable to conclude that a customer will “automatically” think “single source” – need secondary meaning • Descriptive word marks • Geographic designations • Names • Product design • Why? – no clear test possible; threat of suit • Design patent or © protection reduces harm to producer • What about Two Pesos? • Product design is “different” from trade dress • Distinguishing between these two is easer than determining when product design is inherently distinctive

Greg R. Vetter • www.gregvetter.org 45 Trademarks, Spring 2016

In re Slokevage 441 F.3d 957 (Fed. Cir. 2006)

Greg R. Vetter • www.gregvetter.org 46 Trademarks, Spring 2016 In re Slokevage 441 F.3d 957 (Fed. Cir. 2006)

We agree with the Board that Slokevage's trade dress constitutes product design and therefore cannot be inherently distinctive…. Slokevage urges that her trade dress is not product design because it does not alter the entire product but is more akin to a label being placed on a garment. We do not agree. The holes and flaps portion are part of the design of the clothing‐the cut‐out area is not merely a design placed on top of a garment, but is a design incorporated into the garment itself. Moreover, while Slokevage urges that product design trade dress must implicate the entire product, we do not find support for that proposition. Just as the product design in Wal‐Mart consisted of certain design features featured on clothing, Slokevage's trade dress similarly consists of design features, holes and flaps, featured in clothing, revealing the similarity between the two types of design.

Greg R. Vetter • www.gregvetter.org 47 Trademarks, Spring 2016

McKernan v. Burek (D.Mass. 2000)

Greg R. Vetter • www.gregvetter.org 48 Trademarks, Spring 2016 Best Cellars, Inc. v. Wine Made Simple, Inc. (S.D.N.Y. 2003)

Greg R. Vetter • www.gregvetter.org 49 Trademarks, Spring 2016

Fedders Corp. v. Elite Classics (S.D. Ill. 2003)

Greg R. Vetter • www.gregvetter.org 50 Trademarks, Spring 2016 In re Brouwerij Bosteels (TTAB 2010)

Greg R. Vetter • www.gregvetter.org 51 Trademarks, Spring 2016

Art Attacks Ink, LLC v. MGA Entertainment Inc. (9th Cir. 2009)

Greg R. Vetter • www.gregvetter.org 52 Trademarks, Spring 2016 Question . . .

Greg R. Vetter • www.gregvetter.org 53 Trademarks, Spring 2016

Seabrook Foods, Inc. v. Bar‐Well Foods Ltd. (C.C.P.A. 1977) Product configuration trade dress and single colors (whether applied to the packaging of the product or the product itself) are per se incapable of inherent distinctiveness, and it is likely that courts would also find smells, tastes, and textures also to be incapable of inherent distinctiveness. But this leaves a wide array of nonverbal marks, including product packaging trade dress, that remain capable of inherent distinctiveness. The question, then, is how to determine whether a particular mark that falls into one of these categories is in fact inherently distinctive. While the Abercrombie spectrum works reasonably well for verbal marks, it is not clear that it is well‐suited to the inherent distinctiveness analysis of nonverbal marks. Instead, as we will see in the Amazing Spaces opinion below, most courts have adopted the so‐called Seabrook factors, from Seabrook Foods, Inc. v. Bar–Well Foods Ltd., 568 F.2d 1342 (CPPA 1977), to analyze the inherent distinctiveness of nonverbal marks.

Greg R. Vetter • www.gregvetter.org 54 Trademarks, Spring 2016 Seabrook Foods, Inc. v. Bar‐Well Foods Ltd. (C.C.P.A. 1977)

• Seabrook Foods, Inc. v. Bar‐Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977) “In determining whether a design is arbitrary or distinctive this court has looked to – whether it was a ‘common’ basic shape or design, – whether it was unique or unusual in a particular field, – whether it was a mere refinement of a commonly‐adopted and well‐known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or – whether it was capable of creating a commercial impression distinct from the accompanying words.”

Greg R. Vetter • www.gregvetter.org 55 Trademarks, Spring 2016

Example of “mere ornamentation” • Note further that if a court finds a feature of product packaging to lack both inherent and acquired distinctiveness or a feature of product configuration to lack acquired distinctiveness, then the court will often (but not always) deem the feature to be “mere ornamentation.” For example, in In re Lululemon Athletica Canada, Inc., 105 U.S.P.Q.2d 1684 (TTAB 2013), the TTAB analyzed the wave design for apparel shown below. The TTAB did not apparently consider the design to be product configuration (and thus per se incapable of inherent distinctiveness). It nevertheless found that the design lacked inherent distinctiveness and acquired distinctiveness and would be perceived by consumers as mere ornamentation.

Greg R. Vetter • www.gregvetter.org 56 Trademarks, Spring 2016 Fun‐Damental Too, Ltd. v. Gemmy Industries Corp. (2d Cir. 1997) • Although some of the individual elements of a trade dress are generic or descriptive, the impression given by all of them in combination may be inherently distinctive. Such was what the district court found here; and we cannot say that this finding is clearly erroneous. • This “total look” approach is the only workable way to consider such elements of the trade dress as the arrow sticker that is affixed to the Toilet Bank's tank. Because the box is open in order to display the product, it was proper to analyze Fun–Damental's trade dress as seen by consumers— including the Toilet Bank product. Further, there is no risk of “spillover” protection for the Toilet Bank as a product here since the injunction is limited to the sale of a similar product in a particular package, rather than an absolute ban on the sale of the Currency Can in an open‐style box. In sum, we conclude that looking at the product itself in the context of its packaging is a proper method of analyzing open‐style packaging for trade dress protection.

Greg R. Vetter • www.gregvetter.org 57 Trademarks, Spring 2016

Amazing Spaces, Inc. v. Metro Mini Storage (5th Cir. 2010)

Greg R. Vetter • www.gregvetter.org 58 Trademarks, Spring 2016 Amazing Spaces, Inc. v. Metro Mini Storage (5th Cir. 2010)

Greg R. Vetter • www.gregvetter.org 59 Trademarks, Spring 2016

Bars to protection . . . • Requires a careful parsing of 15 U.S.C. § 1052 • Items to be considered • Functionality • Utilitarian • Aesthetic • Deceptive marks • Deceptively misdescriptive • Geographic / non‐geographic • Scandalous • Disparaging • Marks that falsely suggest a connection

Greg R. Vetter • www.gregvetter.org 60 Trademarks, Spring 2016 Functionality . . . In re Morton Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982) [_NOT ASSIGNED_]

• What aspects of product design are protectable as a trademark?

• Functionality ‐> utility ‐> • competitors need to use the design – no necessity to copy • Because it is superior? • Because there are no other plausible alternatives? • No evidence product feature was dictated by functions to be performed • Will granting exclusive rights hinder competition?

• Distinctiveness is a separate inquiry from functionality

• Effect of patent on mechanism inside spray head?

Greg R. Vetter • www.gregvetter.org 61 Trademarks, Spring 2016

Functionality Overview • Utilitarian Functionality • Morton‐Norwich • establishes 4 Morton‐Norwich factors • Most important Morton‐Norwich factor is 3d factor, availability of alternative designs • Qualitex: equates Inwood’s “essential to use or purpose” with competitive need • TrafFix Devices • emphasizes Inwood’s “essential to use or purpose” test and minimizes importance of availability of alternative designs • if product feature is “essential to use or purpose”, no need to consider alternative designs • implies that a product feature can be “essential to use or purpose” and thus functional even if there are alternative designs • Circuit split after TrafFix Devices • Valu Engineering: essentially ignores TrafFix Devices and returns to M‐N • Eppendorf: seeks to follow TrafFix Devices and focuses on “essential to use or purpose test”; if product feature is “essential to use or purpose”, no need to consider whether product feature is a “competitive necessity”

Greg R. Vetter • www.gregvetter.org 62 Trademarks, Spring 2016 Functionality Overview

• Aesthetic Functionality • Wallace Int’l Silversmiths • Rejects Pagliero’s “important ingredient in commercial success” test • Embraces availability of alternative designs test • TrafFix Devices: • Claims that Qualitex was an aesthetic functionality case • In cases of aesthetic functionality, “it is proper to inquire into a ‘significant non‐reputation‐related disadvantage.” That is, courts should apply the availability of alternative designs / competitive necessity test.

Greg R. Vetter • www.gregvetter.org 63 Trademarks, Spring 2016

Recent History of Utilitarian Functionality Doctrine

• In re Morton‐Norwich, 671 F.2d 1332 (C.C.P.A. Feb. 18, 1982) • “[T]he question in each case is whether protection against imitation will hinder the competitor in competition” (Fruehauf) • “inhibit competition in any way” (Fotomat) • A design of goods is functional if it “affects their purpose, action or performance, or the facility or economy of processing, handling or using them” (Restatement of Torts) • Will protection "deprive [competitors] of something which will substantially hinder them in competition”? (Restatement of Torts) • “[I]s [the design] the best or one of a few superior designs available?” (In re Morton‐ Norwich)

Greg R. Vetter • www.gregvetter.org 64 Trademarks, Spring 2016 Recent History of Utilitarian Functionality Doctrine

• In re Morton‐Norwich, 671 F.2d 1332 (C.C.P.A. Feb. 18, 1982)

• “[A] molded plastic bottle can have an infinite variety of forms or designs and still function to hold liquid. No one form is necessary or appears to be ‘superior.’” • “While that design must be accommodated to the functions performed, we see no evidence that it was dictated by them and resulted in a functionally or economically superior design of such a container.”

Greg R. Vetter • www.gregvetter.org 65 Trademarks, Spring 2016

Recent History of Utilitarian Functionality Doctrine

• In re Morton‐Norwich, 671 F.2d 1332 (C.C.P.A. Feb. 18, 1982)

Morton‐Norwich Factors 1. Existence of expired utility patent 2. Utilitarian advantages touted in advertising 3. Availability of alternative designs 4. Manufacturing advantages

Greg R. Vetter • www.gregvetter.org 66 Trademarks, Spring 2016 Recent History of Utilitarian Functionality Doctrine • Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 (June 1, 1982)

Greg R. Vetter • www.gregvetter.org 67 Trademarks, Spring 2016

Recent History of Utilitarian Functionality Doctrine

• Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995) • “This Court consequently has explained that, ‘[i]n general terms, a product feature is functional,’ and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non‐reputation‐related disadvantage. Inwood.”

Greg R. Vetter • www.gregvetter.org 68 Trademarks, Spring 2016 Recent History of Utilitarian Functionality Doctrine

• TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001)

Greg R. Vetter • www.gregvetter.org 69 Trademarks, Spring 2016

Recent History of Utilitarian Functionality Doctrine

• TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 29‐30 (2001) • “The principal question in this case is the effect of an expired patent on a claim of trade dress infringement. A prior patent, we conclude, has vital significance in resolving the trade dress claim. A utility patent is strong evidence that the features therein claimed are functional. If trade dress protection is sought for those features the strong evidence of functionality based on the previous patent adds great weight to the statutory presumption that features are deemed functional until proved otherwise by the party seeking trade dress protection. Where the expired patent claimed the features in question, one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature is not functional, for instance by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device.”

Greg R. Vetter • www.gregvetter.org 70 Trademarks, Spring 2016 Recent History of Utilitarian Functionality Doctrine

• TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32‐33 (2001) • “Discussing trademarks, we have said ‘[i]n general terms, a product feature is functional,’ and cannot serve as a trademark, ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.’ Qualitex (quoting Inwood). Expanding upon the meaning of this phrase, we have observed that a functional feature is one the ‘exclusive use of [which] would put competitors at a significant non‐reputation‐related disadvantage.’ Id. The Court of Appeals in the instant case seemed to interpret this language to mean that a necessary test for functionality is ‘whether the particular product configuration is a competitive necessity.’ 200 F.3d, at 940. See also Vornado, 58 F.3d, at 1507 (‘Functionality, by contrast, has been defined both by our circuit, and more recently by the Supreme Court, in terms of competitive need’). This was incorrect as a comprehensive definition. As explained in Qualitex, supra, and Inwood, supra, a feature is also functional when it is essential to the use or purpose of the device or when it affects the cost or quality of the device. The Qualitex decision did not purport to displace this traditional rule.”

Greg R. Vetter • www.gregvetter.org 71 Trademarks, Spring 2016

WindMaster WindBuster TrafFix Devices v. MDI

Greg R. Vetter • www.gregvetter.org 72 Trademarks, Spring 2016 TrafFix Devices v. MDI

• What is being asserted as a mark? • Trade dress of the dual spring system • The court discusses the dual spring system as trade dress, but the dual spring system is perhaps better characterized as product design/configuration? • Patent status of the dual spring system? • Patent is for dual springs spaced apart • Trade dress asserted has springs close together • Impact of patent status on the trade dress question? • Strong evidentiary inference that the claimed utility patent functionality, when later asserted as trade dress, is functional • For unregistered trade dress, burden is on holder of the mark to prove nonfunctionality §43(a)(3) • Does it matter whether it is trade dress (which can be inherently distinctive) or product design/configuration (which cannot)? • Neither is protectable under trademark law if functional • Implications of “alternative designs”?

• Freedom to compete requires freedom to copy unless an item is covered by patent or copyright protection • Allowing trade dress protection for functional items bypasses the balance of benefits and costs in the patent system

Greg R. Vetter • www.gregvetter.org 73 Trademarks, Spring 2016

Two Lines of Case Law • Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268 (Fed. Cir. 2002)

• Eppendorf‐Netheler‐Hinz GmBH v. Ritter GmBH, 289 F.3d 351 (5th Cir. 2002) • Talking Rain Beverage v. South Beach Beverage Co., 349 F.3d 601 (9th Cir. 2003) (or a fusion of Valu Engineering and TrafFix?) • Antioch Co. v. Western Trimming Corp., 347 F.3d 150 (6th Cir. 2003) • Eco Mfg. LLC v. Honeywell Int’l Inc., 357 F.3d 649 (7th Cir. 2003) (?)

Greg R. Vetter • www.gregvetter.org 74 Trademarks, Spring 2016 Eppendorf‐Netheler‐Hinz GmBH v. Ritter GmBH, 289 F.3d 351 (5th Cir. 2002)

• “Thus, the fins are design elements necessary to the operation of the product.” • The product feature is not a “competitive necessity,” but is simply necessary to the operation of the product.

Greg R. Vetter • www.gregvetter.org 75 Trademarks, Spring 2016

Apple, Inc. v. Samsung Electronics Co. Ltd. (Fed. Cir. May 18, 2015) • “we reverse the jury’s findings that the asserted trade dresses are protectable.” • “While the parties argue without distinguishing the two trade dresses, the unregistered trade dress and the registered ′983 trade dress claim different details and are afforded different evidentiary presumptions under the Lanham Act. We analyze the two trade dresses separately below”

Greg R. Vetter • www.gregvetter.org 76 Trademarks, Spring 2016 Specialized Seating, Inc. v. Greenwich Industries, L.P. (7th Cir. 2010)

Greg R. Vetter • www.gregvetter.org 77 Trademarks, Spring 2016

Utilitarian functionality . . .

• Review: the utilitarian functionality bar to protection/registration • The Supreme Court and other circuits’ approach: engineering need • Inwood / TrafFix: “essential to the use or purpose”; “It is the reason the device works”) • Eppendorf: “The availability of alternative designs is irrelevant”; “The flange is necessary to connect the Combitip to the dispenser syringe…” • Antioch Co.: “The dual strap‐hinge design, spine cover, padded album cover, and reinforced pages are all components that are essential to the use of Antioch's album and affect its quality.” • Talking Rain: Four factors , but “Under TrafFix, the existence of alternative designs does not diminish these indicia of functionality”. • Specialized Seating / Franco v. Franek: “What this says to us is that all the designs are functional.” • Louboutin? • Fed. Circuit / PTO approach: competitive need • Morton Norwich / Valu Eng’g: four factors

Greg R. Vetter • www.gregvetter.org 78 Trademarks, Spring 2016 Aesthetic functionality • Under TrafFix, the test to determine whether a product feature is aesthetically functional is not the Inwood test. Instead, courts should ask whether there are more than a limited range of alternative designs available to competitors such that exclusive rights in the product feature would not put competitors at a significant non‐reputation‐related competitive disadvantage.

Black for outboard motor Black for boxes John Deere green for Pink for surgical containing flowers and loaders used on farm bandages floral arrangements tractors

• 5th circuit does not recognize aesthetic functionality

Greg R. Vetter • www.gregvetter.org 79 Trademarks, Spring 2016

In re Florists’ Transworld Delivery, Inc., Serial No. 77590475 (T.T.A.B. Mar. 28, 2013) (precedential)

Greg R. Vetter • www.gregvetter.org 80 Trademarks, Spring 2016 In re Florists’ Transworld Delivery, Inc., Serial No. 77590475 (T.T.A.B. Mar. 28, 2013) (precedential)

Greg R. Vetter • www.gregvetter.org 81 Trademarks, Spring 2016

Pagliero v. Wallace China Co. (9th Cir. 1952) • It seems clear that these designs are not merely indicia of source, as that one who copies them can have no real purpose other than to trade on his competitor's reputation. On the contrary, to imitate is to compete in this type of situation. Of course, Tepco can also compete by developing designs even more aesthetically satisfying, but the possibility that an alternative product might be developed has never been considered a barrier to permitting imitation competition in other types of cases. The law encourages competition not only in creativeness but in economy of manufacture and distribution as well. Hence, the design being a functional feature of the china, we find it unnecessary to inquire into the adequacy of the showing made as to secondary meaning of the designs.

Greg R. Vetter • www.gregvetter.org 82 Trademarks, Spring 2016 Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co. (2d Cir. 1990)

• “Although we agree with Judge Haight’s decision, we do not endorse his reliance upon Pagliero. . . . . Our rejection of Pagliero, however, does not call for reversal. Quite unlike Pagliero, Judge Haight found in the instant matter that there is a substantial market for baroque silverware and that effective competition in that market requires “use [of] essentially the same scrolls and flowers” as are found on Wallace's silverware.” • “whatever secondary meaning Wallace's baroque silverware pattern may have acquired, Wallace may not exclude competitors from using those baroque design elements necessary to compete in the market for baroque silverware.”

Greg R. Vetter • www.gregvetter.org 83 Trademarks, Spring 2016

Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. 696 F.3d 206 (2d Cir. 2012) • As set forth below, the test for aesthetic functionality is threefold: At the start, we address the two prongs of the Inwood test, asking whether the design feature is either “essential to the use or purpose” or “affects the cost or quality” of the product at issue. Next, if necessary, we turn to a third prong, which is the competition inquiry set forth in Qualitex. In other words, if a design feature would, from a traditional utilitarian perspective, be considered “essential to the use or purpose” of the article, or to affect its cost or quality, then the design feature is functional under Inwood and our inquiry ends. But if the design feature is not “functional” from a traditional perspective, it must still pass the fact‐intensive Qualitex test and be shown not to have a significant effect on competition in order to receive trademark protection. See, e.g., Industria Arredamenti Fratelli Saporiti v. Charles Craig, Ltd., 725 F.2d 18, 19 (2d Cir.1984) (interlocking design of couch cushions was a visual “label” but served a utilitarian purpose by keeping cushions in place and was therefore functional).

Greg R. Vetter • www.gregvetter.org 84 Trademarks, Spring 2016 Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. 696 F.3d 206 (2d Cir. 2012)

Greg R. Vetter • www.gregvetter.org 85 Trademarks, Spring 2016

Deceptive and Deceptively Misdescriptive Marks • Non‐geographically deceptive marks • Non‐geographically deceptive marks may not be registered (or protected) regardless of any showing of secondary meaning • Non‐geographically deceptively misdescriptive marks may be registered upon a showing of secondary meaning • The test for deceptive or deceptive misdescriptiveness with respect to non‐geographic marks: • In re Budge Manufacturing Co., Inc., 857 F.2d 773 (Fed. Cir. 1988) 1. Is the term misdescriptive of the character quality, function, or composition or use of the goods? • If no, the term is descriptive and requires a showing of secondary meaning 2. Are prospective purchasers likely to believe that the misdescription actually describes the goods? • If no, the term is likely inherently distinctive (e.g., “Diamond” brand ice cream) 3. Is the misdescription likely to affect the decision to purchase? • If no, the term is deceptively misdescriptive and requires a showing of secondary meaning. • If yes, the term is deceptive

Greg R. Vetter • www.gregvetter.org 86 Trademarks, Spring 2016 In re Budge Manufacturing Co., Inc., 857 F.2d 773 ( Fed. Cir. 1988)

• (1) Is the term misdescriptive of the character, quality, function, composition or use of the goods? • (2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods? • (3) If so, is the misdescription likely to affect the decision to purchase?

• What evidence makes the prima facie case?

Greg R. Vetter • www.gregvetter.org 87 Trademarks, Spring 2016

In re California Innovations Inc., 329 F.3d 1334 (Fed. Cir. 2003)

Due to the NAFTA changes in the Lanham Act, the PTO must deny registration under § 1052(e)(3) if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer's decision.

Greg R. Vetter • www.gregvetter.org 88 Trademarks, Spring 2016 Review . . .

• Deceptively misdescriptive vs. deceptive marks

Deceptively Deceptive Misdescriptive

Non‐Geographic May be registered May not be Marks upon a showing of registered secondary meaning

Geographic Marks May not be May not be registered registered

• Materiality: • For non‐geographic marks, materiality marks the difference between misdescriptive and deceptive marks. • For geographic marks, materiality must be shown for a mark to be either geographically misdescriptive or geographically deceptive. • See TMEP 1210.05(c)

Greg R. Vetter • www.gregvetter.org 89 Trademarks, Spring 2016

Diagram for geographic marks . . .

Greg R. Vetter • www.gregvetter.org 90 Trademarks, Spring 2016 In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993)

• Filed in 1989

• Registered in 1993

• Cancelled in 2004

unassigned

Greg R. Vetter • www.gregvetter.org 91 Trademarks, Spring 2016

In re Marsha Fox (Fed. Cir. 2012) • Serial No. 76315793 • Since 1979, Fox has used this mark to sell rooster‐shaped chocolate lollipops • LaLonde on TTABlog: “The unrelated word mark GAMECOCK SUCKER for lollipops, Ser. No. 85054752, was published for opposition on November 23, 2010 and a statement of use was filed on November 18, 2011, just three days after the decision in In re Fox was issued.”

Greg R. Vetter • www.gregvetter.org 92 Trademarks, Spring 2016 Other examples . . .

Greg R. Vetter • www.gregvetter.org 93 Trademarks, Spring 2016

In re Heeb Media, LLC (TTAB 2008)

Greg R. Vetter • www.gregvetter.org 94 Trademarks, Spring 2016 McDermott v. San Francisco Women's Motorcycle Contingent, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert denied, 552 U.S. 1109 (2008)

Greg R. Vetter • www.gregvetter.org 95 Trademarks, Spring 2016

In re Tam (Fed. Cir. 2015)

Greg R. Vetter • www.gregvetter.org 96 Trademarks, Spring 2016 Impact on . . . ?

Greg R. Vetter • www.gregvetter.org 97 Trademarks, Spring 2016

Cases for the REDSKINS mark • Pro‐Football, Inc. v. Harjo, 415 F.3d 44 (D.C. Cir. 2005) • Blackhorse v. Pro‐Football, Inc.,98 USPQ2d 1633 (TTAB May 5, 2011)

Greg R. Vetter • www.gregvetter.org 98 Trademarks, Spring 2016 In re Nieves & Nieves LLC (TTAB 2015)

• Proposed Intent‐to‐Use mark: • ROYAL KATE

• To determine whether Applicant’s ROYAL KATE mark falsely suggests a connection with Kate Middleton under Section 2(a), the Board analyzes whether the evidence of record satisfies the following four‐part test: • Whether Applicant’s mark ROYAL KATE is the same as or a close approximation of Kate Middleton’s previously used name or identity; • Whether Applicant’s mark ROYAL KATE would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton; • Whether Kate Middleton is not connected with the goods that will be sold by Applicant under its mark; and • Whether Kate Middleton’s name or identity is of sufficient fame or reputation that when Applicant’s mark is used on Applicant’s goods, a connection with Kate Middleton would be presumed.

Greg R. Vetter • www.gregvetter.org 99 Trademarks, Spring 2016

Use in commerce modalities • “Use in commerce” as jurisdictional requirement • Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991), cert. denied, 502 U.S. 823 (1991) (finding small, single‐location Bar‐B‐Q restaurant in Mason, Tennessee to be rendering service in interstate commerce) • Coca‐Cola Co. v. Stewart, 621 F.2d 287, 290 (8th Cir. 1980) (where restaurant substituted other beverages for coke, “‘in commerce’ refers to the impact that infringement has on interstate use of a trademark; it does not mean that an infringer is immune from prosecution under the statute so long as he keeps his infringement entirely within the confines of a state.”) • “Use in commerce” as requirement for exclusive rights • Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) • Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) • “Use in commerce” for purposes of determining whether a mark owner has abandoned its rights • “Use in commerce” by defendant as requirement for liability – has the defendant made an “actionable use” of the plaintiff’s mark

Greg R. Vetter • www.gregvetter.org 100 Trademarks, Spring 2016 Aycock Engineering, Inc. v. Airflite, Inc., (Fed. Cir. 2009)

• Was Aycock’s pre‐sales conduct enough to meet the “use in commerce” prerequisite for exclusive rights? • Federal Circuit follows the “traditional rule … that use of a symbol in steps preliminary to establishing a business does not establish a priority date or a use sufficient for federal registration.” (McCarthy) • See, e.g., In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983) • Slightly heightened requirement of use after unassigned 1989.

Greg R. Vetter • www.gregvetter.org 101 Trademarks, Spring 2016

Planetary Motion, Inc. v. Techsplosion, Inc. (11th Cir. 2001)

• Timeline: • December 31, 1994: Darrah releases Coolmail under GNU license • Early 1995: S.u.S.E. sells Darrah’s Coolmail as part of compilation • April 16, 1998: Techplosion e‐mail solicitation to 11,000 recipients. Activated domain name coolmail.to. • April 24, 1998: Planetary Motion files three ITU applications. • April 22, 1999: Planetary Motion sues Techplosion for infringement. • July 1999: Planetary Motion purchases all of Darrah’s rights in Coolmail. • Issue: Was Darrah’s (Planetary Motion’s) distribution in 1994 and subsequent conduct sufficient to establish “use in commerce” before Techplosion’s first use in commerce? • “Totality of circumstances” test • “Under the ‘totality of circumstances’ analysis, a party may establish ‘use in commerce’ even in the absence of sales.” • “The sufficiency of use should be determined according to the customary practices of a particular industry.”

Greg R. Vetter • www.gregvetter.org 102 Trademarks, Spring 2016 • Lanham Act § 1(a): the applicant is already making actual use of the mark in commerce; • Lanham Act § 1(b): the applicant has a bona fide intent to use the mark in commerce in the near future; • Lanham Act § 44(d): the applicant filed a foreign application to register the mark within six months of its application to the PTO and claims the priority date of that foreign application; • Lanham Act § 44(e): the applicant possesses a registration of the mark in the applicant’s country of origin; • Lanham Act § 66(a): the applicant requests extension of protection of an international registration under the Madrid System for the international registration of trademarks.

Greg R. Vetter • www.gregvetter.org 103 Trademarks, Spring 2016

Flow of registration process

http://www.uspto.gov/trademark/trademark‐timelines/trademark‐application‐and‐post‐registration‐process‐timelines

• • 1(a) Basis 1(b) Basis – – Application Application – – Examination Examination – – Publication Publication – – Opposition (if brought) Opposition (if brought) – – Registration Statement of Use – Registration

Greg R. Vetter • www.gregvetter.org 104 Trademarks, Spring 2016 The PTO

End of FY 2012

Greg R. Vetter • www.gregvetter.org 105 Trademarks, Spring 2016

Greg R. Vetter • www.gregvetter.org 106 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 107 Trademarks, Spring 2016

Greg R. Vetter • www.gregvetter.org 108 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 109 Trademarks, Spring 2016

Greg R. Vetter • www.gregvetter.org 110 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 111 Trademarks, Spring 2016

Greg R. Vetter • www.gregvetter.org 112 Trademarks, Spring 2016 Advantages of Registration

• Date of filing of registration establishes constructive use priority (Section 7(c)) • Registration certification is prima facie evidence of validity, ownership, and registrant’s exclusive rights (Section 7(b)) • Registration starts clock running for purposes of incontestability (Sections 15 and 33) and limits on cancellation (Section 14) • Other miscellaneous advantages

Greg R. Vetter • www.gregvetter.org 113 Trademarks, Spring 2016

Maintaining a Registration

• Various Declarations and Applications • Section 8 Declaration of Continuing Use • Section 15 Declaration of Incontestability • Section 9 Renewal Application • During 6th year from date of registration: • Registrant must file Section 8 Declaration • Registrant may also file Section 15 Declaration • During every 10th year from date of registration: • Registrant must file Section 8 Declaration and Section 9 Renewal Application

Greg R. Vetter • www.gregvetter.org 114 Trademarks, Spring 2016 Geographic Scope

 Two c/l users of the same TM  c/l rule – only protected where products sold or advertised  Exceptions:  Where reputation established  Normal expansion of business  Anywhere someone intentionally trades on the TM owner’s goodwill  Earlier user has superior rights in area of overlap

 User One  User Two Greg R. Vetter • www.gregvetter.org 115 Trademarks, Spring 2016

Common Law Priority: United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918) United Rectanus

1870 1877- Regis sells product under REX in MA 1880

1883 - Uses REX for blood purifier in KY 1890 1898- State TM

1900 - Fed TM 1900

1912 - REX 1910 shipped to KY

Greg R. Vetter • www.gregvetter.org 116 Trademarks, Spring 2016 Common Law Priority: United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918)

• “There is no such thing as property in a trade‐mark except as a right appurtenant to an established business or trade in connection with which the mark is employed. The law of trade‐marks is but a part of the broader law of unfair competition; the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his; and it is not the subject of property except in connection with an existing business.”

Greg R. Vetter • www.gregvetter.org 117 Trademarks, Spring 2016

Priority: Section 7(c), Section 22, and Section 33(b)(5)

• Section 7(c): as of date of application, “constructive use of the mark, conferring a right of priority, nationwide in effect” • Effective Nov. 16, 1989 • Section 22: as of date of registration, “Registration of mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof.” • Section 33(b)(5): intermediate junior user defense

Greg R. Vetter • www.gregvetter.org 118 Trademarks, Spring 2016 Senior uses and registers, then Junior uses

• Facts: • Senior uses and then applies for and receives registration • Junior uses • Senior files suit against Junior • What result? Senior has nationwide priority under Section 7(c) as of the date of application and can enjoin Junior from using anywhere. • What if Senior uses, applies for registration, and then Junior uses (and then Senior receives registration)? • No difference. Senior still has priority under 7(c).

Greg R. Vetter • www.gregvetter.org 119 Trademarks, Spring 2016

Senior uses, Junior uses, then Senior registers

• Facts: • Senior uses • Junior uses • Senior applies for and receives registration • Senior sues Junior and vice‐versa. What result? • Under 33(b)(5), Junior is frozen to its area of use as of the date of application.

Greg R. Vetter • www.gregvetter.org 120 Trademarks, Spring 2016 Senior uses, Junior uses, then Junior registers • Facts: • Senior uses • Junior uses and then applies for and receives registration • Junior files suit against Senior, Senior counterclaims against Junior • What result? • Junior has nationwide priority except in Senior's zone of use as of the date of application or registration (unclear which).

Greg R. Vetter • www.gregvetter.org 121 Trademarks, Spring 2016

Concurrent Use

Greg R. Vetter • www.gregvetter.org 122 Trademarks, Spring 2016 Concurrent Use

Greg R. Vetter • www.gregvetter.org 123 Trademarks, Spring 2016

Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)

Greg R. Vetter • www.gregvetter.org 124 Trademarks, Spring 2016 Dawn Donut applied

• Snelling & Snelling, Inc. v. Snelling & Snelling, Inc., 331 F. Supp. 750 (D.P.R. 1970) (federal registrant has not entered the Puerto Rico market; complaint dismissed) • Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (court denied present injunction against user in "remote" territory without prejudice to registrant's right to renew claim when it enters the territory) • Comidas Exquisitos, Inc. v. O'Malley & McGee's, Inc., 775 F.2d 260 (8th Cir. 1985) (Atlanta restaurant could not obtain present injunction against use in Iowa because of lack of reputation in Iowa and no present plans to expand there) • Minnesota Pet Breeders v. Schell & Kampeter, 41 F.3d 1242 (8th Cir. 1994) (if trademark owner is not entitled to an injunction in defendant's trade area because, under the Dawn Donut rule, plaintiff has not shown a likelihood of confusion there, then no profits should be awarded as to that area) • Lone Star Steakhouse & Saloon v. Alpha of Virginia, 43 F.3d 922 (4th Cir. 1995) (registrant had already expanded into junior user's Washington, D.C. trade area and was thus entitled to an injunction)

• But see Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047 (6th Cir. 1999)

Greg R. Vetter • www.gregvetter.org 125 Trademarks, Spring 2016

What‐a‐Burger, VA v. Whataburger, Corp. Chris., Tx, 357 F.3d 441 (4th Cir. 2004)

Greg R. Vetter • www.gregvetter.org 126 Trademarks, Spring 2016 Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) • Territorial nature of trademark protection • Section 44 registration • Two grounds for finding of bad faith with respect to registration of a foreign mark

Greg R. Vetter • www.gregvetter.org 127 Trademarks, Spring 2016

Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990)

Greg R. Vetter • www.gregvetter.org 128 Trademarks, Spring 2016 Person’s Co., Ltd. V. Christman (Fed. Cir. 1990)

Christman develops PERSON’S line Christman US Christman US TM for US market, obtains opinion of TM Application issues counsel, US sales begin in April 1982 (April 1983) (Sept. 1984) ?

1979 1980 1981 1982 1983 1984 1985 1986

Person’s Ltd. first sale to US Person’s Person’s Ltd. US Person’s Ltd. learns buyer for US distribution (Nov. Ltd. files for TM issues; engage of Christman, both 1982) (7 months after US TM export company file at PTO for Christman) (1983) (1985) cancellation (1986)

Christman, while in Japan, purchases PERSON’S apparel

1977 1978 1979 1980 1981 1982 1983 1984 1985 1986

Iwasaki Forms Person’s creates Ltd. to market Person’s Ltd. substantial PERSON’S apparel in Japan growth in Japanese market, logo makes plans for US market Greg R. Vetter • www.gregvetter.org 129 Trademarks, Spring 2016

Person’s Co., Ltd. V. Christman (Fed. Cir. 1990) • In cancellation proceeding, TTAB held for Christman • Person’s Ltd. use of the mark in Japan could not be used to establish priority against a “good faith” senior user in US commerce • Mark was not famous or known in US when adopted by Christman • so no US goodwill or reputation upon which Christman could have intended to trade, rendering the unfair competition provisions of the Paris Convention inapplicable.

Greg R. Vetter • www.gregvetter.org 130 Trademarks, Spring 2016 Person’s Co., Ltd. V. Christman (Fed. Cir. 1990)

• Federal Circuit • Priority • Person’s Ltd. use in Japan has no effect on US commerce • Territoriality principle • Bad Faith • Christman’s knowledge of Person’s Ltd. use in Japan does not preclude his use and adoption in the US • No use of the mark on the goods in the US to put Christman or others on notice that a third party has priority • He did not know of Person’s Ltd. plans to expand into the US market • He got opinion of counsel • Inference of bad faith requires more than mere knowledge of prior use of a similar mark in a foreign country • TM law does not impact all aspects of business morality • Unfair competition provisions of the Paris Convention • Not applicable, the TTAB does not adjudicate unfair competition claims

Greg R. Vetter • www.gregvetter.org 131 Trademarks, Spring 2016

Person’s Co., Ltd. V. Christman (Fed. Cir. 1990)

Greg R. Vetter • www.gregvetter.org 132 Trademarks, Spring 2016 A minor circuit split

• Buti v. Perosa, S.R.L., 139 F.3d 98 (2d Cir. 1998) • Impressa opened FASHION CAFE in Italy in 1987 and promoted the restaurant in the U.S. With t‐shirts, cards, and key chains. Impressa did not, however, open a restaurant in the U.S. • But opened FASHION CAFE in Miami in 1993. • Result: Impressa had no rights in U.S. It made no difference whether Buti in 1993 knew or did not know of Impressa's prior use in Italy. • Matt Haig, Brand Failures: The Truth about the 100 Biggest Branding Mistakes of All Times (2011) ("The connection between models and food was not an obvious one, and 'fashion' was not a theme that made people feel hungry.“) • But see International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 F.3d 359 (4th Cir. 2003) • Operators of online gambling websites sought declaration that their use of defendant's trademark “Casino de Monte Carlo” was noninfringing • Result: Sale of services abroad to U.S. citizens by a foreign trademark owner, combined with advertising in the U.S., meets the “use in commerce” requirement. The foreign trademark owner can assert a Lanham Act § 43(a) claim in a U.S. court.

Greg R. Vetter • www.gregvetter.org 133 Trademarks, Spring 2016

Review/Preview

• Tea Rose‐Rectanus common law priority 1. The territorial scope of an unregistered mark is limited to the territory in which the mark is known and recognized by relevant customers. 2. The national senior user of an unregistered mark cannot stop the use of a territorially “remote” good faith national junior user who was first to use the mark in the remote territory. • Federal registration priority • Section 7(c): as of date of application, “constructive use of the mark, conferring a right of priority, nationwide in effect” • Effective Nov. 16, 1989 • Section 22: as of date of registration, “Registration of mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof.” • Section 33(b)(5): intermediate junior user defense • Dawn Donut • Person’s: Trademark rights are national‐territorial in nature. Foreign uses do not establish priority in the U.S. • Exception: Well‐known marks doctrine

Greg R. Vetter • www.gregvetter.org 134 Trademarks, Spring 2016 Paris Convention for the Protection of Industrial Property (1883), Article 6bis Article 6bis Marks: Well‐Known Marks (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well‐known mark or an imitation liable to create confusion therewith. (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested. (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

Greg R. Vetter • www.gregvetter.org 135 Trademarks, Spring 2016

McDonald’s Corporation v. Joburgers Drive‐ Inn Restaurant (PTY), Case No. 547/95 (Supreme Court of South Africa 1996)

• McDonald’s had many registrations in SA, but “[w]hen the present proceedings commenced, McDonald's had not traded in South Africa nor, we may assume for present purposes, had it used any of its trade marks here.” • Finding MCDONALD’S to be well‐known for restaurant services under Section 35 of 1995 Trade Marks Act

additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 136 Trademarks, Spring 2016 McDonalds v. JoBurgers (Appellate Division South Africa 1997)

• McDonalds SouthAfrica TM registrations under the Old Act

• Joburgers application to expunge the McDonalds marks and register some of the same

• 9/28/93 court order – prevent Joburgers from going forward pending suit

• What about MacDonalds?

• 5/1/1995 – New Act with Well Known Marks protection • Segment? • Degree of awareness? (substantial number of persons)

additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 137 Trademarks, Spring 2016

Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004)

• Is there a statutory basis for the court’s finding of famous marks protection? • What level of well‐knownness is required?

Greg R. Vetter • www.gregvetter.org 138 Trademarks, Spring 2016 Int’l Protection of TM under Paris

• Paris Convention • National Treatment • A member state may not subject foreigners benefiting from the Paris Convention to higher industrial property protection standards than those applicable to its own citizens • Without National Treatment, a member country can subject a state’s nationals to stricter conditions, refuse to protect rights, require reciprocity, residence, fees, or other items • Independence of Rights • Takes national treatment principle to an extreme • TM ownership is governed exclusively by the national law of each country. • Exceptions to independence are • (i) priority right and • (ii) protection of the TM “as such” ‐ when the mark would not meet the prerequisites for protection in the target country, register it “as it is” • For example, some countries allow registration of numbers or letters • Paris Union additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 139 Trademarks, Spring 2016

Int’l Protection of TM under Paris • Paris Convention – Acquisition of Rights • Prohibited Signs • No TM on emblems of states, signs of control and guaranty, and emblems of int’l intergovernmental organizations [Art. 6ter.] • Well Known Marks • Even if not registered, have extended protection based on notoriety in country where protection is sought • Service Marks • Obligation to protect, but no obligation to provide registration, may be protected under unfair competition [Art. 6sexies.] • Collective Marks • Obligation to protect marks of associations, so long as its existence is not contrary to the law of the country of origin • Association does not need to be established in country of protection. [Art. 7bis.] • Nature of goods to which the Mark is applied • Prohibition on impeding registration based on the nature of the goods (even if marketing of such goods are prohibited) [Art. 7.] • Specific Mention • Member states cannot require as a condition of protection that the product bear a specific mention of a TM registration [Art. 5D.] additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 140 Trademarks, Spring 2016 Int’l Protection of TM under Paris

• Paris Convention – Content of Rights • Use • States may require that a rightsholder effectively uses the mark, and if the owner does not use it within a reasonable period of time, w/out valid reason for disuse, the owner can be deprived of the mark. [Art. 5C(1).] • Co‐Owners • Simultaneous use by co‐owners shall not limit protection. • Grace Periods • Must allow 6 months for payment of maintenance/renewal fees due. • Conventions based on Paris • Madrid Agreement; Madrid Protocol • Paris Convention Contribution to TM law • national treatment • minimal procedural mechanisms • to facilitate the acquisition of TM rights on multinational basis • required “as is” acceptance of rights in a country • substantive minima in TM and unfair competition law

additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 141 Trademarks, Spring 2016

Substantive Minima – Well Known Marks

• 6bis(1) • The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well‐known mark or an imitation liable to create confusion therewith. • To some extent, a derogation of principle of territoriality

Greg R. Vetter • www.gregvetter.org 142 Trademarks, Spring 2016 Well‐Known Marks • Under Art. 6bis(1): • a well‐known mark can be characterized as a mark which is known to a substantial segment of the relevant public in the sense of being associated with the particular goods or services • Famous marks versus “well‐known” marks • Is there a difference? • Some contend that famous marks have a higher degree of reputation • Famous marks violate the “principle of speciality” • They have a broader scope of use against unauthorized use on non‐competing goods or services • Not possible to distinguish between famous/well‐known except as to the degree of recognition required

additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 143 Trademarks, Spring 2016

TRIPS, Art. 16

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use. 2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis*, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. 3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis*, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

* mutatis mutandis: (in comparing cases) making the necessary alterations

Greg R. Vetter • www.gregvetter.org 144 Trademarks, Spring 2016 TRIPS, Art. 16 • Prevent confusing uses of an identical or similar mark on identical or similar goods • A presumption of confusion arises when identical marks are used on identical goods • Unlike under the Paris Convention, however, TRIPS service marks receive protection equal to that of marks affixed to goods or trade names • Owners of well‐known marks obtain additional protection on dissimilar goods • Well‐known is not defined in TRIPS or Paris • Application to unregistered marks? • Not required textually by Art. 16, but it is a minimum standard, so members can go further

additional material above

Greg R. Vetter • www.gregvetter.org and beyond casebook 145 Trademarks, Spring 2016

Overview of Trademark Infringement • Actionable use • Likelihood of confusion • Forward confusion • Initial interest confusion • Post‐sale confusion • Reverse confusion • Section 2(d) confusion • Likelihood of dilution • Dilution by blurring • Dilution by tarnishment • UDRP / cybersquatting • Contributory infringement

Greg R. Vetter • www.gregvetter.org 146 Trademarks, Spring 2016 Likelihood of Confusion HYPO

1. strength of the mark 2. proximity of the goods 3. similarity of the marks 4. evidence of actual confusion 5. marketing channels used 6. type of goods and the degree of care likely to be exercised by the purchaser 7. defendant's intent in selecting the mark 8. likelihood of expansion of the product lines

Greg R. Vetter • www.gregvetter.org 147 Trademarks, Spring 2016

Types of confusion

• Confusion as to the products • Confusion leading to purchase of infringer’s product when trademark (“TM”) owner sells the same product • Confusion as to source • Infringer uses TM owner’s mark on products the TM owner does not sell at all • Two possible types of harm: (i) potentially inferior quality of infringer’s products; (ii) if TM owner expands into product area where infringer sells, very high chance of likelihood of confusion • Confusion as to sponsorship • For example, United States Olympic Committee label on soup • Initial interest confusion • Confusion that is dispelled before purchase occurs Soup • Post‐sale confusion • Confusion after the sale of a product • Reverse Confusion • A large company adopts the mark of a smaller TM owner • Risk is not junior user trading on goodwill of senior, but that the public comes to associate the mark not with its true owner, but with the infringing junior user who may have spent a lot of money to advertise it

Greg R. Vetter • www.gregvetter.org 148 Trademarks, Spring 2016 Six aspects of “use in commerce”: 1. Commerce clause limitation 2. Establishing priority [_in the earlier list entitled “Use in commerce modalities”, related to “requirement for exclusive rights”_] (actual use for common law rights; actual or constructive use for rights under federal registration) 3. Establishing ownership (who is the “user”?) [_in the earlier list entitled “Use in commerce modalities”, related to “requirement for exclusive rights”_] 4. Determining whether a mark has been abandoned (when does “use” stop?) 5. Determining types of actionable use • Did the defendant “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”)? 6. Determining “fair use” [_additional to the earlier list entitled “Use in commerce modalities”_]

Greg R. Vetter • www.gregvetter.org 149 Trademarks, Spring 2016

Section 45 Definition of “Use in Commerce”

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, 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 the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

(NB: The general view is that this definition was written to establish only what a plaintiff must do to establish trademark rights, not what a defendant must do to infringe those rights.)

Greg R. Vetter • www.gregvetter.org 150 Trademarks, Spring 2016 Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009)

• Two issues in Google unassigned keyword advertising litigation: 1. Is Google making a use in commerce? (Rescuecom) 2. Is this use in commerce likely to cause confusion? (Network Automation v. Advanced Systems Concepts, 638 F.3d 1137 (9th Cir. 2011))

Greg R. Vetter • www.gregvetter.org 151 Trademarks, Spring 2016

unassigned

Greg R. Vetter • www.gregvetter.org 152 Trademarks, Spring 2016 unassigned

Greg R. Vetter • www.gregvetter.org 153 Trademarks, Spring 2016

Rescuecom Corp. v. Google, 562 F.3d 123 (2d Cir. 2009) unassigned

• Google • AdWords • Keyword Suggestion Tool • Upon search, sponsored link or relevant result? • Differences from 1‐800 • Website address, not mark, or descriptive terms • Advertisers could not request or purchase keywords • Internal use • Sufficient allegations that it is “trademark use”

Portion of the Google AdWords FAQ, Trademark section, from 1/20/2008

Greg R. Vetter • www.gregvetter.org 154 Trademarks, Spring 2016 Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005)

Greg R. Vetter • www.gregvetter.org 155 Trademarks, Spring 2016

Summary • Rescuecom established that keyword advertising constitutes a use in commerce. • Bosley Medical stands for the proposition that non‐ commercial uses of trademarks are not actionable under the Lanham Act • Non‐commercial uses are uses that are not made “in connection with the sale, offering for sale, distribution, or advertising of any goods or services”

Greg R. Vetter • www.gregvetter.org 156 Trademarks, Spring 2016 Likelihood of Confusion HYPO

1. strength of the mark 2. proximity of the goods 3. similarity of the marks 4. evidence of actual confusion 5. marketing channels used 6. type of goods and the degree of care likely to be exercised by the purchaser 7. defendant's intent in selecting the mark 8. likelihood of expansion of the product lines

Suave

Greg R. Vetter • www.gregvetter.org 157 Trademarks, Spring 2016

Greg R. Vetter • www.gregvetter.org 158 Trademarks, Spring 2016 Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003)

Greg R. Vetter • www.gregvetter.org 159 Trademarks, Spring 2016

The two‐dimensional model of trademark scope

Greg R. Vetter • www.gregvetter.org 160 Trademarks, Spring 2016 Lemley & McKenna, Irrelevant Confusion Whatever fraction of the total universe of trademark cases these cases constitute, there are enough of them that recipients of cease and desist letters from mark owners have to take the objections seriously. Indeed many simply cave in and change their practices rather than face the uncertainty of a lawsuit. . . . Whatever fraction of the total universe of trademark cases these cases constitute, there are enough of them that recipients of cease and desist letters from mark owners have to take the objections seriously. Indeed many simply cave in and change their practices rather than face the uncertainty of a lawsuit. . . . [W]e argue that courts can begin to rein in some of these excesses by focusing their attention on confusion that is actually relevant to purchasing decisions. Uses of a trademark that cause confusion about actual source or about responsibility for quality will often impact purchasing decisions, so courts should presume materiality and impose liability when there is evidence such confusion is likely. Uses alleged to cause confusion about more nebulous relationships, on the other hand, are more analogous to false advertising claims, and those uses should be actionable only when a plaintiff can prove the alleged confusion is material to consumers’ decision making.

Greg R. Vetter • www.gregvetter.org 161 Trademarks, Spring 2016

Louisiana State University v. Smack Apparel Co. (5th Cir. 2008)

• Follow Boston Hockey or Rainbow for Girls?

• “Universities exercise stringent control over the use of their marks on apparel through their licensing program. It is also undisputed that the Universities annually sell millions of dollars worth of licensed apparel. We further recognize the public’s indisputable desire to associate with college sports teams by wearing team‐related apparel.”

Greg R. Vetter • www.gregvetter.org 162 Trademarks, Spring 2016 Multi Time Machine v. Amazon.com (9th Cir. July 6, 2015) • Amazon does not carry MTM watches • But search on Amazon for MTM watches generates results • Initial interest confusion for Luminox watch? • Dist. Ct. found no LofC, but 9th disagrees • Applies 8 Sleekcraft factors • Initial interest • Possible inference of affiliation between Luminox/competitor and MTM

• Dissent

Greg R. Vetter • www.gregvetter.org 163 Trademarks, Spring 2016

initial interest and trade dress • Sixth Circuit declined to apply initial interest confusion to trade dress • Why? • Might pick a penumbra of shapes not otherwise qualifying for trademark protection

PRS Gibson Les Paul Greg R. Vetter • www.gregvetter.org 164 Trademarks, Spring 2016 Reverse Passing Off • involves situations in which a “defendant falsely takes credit for another’s goods or services”

• Policy considerations with other areas of IP

Greg R. Vetter • www.gregvetter.org 165 Trademarks, Spring 2016

Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) • “Dastar manufactured and sold the Campaigns video set as its own product. The advertising states: “Produced and Distributed by: Entertainment Distributing ” (which is owned by Dastar), and makes no reference to the Crusade television series. Similarly, the screen credits state “DASTAR CORP presents” and “an ENTERTAINMENT DISTRIBUTING Production,” and list as executive producer, producer, and associate producer employees of Dastar. Supp.App. 2–3, 30. The Campaigns videos themselves also make no reference to the Crusade television series, New Line's Crusade videotapes, or the book. Dastar sells its Campaigns videos to Sam's Club, Costco, Best Buy, and other retailers and mail‐order companies for $25 per set, substantially less than New Line's video set.” • Fox wins under copyright and Lanham act claim in the district court; 9th reverses on the copyright claim (renewal was in question for pre‐1976 act copyright); 9th affirms under the Lanham act claim • Lanham act provision in 43(a) • “a false designation of origin, or any false description or representation” in connection with “any goods or services.” • What is meant by “origin of the goods”?

Greg R. Vetter • www.gregvetter.org 166 Trademarks, Spring 2016 Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 205 (2003)

Greg R. Vetter • www.gregvetter.org 167 Trademarks, Spring 2016

Gilliam v. ABC, 538 F.2d 14 (2d Cir. 1976)

• Provides moral rights‐like remedies through Section 43(a) of the Lanham Act • Theory is that the television network mutilated the work to such an extent that the network falsely identified the plaintiff as the author of the work • Moral rights are a type of copyright‐like right associated with European legal systems • Right of integrity • Right of attribution

additional material above and beyond casebook

Greg R. Vetter • www.gregvetter.org 168 Trademarks, Spring 2016 LaPine v. Seinfeld (S.D.N.Y. 2009)

Greg R. Vetter • www.gregvetter.org 169 Trademarks, Spring 2016

Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576 (7th Cir. 2005)

Greg R. Vetter • www.gregvetter.org 170 Trademarks, Spring 2016 Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576, 580‐81 (7th Cir. 2005) “No one makes a product from scratch, with trees and iron ore entering one end of the plant and a finished consumer product emerging at the other. Ford's cars include Fram oil filters, Goodyear tires, Owens‐Corning glass, Bose radios, Pennzoil lubricants, and many other constituents; buyers can see some of the other producers' marks (those on the radio and tires for example) but not others, such as the oil and transmission fluid. Smith System builds tables using wood from one supplier, grommets (including Teflon from du Pont) from another, and vinyl molding and paint and bolts from any of a hundred more sources‐the list is extensive even for a simple product such as a table. If Smith System does not tell du Pont how the Teflon is used, and does not inform its consumers which firm supplied the wood, has it violated the Lanham Act? Surely not; the statute does not condemn the way in which all products are made.”

Greg R. Vetter • www.gregvetter.org 171 Trademarks, Spring 2016

Lanham Act § 2(d) Confusion • “The PTO’s test for determining whether Lanham Act § 2(d) bars a registration is essentially the same as the multifactor test for the likelihood of confusion in the federal court litigation context”

• Factor treatment from TMEP

Greg R. Vetter • www.gregvetter.org 172 Trademarks, Spring 2016 Dilution – possible types or theories of harm Type “Tiffany” example (famous mark Other Example(s) for a jewelry store) [example described in a recent 7th circuit case] Blurring “Tiffany” for an upscale Goldfish restaurant Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns Tarnishment “Tiffany” for a “restaurant” that is John Deere actually a “striptease joint” Snuggles

Victoria’s Secret

Greg R. Vetter • www.gregvetter.org 173 Trademarks, Spring 2016

Dilution – § 43(c) – remedies for dilution of famous marks (Act of 2006)

(1) INJUNCTIVE RELIEF.—Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the 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 of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. (2) DEFINITIONS.‐‐(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered . . . on the principal register.

Greg R. Vetter • www.gregvetter.org 174 Trademarks, Spring 2016 Dilution (Trademark Dilution Revision Act of 2006)

(B) For purposes of paragraph (1), ‘dilution by blurring’ is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: (i) The degree of similarity between the mark or trade name and the famous mark. (ii) The degree of inherent or acquired distinctiveness of the famous mark. (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with the famous mark. (vi) Any actual association between the mark or trade name and the famous mark. (C) For purposes of paragraph (1), ‘dilution by tarnishment’ is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark. (3) EXCLUSIONS.‐‐The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with‐‐ (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. (C) Any noncommercial use of a mark.

Greg R. Vetter • www.gregvetter.org 175 Trademarks, Spring 2016

I. What is Trademark Dilution? • Frank Schechter • Frank Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (1927) • Frank Schechter, The Historical Foundations of the Law Relating to Trade‐Marks (1925) • Limitations of the confusion as to source cause of action • “[I]f there is no competition, there can be no unfair competition,” Carroll v. Duluth Superior Milling Co., 232 F. 675, 681–82 (8th Cir. 1916). • “In each instance the defendant was not actually diverting custom from the plaintiff, and where the courts conceded the absence of diversion of custom they were obliged to resort to an exceedingly laborious spelling out of other injury to the plaintiff in order to support their decrees.” Schechter, Rational Basis, at 825.

Greg R. Vetter • www.gregvetter.org 176 Trademarks, Spring 2016 I. What is Trademark Dilution? • Frank Schechter • Frank Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 830 (1927)

Greg R. Vetter • www.gregvetter.org 177 Trademarks, Spring 2016

I. What is Trademark Dilution? • Importance of advertising function of mark • The 1924 “Odol” mouthwash decision, Landesgericht Elberfeld

Greg R. Vetter • www.gregvetter.org 178 Trademarks, Spring 2016 I. What is Trademark Dilution? • Schechter’s view of the vagaries of consumer‐perception basis for liability • “Any theory of trade‐mark protection which . . . does not focus the protective function of the court upon the good‐will of the owner of the trade‐mark, inevitably renders such owner dependent for protection, not so much upon the normal agencies for the creation of goodwill, such as the excellence of his product and the appeal of his advertising, as upon the judicial estimate of the state of the public mind. This psychological element is in any event at best an uncertain factor, and ‘the so‐called ordinary purchaser changes his mental qualities with every judge.’” Schechter, Historical Foundations, at 166 • Problem solved with highly formal test: (1) Does the plaintiff’s mark merit heightened protection? (2) Are the marks similar?

Greg R. Vetter • www.gregvetter.org 179 Trademarks, Spring 2016

I. What is Trademark Dilution? • Current antidilution theory of harm • Search costs explanation: “A trademark seeks to economize on information costs by providing a compact, memorable and unambiguous identifier of a product or service. The economy is less when, because the trademark has other associations, a person seeing it must think for a moment before recognizing it as the mark of the product or service.” Richard Posner, When Is Parody Fair Use?, 21 J. Legal Studies 67, 75 (1992).

Greg R. Vetter • www.gregvetter.org 180 Trademarks, Spring 2016 Peterson, Smith, & Zerillo, Trademark Dilution and the Practice of Marketing, 27 J. Acad. Marketing Sci. 255 (1999)

• “Brand dominance”: the probability that a brand will be recalled given its category as a retrieval cue • Trucks? → Ford • Watches? → Rolex • “Brand typicality”: the probability that a category will be recalled given the brand name as a retrieval cue • Ford? → Trucks, cars • Nike? → Automobiles • Virgin? → ? • Simonson: blurring is “typicality dilution” (see Alexander Simonson, How and When Do Trademarks Dilute: A Behavioral Framework to Judge 'Likelihood' of Dilution, 83 Trademark Reporter 149‐74 (1993))

Greg R. Vetter • www.gregvetter.org 181 Trademarks, Spring 2016

I. What is Trademark Dilution? • History of Antidilution Cause of Action in the U.S. • 1946: Lanham Act • Contained no antidilution provision • 1947: Massachusetts enacts first state antidilution statutory provision • Currently 38 states provide for statutory antidilution protection, including New York, California, and Illinois • 1995: Federal Trademark Dilution Act • 2006: Trademark Dilution Revision Act

Greg R. Vetter • www.gregvetter.org 182 Trademarks, Spring 2016 38 states with antidilution laws

• Alabama • Alaska • Montana • Arkansas • Nebraska • Arizona • New Hampshire • California • Connecticut • New Jersey • Delaware • New Mexico • Florida • New York • Georgia • Oregon • Hawaii • Idaho • Pennsylvania • Illinois • Rhode Island • Iowa • South Carolina • Kansas • Tennessee • Louisiana • Maine • Texas • Massachusetts • Utah • Minnesota • Washington • Mississippi • West Virginia • Missouri • Wyoming

Greg R. Vetter • www.gregvetter.org 183 Trademarks, Spring 2016

I. What is Trademark Dilution? • Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) • reads actual dilution standard into FTDA • questions whether tarnishment is covered by FTDA

Greg R. Vetter • www.gregvetter.org 184 Trademarks, Spring 2016 II. The 2006 Trademark Dilution Revision Act • Major reforms • Pro‐plaintiff • establishes likelihood of dilution standard • provides that non‐inherently distinctive marks may qualify for protection • explicitly states that blurring and tarnishment are forms of dilution • Pro‐defendant • rejects doctrine of “niche fame” • expands scope of exclusions • Neutral • reconfigures fame factors • sets forth factors for determining blurring

Greg R. Vetter • www.gregvetter.org 185 Trademarks, Spring 2016

II. The 2006 Trademark Dilution Revision Act • Major reforms • Pro‐plaintiff • establishes likelihood of dilution standard • provides that non‐inherently distinctive marks may qualify for protection • explicitly states that blurring and tarnishment are forms of dilution • Pro‐defendant • rejects doctrine of “niche fame” • expands scope of exclusions • Neutral • reconfigures fame factors • sets forth factors for determining blurring

Greg R. Vetter • www.gregvetter.org 186 Trademarks, Spring 2016 II. The 2006 Trademark Dilution Revision Act • Elements of a blurring claim • Elements of a blurring claim Section 43(c)(2)(B): “In determining whether a mark or trade • Section 43(c)(2)(B): “For purposes of name is likely to cause dilution by blurring, the court may consider paragraph (1), “dilution by blurring” is all relevant factors, including the following: association arising from the similarity (i) The degree of similarity between the mark or trade name and between a mark or trade name and a famous the famous mark. mark that impairs the distinctiveness of the (ii) The degree of inherent or acquired distinctiveness of the famous mark.” famous mark. • Plaintiff must show: (iii) The extent to which the owner of the famous mark is 1. association engaging in substantially exclusive use of the mark. 2. that arises from the similarity (iv) The degree of recognition of the famous mark. 3. between the defendant’s mark and (v) Whether the user of the mark or trade name intended to the plaintiff’s famous mark (must create an association with the famous mark. plaintiff show defendant’s use as a (vi) Any actual association between the mark or trade name and mark?) the famous mark” 4. that impairs the distinctiveness of the famous mark

Greg R. Vetter • www.gregvetter.org 187 Trademarks, Spring 2016

Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252, 264‐65 (4th Cir. 2007)

Greg R. Vetter • www.gregvetter.org 188 Trademarks, Spring 2016 Coach Servs., Inc. v. Triumph Learning LLC (Fed. Cir. 2012) • Fame • All relevant factors, including: • (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. • (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. • (iii) The extent of actual recognition of the mark. • (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

Greg R. Vetter • www.gregvetter.org 189 Trademarks, Spring 2016

Nike, Inc. v. Nikepal Int’l, Inc., 2007 WL 2782030 (E.D. Cal. 2007) • The trademark blurring cause of action • Mark must be “famous” to qualify; four factors • Six blurring factors • Similarity factor • Can a defendant be liable both for confusion and for blurring? • Examples • Federal Exp. Corp. v. Federal Espresso, Inc., 201 F.3d 168 (2d Cir. 2000) (The marks must be “very” or “substantially similar” – a holding subsequently overruled. Affirmed denial of preliminary injunction based in part on holding that the challenged FEDERAL ESPRESSO was not sufficiently similar to FEDERAL EXPRESS.). • National Pork Board and National Pork Producers Council v. Supreme Lobster and Seafood Company, 96 USPQ2d 1479 (TTAB 2010) [precedential] (“The Other Red Meat” for fresh and frozen salmon dilutes “The Other White Meat” for pork)

Greg R. Vetter • www.gregvetter.org 190 Trademarks, Spring 2016 Starbucks Corp. v. Wolfe's Borough Coffee, Inc. (2d Cir. 2013)

Greg R. Vetter • www.gregvetter.org 191 Trademarks, Spring 2016

Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011)

Greg R. Vetter • www.gregvetter.org 192 Trademarks, Spring 2016 Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir. 2011) • “Thus, the plain language of 15 U.S.C. § 1125(c) does not require that a plaintiff establish that the junior mark is identical, nearly identical or substantially similar to the senior mark in order to obtain injunctive relief. Rather, a plaintiff must show, based on the factors set forth in § 1125(c)(2)(B), including the degree of similarity, that a junior mark is likely to impair the distinctiveness of the famous mark.” Id. at 1172 • See also Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (holding that TDRA does not require heightened similarity)

Greg R. Vetter • www.gregvetter.org 193 Trademarks, Spring 2016

V Secret Catalogue, Inc. v. Moseley (6th Cir. 2010)

• “We conclude that the new Act creates a kind of rebuttable presumption, or at least a very strong inference, that a new mark used to sell sex related products is likely to tarnish a famous mark if there is a clear semantic association between the two. That presumption has not been rebutted in this case.”

Greg R. Vetter • www.gregvetter.org 194 Trademarks, Spring 2016 A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001)

• Collective directory to show availability of currently connected client computers • Uploading file names violates distribution right • Downloading files violates reproduction right • Fair Use? • Purpose & character • Not transformative • Commercial • Nature of the work • Amount used additional material above • Effect on market and beyond casebook

Greg R. Vetter • www.gregvetter.org 195 Trademarks, Spring 2016

Tiffany (NJ) Inc. v. eBay, Inc. 600 F.3d 93 (2d Cir. 2010)

• Tiffany “buying programs” to test degree of counterfeit merchandise sold on eBay • eBay anti‐counterfeiting measures, “fraud engine,” VeRO program, “About Me” page on eBay whose content is provided by Tiffany • eBay advertising of brands like Tiffany • Dist. Ct. bench trial opinion in favor of eBay on: direct trademark infringement, contributory TM infringement, dilution, false advertising • Contributory TM infringement • Intentionally induce or supply with KorRtoK of infringement (Inwood test) • But, the knowledge must be of specific acts of infringement • False advertising • Only issue remanded to the Dist. Ct.

Greg R. Vetter • www.gregvetter.org 196 Trademarks, Spring 2016 Tiffany (NJ) Inc. v. eBay, Inc. (2d Cir. 2010) • Contributory liability: • Intentional inducement, or • Knowledge and material contribution • Setting equity considerations aside, who is the lowest‐cost enforcer of Tiffany’s rights? • General knowledge versus specific knowledge • Tiffany: Contributory defendant must have specific knowledge of infringing acts and fail to act on that knowledge; general knowledge is not sufficient • Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982) (“If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.“) • See also • Louis Vuitton v. Akanoc Solutions, 658 F.3d 936 (9th Cir. 2011) (finding website host contributorily liable; host received multiple notifications but failed to take down listings of infringing merchandise; $31.5 million in damages)

Greg R. Vetter • www.gregvetter.org 197 Trademarks, Spring 2016

Credit Card Service Provider Liability

• Perfect 10, Inc. v. Visa Intern. Service Ass'n, 494 F.3d 788, 83 U.S.P.Q.2d 1144 (9th Cir. 2007) (affirming 12(b)(6) dismissal of contributory trademark infringement claim against credit card companies) • “Perfect 10 has not alleged that Defendants have the power to remove infringing material from these websites or directly stop their distribution over the Internet. At most, Perfect 10 alleges that Defendants can choose to stop processing payments to these websites, and that this refusal might have the practical effect of stopping or reducing the infringing activity. This, without more, does not constitute "direct control." See Lockheed Martin, 194 F.3d at 985 ("While the landlord of a flea market might reasonably be expected to monitor the merchandise sold on his premises, [defendant] NSI cannot reasonably be expected to monitor the Internet.") (citation omitted).” • But see (Kozinski, J., dissenting) • Gucci America, Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228 (S.D. N.Y. 2010) • Durango (agent) could be liable for intentional inducement contributory liability • Woodforest and Frontline (credit card processors) could be liable for knowledge and material contribution contributory liability

Greg R. Vetter • www.gregvetter.org 198 Trademarks, Spring 2016 AntiCyberSquatting Consumer Protection Act (ACPA)

• McCarthy: “new category of ‘dilution’” • Problems of LofC, dilution and unfair competition law with respect to domain names • ACPA: • Bad faith registration liability for registrant, not registrar • In rem action • Statutory damages • New cause for registering non‐TM name of others w/out consent w/ intent to profit by resale • Just domain names, i.e., those registered, whether second level or more

Greg R. Vetter • www.gregvetter.org 199 Trademarks, Spring 2016

ACPA

• 15 U.S.C. 1125(d)(1)(A):

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person ‐ (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that ‐ (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) . . .

Greg R. Vetter • www.gregvetter.org 200 Trademarks, Spring 2016 ACPA

• Nine bad faith factors (nonexclusive list) I. Trademark or other IP rights in the domain name II. Extent of domain name use to identify a legal person III. Bona fide offering of goods or services IV. Bona fide noncommercial or fair use of the mark in a site accessible under the domain name V. Intent to divert customers from the mark’s owner online location to a goodwill‐harming site VI. Offer to sell without having made bona fide use VII. Material and misleading false contact information when applying for the mark VIII. Keeping multiple domain names and knowing that they are identical or confusingly similar to others’ marks IX. Extent to which the mark incorporated into the domain name is or is not distinctive or famous

Greg R. Vetter • www.gregvetter.org 201 Trademarks, Spring 2016

ACPA

• Safe harbor • Believed and had reasonable grounds to believe that use was fair use or otherwise lawful • Remedies • Pre‐enactment • Post‐enactment • Intent analysis • Circumstantial evidence • Direct evidence

Greg R. Vetter • www.gregvetter.org 202 Trademarks, Spring 2016 Lamparello v. Falwell 420 F.3d 309 (4th Cir. 2005)

• Reverend Jerry Falwell • Lamparello registered www.fallwell.com in response to Falwell interview • Dist. Ct. gave summary judgment to Falwell • Commercial speech issue . . . • But, Circuit Ct. thinks no likelihood of confusion • Reverend Falwell's mark is distinctive, and the domain name of Lamparello's website, www.fallwell.com, closely resembles it. But, although Lamparello and Reverend Falwell employ similar marks online, Lamparello's website looks nothing like Reverend Falwell's; indeed, Lamparello has made no attempt to imitate Reverend Falwell's website. Moreover, Reverend Falwell does not even argue that Lamparello's website constitutes advertising or a facility for business, let alone a facility or advertising similar to that of Reverend Falwell. Furthermore, Lamparello clearly created his website intending only to provide a forum to criticize ideas, not to steal customers. • Most importantly, Reverend Falwell and Lamparello do not offer similar goods or services. Rather they offer opposing ideas and commentary . . . • Initial interest confusion issue . . . viability of that doctrine in the 4th circuit • ACPA claim by Falwell – bad faith intent element not proved

Greg R. Vetter • www.gregvetter.org 203 Trademarks, Spring 2016

Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)

Greg R. Vetter • www.gregvetter.org 204 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 205 Trademarks, Spring 2016

ICANN UDRP

• Checking mechanisms on those implementing UDRP decisions over domain names • Built into the system’s document (“creational”) • External ‐ national courts • Internal – compare to traditional arbitration panelists • Standardization of procedures for challenging panelist partiality? • External review by national courts • 10 days • Cause of action under local law? • Review jurisdiction by national court? • Unlikely to develop expert courts as registry companies disperse • Automatic enforcement w/out national courts • Internal review • Selection of panelists • Published opinions

Greg R. Vetter • www.gregvetter.org 206 Trademarks, Spring 2016 Uniform Dispute Resolution Procedure

• Domain name holders are subject to the UDRP through the terms of their domain name registration contract with domain name registrars. • Registrars must require the UDRP in order to qualify with ICANN as domain name registrars. • UDRP Paragraph 4 • 4(a): Complainant must prove: (1) identity or confusing similarity, (2) respondent has “no rights or legitimate interests in respect of the domain name”, and (3) respondent has registered the domain name and is using it in bad faith. • 4(b): Bad faith factors • 4(d): Complainant selects DRSP • 4(i): Remedies • Statistics: http://www.wipo.int/amc/en/domains/statistics/ • Opinions • Telstra.org: passive holding constitutes use • Madonna.com: panel can make findings of fact

Greg R. Vetter • www.gregvetter.org 207 Trademarks, Spring 2016

Section 43(d) (a.k.a. ACPA) • 43(d): (1) 43(d)(1)(A)(i) “bad faith intent to profit”, and (2) 43(d)(1)(A)(ii) “registers, traffics in, or uses” a domain that is “identical or confusingly similar to” plaintiff’s mark • Bad faith intent factors: 43(d)(1)(B)(i) • People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001)

Greg R. Vetter • www.gregvetter.org 208 Trademarks, Spring 2016 Eastman Sporto Group LLC v. Jim and Kenny Case No. D2009‐1688 (WIPO Mar. 1, 2010)

• Jim and Kenny registered sporto.com in 1997 • Differing uses at different points in time, some use to resolve to sites that sell footwear • “August 21, 2009, Respondent offered to sell the disputed domain name to a third party for USD 100,800” • Eastman owns SPORTO mark • Bad faith registration and use factors • Bad faith at time of registration versus later in time bad faith at a time of use • Mummygold approach: a panel may determine that registration in bad faith under paragraph 4(a)(iii) may be established “retroactively” by subsequent bad faith use • But, “the most formidable obstacle to the Mummygold approach is the language of paragraph 4(a)(iii) itself. The operative verbs in that provision are clearly conjunctive – registered and used. ” • “unless bad faith use subsequently to registration forms a basis for an inference of Respondent's bad faith at the time of registration, it cannot alone satisfy the complainant's burden of proof under paragraph 4(a)(iii) of the Policy.” • Effect of domain name renewal? Versus transfer of ownership? What if cybersquatting at the time of renewal?

Greg R. Vetter • www.gregvetter.org 209 Trademarks, Spring 2016

The Uniform Rapid Suspension System (URS)

• Process to apply for gTLDs [1] that the registered domain name is identical or confusingly similar to a word mark: ($185,000 per gTLD) – similar to a (i) for which the Complainant holds a valid national or mark registration regional registration and that is in current use; or (ii) that has been validated through court proceedings; • URS applies only to second‐level or domains within new gTLDs (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. established since 2013 a. Use can be shown by demonstrating that evidence of use — which can be a declaration and one specimen of • Burden is CCE current use in commerce — was submitted to, and • Remedy, after short term lock, is validated by, the Trademark Clearinghouse. b. Proof of use may also be submitted directly with the suspension, not transfer URS Complaint. and [2] that the Registrant has no legitimate right or interest to the domain name; and [3] that the domain was registered and is being used in bad faith. Greg R. Vetter • www.gregvetter.org 210 Trademarks, Spring 2016 Facebook Inc. v. Radoslav (Nat’l Arb. Forum, Sept. 27, 2013)

• Domain at issue is facebok.pw • Confusingly similar to FACEBOOK • “The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent’s personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant’s mark’s goodwill.” • Pattern of similar one‐letter‐off registrations • www.trademark‐clearinghouse.com

Greg R. Vetter • www.gregvetter.org 211 Trademarks, Spring 2016

Classic vs. Nominative Fair use • U.S. trademark law provides for two forms of “fair use” • “Classic” or descriptive fair use, in which the defendant uses the plaintiff’s mark to describe the defendant’s goods • Statutory basis: 33(b)(4) • “Nominative” fair use, in which the defendant uses the plaintiff’s mark to refer to the plaintiff • Statutory basis: 43(c)(3)(A) • Problem: “under this subsection”

Greg R. Vetter • www.gregvetter.org 212 Trademarks, Spring 2016 “Classic” Fair Use

33(b)(4) (15 USC 1115(b)(4)) • [The registration shall be subject to the following defenses of defects:] “That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin,” • Court parsing • The fair use defense requires that the Defendants show that their use of the Phrase was “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” EMI Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir. 2000) •

Greg R. Vetter • www.gregvetter.org 213 Trademarks, Spring 2016

KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111(2004)

Greg R. Vetter • www.gregvetter.org 214 Trademarks, Spring 2016 KP Permanent Make‐Up v. Lasting Impression (U.S. 2004)

• KP alleged microcolor use since 1990/91 • Lasting 1992 application for Micro Colors, issued in 1993, “incontestable” in 1999

• In 1999, KP’s use of microcolor in ad brochure

• Dist. Ct. – on S/J, descriptive fair use, no confusion inquiry • 9th – KP must also prove absence of confusion? • Supreme Court?

Greg R. Vetter • www.gregvetter.org 215 Trademarks, Spring 2016

KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)

“[I]t is only when a plaintiff has shown likely confusion by a preponderance of the evidence that a defendant could have any need of an affirmative defense, but under Lasting's theory the defense would be foreclosed in such a case. ‘[I]t defies logic to argue that a defense may not be asserted in the only situation where it even becomes relevant.’ Shakespeare Co. v. Silstar Corp., 110 F. 3d, at 243.” Id. at 118

Greg R. Vetter • www.gregvetter.org 216 Trademarks, Spring 2016 Dessert Beauty, Inc. v. Fox, 568 F.Supp.2d 416 (S.D.N.Y. 2008) to avail itself of the fair use defense, DBI must have made use of Fox’s LOVE POTION mark

(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith

Greg R. Vetter • www.gregvetter.org 217 Trademarks, Spring 2016

Sorensen v. WD‐40 Company (7th Cir. Feb. 25, 2015)

• Sorensen mark for corrosion inhibitor product: • THE INHIBITOR • Contains VCI substance • Defendant’s use of mark: • “WD–40 Specialist Long–Term Corrosion Inhibitor” • And cross‐hair symbol • 7th • Descriptive fair use available for incontestable marks • Was this use descriptive fair use?

Greg R. Vetter • www.gregvetter.org 218 Trademarks, Spring 2016 International Stamp Art, Inc. v. United States Postal Service (11th Cir. 2006)

Greg R. Vetter • www.gregvetter.org 219 Trademarks, Spring 2016

Greg R. Vetter • www.gregvetter.org 220 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 221 Trademarks, Spring 2016

Bell v. Harley Davidson Motor Co. (S.D.C.A. 2008)

• Mark registrations by Bell for: • RIDE HARD • Apparel, decals, other merchandise

• Use as a mark? • Use in descriptive sense? • Good faith?

Greg R. Vetter • www.gregvetter.org 222 Trademarks, Spring 2016 Fortune Dynamic, Inc. v. Victoria’s Secret (9th Cir. 2010)

• Fortune • Mark: DELICIOUS • Product: women’s shoes

• Victoria’s Secret • Mark: BEAUTY RUSH • Promotional shirts for that product line

• 9th reverses the district court’s grant of summary judgment for Victoria’s Secret descriptive fair use defense

Greg R. Vetter • www.gregvetter.org 223 Trademarks, Spring 2016

Simple examples of classic fair use • Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 14 U.S.P.Q.2d 1645 (S.D.N.Y. 1990) (“The dentists' choice for fighting cavities” for toothbrushes is fair use of plaintiff's trademark DENTIST‘S CHOICE for toothbrushes) • Western Publishing Co. v. Rose Art Industries, Inc., 733 F. Supp. 698, 14 U.S.P.Q.2d 2059 (S.D.N.Y. 1990) (“golden” describing the gold color of children's writing slate not an infringement of plaintiff's mark GOLDEN for children's books and toys) • Playboy Enterprises, Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066 (S.D. Cal. 1999), aff'd in part, rev'd in part on other grounds, 279 F.3d 796 (9th Cir. 2002) (Defendant Terri Welles was Playboy “Playmate of the Year” in 1981. Court held that her use of the words “Playmate of the Year 1981” in her title on her homepage and ‘'Playboy Playmate of the Year 1981’ and ‘Playmate of the Year 1981’ in her advertising banners fell within the classic fair use defense. “Her public persona is based on these titles and … [they] accurately describe her… . [T]he court cannot say that Ms. Welles took more than was necessary to merely identify herself or her goods.”)

Greg R. Vetter • www.gregvetter.org 224 Trademarks, Spring 2016 Toyota Motor Sales, U.S.A., Inc. v. Tabari (9th 2010)

• New Kids test instead of Sleekcraft • (1) the product was “readily identifiable” without use of the mark • (2) defendant used more of the mark than necessary; or • (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder • “If the nominative use does not satisfy all the New Kids factors, the district court may order defendants to modify their use of the mark so that all three factors are satisfied; it may not enjoin nominative use of the mark altogether”

Greg R. Vetter • www.gregvetter.org 225 Trademarks, Spring 2016

Tiffany (NJ) Inc. v. eBay, Inc. (2d Cir. 2010) • Nominative fair use analysis • Will something other than the Polaroid factors apply? • “We have recognized that a defendant may lawfully use a plaintiff's trademark where doing so is necessary to describe the plaintiff's product and does not imply a false affiliation or endorsement by the plaintiff of the defendant.”

Greg R. Vetter • www.gregvetter.org 226 Trademarks, Spring 2016