Trademark basics
• Signal a common source, or at least affiliation Trademarks Service Marks Certification Collective Marks Geographic • Words, phrases, logos . . . Marks Indications • 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 Greg R. Vetter • www.gregvetter.org 2 Trademarks, Spring 2016 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.
http://www.interbrand.com/en/best-global-brands/2012/Best-Global-Brands-2012-Brand-View.aspx
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Trademark protection • Distinctive • Not disqualified • Used in commerce
• Not required: • registration • Form of symbol can vary greatly
Greg R. Vetter • www.gregvetter.org 5 Greg R. Vetter • www.gregvetter.org 6 Trademarks, Spring 2016 Trademarks, Spring 2016 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) Trademark continuum of distinctiveness for word marks Generic DescriptiveSuggestive Arbitrary / Fanciful / Coined • Safari mark aspirin • 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 “Brilliant” for “Brilliant” for “Brilliant” for • Suggestive or descriptive for boots / shoes diamonds shoe polish canned apple • But, “incontestable” sauce
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Descriptive? Genericness
character function feature quality ingredient nature purpose use characteristics dimensions, color, odor. . .
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Generic‐ness 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 11 Greg R. Vetter • www.gregvetter.org 12 Trademarks, Spring 2016 Trademarks, Spring 2016 Zatarain’s Zatarain’s • Fish‐Fri • Chick‐Fri • Suggestive or generic – either side of descriptiveness • Classification? • Dictionary ‐ ordinary significance and meaning of the words • Imagination test • Secondary meaning? • 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?
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Innovation Ventures, LLC v. N.V.E., Inc. 694 F.3d 723, 729‐730 (6th Cir. 2012) “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).
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Certification Marks Collective Marks
• The term ''certification mark'' means any word, name, symbol, or device, or any combination • The term ''collective mark'' means a trademark or service mark – thereof – • (1) used by the members of a cooperative, an association, or other collective group or organization, or • (1) used by a person other than its owner, or • (2) which such cooperative, association, or other collective group or organization has a bona fide intention to use • (2) which its owner has a bona fide intention to permit a person other than the owner to use in in commerce and applies to register on the principal register established by this chapter, commerce and files an application 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 • to certify • regional or other origin, • Two possible functions of the collective mark with respect to the association, union, cooperative, fraternal • material, organization or other organized collective group using the mark: • mode of manufacture, • As a mark adopted for use only by its members, who in turn use the mark to identify goods or services – mostly • quality, treated as ordinary trademarks/service marks • accuracy, • Solely to identify the person displaying a mark as a member of the collective group – a membership mark • 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 • The term ''mark'' includes any trademark, service mark, collective mark, or certification mark. 15 U.S.C. § 1127 • Must be open to any producer that meets the standards.
Greg R. Vetter • www.gregvetter.org 17 Greg R. Vetter • www.gregvetter.org 18 Trademarks, Spring 2016 Trademarks, Spring 2016 Classifying other types of marks Lanham Act – Important Sections • Surnames • 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 • Acronyms • Section 32, 15 U.S.C. § 1114: Infringement of registered marks • Section 43(a), 15 U.S.C. § 1125(a): Infringement of unregistered marks • Domain names • Section 43(c), 15 U.S.C. § 1125(c): Dilution of marks (registered or unregistered) • Section 45, 15 U.S.C. § 1127: Definitions • Foreign Equivalents
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Acquired Distinctiveness of Source Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. (5th Cir. 1983) • Rough synonyms • Approaches to determining whether a mark is descriptive (rather than Imagine a situation in which Company David, after a suggestive/arbitrary): • Secondary meaning great deal of market research, adopts an especially • Trademark meaning good descriptive mark and initiates a small‐scale • Dictionary definition launch of the descriptive mark in the marketplace. • Imagination test • Acquired distinctiveness Company Goliath then becomes aware of Company • Acquired trademark meaning David’s mark, adopts the mark as its own, and • Competitive need immediately spends enormous resources building up • Third‐party uses secondary meaning in the mark, so that when consumers see the mark, they think of Company • See also TMEP 1209.03 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)
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Frosty Treats Inc. v. Sony Computer Entertainment America (8th Cir. 2005) Cartier, Inc. v. Four Star Jewelry Creations, Inc. (S.D.N.Y. 2004)
• Alleged infringement is use in a video • Discussion of survey evidence as to whether the designs had acquired game distinctiveness • 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 Greg R. Vetter • www.gregvetter.org 24 Trademarks, Spring 2016 Trademarks, Spring 2016 Summary of Distinctiveness Doctrine So Far Genericness . . .
• 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
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Genericness . . . 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
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Frito‐Lay North America, Inc. v. Princeton Vanguard, LLC, (Fed. Cir. May 15, 2015) Thermos Survey • Compound term proposed as mark versus • 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 understanding the term in its entirety lemonade, hot or cold for a period of time? • TTAB differentiation of compound term versus • If you were going to buy one of these containers tomorrow— that is, the type that keeps food and phrase 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 Specifically, as explained below, there is no evidence that the result of follow‐up questions, 12% said they thought that “Thermos” had some trademark Board conducted the necessary step of comparing its findings with significance. respect to the individual words to the record evidence • Can you think of any other words that you would use to ask for a container that keeps liquids hot or demonstrating the public’s understanding of the combined term: cold? 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 Greg R. Vetter • www.gregvetter.org 30 Trademarks, Spring 2016 Trademarks, Spring 2016 Teflon Survey 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.]
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Lindows . . . 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
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Overview – Trade Dress Two Pesos, Inc. v. Taco Cabana, Inc. (1992) • Footnote 1: “‘Trade dress’ is the • Two Pesos (1992) Trade dress may be inherently distinctive and protectable total image of the business. without a showing of secondary meaning Taco Cabana’s trade dress may • Rejects 2d Circuit view that unregistered trade dress requires a showing of secondary meaning even if it is inherently distinctive include the shape and general appearance of the exterior of • Qualitex (1995): Trade dress that consists of a color alone cannot be the restaurant, the identifying inherently distinctive and must have secondary meaning sign, the interior kitchen floor • Samara Bros. (2000): plan, the decor, the menu, the • Product‐packaging trade dress can be inherently distinctive and does not require a equipment used to serve food, showing of secondary meaning the servers’ uniforms and other • Product‐configuration trade dress cannot be inherently distinctive and requires a features reflecting on the total showing of secondary meaning image of the restaurant.’’ • Partially accepts 2d Circuit view?
Greg R. Vetter • www.gregvetter.org 35 Greg R. Vetter • www.gregvetter.org 36 Trademarks, Spring 2016 Trademarks, Spring 2016 Two Pesos, Inc. v. Taco Cabana, Inc. (1992) Two Pesos, Inc. v. Taco Cabana, Inc. (1992)
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Two Pesos, Inc. v. Taco Cabana, Inc. (1992) Two Pesos, Inc. v. Taco Cabana, Inc. (1992)
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Two Pesos, Inc. v. Taco Cabana, Inc. (1992) 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 41 Greg R. Vetter • www.gregvetter.org 42 Trademarks, Spring 2016 Trademarks, Spring 2016 Qualitex Co. v. Jacobson Products Co., Inc. (1995) Qualitex Co. v. Jacobson Products Co., Inc. (1995) • Can “color alone” be a trademark? • Jacobson’s counter‐arguments • Test for a functional characteristic • Definition of “trademark” in • Shade confusion • Traditional rule – functional design Lanham act? • Courts can make these • essential to the use or purpose, OR • Restrictive? (shape, sound, distinctions • affects the cost or quality fragrance) • Limited supply of colors • Aesthetic functionality • Status of color as a trademark • Functionality doctrine • if exclusive use would put competitors at a • No need for color alone to be a significant non‐reputation‐related disadvantage • If it obtains secondary meaning? trademark – it can be part of a • • If it does not? trademark and producers can also See TrafFix • Can color be inherently distinctive? rely on trade dress • Functional use of color: • What if the color has functional • trademark is more helpful than • Black for a boat’s outboard motor; green for farm characteristics? trade dress machinery • Interaction with patent law?
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Wal‐Mart Stores, Inc. v. Samara Bros., Inc. (2000) In re Slokevage 441 F.3d 957 (Fed. Cir. 2006) • 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
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In re Slokevage 441 F.3d 957 (Fed. Cir. 2006) McKernan v. Burek (D.Mass. 2000)
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 Greg R. Vetter • www.gregvetter.org 48 Trademarks, Spring 2016 Trademarks, Spring 2016 Best Cellars, Inc. v. Wine Made Simple, Inc. (S.D.N.Y. 2003) Fedders Corp. v. Elite Classics (S.D. Ill. 2003)
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In re Brouwerij Bosteels (TTAB 2010) Art Attacks Ink, LLC v. MGA Entertainment Inc. (9th Cir. 2009)
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Question . . . 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 53 Greg R. Vetter • www.gregvetter.org 54 Trademarks, Spring 2016 Trademarks, Spring 2016 Seabrook Foods, Inc. v. Bar‐Well Foods Ltd. (C.C.P.A. 1977) Example of “mere ornamentation” • Note further that if a court finds a feature of • Seabrook Foods, Inc. v. Bar‐Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977) product packaging to lack both inherent and acquired distinctiveness or a feature of product “In determining whether a design is arbitrary or distinctive this court has looked configuration to lack acquired distinctiveness, to then the court will often (but not always) deem – whether it was a ‘common’ basic shape or design, the feature to be “mere ornamentation.” For example, in In re Lululemon Athletica Canada, – whether it was unique or unusual in a particular field, Inc., 105 U.S.P.Q.2d 1684 (TTAB 2013), the TTAB analyzed the wave design for apparel shown – whether it was a mere refinement of a commonly‐adopted and well‐known below. The TTAB did not apparently consider the form of ornamentation for a particular class of goods viewed by the public as a design to be product configuration (and thus per dress or ornamentation for the goods, or se incapable of inherent distinctiveness). It nevertheless found that the design lacked – whether it was capable of creating a commercial impression distinct from the inherent distinctiveness and acquired accompanying words.” distinctiveness and would be perceived by consumers as mere ornamentation.
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Fun‐Damental Too, Ltd. v. Gemmy Industries Corp. (2d Cir. 1997) Amazing Spaces, Inc. v. Metro Mini Storage (5th Cir. 2010) • 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.
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Amazing Spaces, Inc. v. Metro Mini Storage (5th Cir. 2010) 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 59 Greg R. Vetter • www.gregvetter.org 60 Trademarks, Spring 2016 Trademarks, Spring 2016 Functionality . . . Functionality Overview • Utilitarian Functionality In re Morton Norwich Products, Inc., 671 F.2d 1332 (CCPA 1982) • Morton‐Norwich [_NOT ASSIGNED_] • establishes 4 Morton‐Norwich factors • Most important Morton‐Norwich factor is 3d factor, availability of alternative designs • What aspects of product design are protectable as a trademark? • Qualitex: equates Inwood’s “essential to use or purpose” with competitive need • TrafFix Devices • Functionality ‐> utility ‐> • emphasizes Inwood’s “essential to use or purpose” test and minimizes • competitors need to use the design – no necessity to copy importance of availability of alternative designs • Because it is superior? • if product feature is “essential to use or purpose”, no need to consider • Because there are no other plausible alternatives? alternative designs • No evidence product feature was dictated by functions to be performed • implies that a product feature can be “essential to use or purpose” and thus • Will granting exclusive rights hinder competition? functional even if there are alternative designs • Circuit split after TrafFix Devices • Distinctiveness is a separate inquiry from functionality • 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 • Effect of patent on mechanism inside spray head? consider whether product feature is a “competitive necessity”
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Functionality Overview Recent History of Utilitarian Functionality Doctrine
• Aesthetic Functionality • In re Morton‐Norwich, 671 F.2d 1332 (C.C.P.A. Feb. 18, 1982) • Wallace Int’l Silversmiths • Rejects Pagliero’s “important ingredient in commercial success” test • “[T]he question in each case is whether • Embraces availability of alternative designs test protection against imitation will hinder the • TrafFix Devices: competitor in competition” (Fruehauf) • Claims that Qualitex was an aesthetic functionality case • “inhibit competition in any way” (Fotomat) • In cases of aesthetic functionality, “it is proper to inquire into a ‘significant • A design of goods is functional if it “affects their non‐reputation‐related disadvantage.” That is, courts should apply the purpose, action or performance, or the facility or availability of alternative designs / competitive necessity test. 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)
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Recent History of Utilitarian Functionality Doctrine Recent History of Utilitarian Functionality Doctrine
• In re Morton‐Norwich, 671 F.2d 1332 (C.C.P.A. Feb. 18, 1982) • In re Morton‐Norwich, 671 F.2d 1332 (C.C.P.A. Feb. 18, 1982)
• “[A] molded plastic bottle can have an infinite Morton‐Norwich Factors variety of forms or designs and still function to 1. Existence of expired utility patent hold liquid. No one form is necessary or appears 2. Utilitarian advantages touted in to be ‘superior.’” • “While that design must be accommodated to advertising the functions performed, we see no evidence 3. Availability of alternative designs that it was dictated by them and resulted in a 4. Manufacturing advantages functionally or economically superior design of such a container.”
Greg R. Vetter • www.gregvetter.org 65 Greg R. Vetter • www.gregvetter.org 66 Trademarks, Spring 2016 Trademarks, Spring 2016 Recent History of Utilitarian Functionality Doctrine Recent History of Utilitarian Functionality Doctrine • Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 (June 1, 1982) • 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.”
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Recent History of Utilitarian Functionality Doctrine Recent History of Utilitarian Functionality Doctrine
• TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) • 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.”
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WindMaster WindBuster Recent History of Utilitarian Functionality Doctrine TrafFix Devices v. MDI
• 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 Greg R. Vetter • www.gregvetter.org 72 Trademarks, Spring 2016 Trademarks, Spring 2016 TrafFix Devices v. MDI Two Lines of Case Law
• What is being asserted as a mark? • Trade dress of the dual spring system • Valu Engineering, Inc. v. Rexnord Corp., 278 F.3d 1268 (Fed. Cir. 2002) • 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) • Eppendorf‐Netheler‐Hinz GmBH v. Ritter GmBH, 289 F.3d 351 (5th Cir. 2002) • Does it matter whether it is trade dress (which can be inherently distinctive) or product design/configuration • Talking Rain Beverage v. South Beach Beverage Co., 349 F.3d 601 (9th Cir. 2003) (or a fusion of Valu (which cannot)? Engineering and TrafFix?) • Neither is protectable under trademark law if functional • Antioch Co. v. Western Trimming Corp., 347 F.3d 150 (6th Cir. 2003) • Implications of “alternative designs”? • Eco Mfg. LLC v. Honeywell Int’l Inc., 357 F.3d 649 (7th Cir. 2003) (?)
• 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 Greg R. Vetter • www.gregvetter.org 74 Trademarks, Spring 2016 Trademarks, Spring 2016
Eppendorf‐Netheler‐Hinz GmBH v. Ritter GmBH, 289 F.3d 351 (5th Cir. 2002) Apple, Inc. v. Samsung Electronics Co. Ltd. (Fed. Cir. May 18, 2015) • “Thus, the fins are design elements • “we reverse the jury’s findings that the necessary to the operation of the asserted trade dresses are protectable.” product.” • “While the parties argue without • The product feature is not a “competitive distinguishing the two trade dresses, the necessity,” but is simply necessary to the unregistered trade dress and the registered ′983 trade dress claim different operation of the product. 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 75 Greg R. Vetter • www.gregvetter.org 76 Trademarks, Spring 2016 Trademarks, Spring 2016
Specialized Seating, Inc. v. Greenwich Industries, L.P. (7th Cir. 2010) 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 77 Greg R. Vetter • www.gregvetter.org 78 Trademarks, Spring 2016 Trademarks, Spring 2016 Aesthetic functionality In re Florists’ Transworld Delivery, Inc., Serial No. 77590475 (T.T.A.B. Mar. 28, 2013) (precedential) • 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 Greg R. Vetter • www.gregvetter.org 80 Trademarks, Spring 2016 Trademarks, Spring 2016
In re Florists’ Transworld Delivery, Inc., Serial No. 77590475 Pagliero v. Wallace China Co. (9th Cir. 1952) (T.T.A.B. Mar. 28, 2013) (precedential) • 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.
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Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co. (2d Cir. 1990) Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. 696 F.3d 206 (2d Cir. 2012) • “Although we agree with Judge Haight’s • As set forth below, the test for aesthetic functionality decision, we do not endorse his reliance upon is threefold: At the start, we address the two prongs of the Inwood test, asking whether the design feature is Pagliero. . . . . Our rejection of Pagliero, either “essential to the use or purpose” or “affects the however, does not call for reversal. Quite cost or quality” of the product at issue. Next, if unlike Pagliero, Judge Haight found in the necessary, we turn to a third prong, which is the instant matter that there is a substantial competition inquiry set forth in Qualitex. In other market for baroque silverware and that words, if a design feature would, from a traditional utilitarian perspective, be considered “essential to the effective competition in that market requires use or purpose” of the article, or to affect its cost or “use [of] essentially the same scrolls and quality, then the design feature is functional under flowers” as are found on Wallace's silverware.” Inwood and our inquiry ends. But if the design feature is not “functional” from a traditional perspective, it • “whatever secondary meaning Wallace's must still pass the fact‐intensive Qualitex test and be baroque silverware pattern may have shown not to have a significant effect on competition acquired, Wallace may not exclude in order to receive trademark protection. See, e.g., competitors from using those baroque design Industria Arredamenti Fratelli Saporiti v. Charles Craig, Ltd., 725 F.2d 18, 19 (2d Cir.1984) (interlocking design elements necessary to compete in the market of couch cushions was a visual “label” but served a for baroque silverware.” utilitarian purpose by keeping cushions in place and was therefore functional).
Greg R. Vetter • www.gregvetter.org 83 Greg R. Vetter • www.gregvetter.org 84 Trademarks, Spring 2016 Trademarks, Spring 2016 Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc. Deceptive and Deceptively Misdescriptive Marks 696 F.3d 206 (2d Cir. 2012) • 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 85 Greg R. Vetter • www.gregvetter.org 86 Trademarks, Spring 2016 Trademarks, Spring 2016
In re Budge Manufacturing Co., Inc., 857 F.2d 773 ( Fed. Cir. 1988) In re California Innovations Inc., 329 F.3d 1334 (Fed. Cir. 2003)
• (1) Is the term misdescriptive of the Due to the NAFTA changes in the Lanham Act, the PTO must character, quality, function, composition or deny registration under § 1052(e)(3) if use of the goods? (1) the primary significance of the mark is a generally known geographic • (2) If so, are prospective purchasers likely to location, believe that the misdescription actually (2) the consuming public is likely to believe the place identified by the describes the goods? mark indicates the origin of the goods bearing the mark, when in fact • (3) If so, is the misdescription likely to affect the goods do not come from that place, and the decision to purchase? (3) the misrepresentation was a material factor in the consumer's decision.
• What evidence makes the prima facie case?
Greg R. Vetter • www.gregvetter.org 87 Greg R. Vetter • www.gregvetter.org 88 Trademarks, Spring 2016 Trademarks, Spring 2016
Review . . . Diagram for • Deceptively misdescriptive vs. deceptive marks geographic 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 Greg R. Vetter • www.gregvetter.org 90 Trademarks, Spring 2016 Trademarks, Spring 2016 In re Old Glory Condom Corp., 26 USPQ2d 1216 (TTAB 1993) In re Marsha Fox (Fed. Cir. 2012) • Filed in 1989 • Serial No. 76315793 • Since 1979, Fox has used this mark to sell • Registered in 1993 rooster‐shaped chocolate lollipops • LaLonde on TTABlog: “The unrelated word • Cancelled in 2004 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.” unassigned
Greg R. Vetter • www.gregvetter.org 91 Greg R. Vetter • www.gregvetter.org 92 Trademarks, Spring 2016 Trademarks, Spring 2016
Other examples . . . In re Heeb Media, LLC (TTAB 2008)
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McDermott v. San Francisco Women's Motorcycle Contingent, 240 Fed. Appx. 865 (Fed. Cir. 2007), cert denied, 552 U.S. 1109 (2008) In re Tam (Fed. Cir. 2015)
Greg R. Vetter • www.gregvetter.org 95 Greg R. Vetter • www.gregvetter.org 96 Trademarks, Spring 2016 Trademarks, Spring 2016 Impact on . . . ? 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 97 Greg R. Vetter • www.gregvetter.org 98 Trademarks, Spring 2016 Trademarks, Spring 2016
In re Nieves & Nieves LLC (TTAB 2015) Use in commerce modalities
• Proposed Intent‐to‐Use mark: • “Use in commerce” as jurisdictional requirement • ROYAL KATE • 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) • To determine whether Applicant’s ROYAL KATE mark falsely suggests a connection with Kate • Coca‐Cola Co. v. Stewart, 621 F.2d 287, 290 (8th Cir. 1980) (where restaurant substituted Middleton under Section 2(a), the Board other beverages for coke, “‘in commerce’ refers to the impact that infringement has on analyzes whether the evidence of record satisfies interstate use of a trademark; it does not mean that an infringer is immune from prosecution the following four‐part test: under the statute so long as he keeps his infringement entirely within the confines of a • Whether Applicant’s mark ROYAL KATE is the same as or a close approximation of Kate Middleton’s state.”) previously used name or identity; • Whether Applicant’s mark ROYAL KATE would be • “Use in commerce” as requirement for exclusive rights recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton; • Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) • Whether Kate Middleton is not connected with the • Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) goods that will be sold by Applicant under its mark; and • “Use in commerce” for purposes of determining whether a mark owner has • Whether Kate Middleton’s name or identity is of sufficient fame or reputation that when Applicant’s abandoned its rights mark is used on Applicant’s goods, a connection with Kate Middleton would be presumed. • “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 99 Greg R. Vetter • www.gregvetter.org 100 Trademarks, Spring 2016 Trademarks, Spring 2016
Aycock Engineering, Inc. v. Airflite, Inc., (Fed. Cir. 2009) Planetary Motion, Inc. v. Techsplosion, Inc. (11th Cir. 2001)
• Was Aycock’s pre‐sales conduct enough to • Timeline: meet the “use in commerce” prerequisite • December 31, 1994: Darrah releases Coolmail under GNU license for exclusive rights? • 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. • Federal Circuit follows the “traditional rule • April 24, 1998: Planetary Motion files three ITU applications. … that use of a symbol in steps preliminary • April 22, 1999: Planetary Motion sues Techplosion for infringement. to establishing a business does not establish • July 1999: Planetary Motion purchases all of Darrah’s rights in Coolmail. a priority date or a use sufficient for federal • Issue: Was Darrah’s (Planetary Motion’s) distribution in 1994 and subsequent conduct sufficient to establish registration.” (McCarthy) “use in commerce” before Techplosion’s first use in commerce? • See, e.g., In re Cedar Point, Inc., 220 USPQ 533 • “Totality of circumstances” test (TTAB 1983) • “Under the ‘totality of circumstances’ analysis, a party may establish ‘use in commerce’ even in the • Slightly heightened requirement of use after absence of sales.” unassigned • “The sufficiency of use should be determined according to the customary practices of a particular 1989. industry.”
Greg R. Vetter • www.gregvetter.org 101 Greg R. Vetter • www.gregvetter.org 102 Trademarks, Spring 2016 Trademarks, Spring 2016 • Lanham Act § 1(a): the applicant is already making actual use of the mark in Flow of registration process commerce; • Lanham Act § 1(b): the applicant has a bona fide intent to use the mark in commerce in the near future; http://www.uspto.gov/trademark/trademark‐timelines/trademark‐application‐and‐post‐registration‐process‐timelines • 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; • 1(b) Basis • Lanham Act § 44(e): the applicant • 1(a) Basis – possesses a registration of the mark in the – Application Application applicant’s country of origin; – – Examination Examination • Lanham Act § 66(a): the applicant requests – extension of protection of an international – Publication Publication registration under the Madrid System for – Opposition (if brought) the international registration of – Opposition (if brought) – trademarks. – Registration Statement of Use – Registration
Greg R. Vetter • www.gregvetter.org 103 Greg R. Vetter • www.gregvetter.org 104 Trademarks, Spring 2016 Trademarks, Spring 2016
The PTO
End of FY 2012
Greg R. Vetter • www.gregvetter.org 105 Greg R. Vetter • www.gregvetter.org 106 Trademarks, Spring 2016 Trademarks, Spring 2016
Greg R. Vetter • www.gregvetter.org 107 Greg R. Vetter • www.gregvetter.org 108 Trademarks, Spring 2016 Trademarks, Spring 2016 Greg R. Vetter • www.gregvetter.org 109 Greg R. Vetter • www.gregvetter.org 110 Trademarks, Spring 2016 Trademarks, Spring 2016
Greg R. Vetter • www.gregvetter.org 111 Greg R. Vetter • www.gregvetter.org 112 Trademarks, Spring 2016 Trademarks, Spring 2016
Advantages of Registration Maintaining a Registration
• Date of filing of registration establishes constructive use priority (Section 7(c)) • Various Declarations and Applications • Registration certification is prima facie evidence of validity, ownership, and • Section 8 Declaration of Continuing Use registrant’s exclusive rights (Section 7(b)) • Section 15 Declaration of Incontestability • Section 9 Renewal Application • Registration starts clock running for purposes of incontestability (Sections 15 and 33) and limits on cancellation (Section 14) • During 6th year from date of registration: • Other miscellaneous advantages • 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 113 Greg R. Vetter • www.gregvetter.org 114 Trademarks, Spring 2016 Trademarks, Spring 2016 Geographic Scope Common Law Priority: Two c/l users of the same TM United Drug Co. v. Theodore Rectanus Co., 248 U.S. c/l rule – only protected where products sold or 90 (1918) advertised United Rectanus Exceptions: Where reputation 1870 established 1877- Regis sells product under REX Normal expansion of in MA business 1880 Anywhere someone 1883 - Uses REX for intentionally trades on blood purifier in KY the TM owner’s 1890 goodwill 1898- State TM Earlier user has superior rights in area 1900 - Fed TM 1900 of overlap
1912 - REX 1910 User One shipped to KY User Two Greg R. Vetter • www.gregvetter.org 115 Greg R. Vetter • www.gregvetter.org 116 Trademarks, Spring 2016 Trademarks, Spring 2016
Common Law Priority: Priority: Section 7(c), Section 22, and Section United Drug Co. v. Theodore Rectanus Co., 248 U.S. 33(b)(5) 90 (1918)
• “There is no such thing as property in a trade‐mark except as a right • Section 7(c): as of date of application, “constructive use of the mark, appurtenant to an established business or trade in connection with which conferring a right of priority, nationwide in effect” the mark is employed. The law of trade‐marks is but a part of the broader • Effective Nov. 16, 1989 law of unfair competition; the right to a particular mark grows out of its use, • Section 22: as of date of registration, “Registration of mark on the principal not its mere adoption; its function is simply to designate the goods as the register provided by this chapter or under the Act of March 3, 1881, or the product of a particular trader and to protect his good will against the sale of Act of February 20, 1905, shall be constructive notice of the registrant's another's product as his; and it is not the subject of property except in claim of ownership thereof.” connection with an existing business.” • Section 33(b)(5): intermediate junior user defense
Greg R. Vetter • www.gregvetter.org 117 Greg R. Vetter • www.gregvetter.org 118 Trademarks, Spring 2016 Trademarks, Spring 2016
Senior uses and registers, then Junior uses Senior uses, Junior uses, then Senior registers • Facts: • Facts: • Senior uses and then applies for and receives registration • Senior uses • Junior uses • Junior uses • Senior files suit against Junior • Senior applies for and receives registration • What result? Senior has nationwide priority under Section 7(c) as of the • Senior sues Junior and vice‐versa. What result? date of application and can enjoin Junior from using anywhere. • Under 33(b)(5), Junior is frozen to its area of use as of the date of application. • 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 Greg R. Vetter • www.gregvetter.org 120 Trademarks, Spring 2016 Trademarks, Spring 2016 Senior uses, Junior uses, then Junior registers Concurrent Use • 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).
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Concurrent Use Dawn Donut Co., Inc. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)
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What‐a‐Burger, VA v. Whataburger, Corp. Chris., Tx, 357 F.3d 441 (4th Cir. Dawn Donut applied 2004)
• 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 Greg R. Vetter • www.gregvetter.org 126 Trademarks, Spring 2016 Trademarks, Spring 2016 Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Person’s Co., Ltd. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990) 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
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Person’s Co., Ltd. V. Christman (Fed. Cir. 1990) Christman develops PERSON’S line Christman US Christman US TM Person’s Co., Ltd. V. Christman (Fed. Cir. 1990) for US market, obtains opinion of TM Application issues counsel, US sales begin in April 1982 (April 1983) (Sept. 1984) ? • 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 1979 1980 1981 1982 1983 1984 1985 1986 “good faith” senior user in US commerce
Person’s Ltd. first sale to US Person’s Person’s Ltd. US Person’s Ltd. learns • Mark was not famous or known in US when adopted by Christman buyer for US distribution (Nov. of Christman, both Ltd. files for TM issues; engage • 1982) (7 months after US TM export company file at PTO for so no US goodwill or reputation upon which Christman could have intended to trade, rendering Christman) (1983) (1985) cancellation (1986) the unfair competition provisions of the Paris Convention inapplicable.
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 Greg R. Vetter • www.gregvetter.org 130 Trademarks, Spring 2016 Trademarks, Spring 2016
Person’s Co., Ltd. V. Christman (Fed. Cir. 1990) 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 Greg R. Vetter • www.gregvetter.org 132 Trademarks, Spring 2016 Trademarks, Spring 2016 A minor circuit split Review/Preview
• Buti v. Perosa, S.R.L., 139 F.3d 98 (2d Cir. 1998) • Tea Rose‐Rectanus common law priority • Impressa opened FASHION CAFE in Italy in 1987 and promoted the restaurant in the U.S. With t‐shirts, 1. The territorial scope of an unregistered mark is limited to the territory in which the mark is known and cards, and key chains. Impressa did not, however, open a restaurant in the U.S. recognized by relevant customers. • But opened FASHION CAFE in Miami in 1993. 2. The national senior user of an unregistered mark cannot stop the use of a territorially “remote” good faith • Result: Impressa had no rights in U.S. It made no difference whether Buti in 1993 knew or did not know national junior user who was first to use the mark in the remote territory. of Impressa's prior use in Italy. • Federal registration priority • Matt Haig, Brand Failures: The Truth about the 100 Biggest Branding Mistakes of All Times (2011) ("The • Section 7(c): as of date of application, “constructive use of the mark, conferring a right of priority, nationwide in connection between models and food was not an obvious one, and 'fashion' was not a theme that effect” made people feel hungry.“) • Effective Nov. 16, 1989 • But see International Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Estrangers a Monaco, 329 • Section 22: as of date of registration, “Registration of mark on the principal register provided by this chapter or F.3d 359 (4th Cir. 2003) under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's • Operators of online gambling websites sought declaration that their use of defendant's trademark claim of ownership thereof.” “Casino de Monte Carlo” was noninfringing • Section 33(b)(5): intermediate junior user defense • Result: Sale of services abroad to U.S. citizens by a foreign trademark owner, combined with • Dawn Donut 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. • 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 133 Greg R. Vetter • www.gregvetter.org 134 Trademarks, Spring 2016 Trademarks, Spring 2016
Paris Convention for the Protection of Industrial Property (1883), Article 6bis McDonald’s Corporation v. Joburgers Drive‐ Article 6bis Inn Restaurant (PTY), Case No. 547/95 Marks: Well‐Known Marks (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an (Supreme Court of South Africa 1996) 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 • McDonald’s had many registrations in SA, but “[w]hen the present 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 proceedings commenced, McDonald's had not traded in South Africa nor, we therewith. may assume for present purposes, had it used any of its trade marks here.” (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. • Finding MCDONALD’S to be well‐known for restaurant services under (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered Section 35 of 1995 Trade Marks Act or used in bad faith.
additional material above
Greg R. Vetter • www.gregvetter.org 135 Greg R. Vetter • www.gregvetter.org and beyond casebook 136 Trademarks, Spring 2016 Trademarks, Spring 2016
McDonalds v. JoBurgers (Appellate Division South Africa 1997) Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004)
• McDonalds SouthAfrica TM registrations under the Old Act • Is there a statutory basis for the court’s finding of famous marks protection?
• Joburgers application to expunge the McDonalds marks and register some of the same • What level of well‐knownness is required?
• 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 Greg R. Vetter • www.gregvetter.org 138 Trademarks, Spring 2016 Trademarks, Spring 2016 Int’l Protection of TM under Paris Int’l Protection of TM under Paris • Paris Convention – Acquisition of Rights • Paris Convention • Prohibited Signs • No TM on emblems of states, signs of control and guaranty, and emblems of int’l intergovernmental • National Treatment organizations [Art. 6ter.] • A member state may not subject foreigners benefiting from the Paris Convention to higher • Well Known Marks industrial property protection standards than those applicable to its own citizens • Even if not registered, have extended protection based on notoriety in country where protection is sought • Without National Treatment, a member country can subject a state’s nationals to stricter • Service Marks • Obligation to protect, but no obligation to provide registration, may be protected under unfair competition conditions, refuse to protect rights, require reciprocity, residence, fees, or other items [Art. 6sexies.] • Independence of Rights • Collective Marks • Takes national treatment principle to an extreme • Obligation to protect marks of associations, so long as its existence is not contrary to the law of the country of origin • TM ownership is governed exclusively by the national law of each country. • Association does not need to be established in country of protection. [Art. 7bis.] • Exceptions to independence are • Nature of goods to which the Mark is applied • (i) priority right and • Prohibition on impeding registration based on the nature of the goods (even if marketing of such goods are • (ii) protection of the TM “as such” ‐ when the mark would not meet the prerequisites for protection in prohibited) [Art. 7.] the target country, register it “as it is” • Specific Mention • For example, some countries allow registration of numbers or letters • Member states cannot require as a condition of protection that the product bear a specific mention of a TM registration [Art. 5D.] • Paris Union additional material above additional material above
Greg R. Vetter • www.gregvetter.org and beyond casebook 139 Greg R. Vetter • www.gregvetter.org and beyond casebook 140 Trademarks, Spring 2016 Trademarks, Spring 2016
Int’l Protection of TM under Paris Substantive Minima – Well Known Marks
• Paris Convention – Content of Rights • Use • 6bis(1) • 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).] • The countries of the Union undertake, ex officio if their legislation so permits, or at • Co‐Owners the request of an interested party, to refuse or to cancel the registration, and to • Simultaneous use by co‐owners shall not limit protection. • Grace Periods prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a • Must allow 6 months for payment of maintenance/renewal fees due. translation, liable to create confusion, of a mark considered by the competent • Conventions based on Paris authority of the country of registration or use to be well known in that country as • Madrid Agreement; Madrid Protocol being already the mark of a person entitled to the benefits of this Convention and • Paris Convention Contribution to TM law used for identical or similar goods. These provisions shall also apply when the • national treatment essential part of the mark constitutes a reproduction of any such well‐known mark or • minimal procedural mechanisms • to facilitate the acquisition of TM rights on multinational basis an imitation liable to create confusion therewith. • required “as is” acceptance of rights in a country • substantive minima in TM and unfair competition law • To some extent, a derogation of principle of territoriality
additional material above
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Well‐Known Marks TRIPS, Art. 16
• Under Art. 6bis(1): 1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the • a well‐known mark can be characterized as a mark which is known to a substantial owner's consent from using in the course of trade identical or similar signs for goods or services which are segment of the relevant public in the sense of being associated with the particular 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 goods or services likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior • Famous marks versus “well‐known” marks 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 Is there a difference? whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the • Some contend that famous marks have a higher degree of reputation relevant sector of the public, including knowledge in the Member concerned which has been obtained as a • Famous marks violate the “principle of speciality” result of the promotion of the trademark. • They have a broader scope of use against unauthorized use on non‐competing 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 goods or services relation to those goods or services would indicate a connection between those goods or services and the • Not possible to distinguish between famous/well‐known except as to the degree of owner of the registered trademark and provided that the interests of the owner of the registered trademark recognition required are likely to be damaged by such use.
additional material above * mutatis mutandis: (in comparing cases) making the necessary alterations
Greg R. Vetter • www.gregvetter.org and beyond casebook 143 Greg R. Vetter • www.gregvetter.org 144 Trademarks, Spring 2016 Trademarks, Spring 2016 TRIPS, Art. 16 Overview of Trademark Infringement • Prevent confusing uses of an identical or similar mark on identical or similar goods • Actionable use • A presumption of confusion arises when identical marks are used on identical goods • Likelihood of confusion • Unlike under the Paris Convention, however, TRIPS service marks receive • Forward confusion protection equal to that of marks affixed to goods or trade names • Initial interest confusion • Owners of well‐known marks obtain additional protection on dissimilar • Post‐sale confusion goods • Reverse confusion • Well‐known is not defined in TRIPS or Paris • Section 2(d) confusion • Application to unregistered marks? • Likelihood of dilution • Not required textually by Art. 16, but it is a minimum standard, so members can go • Dilution by blurring further • Dilution by tarnishment • UDRP / cybersquatting additional material above • Contributory infringement
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Likelihood of Confusion HYPO Types of confusion
1. strength of the mark 2. proximity of the goods • Confusion as to the products 3. similarity of the • Confusion leading to purchase of infringer’s product when trademark (“TM”) owner sells the same product marks 4. evidence of actual • Confusion as to source confusion • Infringer uses TM owner’s mark on products the TM owner does not sell at all 5. marketing channels used • Two possible types of harm: (i) potentially inferior quality of infringer’s products; (ii) if TM owner expands into 6. type of goods and the product area where infringer sells, very high chance of likelihood of confusion degree of care likely to be exercised by • Confusion as to sponsorship the purchaser • For example, United States Olympic 7. defendant's intent in Committee label on soup selecting the mark 8. likelihood of • Initial interest confusion expansion of the • Confusion that is dispelled before purchase occurs Soup product lines • 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
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Six aspects of “use in commerce”: Section 45 Definition of “Use in Commerce” 1. Commerce clause limitation The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to 2. Establishing priority [_in the earlier list entitled “Use in commerce modalities”, reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce— related to “requirement for exclusive rights”_] (1) on goods when— (actual use for common law rights; actual or constructive use for rights under federal (A) it is placed in any manner on the goods or their containers or the displays associated therewith or registration) on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on 3. Establishing ownership (who is the “user”?) [_in the earlier list entitled “Use in documents associated with the goods or their sale, and commerce modalities”, related to “requirement for exclusive rights”_] (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 4. Determining whether a mark has been abandoned (when does “use” stop?) commerce, or the services are rendered in more than one State or in the United States and a foreign country and the 5. Determining types of actionable use person rendering the services is engaged in commerce in connection with the services. • 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 (NB: The general view is that this definition was written to establish only what a plaintiff must do to establish trademark advertising of any goods or services…” (“…on or in connection with which such use is likely rights, not what a defendant must do to infringe those rights.) 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 Greg R. Vetter • www.gregvetter.org 150 Trademarks, Spring 2016 Trademarks, Spring 2016 Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) unassigned
• 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))
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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 unassigned 1/20/2008
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Bosley Medical Institute, Inc. v. Kremer, 403 F.3d Summary 672 (9th Cir. 2005) • 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 155 Greg R. Vetter • www.gregvetter.org 156 Trademarks, Spring 2016 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
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Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) The two‐dimensional model of trademark scope
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Lemley & McKenna, Irrelevant Confusion Louisiana State University v. Smack Apparel Co. (5th Cir. 2008) Whatever fraction of the total universe of trademark cases these cases constitute, there are • Follow Boston Hockey or Rainbow for Girls? 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. . . . • “Universities exercise stringent control over the use of their marks on 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 apparel through their licensing program. It is also undisputed that the objections seriously. Indeed many simply cave in and change their practices rather than face the Universities annually sell millions of dollars worth of licensed apparel. We uncertainty of a lawsuit. . . . further recognize the public’s indisputable desire to associate with college [W]e argue that courts can begin to rein in some of these excesses by focusing their attention on sports teams by wearing team‐related apparel.” 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 Greg R. Vetter • www.gregvetter.org 162 Trademarks, Spring 2016 Trademarks, Spring 2016 Multi Time Machine v. Amazon.com (9th Cir. July 6, 2015) initial interest and trade dress • Amazon does not carry MTM watches • Sixth Circuit declined to apply initial interest • But search on Amazon for MTM watches confusion to trade dress generates results • Why? • Initial interest confusion for Luminox watch? • Might pick a penumbra of shapes not otherwise qualifying for trademark protection • Dist. Ct. found no LofC, but 9th disagrees • Applies 8 Sleekcraft factors • Initial interest • Possible inference of affiliation between Luminox/competitor and MTM
PRS • Dissent Gibson Les Paul Greg R. Vetter • www.gregvetter.org 163 Greg R. Vetter • www.gregvetter.org 164 Trademarks, Spring 2016 Trademarks, Spring 2016
Reverse Passing Off 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 • involves situations in which a advertising states: “Produced and Distributed by: Entertainment Distributing ” (which is owned by Dastar), and makes no reference to the Crusade television series. Similarly, the “defendant falsely takes credit for screen credits state “DASTAR CORP presents” and “an ENTERTAINMENT DISTRIBUTING another’s goods or services” 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 • Policy considerations with other companies for $25 per set, substantially less than New Line's video set.” areas of IP • 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”?
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Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 205 (2003) 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 167 Greg R. Vetter • www.gregvetter.org 168 Trademarks, Spring 2016 Trademarks, Spring 2016 Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 LaPine v. Seinfeld (S.D.N.Y. 2009) F.3d 576 (7th Cir. 2005)
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Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576, 580‐81 (7th Cir. 2005) Lanham Act § 2(d) Confusion “No one makes a product from scratch, with trees and iron ore entering one • “The PTO’s test for determining whether Lanham Act § 2(d) bars a end of the plant and a finished consumer product emerging at the other. registration is essentially the same as the multifactor test for the likelihood Ford's cars include Fram oil filters, Goodyear tires, Owens‐Corning glass, Bose of confusion in the federal court litigation context” 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 • Factor treatment from TMEP 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.”
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Dilution – possible types or theories of harm Dilution – § 43(c) – remedies for dilution of famous marks (Act of 2006) Type “Tiffany” example (famous mark Other Example(s) for a jewelry store) [example (1) INJUNCTIVE RELIEF.—Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently th or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after described in a recent 7 circuit the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause case] dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or Blurring “Tiffany” for an upscale Goldfish likely confusion, of competition, or of actual economic injury. restaurant (2) DEFINITIONS.‐‐(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general Dupont shoes, Buick aspirin consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In tablets, Schlitz varnish, determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant Kodak pianos, Bulova gowns factors, including the following: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or Tarnishment “Tiffany” for a “restaurant” that is John Deere publicized by the owner or third parties. actually a “striptease joint” (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. Snuggles (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered . . . on the principal register. Victoria’s Secret
Greg R. Vetter • www.gregvetter.org 173 Greg R. Vetter • www.gregvetter.org 174 Trademarks, Spring 2016 Trademarks, Spring 2016 Dilution (Trademark Dilution Revision Act of 2006) I. What is Trademark Dilution? (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: • Frank Schechter (i) The degree of similarity between the mark or trade name and the famous mark. • Frank Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813 (ii) The degree of inherent or acquired distinctiveness of the famous mark. (1927) (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. • Frank Schechter, The Historical Foundations of the Law Relating to Trade‐Marks (1925) (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. • Limitations of the confusion as to source cause of action (vi) Any actual association between the mark or trade name and the famous mark. • “[I]f there is no competition, there can be no unfair competition,” Carroll v. Duluth Superior Milling (C) For purposes of paragraph (1), ‘dilution by tarnishment’ is association arising from the similarity between a mark or trade name and a famous Co., 232 F. 675, 681–82 (8th Cir. 1916). mark that harms the reputation of the famous mark. • “In each instance the defendant was not actually diverting custom from the plaintiff, and where (3) EXCLUSIONS.‐‐The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: the courts conceded the absence of diversion of custom they were obliged to resort to an (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 exceedingly laborious spelling out of other injury to the plaintiff in order to support their decrees.” designation of source for the person's own goods or services, including use in connection with‐‐ Schechter, Rational Basis, at 825. (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.
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I. What is Trademark Dilution? I. What is Trademark Dilution? • Frank Schechter • Frank Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 830 (1927) • Importance of advertising function of mark • The 1924 “Odol” mouthwash decision, Landesgericht Elberfeld
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I. What is Trademark Dilution? I. What is Trademark Dilution? • Schechter’s view of the vagaries of consumer‐perception basis for liability • Current antidilution theory of harm • “Any theory of trade‐mark protection which . . . does not focus the protective function • Search costs explanation: of the court upon the good‐will of the owner of the trade‐mark, inevitably renders “A trademark seeks to economize on information costs by providing a compact, memorable and such owner dependent for protection, not so much upon the normal agencies for the 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 creation of goodwill, such as the excellence of his product and the appeal of his product or service.” advertising, as upon the judicial estimate of the state of the public mind. This Richard Posner, When Is Parody Fair Use?, 21 J. Legal Studies 67, 75 (1992). 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 Greg R. Vetter • www.gregvetter.org 180 Trademarks, Spring 2016 Trademarks, Spring 2016 Peterson, Smith, & Zerillo, Trademark Dilution and the Practice of Marketing, 27 J. Acad. Marketing Sci. 255 (1999) I. What is Trademark Dilution? • “Brand dominance”: the probability that a brand will be recalled given its • History of Antidilution Cause of Action in the U.S. category as a retrieval cue • 1946: Lanham Act • Trucks? → Ford • Contained no antidilution provision • Watches? → Rolex • 1947: Massachusetts enacts first state antidilution statutory provision • “Brand typicality”: the probability that a category will be recalled given the • Currently 38 states provide for statutory antidilution protection, including New York, California, brand name as a retrieval cue and Illinois • Ford? → Trucks, cars • 1995: Federal Trademark Dilution Act • Nike? → Automobiles • 2006: Trademark Dilution Revision Act • 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))
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38 states with antidilution laws I. What is Trademark Dilution?
• Alabama • Alaska • Montana • Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) • Arkansas • Nebraska • reads actual dilution standard into FTDA • Arizona • New Hampshire • California • questions whether tarnishment is covered by FTDA • 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
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II. The 2006 Trademark Dilution Revision Act II. The 2006 Trademark Dilution Revision Act • Major reforms • Major reforms • Pro‐plaintiff • Pro‐plaintiff • establishes likelihood of dilution standard • establishes likelihood of dilution standard • provides that non‐inherently distinctive marks may qualify for protection • provides that non‐inherently distinctive marks may qualify for protection • explicitly states that blurring and tarnishment are forms of dilution • explicitly states that blurring and tarnishment are forms of dilution • Pro‐defendant • Pro‐defendant • rejects doctrine of “niche fame” • rejects doctrine of “niche fame” • expands scope of exclusions • expands scope of exclusions • Neutral • Neutral • reconfigures fame factors • reconfigures fame factors • sets forth factors for determining blurring • sets forth factors for determining blurring
Greg R. Vetter • www.gregvetter.org 185 Greg R. Vetter • www.gregvetter.org 186 Trademarks, Spring 2016 Trademarks, Spring 2016 Louis Vuitton Malletier v. Haute Diggity Dog, 507 II. The 2006 Trademark Dilution Revision Act • Elements of a blurring claim F.3d 252, 264‐65 (4th Cir. 2007) • 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
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Nike, Inc. v. Nikepal Int’l, Inc., 2007 WL 2782030 Coach Servs., Inc. v. Triumph Learning LLC (Fed. Cir. 2012) • Fame (E.D. Cal. 2007) • The trademark blurring cause of action • All relevant factors, including: • Mark must be “famous” to qualify; four factors • (i) The duration, extent, and geographic reach of • Six blurring factors advertising and publicity of the mark, whether • Similarity factor advertised or publicized by the owner or third • Can a defendant be liable both for confusion and for blurring? parties. • (ii) The amount, volume, and geographic extent of • Examples sales of goods or services offered under the mark. • 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 • (iii) The extent of actual recognition of the mark. denial of preliminary injunction based in part on holding that the challenged FEDERAL • (iv) Whether the mark was registered under the ESPRESSO was not sufficiently similar to FEDERAL EXPRESS.). Act of March 3, 1881, or the Act of February 20, • National Pork Board and National Pork Producers Council v. Supreme Lobster and 1905, or on the principal register. Seafood Company, 96 USPQ2d 1479 (TTAB 2010) [precedential] (“The Other Red Meat” for fresh and frozen salmon dilutes “The Other White Meat” for pork)
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Levi Strauss & Co. v. Abercrombie & Fitch Trading Starbucks Corp. v. Wolfe's Borough Coffee, Inc. (2d Cir. 2013) Co., 633 F.3d 1158 (9th Cir. 2011)
Greg R. Vetter • www.gregvetter.org 191 Greg R. Vetter • www.gregvetter.org 192 Trademarks, Spring 2016 Trademarks, Spring 2016 Levi Strauss & Co. v. Abercrombie & Fitch Trading V Secret Catalogue, Inc. v. Moseley (6th Cir. 2010) Co., 633 F.3d 1158 (9th Cir. 2011) • “Thus, the plain language of 15 U.S.C. § 1125(c) does not require that a • “We conclude that the new Act creates a plaintiff establish that the junior mark is identical, nearly identical or kind of rebuttable presumption, or at substantially similar to the senior mark in order to obtain injunctive relief. least a very strong inference, that a new Rather, a plaintiff must show, based on the factors set forth in § mark used to sell sex related products is 1125(c)(2)(B), including the degree of similarity, that a junior mark is likely to likely to tarnish a famous mark if there is impair the distinctiveness of the famous mark.” Id. at 1172 a clear semantic association between the • See also Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. two. That presumption has not been 2009) (holding that TDRA does not require heightened similarity) rebutted in this case.”
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A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) Tiffany (NJ) Inc. v. eBay, Inc. 600 F.3d 93 (2d Cir. 2010)
• Collective directory to show availability • Tiffany “buying programs” to test degree of counterfeit of currently connected client computers merchandise sold on eBay • Uploading file names violates • eBay anti‐counterfeiting measures, “fraud engine,” VeRO program, distribution right “About Me” page on eBay whose content is provided by Tiffany • Downloading files violates • eBay advertising of brands like Tiffany reproduction right • Dist. Ct. bench trial opinion in favor of eBay on: direct trademark infringement, contributory TM infringement, dilution, false • Fair Use? advertising • Purpose & character • Not transformative • Contributory TM infringement • Commercial • Intentionally induce or supply with KorRtoK of infringement (Inwood test) • But, the knowledge must be of specific acts of infringement • Nature of the work • Amount used additional material above • False advertising • Effect on market and beyond casebook • Only issue remanded to the Dist. Ct.
Greg R. Vetter • www.gregvetter.org 195 Greg R. Vetter • www.gregvetter.org 196 Trademarks, Spring 2016 Trademarks, Spring 2016
Tiffany (NJ) Inc. v. eBay, Inc. (2d Cir. 2010) Credit Card Service Provider Liability • Contributory 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 • Intentional inducement, or 12(b)(6) dismissal of contributory trademark infringement claim against credit card companies) • Knowledge and material contribution • “Perfect 10 has not alleged that Defendants have the power to remove infringing material from these • Setting equity considerations aside, who is the lowest‐cost enforcer of Tiffany’s rights? websites or directly stop their distribution over the Internet. At most, Perfect 10 alleges that • General knowledge versus specific knowledge 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 • Tiffany: Contributory defendant must have specific knowledge of infringing acts and fail to act on that constitute "direct control." See Lockheed Martin, 194 F.3d at 985 ("While the landlord of a flea market knowledge; general knowledge is not sufficient might reasonably be expected to monitor the merchandise sold on his premises, [defendant] NSI • Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 854 (1982) (“If a manufacturer or cannot reasonably be expected to monitor the Internet.") (citation omitted).” distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to • But see (Kozinski, J., dissenting) 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.“) • 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 • See also • Woodforest and Frontline (credit card processors) could be liable for knowledge and material • Louis Vuitton v. Akanoc Solutions, 658 F.3d 936 (9th Cir. 2011) (finding website host contributorily contribution contributory liability 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 Greg R. Vetter • www.gregvetter.org 198 Trademarks, Spring 2016 Trademarks, Spring 2016 AntiCyberSquatting Consumer Protection Act (ACPA) ACPA • McCarthy: “new category of ‘dilution’” • 15 U.S.C. 1125(d)(1)(A):
• Problems of LofC, dilution and unfair competition law with respect to A person shall be liable in a civil action by the owner of a mark, including a personal domain names name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person ‐ • ACPA: (i) has a bad faith intent to profit from that mark, including a personal name which is • Bad faith registration liability for registrant, not registrar protected as a mark under this section; and • In rem action (ii) registers, traffics in, or uses a domain name that ‐ • Statutory damages • New cause for registering non‐TM name of others w/out consent w/ intent to profit (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; by resale (II) in the case of a famous mark that is famous at the time of registration of • Just domain names, i.e., those registered, whether second level or more the domain name, is identical or confusingly similar to or dilutive of that mark; or (III) . . .
Greg R. Vetter • www.gregvetter.org 199 Greg R. Vetter • www.gregvetter.org 200 Trademarks, Spring 2016 Trademarks, Spring 2016
ACPA ACPA
• Nine bad faith factors (nonexclusive list) • Safe harbor I. Trademark or other IP rights in the domain name • Believed and had reasonable grounds to believe that use was fair use or otherwise lawful II. Extent of domain name use to identify a legal person • Remedies III. Bona fide offering of goods or services • Pre‐enactment IV. Bona fide noncommercial or fair use of the mark in a site accessible under the domain name • Post‐enactment 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 Intent analysis VII. Material and misleading false contact information when applying for the mark • Circumstantial evidence VIII. Keeping multiple domain names and knowing that they are identical or confusingly similar • Direct evidence 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 Greg R. Vetter • www.gregvetter.org 202 Trademarks, Spring 2016 Trademarks, Spring 2016
Lamparello v. Falwell 420 F.3d 309 (4th Cir. 2005) 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 Greg R. Vetter • www.gregvetter.org 204 Trademarks, Spring 2016 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 205 Greg R. Vetter • www.gregvetter.org 206 Trademarks, Spring 2016 Trademarks, Spring 2016
Uniform Dispute Resolution Procedure Section 43(d) (a.k.a. ACPA) • Domain name holders are subject to the UDRP through the terms of their domain name registration contract with • domain name registrars. 43(d): • Registrars must require the UDRP in order to qualify with ICANN as domain name registrars. (1) 43(d)(1)(A)(i) “bad faith intent to profit”, and • UDRP Paragraph 4 (2) 43(d)(1)(A)(ii) “registers, traffics in, or uses” a domain that is “identical or • 4(a): Complainant must prove: (1) identity or confusing similarity, (2) respondent has “no rights or legitimate confusingly similar to” plaintiff’s mark interests in respect of the domain name”, and (3) respondent has registered the domain name and is using it in • Bad faith intent factors: 43(d)(1)(B)(i) bad faith. • 4(b): Bad faith factors • People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th • 4(d): Complainant selects DRSP Cir. 2001) • 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 Greg R. Vetter • www.gregvetter.org 208 Trademarks, Spring 2016 Trademarks, Spring 2016
Eastman Sporto Group LLC v. Jim and Kenny Case No. D2009‐1688 (WIPO Mar. 1, 2010) The Uniform Rapid Suspension System (URS)
• Jim and Kenny registered sporto.com in 1997 • Process to apply for gTLDs [1] that the registered domain name is identical or • Differing uses at different points in time, some use to resolve to confusingly similar to a word mark: sites that sell footwear ($185,000 per gTLD) – similar to a (i) for which the Complainant holds a valid national or • “August 21, 2009, Respondent offered to sell the disputed domain name to a third party for USD 100,800” mark registration regional registration and that is in current use; or • Eastman owns SPORTO mark (ii) that has been validated through court proceedings; • Bad faith registration and use factors • URS applies only to second‐level or • Bad faith at time of registration versus later in time bad faith at a time of use domains within new gTLDs (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. • 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 established since 2013 a. Use can be shown by demonstrating that evidence of • But, “the most formidable obstacle to the Mummygold approach is the language of paragraph 4(a)(iii) itself. use — which can be a declaration and one specimen of The operative verbs in that provision are clearly conjunctive – registered and used. ” • Burden is CCE current use in commerce — was submitted to, and • “unless bad faith use subsequently to registration forms a basis for an inference of Respondent's • Remedy, after short term lock, is validated by, the Trademark Clearinghouse. bad faith at the time of registration, it cannot alone satisfy the complainant's burden of proof b. Proof of use may also be submitted directly with the under paragraph 4(a)(iii) of the Policy.” suspension, not transfer URS Complaint. • Effect of domain name renewal? Versus transfer of ownership? What if cybersquatting at the time and of renewal? [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 209 Greg R. Vetter • www.gregvetter.org 210 Trademarks, Spring 2016 Trademarks, Spring 2016 Facebook Inc. v. Radoslav (Nat’l Arb. Forum, Sept. 27, 2013) Classic vs. Nominative Fair use • Domain at issue is facebok.pw • U.S. trademark law provides for two forms of “fair use” • Confusingly similar to FACEBOOK • “Classic” or descriptive fair use, in which the defendant uses the plaintiff’s mark to • “The Domain Name points to a web page listing links for popular search describe the defendant’s goods • topics which Respondent appears to use to generate click through fees for Statutory basis: 33(b)(4) • “Nominative” fair use, in which the defendant uses the plaintiff’s mark to refer to the Respondent’s personal financial gain. Such use does not constitute a bona plaintiff fide offering of goods or services and wrongfully misappropriates • Statutory basis: 43(c)(3)(A) Complainant’s mark’s goodwill.” • Problem: “under this subsection” • Pattern of similar one‐letter‐off registrations • www.trademark‐clearinghouse.com
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“Classic” Fair Use KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111(2004) 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 Greg R. Vetter • www.gregvetter.org 214 Trademarks, Spring 2016 Trademarks, Spring 2016
KP Permanent Make‐Up v. Lasting Impression (U.S. 2004) KP Permanent Make‐Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004)
• KP alleged microcolor use since 1990/91 “[I]t is only when a plaintiff has shown likely confusion by a preponderance of the • Lasting 1992 application for Micro Colors, issued in 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 1993, “incontestable” in 1999 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 • 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 Greg R. Vetter • www.gregvetter.org 216 Trademarks, Spring 2016 Trademarks, Spring 2016 Dessert Beauty, Inc. v. Fox, 568 F.Supp.2d 416 Sorensen v. WD‐40 Company (7th Cir. Feb. 25, 2015) (S.D.N.Y. 2008) to avail itself of the fair • use defense, DBI must Sorensen mark for corrosion inhibitor have made use of Fox’s product: LOVE POTION mark • THE INHIBITOR • Contains VCI substance (1) other than as a • Defendant’s use of mark: mark, • “WD–40 Specialist Long–Term Corrosion (2) in a descriptive Inhibitor” sense, and • And cross‐hair symbol (3) in good faith • 7th • Descriptive fair use available for incontestable marks • Was this use descriptive fair use?
Greg R. Vetter • www.gregvetter.org 217 Greg R. Vetter • www.gregvetter.org 218 Trademarks, Spring 2016 Trademarks, Spring 2016
International Stamp Art, Inc. v. United States Postal Service (11th Cir. 2006)
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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 221 Greg R. Vetter • www.gregvetter.org 222 Trademarks, Spring 2016 Trademarks, Spring 2016 Fortune Dynamic, Inc. v. Victoria’s Secret (9th Cir. 2010) Simple examples of classic fair use • Fortune • 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 • Mark: DELICIOUS use of plaintiff's trademark DENTIST‘S CHOICE for toothbrushes) • Product: women’s shoes • 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 • Victoria’s Secret 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), • Mark: BEAUTY RUSH aff'd in part, rev'd in part on other grounds, 279 F.3d 796 (9th Cir. 2002) • Promotional shirts for that product line (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 • 9th reverses the district court’s grant of 1981’ in her advertising banners fell within the classic fair use defense. “Her public summary judgment for Victoria’s Secret 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 descriptive fair use defense herself or her goods.”)
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Toyota Motor Sales, U.S.A., Inc. v. Tabari (9th 2010) Tiffany (NJ) Inc. v. eBay, Inc. (2d Cir. 2010) • New Kids test instead of Sleekcraft • Nominative fair use analysis • (1) the product was “readily identifiable” • without use of the mark Will something other than the Polaroid factors apply? • (2) defendant used more of the mark than • “We have recognized that a defendant may lawfully use a plaintiff's necessary; or trademark where doing so is necessary to describe the plaintiff's product • (3) defendant falsely suggested he was and does not imply a false affiliation or endorsement by the plaintiff of the sponsored or endorsed by the trademark holder defendant.” • “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 Greg R. Vetter • www.gregvetter.org 226 Trademarks, Spring 2016 Trademarks, Spring 2016