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Conclusion

  • No trademark infringement
  • No trademark dilution

Why Not?

Uniqueness Diminished (dilution by blurring)

  • harder to associate the good with the mark
  • trademark becomes generic

Generic?

Insufficient secondary meaning

for a descriptive mark?

The association is between the mark and ALL products. The association is NOT between the mark and a certain producer

trademark infringement:

Conclusion

If "yes" to either or both:

There is Trademark Dilution

Business is economically harmed

due to a wrongful/deceptive

business practice

Two additional ways to prevail on

Trademark Dilution

1. Uniqueness is Diminished, OR

2. Tarnished Image

NO

Conclusion

  • No trademark infringement

Trademark Dilution is still possible

Tarnished Image

  • Unwholesome or degrading association with the mark

Is there CONFUSION

Lanham Act - balancing factors

NO

Unfair Competition Categories

Is there a valid trademark?

  • Similarity

(appearance, pronunciation, etc.)

(same geographic market?)

  • Intent

(parody?)

(intent to benefit from first mark holder's rep?)

(intent to harm first mark holder's business?)

  • Marketing
  • Consumer care

Unfair Competition

Right to use a symbol or

word(s) associated with a good

Yes

Has the mark been copied or imitated?

Or, are there two (or more) similar marks?

YES

1. Trademark Infringement

(Jordache, Kellogg, Hanover)

2. Trademark Dilution

(Jordache)

3. Misappropriation of

Trade Secret (DuPont)

4. Misappropriation

of Work Product (INS, Kellogg)

Property

Intellectual Property Review

Professor Anderson

Conclusion

  • Plaintiff prevails on trademark dilution
  • Plaintiff prevails on trademark infringement

trademark dilution:

dispersion of identity and hold on the public mind of the mark by its use upon other goods

Misappropriation:

Inappropriate borrowing of someone else's product that required time, labor and resources

Confusion in Trademark Infringement

  • Protect the consumer from confusion as to the source of the good

Is the product a trade secret?

  • information, formula, process, etc that:

1) derives its economic value from being a secret, and

2) the holder has taken reasonable steps to maintain secrecy

Confusion in Trademark Dilution

  • Will the source confusion cause injury to the mark?
  • Protection of the trademark holder's interest

YES

NO

1) Was the trade secret discovered

by improper means, OR

2) Was there a breach of confidence

Was there inappropriate borrowing?

Examine the nature and character of the business

  • Are the acts causing economic harm?
  • Is the competitor distinguishing its product?

Examine the right of the parties between themselves

  • Not between a party and the public

Conclusion

If "yes" to either, then there has been

misappropriation of a trade secret

Conclusion

The balancing test will indicate if there is misappropriation of work product

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