CEIPI M2 21 - US & TK

not generic or merely descriptive without secondary meaning

Which factors used to determine whether a mark is descriptive or suggestive?

the term is commonly used to denote the goods or services at issue

(1)

consumers have come to recognize the mark as a source indicator

(2)

the primary significance of the mark in consumers' minds is not the product, but the producer

What is a consumer?

but some acknowledge that the relevant group consist of buyers of the type of product or service at issue

includes intentional "knockoffs" by 3rd parties, not just defendant

(1)

protection of a name without SM may prevent other persons with same name from using it

(2)

May also deprive public of useful information: identity of provider

(3)

consumers aware that some names are common will not be confused if two different persons with the same name both use it in their businesses

if the policies underlying the traditional rule are not implicated, a name can be inherently distinctive

while surnames are registrable only with SM, two-part personal names are registrable without SM

"[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"

(1)

whether the design yields a utilitarian advantage

(2)

whether alternative designs are available,

(3)

whether advertising touts the utilitarian advantages of the design, and

(4)

whether the particular design results from a comparatively simple or inexpensive method of manufacture.

expired utility patent (whose claims cover the design feature at issue) is “strong evidence” of functionality

(1)

Essential to use or purpose, or

(2)

Affects cost or quality, or

(3)

Exclusive use of it would put

competitors at non-reputation

related disadvantage

(1)

Mark misdescribes the goods to which it is attached

(2)

Consumers are likely to believe the description is accurate

(3)

The misdescription is likely to affect consumers' decisions to purchase the goods

(1)

mark has as its primary significance a generally known geographic place

(2)

mark identifies products that consumers are likely to believe mistakenly are connected with that place

(3)

misdescription will likely be a significant factor in consumers' decisions

The court has the discretion to deny registration for trademarks it finds to be disparaging.

(1)

To make this decision the court relies on dictionary entries and media, scholarly, and literary references.

(2)

The court also takes into consideration the statements by individuals who belong to groups that may be disparaged by the Redskins Marks during the pertinent time period.

LA 2(a)

NO registration for trademark that

consists of or comprises immoral … or scandalous matter….

Sec. 43. False designations of origin and false descriptions forbidden [15 U.S.C. ß 1125]

(a) Civil action.

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce ANY word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

**nationals of treaty partners or countries providing reciprocity may file US TM application within 6 months of foreign application + intent-to-use statement

(1)

US registration granted upon either:

(a)

use in commerce in US, or

(b)

foreign registration granted

(2)

may maintain US registration for up to 6 years, even without any use in the US or elsewhere

(3)

priority date = date of foreign application

***nationals of treaty partners or countries providing reciprocity may file US TM application based upon registration of the mark in applicant's country of origin

recognizing foreign use if it causes the mark to become "famous" or "well known" to US customers

The United States Congress shall have power "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes."

(Article I, Section 8, Clause 3)

(1)

interstate commerce

(2)

intrastate commerce that affects interstate commerce

(3)

commerce with other countries

(4)

commerce with "Indian Tribes"

*applicant may secure priority date by filing ITU application, then engaging in use in commerce within 6 months, then filing certificate

can get extensions for up to 3 years for good cause

(1)

zone of actual use

(2)

zone where one has established a reputation or business presence

(3)

natural zone of expansion

(4)

zone in which D deliberately trades on P's reputation

3 years of non-use of federally registered mark constitutes prima facie abandonment

BUT

rebutted by proof of intent to resume use

If the principal significance of a mark to the public is to indicate the nature or class of an article, rather than its source (i.e., the person or organization that produces it), then it’s generic

chastising King-Seeley for not exercising “due diligence” in the period between 1923 and early 1950s to prevent generic use of Thermos in the non-trade publications

requiring Aladdin (for a while) to insert various disclaimers, to only use thermos in lower case, etc.

(1)

Met gives ABC exclusive broadcast rights and Columbia Records exclusive right to make records

(2)

Defendant makes “bootleg” records from ABC radio broadcasts

Any person who shall, without the consent of the registrant—

(a)

use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b)

reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

False designations of origin and false descriptions forbidden

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(A)

is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person

(B)

in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

(1)

D sells the goods in a way that misleads consumers into thinking that D is a member of P’s authorized sales force or is one of P’s franchisees

(2)

Good are materially different

(3)

Goods have been repackaged

(1)

a finding of bad faith almost always results in a victory for P, but a finding of good faith is not so decisive

(2)

It can just require D's knowledge of P's mark prior to D's adoption of a similar mark

(3)

or proof of intent to deceive consumers concerning source of D's products ("purposeful manipulation of the junior mark to resemble the senior's")

before

1925

1925-1935

1935-1990

1995

2003

2006

(1)

the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness,

(2)

shall be entitled to an injunction

(3)

against another person who, at any time after the owner’s mark has become famous,

(4)

commences use of a mark or trade name in commerce

(5)

that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark,

(6)

regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

(1)

widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.

(2)

In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including:

(i)

The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

(ii)

The amount, volume, and geographic extent of sales of goods or services offered under the mark.

(iii)

The extent of actual recognition of the mark.

(iv)

Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

(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.

(2)

relevant factors:

(i)

The degree of similarity between the mark or trade name and the famous mark.

(ii)

The degree of inherent or acquired distinctiveness of the famous mark.

(iii)

The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

(iv)

The degree of recognition of the famous mark.

(v)

Whether the user of the mark or trade name intended to create an association with the famous mark.

(vi)

Any actual association between the mark or trade name and the famous mark.

(1) Degree of similarity between the marks

(2) Degree of distinctiveness of P’s mark

(3) Extent to which P’s use is exclusive

(4) Degree of recognition of P’s mark

(5) Whether D intended to create association

(6) Any actual association

generic drug manufacturer supplies drugs to pharmacist known to be mislabeling them

(1)

Franchisor has no duty to supervise diligently the activities of franchisees

(2)

But franchisor is liable if it knew of infringements by franchisees and failed to exercise contractual power to stop

purchasers of banner ads incorporate in those ads P's TMs in ways that cause consumer confusion

Google is secondarily liable because it exercises significant control over the content of the ads

(1)

Tiffany products routinely sold on eBay; some are counterfeit

(2)

Ebay removes auction items whenever Tiffany identifies them as counterfeit

(3)

But Ebay refuses to monitor auctions to ensure that no one seller offers more than five items

No liability in absence of either

(1)

failure to respond after receiving specific notice of infringing works

(2)

willful blindness

(1)

P secures protection for a descriptive mark through secondary meaning (SM)

(2)

D uses P’s mark,

not as a TM or service mark (i.e., not to indicate origin or source – the company from which it emanates)

but rather

to describe fairly and in good faith D’s products (i.e., their characteristics or geographic origin)

(1)

D need not disprove likelihood of consumer confusion

(2)

Some degree of consumer confusion is compatible with fair use

(3)

Factors to determine whether D's action was "fair":

(1) likelihood of confusion

(2) strength of P’s mark

(3) descriptive nature of the term

(4) available alternatives

(5) extent of use of the term prior to registration

(6) any differences among the times and contexts in which P has used the term

When D (a commercial user) uses P‘s mark to describe P‘s product, fair use if:

(1)

P‘s product is not readily identifiable without use of the TM

(2)

only so much of P‘s mark is used as is necessary to identify P‘s product

(3)

D in no way suggests that P sponsors the reference

(1)

Laches may be trumped by interest of the public in not being confused

(2)

The greater the likelihood of confusion, the greater the odds that court will refuse to recognize laches

(3)

Where confusion is “inevitable”, court will often ignore even clear, long delay

Liability for TM infringement should arise only where D is

(a)

selling goods or services and

(b)

using the mark at issue to designate those goods or services

D invites consumers to regard the mark as a designation of D's goods or services,

and

consumers are likely to regard the mark as a designation of D's goods and services

(1)

Google sells keywords to advertisers

(2)

when a users employs such a keyword, the advertiser's name, etc., appears as a "sponsored link"

(3)

advertisers are permitted to register as keywords the TMs of their competitors

(1)

D's conduct DOES satisfy "use in commerce" requirement

(2)

Google DOES uses and sells Rescuecom's mark "in the sale ... of [its advertising] services ... rendered in commerce.'"

Intro to US IP Law - Trademark

Remedies

Genericity

(Fall 2020/2021)

@GCFrosio

Classic

Non-commercial Activities

LA 33

Fair Use

Do I have defense from liability after infringement has occurred?

Nominative

CEIPI M2

Defenses

Laches

Fraud

Public Interest

Standard

NO

Statute of Limitations for Lanham Act Violations

Penalty

Defendant must show:

(1)

P had knowledge of D’s use of the mark

(2)

P delayed inexcusably in taking action

(3)

D will be prejudiced by P’s delay

Standard

CANCELLATION

covering the mark as a whole not just uses of the mark to which the fraud apply

BUT

Trademark owner retains common-law rights

any word, name, symbol, or device, or any combination thereof

a person has a bona fide intention to use it in commerce and applies for registration

or

currently used by a person

Trademarks

used to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown

Subject Matter

any word, name, symbol, or device, or any combination thereof

a person has a bona fide intention to use it in commerce and applies for registration

or

currently used by a person

a person has a bona fide intention to use it in commerce and applies for registration

or

currently used by a person

Certification Marks

Service Marks

used to certify regional or other origin, material, mode of manufacture, quality, or accuracy of such person’s goods or services or that the goods or services were performed by members of a union or other organization

used to identify and distinguish the services of one person from the services of others and to indicate the source of the services, even if that source is unknown

LA 45

Collective Marks

trademark or service mark

Used by members of a cooperative, association, or other collective group

or

or a cooperative, association, or other collective group has a bona fide intent to use it in commerce and applies to register it

words in other languages subject to the "doctrine of foreign equivalents"

Ordinary TMs

Words

Numbers

Do I have defense from liability after infringement has occurred?

Identify a particular supplier of a good or service

if the other language is common in the United States, the English translation will be employed in

(1)

categorizing the mark

(2)

determining whether the foreign words are registrable as trademarks,

(3)

or confusingly similar with existing marks

Geographic Terms

Do I have defense from liability after infringement has occurred?

Geographical Indications

Geographic term used to indicate a region from which products supplied by various firms derive

Certification Marks

Symbols

Do I have defense from liability after infringement has occurred?

Buildings

product packaging

Slogans

Trade Dress

Do I have defense from liability after infringement has occurred?

product configuration

Permissible Forms

protectable provided they have come to designate a source

Names

Do I have defense from liability after infringement has occurred?

Fictional Characters

personal names

surnames, first names, and combinations used in commerce as source indicator

but

Used in Commerce

names of other living person can be registered only with their consent

Celebrity Likenesses

Do I have defense from liability after infringement has occurred?

Invented Ingrediants

Sounds

Tastes

Do I have defense from liability after infringement has occurred?

Colors

Smells

Do I have defense from liability after infringement has occurred?

What is Protected?

LA 2(e) bars registration of "merely descriptive marks"

Fanciful

Federal Registration

newly created word, image, etc.

Arbitrary

existing word applied arbitrarily to a product or service

LA 2(f) permits registration of such marks with SM

Suggestive

suggest a quality of the good or service

Acquired Distinctiveness

Generic

(1)

Dictionary definition of the term

(2)

Does it require consumers to use their imaginations to reach a conclusion as to the nature of the goods?

Do I have defense from liability after infringement has occurred?

(3)

Do competitors “need” the term to describe their products – or would it be “useful” to them?

Secondary Meaning

(4)

To what extent has the term been used by competitors?

Descriptive

Describes an ingredient, quality, or characteristic of the product

Public in general

readers of romance novels

But NO

Harlequin Enterprises Limited v. Gulf & Western Corporation, 644 F.2d 946 (2d Cir. 1981)

Do I have defense from liability after infringement has occurred?

(CA2 2010)

vs

Vs

Evidence of Secondary Meaning

Christian Louboutin S.A. v. Yves Saint Laurent America Inc. (2d Cir. 2012)

Distinctiveness

Direct

Do I have defense from liability after infringement has occurred?

Circumstantial

Do I have defense from liability after infringement has occurred?

(1)

exclusivity, duration, and manner of use

(2)

sales volume

(3)

amount and manner of advertising

(4)

unsolicited press coverage

(5)

proof of intentional copying

ITC Ltd. v Punchgini (CA2 2007)

(1)

consumer surveys

(2)

consumer testimony

(3)

retailers/dealers testimony

Buti v. Perosa (CA2 1998)

(CA2 1961)

Polaroid Corp.

Polarad Elect. Corp.

Dawn Donut v. Hart's Food Stores (CA2 1959)

Vs

Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons (CA2 1975)

(1)

registrant had long used "Dawn" for donuts in various parts of the country, but not Rochester

(2)

junior user adopts "Dawn" without actual knowledge of P's use

(3)

no "present likelihood" of expansion into Rochester

(4)

thus no consumer confusion

(1)

Good-faith settlement negotiations

(2)

P was litigating against other infringers

(3)

P was waiting until moment when D’s activity posed significant threat of confusion/harm (“progressive encroachment”)

but

inequitable to wait until D’s business is well established

(1)

trademark infringement that relies on Initial Interest Confusion does not require a likelihood of confusion at the time of sale

(2)

the mark must only capture the consumer's initial attention.

CBS has elected not to make commercial use of its "Amos 'n' Andy" radio and television programs, nor create new ones, since 1966

Vs

Barclays Capital Inc.

(CA2 2011)

Silverman v. CBS (CA2 1989)

King-seeley Thermos Co., v. Aladdin Industries (CA2 1963)

NBA vs

Murphy Door Bed v. Interior Sleep Systems (CA2 1989)

(CA2 1997)

(1)

the plaintiffs gather information at a cost,

(2)

that the information is timesensitive,

(3)

that the use of the information by the defendant is “free-riding,”

(4)

that the defendant is offering a service in direct competition with the plaintiff’s, and

(5)

that the capacity to free ride threatens the existence of the plaintiff’s commodity.

Jimmy Carson

O.J. Simpson

(1)

Abandonment requires both nonuse and intent to abandon

(2)

As long as P is making efforts to keep the business going, no intent to abandon

(3)

lapse of time without use may be evidence from which intent to abandon may be inferred, the strength of the inference being dependent upon the period of discontinuance, the cause of it, and other factors

(4)

But intent to relinquish must be shown

Gold Seal Associates

v

Gold Seal Associates (SDNY 1932)

"And when we say it feels like a sneaker, we're not just stringing you along."

Vs

it’s a factor, but not decisive

US Shoe Corp. v. Brown Group

(S.D.N.Y. 1990)

Bayer Co. v. United Drug Co. (S.D.N.Y. 1921)

“It is the total image or overall appearance of a product, and includes, but is not limited to, such features as size, shape, color or color combinations, texture, graphics, or even a particular sales technique."

Rose Art Indus., Inc. v. Swanson 235 F.3d 165 (3d Cir. 2000).

"Arthur the Aardvark is inherently distinctive"

Brown v. It's Entertainment, Inc., 34 F. Supp. 2d 854 (E.D.N.Y. 1999)

and Columbia Records, Inc.,

v.

Wagner-Nichols Recorder Corporation

(NYS 1950)

Holiday Inns of America v. B B Corp. (CA3 1969)

"if consistently used as a source indicator"

P cannot secure an injunction until P actually begins construction in the junior user's region

Estate of Elvis Presley v. Russen, 513 F.Supp. 1339 (D.N.J. 1981)

Rolls-Royce of America

Wall

9th Cir. 2003

Mattel

Vs

Niles

(CA3 1925)

V.

Peaceable Planet v TY (CA7 2004)

Walking Mountain Productions

A&h Sportswear v. Victoria's Secret Stores (CA3 Cir. 2000)

USA today and The Star set up 900 numbers to determine fans’ opinions as to the most attractive member of the New Kids on the Block

Disc Golf v. Champion Discs. 158 F.3d 1002, (CA9 1998)

LA 2(e)

Marks are unprotectable if functional

New Kids on the Block v. News Am. Pub. (CA9 1992)

Functionality

Do I have defense from liability after infringement has occurred?

LA 2(d)

Mark cannot be registered if likely to cause confusion with existing mark

Vs

Aesthetic

Utilitarian

"Mere fact that the mark is the benefit consumers want to purchase does not make it functional"

Consider changing social mores and sensitivities

Automotive Gold v. VW (CA9 2006)

(3)

Do I have defense from liability after infringement has occurred?

(FC 2003)

Immoral and Scandalous

Conflicts with Existing Marks

1-800-JACK-OFF

“the PTO must demonstrate that the mark is "shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . [or] calling out [for] condemnation.”

JACK-OFF

Federal

State

In Re Mavety Media Group Ltd 33 F.3d 1367 (Fed. Cir. 1994)

vs

Rolex Watch U.S.A. v. Michel Co. (CA9 1999)

Sweat of the Brow

(1)

that the

defendant's mark is the same or a close approximation of plaintiff's previously used name or identity;

(2)

that the mark would be recognized as such;

(3)

that the plaintiff is not connected with the activities performed by the defendant under the mark; and

(4)

that the plaintiff's name or identity is of

sufficient fame or reputation that when the defendant's mark is used on its goods or services, a connection with the plaintiff would be presumed.

Does the mark give

offense to the conscience or moral feelings of a substantial portion of the public?

In re Bose Corp. (Fed. Cir. 2009)

Fonovisa

TWIGGY

Mark cannot be registered if it is likely to cause dilution of an existing famous* mark

Some goods may have been altered sufficiently that no amount of disclosure is sufficient; they cannot be sold with their original TMs

Unregistered Trademarks?

International News Service v. Associated Press 248 U.S. 215 (1918)

Do I have defense from liability after infringement has occurred?

Lesley Hornby v. TJX Companies Inc.

Cancellation No. 92044369

U.S. Patent and Trademark Office Trademark Trial and Appeal Board

87 U.S.P.Q.2D 1411 (2008)

In re McGinley, 660 F.2d 481

(C.C.P.A. 1981)

v.

(1)

Rejected should-have-known standard instead

applicant knowingly makes a false, material representation to PTO with intent to deceive

(2)

Neither negligence nor gross negligence is

sufficient; need scienter

(3)

Proof must be by clear and convincing evidence

ordinarily, use of a mark outside the US does not count, even if advertising of the goods or services spills into US

*essential that the existing mark became famous prior to first use of the mark in question

General Counsel’s belief that repairing old tape recorders sold under the Wave label was sufficient to establish continuing use is enough to negate scienter

​

9th Cir. 1996

17 U.S.C. ss. 101-810

U.S. Code 301. Preemption with respect to other laws

(a)

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

(b)

Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to— (1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression;

Mother's Restaurant v. Mother's Other Kitchen (TTAB 1983)

15 U.S.C. ss. 1051 et seq.

U.S. 102(b)

U.S. 107

U.S. Patent Act - 35 U.S.C. ss. 1-376

Visual Artist Rights Act 1990

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, [...] for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

17 U.S. Code 106A

Rights of certain authors to attribution and integrity

LA 2(a)

NO registration for trademark that

consists of or comprises … matter which may disparage ... persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1)

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2)

the nature of the copyrighted work;

(3)

the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4)

the effect of the use upon the potential market for or value of the copyrighted work.

"includes the shape and general appearance of the exterior of the restaurant, the identifying sign, the interior kitchen floor plan, the decor, the menu, the equipment used to serve the food, the servers’ uniforms, and other features reflecting on the total image of the restaurant"

Inherently Distinctive

NO

Secondary Meaning

TrafFix Devices v. Marketing Displays

532 U.S. 23 (2001)

Fraud

vs

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)

...face, voice and pose

The Congress shall have the 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."

(Article I, Section 8, Clause 8)

Common

Statutory

Disparaging

Do I have defense from liability after infringement has occurred?

Names of expired patented goods become generic automatically

Do I have defense from liability after infringement has occurred?

Kellogg Co v. National Biscuit Co. (US 1938)

"single color can serve as TMs if claimant can show secondary meaning"

applicant knowingly makes a false, material representation of fact in connection with application

ETW Corp. v. Jireh Pub. Inc., 332 F.3d 915. (CA6 2003)

Unregistered Trademarks?

The Trademark Cases

Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995)

Inwood Laboratories v. Ives Laboratories (US 1982)

Dastar v. Twentieth Century Fox (2003)

Moseley v. V Secret Catalogue (US 2003)

Champion Spark Plug Co. v. Sanders

under the Lanham Act, a claim of trademark dilution requires proof of actual dilution

(US 1947)

If goods are used and have been refurbished by D, must clearly mark them as such

Steele v Bulova (US 1952)

(1)

Plaintiff held Bulova mark in US, but not Mexico

(2)

plaintiff's US advertising spilled into Mexico

(3)

Defendant (a resident of Texas) later registered Bulova in Mexico

(4)

Defendant in Mexico applied Bulova mark to watches imported from Switzerland (including some parts imported from US) and sold those watches in Mexico

(5)

some of the purchasers were US citizens, returned to the US with the watches

(1)

holder of the French ™ "Bourjois" sold the US mark and associated business to the plaintiff, a US company

(2)

Plaintiff continued to import the French face powder and sell it in the US

(3)

Plaintiff can prevent an arbitrageur from buying packages of the powder in France and importing them into the US

(4)

the French mark, though valid in France, does not give the arbitrageur rights to import into the US

jurisdiction to award relief to (1) an American corporation against acts of trademark infringement and unfair competition consummated in a foreign country (2) by a citizen and resident of the United States (3) who purchases parts here (4) and some of whose products, sold abroad, enter this country (5) where they may reflect adversely on the American corporation's trade reputation

A. Bourjois & Co., Inc. v. Katzel (US 1923)

Radio Broadcast Cases (1932-1955)

Contributory Passing Off

What is NOT Protected?

(1)

Plaintiff radio company acquires (by contract) exclusive right to broadcast sporting event

EL first made and marketed, a liquid preparation containing quinine and other drugs compounded with chocolate to give it color and flavor and to aid in suspending the quinine. Warner then, using chocolate, produced an article of the same taste and appearance, but sold cheaper, and, to reap EL's trade, suggested to retail druggists the feasibility and economy of passing off the one for the other when dispensed out of the bottle, which was done in many and diverse instances.

(2)

Defendant radio company listens to plaintiff’s broadcast and posts “spotters” to view the event illicitly

Lanham Act violated the First Amendment.

William R. Warner & Co. v. Eli Lilly & Co. (US 1924)

Iancu v. Brunetti, 588 U.S. ___ (2019)

Matal v. Tam, 582 U.S. ___ (2017)

KP Permanent Make-up v Lasting Impression I

(US 2004)

White Tower System v. WHITE CASTLE

90 F.2d 67 (CA6 1937)

Ferrari S.P.A. Esercizio v. McBurnie (CA6 Cir. 1991)

Unfair Competition

LA 2(a)

deceptive marks cannot be registered

consumer confusion occurs not when purchasers buy the defendant's product at the point of sale, but when third parties observe the product at a later time, and wrongly believe the trademark owner is the source

Vs

(EDVa 2004)

Do I have defense from liability after infringement has occurred?

Deception

False Suggestion of a Connection

Do I have defense from liability after infringement has occurred?

Pro-Football Inc. v. Blackhorse (ED Virginia 2015)

Basis of Liability

LA 43(c)

LA 32

Intl Bancorp v. Societe Des Bains (CA4 2003)

LA 43(a)

(1)

majority rule: junior user is unaware of senior user's use

(2)

minority rule: Junior user must not have "designs inimical to the interest of the first user"

VS

Williams

sufficient if the foreign company both provides services to visitors from US and advertises in the US

defining "use in commerce" broadly enough to encompass foreign services provided to US residents

(CA10 1990)

(1)

D actively induces TM infringement

Secondary

Contributory Liability

(2)

D sells products or supplies services to a party that D knows or has reason to know is using them to infringe

Liability

Vicarious Liability

defendant and direct infringer must have an apparent or actual partnership

GRUPO

vs

MD CD LLC

(CA9 2004)

vs Maid Brigade System

(CA 11 1992)

D misleads consumers into thinking D's products were produced by P

Passing Off

when customers ask for product A, D serves them product B

Reverse Passing Off

Unfair Competition

color combinations

D misleads consumers into thinking P's products were produced by D

Misappropriation

Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co.

550 F.3d 465 (CA5 2008)

"trade dress of a product is essentially its total image and overall appearance"

Blue Bell Bio-Medical v. Cin-Bad

864 F.2d 1253 (CA5 1989)

LA 32

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

Statutory Provisions

LA 43(a)

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

Consumer

Use in Trade

(1)

bona fide use of the mark in connection with offering goods or services to the public

(2)

publicity or solicitation *may* be sufficient if combined with intent to use

advertising and promotion is sufficient if

(a)

occurs within a commercially reasonable time prior to sales or service and

(b)

is sufficient to create an association among mark, goods/service, and user

Initial Interest Confusion

Rights

Confusion as to Source

Confusion as to Sponsorship or Affiliation

Reform

Blue Bell v. Farah Manufacturing (CA5 1975)

Types

Point-of-Sale Confusion

Resales

Purchaser of lawfully trademarked goods is free to offer and sell them under their original trademarks

Exceptions

Post-Sale Confusion

Confusion

Similarity of the Two Marks

Apperance

Meaning

Sound

Strength of the Mark

Sophistication and/or Attention of Buyers

Evidence

Inherent

Acquired

Inherent

Distinctiveness

Not essential for protection

Likelihood of Confusion

Proximity of the Two Products

Defendant's Good or Bad Faith

Factors

Quality of the Defendant's Product

Marketing Environment

Tarnishment Theory

Similarity Theory

?

How Close Are the Products on the Shelf?

Are the Products Sold in the Same Store?

unregistered marks are protected by LA 43(a)

unregistered marks get common-law protection

No Dilution

Victoria Secret Case (SCOTUS 2003)

State Anti-Dilution Statutes have largely displaced the common law

Trademark Dilution Revision Act

State and Federal courts begin to reach dilution

Federal Anti-Dilution Statute

Registration

Common Law

Do I have defense from liability after infringement has occurred?

Cause of Action

Non-Use

LA 45

Tarnishment

Famous

Dilution

LA 43(c)

“dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

Non-use

Intent not to resume

Defenses

(A)

Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B)

All forms of news reporting and news commentary.

(C)

Any noncommercial use of a mark.

Blurring

Benefits of registration

(1)

provides others constructive notice of registrant’s claim

(2)

nationwide constructive use as of date of application

(3)

prima facie evidence of exclusive right to use the mark in connection with the goods or services named in the application

(4)

right to bring suit in federal court without regard to diversity of citizenship

(5)

right to invoke aid of Customs Service -- e.g., grey market goods

(6)

more generous remedies -- e.g., treble damages and attorneys fees

Paths to Registration

(1)

Current Use in Commerce (LA 1(a))

(2)

Intent-to-Use (ITU) Applications (LA 1(b))*

(3)

Foreign Applications (LA 44(d))**

(4)

Foreign Registrations (LA 44(e))***

(5)

Madrid Protocol (LA 66(a))

Requirements

Abandonment

(1)

P's mark is famous

(2)

P's mark is distinctive

(3)

D uses its mark in commerce

(4)

D's usage began after P's mark became famous

(5)

D's use is likely to cause dilution

(A)

Blurring

(B)

Tarnishing

Do I have defense from liability after infringement has occurred?

harm to the reputation of P’s mark

sudden and substantial change in quality or composition may result in abandonment

Use

Changes in Product or Service

BUT

transferring TM to different product or service is permissible if the old and new versions are "closely related"

IF

consumers think that the new product is coming from the same source

How rights are procured?

foreign use

General principle of US TM law

one must use a mark in the US to acquire rights to it

trademark rights are nation-specific

ordinarily, use of a mark outside the US does not count, even if advertising of the goods or services spills into US

Goods

Services

lost its distinctiveness

(1)

mark must be placed on goods themselves, containers, displays, tags, or (if infeasible) documents

mark must be used or displayed in the advertising of services, and the services themselves rendered in commerce

(2)

goods must be sold (to customers) or transported (visibly) in commerce

advertising for service that has not yet begun is not sufficient

(3)

For-profit use is not necessary

Licences

Do I have defense from liability after infringement has occurred?

other producers must be allowed to use it

First in Time, First in Right

Do I have defense from liability after infringement has occurred?

Licensing of the mark to others without controlling the quality of their products results in abandonment

Territoriality

Genericide

Do I have defense from liability after infringement has occurred?

How Protection can be lost?

Priority

Do I have defense from liability after infringement has occurred?

Necessary Quality Control

Do I have defense from liability after infringement has occurred?

Close working relationship

licensor was familiar with and relied upon licensee’s quality controls

no protection under 32 or 43(a)

(1)

TM owner uses the mark in denominative sense

(2)

TM owner uses the mark as noun or verb, rather than as an adjective, attached to some generic term

based on

Circumstances affecting genericide

What can a TM holder do?

Court tailored remedies

Names of patented goods, when the patent expires

Use

Registration

Some courts permit the TM holder to rely on unfair competition:

Efforts of the TM Owner

Do I have defense from liability after infringement has occurred?

Intentional passing off

geographic scope includes entire nation

(retroactive to date of application)

Rights of post-registration junior users

Rights of pre-registration senior users

Rights of pre-registration junior users

prevail over registrant registration

junior user who has employed the mark continuously and in good faith gets "limited area" defense

post-registration innocent junior user may continue to use mark if consumer confusion is unlikely

BUT

must stop when registrant expands operations into that area

invalid if someone else has previously used the mark in commerce

right to continue using the mark in the area where JU was using the mark at the time of registrant's application

LA 33(b)(5)

Geographical Scope

Extraterritorial Application of US Trademark Law

Priority of Use

Exceptions

Trademark gives rights only in the nation that issued the mark

6-month priority right under

Art. 4 Paris Convention

depends only upon use in the US

Obligation to Protect Well-Known Marks

Assignments

Do I have defense from liability after infringement has occurred?

Limitations

TMs may be assigned along with other assets

No Assignment in Gross

to be assignable, TMs must be associated with an ongoing use in commerce

(1)

abandoned marks may not be assigned

(2)

ITU applications may not be assigned

if accompanies transfer of "goodwill"

"favorable consideration shown by purchasing public to goods known to emanate from a particular source"

must be accompanied by transfer of physical assets -- like machines, customer lists, etc.

(1)

mere recitation of transfer of good will

(2)

require maintenance of quality controls during transfer -- and reasonable time thereafter

(3)

no “goodwill” is transferred if the assignee plans to use the mark on a new and different product

held to be abandonment