TRADEMARK LAW

RULES CASES
EXAM ANSWER FORMAT Cite Cases in Question 1 and Question 3
Question 1 – every fact has a reason; make sure to cite it
Part 1: Preliminary Injunction Test
• Likelihood of Success on Merit of the Claim (go through arguments P will make – namely that they are senior user of a valid mark. Remember,
registered TM is prima facie evidence for infringement; then, go through how we would counter the claims)
• Likelihood of Consumer Confusion – list factors for client and make arguments on both sides (Analyze strength of P’s mark to determine scope of
protection and whether D’s mark is likely to cause consumer confusion – be sure to remember conceptual strength and commercial strength analysis)
• Dilution Argument – analyze both blurring and tarnishment
Note: must argue that the mark is not famous (even if it is) as an easy way to pick up points
• If the first argument fails, arguments 2-4 also fail.
Note: easy way to gain points is to mention the test for unfair competition is the same as that for trademark infringement.
• 2(e)(1-4) can also serve as defenses – if the mark has been registered for less than five years, it is contestable; if it is five years or older, we are limited
to genericism, abandonment, fraud and laches

Part 2: Irreparable Harm

• Argue plaintiff will suffer irreparable harm if the injunction is not entered, which is harm that cannot be fixed by monetary means. This would be
damage to the brand and if the reputation is damaged, we cannot calculate how the brand will be made whole.
• Defendant will show that there is not irreparable harm (i.e. can be made whole through monetary damages; perhaps that there was no confusion to begin
with) Burden is on plaintiff to show that the damage was irreparable

Part 3: Balancing Test – balance the harm of who is or isn’t harmed more if the injunction is granted
• Whatever P is suffering is outweighed by whatever damage the Ds are going to complain about. If D is shut down, they will have to start all over. Harm
to P is that brand is damage or continuously confused
• Argue harm to your client is greater than the other client

Part 4: Impact on the Public

• If P is successful and D is enjoined, then the public is no longer confused.
• If D is successful and allowed to continue its business, consumers no longer have choices about XX and hurts fair competition between business. Not
good for consumers or the economy.

Based on these four factors, the P may ask for damages [discuss damages]

In conclusion, we think you should do XYZ.

Question 2 – client’s application has been refused

• Explain what the refusal means
• Explain the test that the PTO uses
• Make recommendation to client for overcoming refusal

Question 3 – Yes or no question and explain

1. FOUNDATIONS AND Trademark: the adoption of something already in existence as the distinctive symbol of the party using it; the primary and proper function of a trademark is to
PURPOSES identify the origin or ownership of the article to which it is attached
• Registering a trademark is prima facie evidence of infringement, but TM rights may exist without registration
• “Likelihood of Consumer Confusion”: hallmark concept in TM infringement cases

Likelihood of Confusion Test Under Lanham Act

1. Type of TM alleged to have been infringed
2. Similarity of design between the two marks
3. Similarity of products/ services (related, complementary or overlap? Fleichman) – does not need to be competing service
4. Identity of retail outlets/ purchasers
5. Identity of the ad medium utilized
6. Defendant’s intent
7. Evidence of actual confusion

Types of TM
• Words (phrases, slogans)
• Images (logos, mascots, insignia)
• Sounds
Smells
• Colors
• Flavors
• Motions (dance moves)

Obtaining TM Rights
• TM muse be in use (not just registered) to be protectable

Purposes of TM Law
• To protect the public so that it may be confident that, in purchasing a product bearing a particular TM which it favorably knows, it will get the product
which it asks for and wants to get
• To ensure that where the owner of a TM has spent time, energy and money in presenting to the public its product, it is protected in its investment from
misappropriation by pirates and cheats
2. DISTINCTIVENESS Abercrombie & Fitch v. Hunting World (P sues D for selling clothes under Safari)
Significance: Even if a generic term acquires secondary meaning, it cannot be
generic
descripti suggesti registered.
ve arbitrary fanciful
ve
Zatarain’s, Inc. v. Oak Grove Smokehouse (Chick Fri & Fish Fri Case) P sued
multiple Ds for using some variation of fish fry or chicken fry on their products to
Generic terms: never protectable under TM law; Terms may become market similar products. Significance: whenever a word or phrase conveys an
generic in two ways immediate idea of the qualities, characteristics, effect, purpose or ingredients of a
• Inherently generic by nature of their natural relationship to the product or service, it is classified as descriptive and cannot be claimed as an
products for which they are used (ex. BEER for beer.) exclusive TM.
• Source of Product: has become generic by common usage (ex.
ASPIRIN, as it is merely a product now)
 • Genericide: a once unique mark becoming generic In Re Oppendahl & Larson, LLP (patents.com case) P files intent to use app for
Descriptive terms: describes a quality or characteristic of the good or patents.com to track patent apps and issued patents. Ct holds this mark is merely
service only registrable if secondary meaning acquired descriptive and therefore not registrable. Significance: the incorporation of a term w/
• A mark will be treated as descriptive if it describes any of the no source indicating function into an otherwise generic mark cannot render i
features of a product in respect to which rights are claimed registrable

Fillipino Yellow Pages, Inc. v. Asian Journal Pubs, Inc. (Yellow Pages Case)
Test for Descriptiveness Holding: because Filipino Yellow Pages isn’t federaly registered and P didn’t offer
1. Dictionary Definition (no principle of TM law says only the enough evidence to suggest nongenericness, ‘Filipino Yellow Pages’ is generic.
first dictionary definition can be used) Significance: if mark is federally registered, D has burden of proving genericness. If
2. Imagination test – seeks to measure relationship between not federally registered, P has burden of proving non-genericness.
actual words of the mark and the products to which they
were applied Mil-Mar Shoe Co, Inc. v. Shona Corp. (Warehouse/ DSW Shoe Case) P owned
3. Whether competitors would likely need the terms used in Warehouse Shoes and sought to enjoin D from using “DSW Shoe Warehouse”.
the TM when describing their products Holding: both “shoe warehouse” and “warehouse shoes” are generic because they
4. The extent to which a term actually has been used by others signify a particular type/ category of retail stores.
marketing a similar service or product
Murphy Door Bed Co, Inc. v. Interior Sleep System, Inc. (Is Murphy Bed so
Inherently Distinctive TMs common that it has become generic) Holding: Murphy bed is a generic term.
Suggestive Terms: Suggests the attribute or quality of what the good/
services are but consumer must use imagination; entitled to registration Peaceable Planet, Inc. v. Ty, Inc. (beanie babies case) P sold a camel named Niles
without secondary meaning and a few years later D started selling a camel named Niles. Significance: personal
Arbitrary Terms: TM that has nothing to do with the product or name rule
services being sold (ex. Apple)
Fanciful Terms: completely made-up words with no meaning that Bacardi Case (D produces Vodka that is in packaging like Bacardi) Significance:
identify a brand (ex. Haggen Daaz, Nike, etc.) common basic shapes or letters are, as a matter of law, not inherently distinctive;
however, stylized letters or shapes may qualify provided the design isn’t common
Secondary Meaning place but rather unique or unusual in the relevant market
• R3D of Unfair Competition: secondary meaning may be
established by direct or circumstantial evidence

The Personal Name Rule: a mark that is “merely a surname” is not

registrable in the absence of meaning (think Disney)

Trade Dress: the “packaging” of a product or service that adds up to

protectable trade dress (ex. The Tiffany blue packaging + logo);
inherently protectable with secondary meaning

Color: cannot be protected because it is not inherently distinctive; party

claiming the particular color is associated with the product or service has
burden of proof
3. USE Adoption and Use in Commerce Aycock Engineering (private flights TM never used case) P wanted to build a
Use in commerce requirement ensures federal trademark remains within business connecting individuals interested in booking chartered flights and air taxi
Congress’s Commerce Clause powers companies. D wants to cancel P’s TM in “airflite” because it is not in use because
• Use determines who initially owns federal TM rights business never got off the ground. Significance: mere preparation is not use in
commerce; it does not matter if the marketing has started if the thing/ product/
Bonafide Use In Commerce Elements service is not in use in commerce [PAY SPECIAL ATTENTION TO THIS ON
1. Amount of Use EXAM]
2. Quality or Nature of Transaction
3. What is typical within a given Planetary Motion, Inc. v. Techsplosion, Inc. (Coolmail Case) P developed/
industry distributed email program called coolmail in 94 and in 98 D formed an email service
with the same name. D says no use in commerce because it was free. Holding:
Note: if at any point a TM is no longer in use, it is vulnerable to distributing a software for free was still use in commerce sufficiently public to create
challenge for cancellation for abandonment; so long as a TM is in use, it ownership. Significance: even though no money was exchanged, use was still
can be valid forever. established.

Person Seeking Cancellation of Mark Must Show M.Z. Berger & Co., Inc. v. Swatan AG (iWatch Swatch Case) Berger files TM
1. Open and notorious public use; registration for iWatch and Swatch sued saying it was confusingly similer ad that
Berger failed to show bona fide intent to use. Holding: bona fide intent to use
2. Directed to the segment of the purchasing public for whom
mean’s applicant’s intent is demonstrable and more than just a mere suggestive belief
services are intended; and
(requires objective evidence of intent).
3. Carried out in a manner sufficient to inform or apprise
prospective purchasers of the present or future availability
In Re Rath significance: registration in a foreign country does not automatically
of service under the mark
ensure eligibility for registration in the US (TM was registered in Germany, but in
* Must eventually be followed by actual use to serve as basis for
US, cannot register a mark that is merely a surname)
priority

Token Use: use at a level insufficient to qualify as actual use under the
then-existing standard

Constructive Use: applicant files an application stating the applicant has

a bonafide intent to use the mark, the mark is deemed to be in use as of
the application filing date UNLESS
• Filing many apps for same mark on a large number of products
• Filing many apps for numerous marks on the same product
• Repeatedly refiling ITUs to replace prior ITUs that have lapsed

Must have verified statement that TM is used in commerce:

1. Within 6 months of after the date on which the notice of
allowance is issued
2. Specify date first used and goods or services used
3. May extend the time filing with request
 Surrogate Use: when a user other than TM owner uses TM, but it is to Coca Cola v. Busch (D wants to sell drink called Koke) P sought to enjoin from
the owner’s benefit (i.e. public-created nicknames) using it because “Coke” is a well-known soft drink. Significance: public is the
surrogate user here – court is protecting the public so they aren’t confused about
Ownership which soda they are buying
1. P should be senior user of a valid TM • Abbreviations and nicknames of TMs or names used only by the public
2. Likelihood of Confusion give rise to protectable rights in the owners of the trade name or mark the
public modified
Note: having acquired rights through use, a TM owner must continue to • An entity may have a protectable property right in a term even if the
demonstrate use – or at least control overuse – in order to maintain TM company itself has made no use of the term provided the public has come
rights. to associate the term with the entity or its products/ services

Abandonment: a mark shall be deemed abandoned when its use has American Eagle (Firetruck Case) D sold fire trucks using American Fire Eagle and
been discontinued with intent not to resume such use. Two Types: was a former employee of the P. P had stopped manufacturing trucks, but still used
1. Nonuse the mark on merch. Significance: abandonment from nonuse
2. Failure to enforce/ control
University Bookstore v. University of Wisconsin Board of Regents (Buckey
Note: Intent not to resume may be inferred from circumstances Badger case) Holding: it doesn’t matter that the university didn’t create the logo –
• Nonuse for 3 consecutive years shall be prima facie evidence the fact that it had become so associated with the university and as university’s
of abandonment mascot is enough.
• Burden falls on mark-challengers to show nonuse

Note: there are no TM rights if use is illegal.

4. REGISTRATION Benefits of Registration: prima facie evidence of
• Validity of registered trademark and registration
• Registrant’s ownership of mark and
• Registrant’s exclusive right to use registered mark in commerce
or in connection with goods or services specified on
registration
• Also allows for statutory remedies
Registration Process
1) Is the TM already in use in interstate commerce,
a. If not, consider ITU Application
2) Identify the trademark- word mark, design, slogan,
combination
a. Color features?
b. What exactly the client wants to protect
3) Specify the goods or service and the class in which they fall
4) Applicant’s name and address
5) Date of: 1) First use of trademark anywhere, and 2) First use in
interstate commerce
a. N/A for 1B application
b. Often the same date
6) Specimen to show manner of use
a. Ex: Label, hang tags, brochures, signage
 b. N/A for 1B
7) Declaration that all statements and true and no one else has a
right to the TM
8) Filing fee
a. Higher for 1B

Types of Applications

1A Application – already in use 1B Application – Intent-to-Use

in interstate commerce Constructive Use
Specimen + Date of use No specimen/ date of use
Affidavit expressing bona fide
ITU
Certificate of Notice of Allowance
Approval/Registration
− Use – client already using − Can NEVER go on
mark supplemental register b/c
− Make sure you verify client’s must be in use to go on
use (examples of how supplemental
they’ve been using it and − Can file for Principal
when) Register based on ITU a
− Advertisements mark in commerce &
− If have 1A application and providing registration
mark is primarily descriptive, would be dependent upon
can go on supplemental. ITU maturing into actual
use
− Easier to file
− Can’t ask client to verify
use b/c no use yet
− When conversion from 1B
to 1A → will need
statement of use (show
everything in 1A that didn’t
have to show in 1B:
specimen + date of first use
+ filing fee)
− Submit proof w/in 6
months after date on which
notice of allowance is
issued along w/ verified
statement of mark in use in
commerce & specifying
applicants first date of use
in commerce
− Director can extend for 6
more months time for filing
statement of use upon
written request before 6
month period up
− Can file for extension of 6
months but you need to pay
(can have up to 5 extension
requests in 3 years)
− Director may further extend
time for filing periods no
more than 24 mos. If
written request of applicant
before expiration of last
extension granted
− If you think you’ve been
harmed within 30 days, you
can file notice of
opposition. If 30 days pass
and no one pays attention,
you are good to go and get
your Registration (takes 2-3
months)
− Acquired distinctiveness
on ITU apps: ITU applicant
who has used mark on
related goods/services may
file a claim of acquired
distinctiveness under 2(f)
before filing amendment to
allege use or statement of
use if applicant can
establish that, as a result of
applicant’s use of the mark
on other goods/services,
mark has become
distinctive of goods or
services in ITU application
and that this previously
created distinctiveness will
transfer to the
goods/services in ITU
application when use in
commerce begins.
Examination Process: TTAB verifies the TM complies with statutory
requirements and determines if there are grounds for rejection:
i. 2(a) deceptive marks (cannot be overcome by secondary
meaning)
• Ex. Redskins Case Matal (Slants Case – Asian Eyes + Band) Holding: Prohibition against immoral or
• Matal (slants band + Asian eyes Case): scandalous marks found unconstitutional of free speech. Significance: trademarks
• Brunetti are seen as private speech, not government speech
• In re Budge
ii. 2(b) flags or code of arms of the United States, state or Brunetti (Mark pronounced “fuck”) Holding: the mark is vulgar, but prohibiting
foreign nations scandalous/ vulgar marks is unconstitutional. Mark can be registered/ protected.
• Ex. US Olympics symbol
iii. 2(c) name, portrait, or signature of living individual In Re Budge (Selling seat covers that look like lamb but not made of lamb) Holding:
without individual’s consent mark would lead to reasonable consumer confusion bc it misdescribes the character
• Blue Ivy and composition of the goods
• Justin Bieber Beliebers
iv. 2(d) Likely cause confusion with an existing registered
mark or prior pending mark
• Analyze using Dupont factors (like office
action) .
v.
2(e)(1) Merely Descriptive or deceptively
misdescriptive – when manufacturer uses deceptive
words or descriptions, but it does not influence
consumers’ buying decisions; could still be registrable
upon showing of secondary meaning
2(e)(2) Primarily geographically descriptive – marks
that use geographic terms (i.e. Philadelphia Cream
Cheese; California Pizza Kitchen)
2(e)(3) Primarily geographically deceptively
misdescriptive – cannot be overcome by secondary
meaning
2(e)(4) Primarily merely a surname – not registrable
unless there is secondary meaning (ex. Mrs. Fields
Cookies)

Principal vs. Supplemental Register

PRINCIPAL- Inherently descriptive SUPPLEMENTAL- marks

marks or ones that can show may be registered on the
secondary meaning Supplemental if they are
“capable of distinguishing the
applicant’s good or services. Geographic Test:
− Primary type of registration − Cannot file ITU
− BENEFITS: applications!!
 o Prima facie evidence − Marks not registerable I. Does the mark convey to a meaningful segment of the purchasing public
TM is valid on Principal can register primarily a geographic connation, and are those persons likely to think that the
o Constructive notice of on SR if capable of goods came from that place?
claim of ownership distinguishing II. If the goods actually come from that geographical location, it is geographically
o Nationally protected applicant’s goods or descriptive. Therefore, it is registrable if secondary meaning is demonstrated.
o Published to others services III. If the goods do not come from the geographical location, you must determine if
o Bars infringing o Surnames, it is deceptive or geographically deceptively misdescriptive.
imports geographic,
o Incontestable after 5 merely
years descriptive,
▪ Means that anything that
a person can’t show
cannot secondary
come & say meaning
it is invalid; − Doesn’t give prima
trying to facie evidence of
challenge registrant’s exclusive
mark at this right to use mar
point is very − Not constructive notice
difficulty of claim of ownership so
o Treble as to eliminate a defense
damages/statutory of good faith (unlike
damages Principal)
− *Client will want principal − Can never achieve
evidentiary status of
uncontestable
− Does allow owner of
registered mark to bring
suit for infringement
− Cannot be used as a
basis for Customs to
stop importations of
infringements into the
U.S.
− Can be cited by
Examiner against future
TM applications
− Can reapply to Principal
after 5 years (when mark
has evidence of 2nd
meaning)
− As long as not generic,
can go here
Differences Advantages
 o While a Principal o Supplemental
Registration is prima facie Registration allows
evidence of the registrant’s the owner of a
exclusive right to use of registered mark to
the mark, a Supplemental bring suit for
Registration has no such infringement
evidentiary effect. o Supplemental
o While a Principal Registration can be
Registration is cited by an
constructive notice of Examiner against
claim of ownership so as to future trademark
eliminate a defense of applications for
good faith, a Supplemental confusingly
Registration has no such similar marks on
effect; either the Principal
o While a Principal or Supplemental
Registration may become Registers
incontestable after five (5) o The owner of a
years of registration, a Supplemental
Supplemental Registration Registration is
can never achieve that legally entitled to
evidentiary status; use the ® symbol
o Registration on the o May re-apply to
Supplemental Register the Principal
cannot be used as a basis Register after 5
for Customs to stop years
importations of
infringements into the U.S.
o Only seek registration on
the Supplemental Register
once the mark is in use in
commerce

Cancellation
a. First Five Years of Registration
• Filed by any person who believes he/she may be
injured by the registration
• Any ground that would have precluded
registration in the first place
b. Only Grounds Available after Five Years of Registration
• Genericness
• Abandonment
• Fraud
 • Includes insignia of a government or includes the
name, likeness, or signature of a living person w/o
written consent or of a deceased US President w/o
written consent of surviving spouse
c. Grounds NOT Available after Five Years
• Not inherently distinctive and lacks secondary
meaning
• TM is primarily a surname or primarily geographic
• TM is confusingly similar to a TM that someone else
used prior to the registration and continues to use
5. CONFUSION Trademark Infringement: commercial use of the same or similar mark
BASED TM by another with respect to related goods or services which is “likely to
LIABILITY cause confusion” with respect to actual or potential customers of the TM
owner’s goods or services.
• LIKELIHOOD OF CONFUSION standard

Two Prong Test: (1) Valid TM AND (2) Likelihood of Confusion Virgin Enterprises (Virgin could potentially expand into cell phone market but D is
o Analyze client is senior user of valid trademark. trying to use mark) P owns incontestable registrations for VIRGIN. D claims
• Show senior user (by use) VIRGIN available for use in telecom field. P used for preliminary injunction.
o Show you have priority Holding: factors support P’s position for likelihood of confusion
o Does not have to be
registered
• Must be distinctive
o Registered- prime facie
case of distinctive; or
o Inherent
distinctiveness; or
o Acquired
distinctiveness
▪ Secondary
meaning-
sales,
advertising,
consumer
recognition
o Likelihood of Confusion (refer to table on 561)

Family of Marks: To prove a mark family exists, a mark owner must McDental (Dental office uses M arches and Mc prefix) Holding: there is TM
show that it owns a group of marks having a recognizable common infringement based on the strength of Ps mark. Significance: FAME can play a huge
feature where: role in these cases – even though McDonald’s would not expand into dental market,
• The group of marks is used and promoted together in such a the mark is so strong that it carries the same weight in different industries
way that the public associates the common feature with the
mark owner AND
• The common feature is distinctive
 Types of Confusion
Type Confused Facts to Exam Argument
Party Look for
Point of Sale Buyer is Buyer must
Confusion confused go through
when with sale
purchase is
made
Initial Consumer Something Buyer sees something
Interest drawn into lures across the street
Confusion purchase consumer thinking it is real, but
(not enough in, but the at POS, realizes it is a
for prima sale never counterfeit
facie happens
evidence of
infringement
because
consumers
are
sophisticated)
Post-Sale Public/ Confusion Lanham Act is
Confusion other third relates to broader than consumer
(Ferrari party is someone buying – it also
Case) confused other than protects consumers
the who are not
purchasing purchasers from
party confusion
Reverse Sr. user P is little Demonstrate D is
Confusion looks like guy and D junior user and has
(Victoria’s infringer is big guy saturated marketplace
Secret Case) with TM so
consumers think P is
infringer

Defenses
Step 1: Attack Validity – if there is registration, presumed to be
valid, but this is a rebuttable presumption
Step 2: Rebut presumption
• Genericism: others using the term (can argue this any time- if
it’s become generic, generic terms cannot acquire TM)
▪ License Agreements
 • Naked License: creates situation
where there is no actual control
over the quality of the goods (this
license is more likely to be seen
as creating genericism)
▪ Control Types: mark owner maintains
control through approvals, manuals or
specific standards
• Abandonment: Nonuse for 3 consecutive years shall be prima
facie evidence of abandonment (Wisconsin Case)
• Fraud: have registration but obtained fraudulently (i.e. lied
about when use began, etc.)
• Laches: waiting too long to bring claim for infringement
▪ Two-prong question
(1) Was the plaintiff’s delay in bringing the
suit unreasonable?
(2) Was the defendant prejudiced by the
delay?
- Prejudice is distinguished
between a claim based on mere
expenditures in promoting
the infringed name (does not
satisfy prejudice test) vs. one based on an
investment in
Its mark as the identity of the
business in the minds of the
public (does satisfy the prejudice
test)
6. NON-CONFUSION Dilution: the lessening of capacity of a famous mark to identify and Toys R Us Cases
BASED TM distinguish goods or services, regardless of the presence or absence of • Sex Toys = tarnishment because they are basically using identical marks
LIABILITY: competition between the owner of the famous mark or of LOC. Typically BUT cannot argue likelihood of confusion because not competitors
DILUTION occurs as the result of blurring or tarnishment of a mark. • Guns Are Us = not tarnishment because unlikely that guns will be
• Purpose of dilution doctrine is to protect marks. associated with toys website → less damage to the brand plus they are
Note: Fame is a prerequisite for any dilution claim. spelled differently

TARNISHMENT – an association arising from similarity between mark Victoria’s Secret Case
or trade name & a famous mark that harms reputation of famous mark
1. Sexual dilution creates presumption
in favor of famous mark (Toys R
Us v. Adults R Us)
2. Typically occurs when P’s mark
linked to products of shoddy quality
or portrayed in an unwholesome or
unsavory context, where the end
 result will be that the public will
associate the lack of quality or lack
of prestige in the D’s goods with
the P’s unrelated goods.
▪ Steps to Analyze Tarnishment:
1. Is this a famous mark?
2. Are consumers likely to associate the
marks?
a. Based on similarities in the
mark
b. Equivalent to a liability of
associating junior mark w/
senior mark
c. Being used to draw an
association b/w them.

BLURRING– association arising from similarity between a mark or Starbucks/ Charbucks(D is family-run business that sells coffee online)
trade name & a famous mark that impairs distinctiveness of famous • The second, third and fourth factors of blurring all favor Starbucks
mark; the whittling away of an established TM’s selling power through o The degree of inherent or acquired distinctiveness of the famous mark
its unauthorized use by others upon dissimilar products o The extent to which the owner of the famous mark is engaging in
3. Factors (Pg. 651): substantially exclusive use of the mark
a. Degree of similarity between mark or o The degree of recognition of the famous mark
trade name & famous mark • Similarity between Marks: CHARBUCKS is minimally similar in sound and
b. Strength of the mark spelling, but marks are different in imagery, art-style, color, format and signage.
(Remember Distinctiveness = But, this factor does NOT require substantial similarity. As such, district court
Conceptual Strength and Commercial improperly weighed this factor
Strength) o This factor relates to the second and fourth (distinctiveness and
c. Extent to which owner of famous famousness) factors, and by requiring “substantial similarity,” the
mark has exclusive use of mark district court likely affected its view of the importance of other factors
(Are competitors also using the o New Act provides compelling reasons to discard the substantially
mark) similar requirement for federal dilution claims. Firstly, it lists 6 factors
d. Degree of recognition of famous mark to be considered and if there needed to be substantial similarity
(Surveys) between the marks, then the other factors wouldn’t matter. Secondly,
e. Whether use of mark or trade name the statute does not mention “very” or “substantial” at all, but
intended to create an association with mentions degree
famous mark o Similarity requirement may be less stringent in circumstances in
(Bad faith) which the senior mark is highly distinctive and the junior mark is
f. Any actual association between mark being used for a closely related product
or trade name and famous mark • Intent to Associate Mark with Famous One: Does NOT require consideration of
Fair Use Defense → not actionable if 1) fair use of a famous mark by whether bad faith was present. Here, D’s mark was created with the intent to
another person in comparative commercial advertising or promotion to associate with Starbucks, so this favors Starbucks
identify competing goods or services; 2) noncommercial use of the work • Actual Association between Marks: Starbucks had survey results that 30% of
or 3) all forms of news reporting and news commentary consumers responded that first thing they thought of when they heard
 CHARBUCKS was Starbucks. District court erred because Starbucks does NOT
need actual “confusion,” ONLY actual “association”
No likelihood of dilution by tarnishment because Starbucks didn’t show that
Charbucks carried negative connotations or that D’s product was inferior

7. PERMISSIBLE
USES
Fair Use Definition Appropriate Case Example
Doctrine Use
Descriptive/ Use of ordinary
Classic Fair English words
Use in their
ordinary sense,
not as a TM or
in a manner
analogous to
TM use
Nominative Using a TM
Fair Use comparatively
to name other
brand (think
bounty paper
towel
commericals)
Parody/ First Allows Barbie Girl
Amendment consumers to
resell genuine
goods as long
as not altered
8. REMEDIES Equitable Relief:
• Injunctive relief is crucial because it protects exclusivity
• Equitable relief is always subject to trial court’s discretion and
is more readily available in TM cases than damages
• Actual damages are rare because they are too speculative

The Court Should Grant Injunctive Relief If Moving Part

Establishes:
1. Substantial likelihood of
success on merits of the claim
2. Irreparable injury if injunction
is not issued
3. Threatened injury outweighs
whatever damage the
proposed injunction may
cause to defendants and
4. Granting the injunction would
not be adverse to the public
interest

Treble Damages + Attorney’s Fees: upon a showing of bad faith

Note: if the D adopted the TM with knowledge of P’s TM, that can show
willfulness.
P is always entitled to actual damages (lost profits if able to show
correlation