I.

Overview
a. General Protections
i. Registration:
1. The Mark is valid (and a distinctive identifier of the source)
2. The registrant is the owner
3. The registrant has the exclusive right to use the mark
4. If the mark is descriptive, it shows the mark has acquired
secondary meaning
5. Constructive notice of ownership (eliminates the good faith
defense)
6. Nationwide priority as of the filing date
7. Blocks later TM applications
8. Can record with customs, which stops entry of goods
9. Enhanced monetary remedies
10. Basis for foreign TM Registrations
ii. Incontestability (§15)
1. You get it by:
a. Continuous use for five consecutive years after
registration and:
i. No final decision adverse to the owner
ii. No pending challenges in the PTO or in court
iii. Registrant files affidavit of continuous use for
five years
iv. Mark is not generic for goods/services in
registration
b. Generally idea of “quiet title” in your TM
c. Mark is incontestable:
i. There has been no adverse decision as to
ownership or validity
ii. No pending proceeding challenging rights
iii. AN affidavit of continuous use has been filed
with PTO
iv. No incontestable right if generic
2. Presumptions of registration become conclusive under
§33(a):
a. Validity (distinctive capacity) of the mark and of the
registration
b. Registrant’s ownership of the mark
c. Exclusive right to use the mark for goods/services in
the registration
3. BUT STILL subject to these defenses:
a. Fraud
b. Abandonment
c. Misrepresentation of source
d. “Classic” fair use
e. Innocent use in limited territory
 f. Prior Registrant
g. Antitrust Violation
h. Functionality
i. Equitable Defenses: Laches, estoppel, acquiescence
4. §14: Cancellation of Registration:
a. After five years, one can’t petition to cancel for:
i. §2(d): Likelihood of confusion
ii. §2€: Descriptiveness and lacking secondary
meaning
iii. §43(c)L Likelihood of dilution
iv. Registrant’s lack of ownership of mark
b. Regardless of the incontestability status under §15
c. But can still be cancelled if “registration vulnerable
through other ways”:
i. Cancelable on §14(3)
1. Generic, functional, abandoned, fraud,
§2(a)(b)(c))
ii. Cancelable on (5) ground:
1. Failure to meet requirements of
certification mark
II. General Foundations for Trademark
a. What is a Trademark?
i. Trademarks identify the source of a good or a service. Key idea is
they represent the goodwill of a seller with customers and
facilitating competition. This goodwill comes from use in
commerce.
1. But trademarks cannot be used to PREVENT use
a. See Brady and TOM TERRIFIC
ii. §45: A trademark is any word, symbol, or device, or
combination of these things used by a person to identify
and distinguish his or her goods or from others and to
indicate their source (even if unknown).
1. A service mark is the same thing for intangible
services
iii. Where does the right derive from? Lanham Act
1. Brief History:
a. Trademark Cases initially show TM are not
supported/ enforceable because it grows from use, not
being created perse like Copyright or Patent
b. Lanham Act Provisions to Granting TM
i. §1: Owner of a trademark used in
commerce may request registration
ii. §45: “Commerce” is same as ISC for
Congress, and “use in commerce” means
the bona fide use of a mark in the
oridinary course of trade

b. Principles in Trademark:
i. Balancing competition with protections
1. Top Tobacco v. North Atlantic Operating Co. (7th Cir.)
a. P had a “top” tobacco company. D used the words
“Fresh-Top Canister” on its cans. D and Court of
Appeals affirmed SJ for D on trademark infringement
and dilution. Not sufficient evidence of these at play
and don’t want to stifle competition.
2. RS of Unfair Competition
a. Not liable for competing unless deceptive
marketing, TM infringement, or trade secret
theft/ violation of Rights of Publicity
c. How “Far” Do Trademarks Go?
i. Unlike CR or Patent, is active as long as being used in commerce
ii. Geographically?
1. Hanover Star Milling Co, (U.S. 1916)
a. Thinking about the expansion of business. Idea of
building the “good faith” in the specific area and
customer confusion creating issues. Here, two
companies made rose flour
 i. Creative Problem Solving: Dreyer’s and Edy’s:
different names for depending where you are
2. Stork Restaurant, Inc. v. Sahati (9th Cir. 1948)
a. Facts: P has a famous club in NYC, called the NYC
Stork Club. D has a much shittier club in SF called the
SF Stork Club. Main inquiry is whether P could enjoin
D from using the name.
b. D.C. says no injunctive relief, but 9th Cir. Reverses
saying P could get the injunction
i. Idea as businesses and tech. expands,
more of a “reach”
ii. Issue of “riding coattails”; people may
think that the SF Club was branch of the NY
Club.
iii. Who is being confused?: “Ignorant,
Inexperience, and the Gullible”
iii. How Long on Products?
1. Champion Spark Plug Co. v. Sanders (U.S.)
a. D was selling reused/refurbished P’s spark plugs. The
D.C. and Court of Appeals found extensive liability
and extensive remedies required. SCOTUS reversed,
limiting the remedies. Stating that “full
disclosure” was enough à could just stamp
used/ clearly show it was reused.
i. Think about used goods/cars and
consumer expectations
III. What Can Serve as a Trademark?
a. Generally:
i. Most things can be trademarks: the key issue is:
1. Is it distinctive?
a. See cases below on the distinctiveness spectrum
b. Secondary Meaning?
i. Lanham Act §2f: Proof of distinctiveness:
1. Substantially exclusive and continuous
use for five years (secondary meaning/
acquired distinctiveness)
c. Kellogg Co.
i. Issue with genercide
d. Mishawaka Rubber
i. Pointed it out in the ads, etc.
2. If it’s a special category (ex. color), has it satisfied other
requirements?
a. Qualitex v. Jacobson Products (colors)
i. Color cannot be:
1. Functional
2. Must have secondary meanings
b. Wal-Mart Stores v. Samara Brothers (product
design)
i. Product Design is never inherently distinctive,
but must have secondary meaning and be non-
functional. Packaging may be inherently
distinctive
c. Geographical Indicators?
3. But trademarks may not be trade names (public-
facing name of business) or the “corporate name”
4. Tastes are not trademarks (but sounds and sensory
marks can be)
5. No functional trademarks
a. Kellogg Co. and the pillow shape of shredded wheat
b. TrafFix Devices:
i. Trade Dress is f(x) if essential to the use or
purpose of the article; affects the cost of the
article
b. What are the benefits of registration?
1. The Mark is valid (and a distinctive identifier of the source)
2. The registrant is the owner
3. The registrant has the exclusive right to use the mark
ii. If the mark is descriptive, it shows the mark has acquired secondary
meaning
iii. Constructive notice of ownership (eliminates the good faith
defense)
iv. Nationwide priority as of the filing date
v. Blocks later TM applications
 vi. Can record with customs, which stops entry of goods
vii. Enhanced monetary remedies
viii. Basis for foreign TM Registrations

c. What can be a TM?

i. Kellog Co. v National Biscuit (SCOTUS) (genercide and
functional)
1. SCOTUS reverses Court of Appeals injunction against the
SHREDDED WHEAT name and Pillow Shape of wheat
2. “SHREDDED WHEAT” was not protectible as TM
a. Found to be generic term for the article, given it
was how the product is “generally known by
the public”
b. No secondary meaning because …
c. To avoid the genericide issue, Kellogg could have
qualified it as a description of something
i. Ex. SONY WALKMAN brand personal stereo
3. Pillow Shape not protectible as TM
a. This was trying to overextend the design patent on the
shape, which had expired. Lanham Act defense
that P is using to violate antitrust laws:
§33(b)(7)
b. Pillow Shape was found functional
i. Can’t trademark functional things: would
restrict competition

ii. Mishawaka Rubber v. S.S. Kresge (SCOTUS) (symbols can

be TM)
1. P had a red circular plug in the heel. D used very similar
design for inferior products. No actual confusion, but
court finds for plaintiff under reasonable likelihood
of confusion
a. P clearly stated it was a “trademark” in their ads.
Smartly drew attention to it, showing that it had
“something of value” in the marketplace
b. Remedies were disgorging profits:
i. §35(a): Plaintiff required to prove D’s sale only,
but D must prove the element all
elements of cost or deduction claimed
(D’s burden to show otherwise)

iii. Qualitex v. Jacobson Products (SCOTUS 1995) (Colors

can be TM)
1. Questions if “color alone” can serve as a trademark. Court
decides it can, if it meets 2 requirements:
a. The color cannot be functional
 b. It has to develop “secondary meaning” as a
source identifier (similar to descriptive terms)
2. Follows from Lanham Act §2f: distinctiveness

iv. TrafFix Devices v. Marketing Displays, Inc. (SCOTUS

2001) (Trade Dress/ Product Configuration may not be
TM if functional)
1. Utility patent existing is “strong evidence” of f(x) that P has
burden to overcome
2. Trade dress may be functional if:
a. Essentially to use or purpose of the article
b. Affects the cost of the article

d. Is the TM distinctive?
i. Distinctiveness Spectrum (all context)
1. Fanciful/Arbitrary (very distinctive)
a. Ex: Apple Computers
2. Suggestive (also distinctive, but less so)
a. Apple Health Plan
3. Descriptive (allowed if secondary meaning)
a. BIG APPLE (NYC) Tours
b. Zobmondo Imagination Test
4. Generic (not protectible)
a. Ex. Shredded Wheat, Apple Fruit
ii. Cases:
1. Abercombie & Fitch v. Hunting World
a. “SAFARI” was distinctive to shoes, but not for hats
2. Zobmondo Entertainment v. Falls Media (9th Cir. 2010)
a. 2 ways to determine descriptiveness:
i. Imagination Test: “imagination, thought,
perception” needed to determine what the
goods are
ii. Competitive Need Test: whether competitors
need to use the term to describe products
iii. Questions for a Jury To decide
3. Can clothes be distinctive?
a. Wal-Mart Stores v. Samara Borthers (SCOTUS)
i. Ct. found for P, 2nd Cir. Affirmed, SCOTUS
reversed
ii. Product design is never inherently
disctinve, but requires secondary
meaning and non-functionality
4. LSU v. Smack Apparel (5th Cir.) Finding no secondary
meaning
a. Although D had used P’s colors, it was not distinctive
on its own, but just appropriating the universities’
colors
 b. Demonstrate secondary meaning by:
i. Length and manner of the use of mark
ii. Volume of sales
iii. Amount and manner of advertising
iv. Nature of use of mark in media
v. Consumer survey evidence
vi. Direct consumer testimony
vii. D’s intent in copying the mark

iii. Other Marks

1. Collective Marks
a. Identify members of organizations (ex: REALTORS)
2. Certification Marks: Product meets owner’s standards
a. Ex: Underwriters Labs, Union of Orthodox Jewish
Congregations of America.
b. Mark owner can’t use on its own products, and
any who meet standards may use it
3. Geographical Indications:
a. Stating that a good originated in a specific territory
b. Comes up when a characteristic is attributed to
geographic origin (goods are perceived differently
because of where they are from)
i. Ex: Cuban Cigars, Florida Oranges,
Champagne sparkling wine
1. But disputes: Ex. pre-2005
CHAMPAGNE grandfathered in
c. No specific register for these, but can be
registered as TMs, certification marks,
collective marks
IV. What is Sufficient Use In Commerce?
a. Overview:
i. You must actually use the mark in commerce, can’t use to prevent
others from using
1. Lanham Act: §45: “commerce” is ISC, and means “the bona
fide use of a mark in the ordinary course of trade, and not
made merely to reserve a right in the mark”:
a. What is ISC?
i. Larry Harmon Pictures v. Williams Rest.
(Bozo clown vs. Bozo Restaurant)
1. The single location in Tennessee that
served some ISC commerce customers
was sufficient
ii. Must be lawful, federal use (TMEP §907)
1. Ex: Marijuana things can’t be TM. So
use for other lawful goods
b. Requires:
i. Goods:
1. Placed in any manner on the goods,
containers, displays, tags/labels,
document associated with goods for sale
a. In Re Siny: (Fed. Cir. 2019)
i. P did not sufficiently place
mark on the good for
registration. Merely
having it as registration
was not enough. Usually
POS displays are like shelf-
takers or mail-order
catalogs, with much more
extensive

2. Goods are sold or transported in

commerce
ii. Services:
1. 1) Mark for services is used or
displayed in sale or advertising of
services and
2. 2) The services are actually
rendered
iii. Merely offering sell is not enough
1. Couture v. Playdom (Fed. Cir. 2015)
(services requires actual use)
a. D applied to register PLAYDOM
under §1(a) use in commerce.
Submitted website as proof of
use. But HAD NOT rendered
 services before applying to
register. §45 requires actual use:
b. Requires
i. Used or displayed in
the sale or advertising
of services and
ii. Services are rendered
iii. Merely offering to sell
goods or services isn’t
enough
2. Thoroughbred Legends v. Walt Disney
a. Failed licensing/ saying you are going to use is not
enough)
3. Crystal Entertainment: This may mean difference in
ownership / seeing who is exploiting

ii. See §1(b): Bona Fide Intent To use

1. Says basically that you are going to use

b. Cases:
i. Thoroughbred Legends v. Walt Disney (N.D. Ga. 2008)
1. P rode and trained a famous horse. D asked them to be in
movie, but they refused. P had applied to register RUFFIAIN
via §1(b), but D refused to license. Court rejects P’s
claims:
a. P had not used RUFFIAN as a TM – only trying to
produce or film or use license. But no license for
RUFFIAN as source identifier, and failed
attempts to license. RUFFIAN Foundation not
movie/ TV use

ii. Crystal Entertainment v. Jurado (11th Cir.) (ownership / use in

commerce)
1. D was band and P had name. But D stopped paying P for
license fees. Court found D owned the name in
common law
a. P never used the mark to identify the goods in
public mind
b. D controlled the quality of the products
c. D was the “name and face” of the brand and
controlled goodwill

iii. How Far Does ISC extend? – Territoriality Principles

1. Grupo Gigante v. Dallo & Co. (9th Cir.)
a. P has a big grocery chain in Mexico, but not in U.S..
NO MARKS REGISTERED. D opens a store with
very similar name in U.S. in San Diego.
 b. Court introduces territoriality principle:
i. Generally no TM rights for non-US
ii. But famous mark exception: P’s mark
was very well-known in San Diego, so it
give it senior rights in CA. It’s like
“secondary meaning +”: You need a
“substantial percentage of consumers in
the relevant American market to be
familiar with the foreign market”
1. Ultimately barred because of laches
2. C.f. ITC Ltd. V. Punchgini (2nd Cir.)
a. P had high-end restaurant in India. D used similar
logos, trade dress, in NY. Court rejects
territoriality exception, but looks to NYCA
(state court) laws:
i. Still finds a foreign business can protect
business if:
1. D deliberately copied P’s mark or trade
dress and
2. Relevant consumer market primarily
associate mark with P
3. Here, could not show the relevant
market trade
3. AB AF 21 November 2001 v. Fame Jeans (D.C. Cir/)
a. P sold jeans outside US. Decided to expand to US and
applied to register in Dec. 2014, but D applied to
register mark in 1/04. Neither had used mark in
commerce, so no TM Rights
b. TTAB dismissed P’s claims of foreign rights
and merely US plans, but DC CIRC.
REVERSES:
i. Use “analogous to TM Use” confers
standing
1. §13: Any person who believes he
would be damaged by the
registration of a mark on PR can
file opposition to registration
ii. P alleged such awareness by its use and earlier
registration
iii. ANALOGOUS USE IS ONLY FOR
CHALLENGING RIGHTS, NOT FOR
REGISTRATION OF RIGHTS. Must have
bona fide use in trade
iv. Who Gets Priority?
1. Blue Bell Inc. v. Marah Mfg. Co. (5th cir. 1975)
a. Issues of who did it first:
 i. P: Conceived of mark in 5/16/73; D conceived
6/18/73
ii. P presented to sales personal and did 6/5 TM
search; P did TM search and inaugurated
campaign
iii. P Completed tags by 6/27; D completed tags by
6/29
iv. P Sent samples to sale managers by 7/3 (who
paid for them)
v. P Showed to customers on 7/9; D attached
tags to old clothes and shipped 7/5
vi. P made merchandising efforts on 7/31; D began
production on late 8/73 and presented designs
at sales meeting 9/6
vii. P sent first shipments on 9/73; D received
orders late
b. Questions of “Use in Commerce”:
i. 7/3 sales by P weren’t “ordinary course of
trade”; D’s 7/5 shipment on old clothes
was just a sham/ “token”
ii. P had first real sales on 9/73 so they win
2. New West Cp v. NYM Co. of Cal. (9th Cir. 1979)
a. Soliciting advance subscriptions was use in commerce
3. Other things that would be sufficient for registration:
a. Specific of actual use (labels for goods, ads, etc.) in
ISC
b. Actual sales or shipment in ISC
c. Lawful

c. Concurrent Use?
i. 2 companies using the same or similar marks. Who wins?
ii. United Drug Co. v. Theodore Rectanus Co. (SCOTUS 1918)
1. Both companies using the REX Market. P used it / bought it
from a company that began using it in MA, and had
registered it in 1881. D sold in Kentucky in 1883. P expands
to Kentucky. DC said P had first right, Court of Appeals said
D had good faith adoption. SCOTUS says:
a. Must be an established business; 1881 did not
confer monopoly, just goodwill protection.
Here, P had no rights against D because they
were their first and no bad faith.
b. Probably different now with Lanham Act
(notice, etc.)
2. Now , rare exceptions with more remote areas:
a. Ex. Dawn Donut v. Hart’s Food Stores (2nd Cir. 1959)
i. P had mark for commercial donut mix since
1922. Supplied to bakers who sold donuts
 under DAWN mark via license, and P had
federal registration. D had grocery store and
started using DAWN Mark in good faith
without knowledge in 1951.
ii. Court found that no expectation P would
expand to D’s trade area and ost people buy
baked goods close to home. Injunction
denied.
b. Guthrie Healthcare Sys. V. Context Media (2d Cir.
2016)
i. P had 2001 logo and operated medical facilities
in PA, NY, but recruited doctors etc.
nationwide. D had health content nationwide,
and adopted logo in 2008. Court finds only
possible confusion in PA and NY, so
limited injunction
c. Burger King of Fla. V. Hoots (7th Cir.)
i. Local burger king in Illinois was fine, because it
exited before P’s federal registration or
elsewhere in Ill.
V. How to Register Your Marks?
a. Process
i. Examination System
1. Principal Registration
a. Apply?
i. Filing basis:
1. Use, intent to use, foreign registration
ii. ID goods and services
iii. “Drawing page” showing the mark
iv. Examiner checks:
1. Compliance with requirements
2. Is ID of goods/services is clear
3. Is mark distinctive or not?
4. If use-based, make sure specimen is
compliance
5. Check U.S. apps/registrations
6. Issues actions with conflicts,
deficiencies, etc.
v. Individual has six months to respond.
Examiner will approve or issue final office
action. Applicant always respond to final office
action, Appeal to TTAB. TTAB can be reviewed
by Fed. Circ. or D.C. civil action
vi. 3rd Parties can file opposition letters:
1. Issues like descriptiveness/ generic,
likelihood, etc.
vii. Applications are published in Official Gazette
1. Can be opposed by 3rd parties for 30
days (extended)
2. If not opposed, mark will be registered
or allowed to register pending
proof of use if intent-to-use
a. Six Months to submit
Statement of Use +
Specimen, but this can be
extended to 3 years
viii. After registration, between years 5 and 6, need
to state still using. Declare every 10 years still
using
b. §1: Bases for Registration
i. §1(a): Mark is in use in commerce
ii. §1(b): Applicant has bona fide intention
to use the mark in ISC
1. M.Z. Berger & Co v. Swatch (Fed. Cir.)
a. P applied to register watch.
However, added a bunch of
classes/ goods and was opposed
 by D who said there was no actual
intent to use. TTAB and Fed.
Affirmed denying the
registration:
i. No actual intent to use
ii. Showed no bona fide
intent
iii. No steps taken to develop
the watch
iv. Admitted no intent to use
for watch/ clocks
v. Only gave really vague
proposals, and not
interactive
2. Nintendo v. Golad
a. P opposing D’s app under no
bona fide ITU
b. Through discovery showed D had
done nothing. No TM searches,
no license, no plans to build, no
talk about building, no financing
etc. No real life facts or
actions of applicant showed
intent in anyway
iii. Priority of Non-Use Based Applications
1. Larami Corp. v. Talk to Me Productions
a. Issues with RAD Soaker guns. D
files ITU first, but P uses in
commerce first. P had first use
and D showed no secondary
meaning etc. D sues P for TM
infringement. But Ds filing
date beats P’s first use date.
Oppositions to registration
are not infringement
litigation.
i. Allowing P to win here
would beat the
purpose of ITU filing.
BUT IN LITIGATION,
ITU APPLICANT
CANNOT BEAT
COMMON LAW
RIGHTS OF FIRST
USER
 ii. Priority for litigation
depends on use,
priority for
registration depends
on filing date

iv. §44(d): Applicant files within six months of

foreign registration and intent to use mark in
US commerce
v. §44(e): Applicant has a foreign registration
and intent to use mark in US Commerce
vi. §66: Applicant seeks to extend protection of
foreign registration via Madrid Protocol and
intent to use in US commerce

2. But see also Supplemental Register

a. For marks without secondary meaning
b. Descriptive Marks
c. Geographic Marks
d. Surnames
e. Benefits:
i. Use of R symbol
ii. May cite mark against app for junior mark
iii. Shows up in search reports
iv. Requires use in commerce, no intent to
use basis
VI. Bars to Registration
a. 2: describes grounds for refusal (see also b
i. 2(a): immoral, deceptive, scandalous,
disparaging, false connection with
person/institution, brings mark in dispute,
geographical indication (misleading
geographical indications for wines or spirits)
1. Deceptive Terms:
a. Test under 1203.02:
i. 1) Is the term
misdescriptive of the
character, quality,
composition, or use of the
goods?
ii. 2) If so, are prospective
purchasers likely to believe
the misdescription actually
describes the goods?
iii. 3) if so, is the
misdescription likely to
affect a significant portion
of the relevant consumers’
decision to purchase?
iv. IF 3 is not true, then
may be allowed as
deceptively
misdescriptive if
secondary meaning
under §2(e)(1)
b. Ex. Bayer AG v. Mouratidis
i. M to register “ORGANIC
ASPIRIN”, and pushed
through saying no one
would think “organic
aspirin” was a thing (it’s
inherently paradoxical).
Court found this was
deceptive – it does not
contain aspirin and
not organic;
purchasers are likely
to believe; and may
believe to affect
purchasing decisions
because of ads, etc.
2. False Suggestion of Connection
Test
a. TM may be denied if may suggest
connection with persons, living or
dead, institutions, beliefs,
national symbols
b. Test:
i. Mark is same or close
approximation of the
name or identity
previously used by another
person or institution
ii. Mark would be recognized
as such and points
uniquely and
unmistakably to that
person/institution
iii. Person or institution
named by mark not
connected with mark
iv. Fame/reputation is such
that, when mark used,
connection would be
presumed
c. Hornby v. TJIX Cos.
i. T registered TWIGGY for
clothing. H tried to cancel.
Factors 1/3 not disputed
(close approx. and not
connected). Found to
factors 2 and 4 went to H:
she was very famous AND
its clothing, and she was
clothing model
3. Geographical Indications Test :
TMEP 1210.08(a)
a. Trademark may be denied if
geographical indication:
i. Used on or in connection
with wines and spirits
ii. Identifies a place other
than origin of the goods
and
iii. Is first used on or in
connection with wines or
spirits by the applicant on
or after 1 year after the
 date which the WTO
agreement enters into
force with respect to U.S.
b. Or:
i. Primary significance of the
relevant term or design is
geographic
ii. Purchasers would likely to
think that the goods
originate in the geographic
place identified in the
mark
iii. Goods do not originate in
the place identified in the
mark
iv. This error would
materially affect
purchaser’s decision to buy
the goods
v. Mark first used in
commerce on or after Jan.
1, 1996
4. Disparaging Test under TMEP 1203.03:
a. What is the likely meaning of the
work in context of:
i. Other elements of the
mark
ii. Nature of the goods or
services
iii. Manner of use in the
marketplace?
iv. If refers to a group, is it
disparaging to a
“substantial composite” of
the group?
v. Doesn’t have to consult
supervisor before refusing
b. Under Matal v. Tam found
unconstitutional because of
1st Amendment
5. Immoral/Scandalous Test under
1203.01:
a. In context of market for
applicant’s goods
b. From standpoint of substantial
composite of general public
 c. And in terms of “contemporary
attitudes”
d. Needed to consult supervisor
before refusing
e. Found unconstitutional
under Iancu v. Brunetti
because of viewpoint
discrimination
ii. 2(b): Government flags, seals, symbols
1. Denied registration if:
a. Consists of or comprises:
i. Flag or coat of arms or
other insignia of U.S.;
ii. Any state or municipality;
iii. Any foreign nation;
iv. Any simulation thereof
iii. 2( c ): Name, portrait, of living persons
without consent (or deceased president during
life of spouse)
1. Denied registration if consists or
compromises:
a. Name portrait or signature
identifying a particular living
individual except by written
consent or;
b. The name, signature, or portrait
of deceased POTUS during life of
widow without consent
2. TMEP 1206: Need consent if person:
a. Associated with goods
b. Publicly connected with the
business; or
c. So well-known public would
reasonably assume the
connection
3. Consent may be inferred from
individual’s actions
4. No secondary meaning exception
iv. 2(d): Likelihood of confusion with earlier
mark
1. Must confuse with earlier mark in PTO,
or mark or trade name, and likely cause
confusion. But PTO may issue
concurrent registrations if doesn’t
think confusion, pursuant to
TMEP 1207
2. E.I. Dupont de Nemours (1973):
 a. Similarity of marks in
appearance, sound, meaning
b. Relatedness of goods or
services defined in the
applications
c. Many other factors (see the
slide):
i. Similarity of trade
channels
ii. Buyer care/ conditions of
sale
iii. Similar marks in similar
goods
iv. Existence of valid consent
v. Similarity of goods and
services
3. Stone Lion Capital v. Lion Capital:
a. Lion said likelihood of confusion:
i. Similar marks
ii. Services very similar
(financial)
iii. Because services similar,
trade channel and target
customers similar
iv. Customers are more
sophisticated/ specified,
but could be confused
b. Could be different if:
i. Senior mark not well-
known
ii. Many similar LION marks
in industry
iii. Coexisted without actual
confusion
iv. Evidence showing minimal
confusion
v. Evidence of process clients
choosing services
vi. Parties each use other
differentiation
vii. Parties operate in different
and remote areas
v. 2(e):
1. Descriptive or deceptively
misdescriptive
a. allowed with secondary
meaning
 b. If deceptive but doesn’t base the
consumers or a substantial
amount, then no harm no foul,
may be registrable
c. Descriptive Marks: TMEP
1209.01:
i. Descriptiveness
determined in context of
the goods. May describe
ingredients, quality,
characteristic of good,
feature, function
d. Deceptively Misdescriptive
(1209.04):
i. Does it misdescribe the
goods?
ii. Is it deceptive? (will
believe it)
iii. Misdescription must
be a plausible, relevant
(NOT SIGNIFICANT)
part of purchase
iv. If the deception
materially affects (i.e.
highly relevant or
SIGNIFICANTLY
INDUCES) it is
deceptive and can
never be registered

2. Primarily geographically descriptive

a. Allowed with secondary
meaning
b. Test:
i. Primary significance of the
mark is a generally well
known geographic location
ii. Goods/services originate
in the place identified in
the mark
iii. Buyers would likely to
believe products originate
there
c. In Re The Newbridge Cutlery Co:
i. TTAB rejects
NEWBRIDGE on (1); Fed.
Circ. reverses because
 town (small place in
Ireland) is generally
unknown to US Public.
Therefore not
primarily
geographically
descriptive
3. Primarily geographically deceptively
misdescriptive
a. Never allowed
b. Test:
i. Primary significance of
mark is a generally well
known geographic location
ii. Goods / services do not
orginate in the place
identified in the mark
iii. Buyers would believe
the products originate
there
iv. The mispresentation is
a material factor in
significant portion of
the relevant
consumer’s decision to
buy the goods or use
the services
c. In Re Miracle Tuesday
i. Fed. Cir. And TTAB affirm
denial because JPK Paris
was primary significance is
Paris, customers would
think they come from Paris
when they don’t, and
people want Paris fashion.
Mark cannot be
registered
4. Primarily a surname
a. Allowed with secondary meaning
b. Test:
i. Is the surname rare?
ii. Is the surname of anyone
connected with applicant?
iii. Does it have meaning
other than as a surname?
 iv. Does it have “structure and
pronunciation” of a
surname?
v. Is stylization/lettering
distinctive enough to
create separate
commercial impression?
c. Ex: Bannerman
i. Rare (only 80 people in
US)
ii. Name is like a profession
(FIREMAN, POLICEMAN)
iii. Not connected with
applicant
iv. Other meaning, like flag
carrier
v. Approved
5. Functional
a. Never allowed
b. In re Becton, Dickinson & Co.
i. Cap design for medical
tubes closures
ii. Refused as F(x) and
multiple affirmed
iii. Utilize Morton-Norwich
Factors: Utility patent?;
competitive advantages?;
use advantages?;
competitors needed to
copy these features to
compete
2. Remember for secondary meaning:
a. PTO may accept as prima facie evidence of secondary
meaning if:
i. Substantially exclusive and continuous use of
mark in commerce for five years
VII. Likelihood of Confusion (§32 of Lanham Act)
a. Lanham Act §32:
i. (1): Provides ™ registrant with remedies against anyone
who:
1. Without consent
2. Uses in commerce
a. What does this mean?
b. Debated, but generally don’t overthink it:
i. See Rescuecom v. Google
1. Google has “Adwords” keyword
advertising program
2. P bought its TM as keyword
3. But D.C. dismissed saying Adwords offer
is not a mark in commerce; 2nd Cir.
States that sale of a keyword is in
commerce, even though Google
did not use it to identify
goods/services
a. Potentially different
standard than for
registration? Just likelihood
of confusion vs. actual ID of
product/source
b. Lower standard for use in
commerce than with
registration
ii. Extraterritorial Application
1. Steele v. Bulova Watch Co. (SCOTUS)
a. P is US company and seeking to
stop D, a Mexican company, from
making fake watches and then
having US tourists buy them and
bring them in. Thus, Lanham
Act could apply because D’s
conduct not totally outside
US and could still harm P’s
reputation in the US
3. Any reproduction, counterfeit, copy, imitation of registered
mark
4. In connection with sale, offer, distribution, or advertising of
5. Any goods or services
6. Likely to cause confusion
7. See also Reverse Confusion
b. Generally, likelihood of confusion is protecting customers// recognizes
customers may be confused.
c. AMF, Inc. v. Sleekcraft Boats (9th Cir. 1979)
i. 8, non-exhaustive, non-exclusive factors. Not one is
dispositive.
1. Strength of the Plaintiff’s Mark
a. Conceptually
b. AND in the marketplace
2. Proximity (Relatedness) of the Parties’ Goods
3. Similarity of the Marks
4. Actual Confusion
a. But this is not required nor dispositive
i. Stork Restaurant v. Sahati
b. Coexistence of a substantial time may mean confusion
unlikely
i. Ex. Cohn v. Petsmart (9th Cir.)
5. Marketing Channels Used By The Parties
6. Types of goods and care exercised by the purchaser
a. Stork Restaurant, Inc. v. Sahati:
i. TM protects the “ignorant, the inexperienced,
and the gullible”
b. Inexpensive products are bought more in a hurry;
expensive products bought with care
7. D’s intent in selecting the mark
a. Junior user’s intent:
i. If malintent: it can be weighed and bad
ii. But if good faith, may not be mitigating
(more neutral)
8. Likelihood of expansion of product lines
a. See Stork Restaurant v. Sahati
i. Idea of businesses expanding and “branch”
restaurant
ii. 2nd Cir. Uses Polaroid Factors
1. Here, says you can still have confusion even if the goods
don’t directly compete with each other

d. Gallo v. Consorzio (N.D. 1991)

i. E&J major seller of mass-market, low-priced wines. GN is Italian
trade association of wine makers. E sued G for tradenmark
infringement. SJ for EJ:
1. Gallo has secondary meaning and strong marketplace
strength
2. Gallo is the dominant component of both marks
3. Both sell wine; goods fall in same class for registration
4. Both sell in wine shops and advertise in magazines
5. Wine is an impulse product
6. GN survey: trivial level of likely confusion
 7. GN picked TM knowing of E&J’s mark: this may be intent to
confuse
8. Expansion not discussed

e. C.f. Banfi Products v. Kendall-Jackson Winery: (EDNY)

i. KJ: COLLINE DE NASSI; Banfi: COL DE SASSO. Banfi wanted
dec. relief of non-infringement and granted
1. KJ’s mark: strong conceptually but not in marketplace
2. Words similar but different labelling; favors Banfi
3. Products differ in ways material to consumers (different
prices, different wines)
a. Different stores sell, different price points
4. No actual confusion stated by KJ
5. Banfi had good faith use
6. Banfi wine not of lesser quality
7. States that wine purchasers are more discerning

f. Maker’s Mark Distillery v. Diageo (6th Cir.)

i. Finding likelihood of confusion on Maker’s Mark red seal
1. Red Seal found very strong and distinctive, highly
recognized, used a lot in ads
2. Products only “somewhat related”
3. Similarity “narrowly favors” Maker’s despite different word
marks
4. Lack of actual confusion not important; much more limited
opportunity to confuse
5. Marketing channels somewhat similar; marginally favors
Maker’s
6. Degree of purchaser care “clearly favors” D: substantial
weigh
7. Lack of intent to infringe no weight (neutral for good faith)
8. No evidence of expansion, so “no weight”
VIII. Other Confusion
a. Initial Interest Confusion
i. This is becoming much less favored generally. The idea is not that
consumers will confuse the source of the goods, but consumers may
think the infringing good is the actual good, realize it, and still
purchase it. Literally they become “initially interested”
ii. Brookfield v. West Coast Entertainment (9th Cir.)
1. “sizeable number of consumers” looking for P might use D
instead
2. Although no source confusion, there is initial interest, so
D “improperly benefits from P’s goodwill”
3. Which factors matter in Internet?
a. Similarity of the marks
b. Relatedness of goods and services
c. Similarity of marketing channels (both use internet)

iii. Network Automation v. Advanced Systems (9th Cir.)

1. D sold AUTO-MATE scheduling software, P sold
ACTIVEBATCH. D bought “activebatch” as advertising
keyword. D.C. granted injunction:
a. Parties used the same exact mark
b. Goods were the same
c. Both marketed through internet
d. Initial Interest:
i. It captured the attention even if no sale is made
ii. Using P’s goodwill just get people to visit its
site
2. BUT NINTH CIRCUIT REVERSED
a. Changes the internet factors:
i. Strength of the mark
ii. Evidence of actual confusion
iii. Type of goods and care exercised by the
purchaser
iv. Labeling and look of the ads and
surrounding context on results page
1. New Sleekcraft factor to consider
2. Idea of new technology

iv. Multi-Time Machine v. Amazon (9th Cir.)

1. D doesn’t sell P’s watches. But if you search P’s name, you
get other goods that are similar. 9th Cir. Affirmed summary
judgement for D:
a. Strength of mark
b. Lack of evidence of actual confusion
c. Type of goods and care exercised by purchaser
i. Expensive watches, and consumers more
careful on internet
 d. Appearance of listings and surrounding context
i. Clear demarcation of sponsored ad
ii. Clear labeling of brands etc. eliminates initial
interest confusion

b. Reverse Confusion
i. Reverse confusion occurs when the senior user is A
SMALLER company, and the junior user is A BIGGER
company. It changes some of the factors and different
considerations
ii. Big O Tire v. Goodyear (10th Cir.)
iii. Dreamwerks Production v. SKG Studio (9th Cir.)
1. 3 factors are pivotal:
a. Conceptual strength of the mark
b. Similarity of sight, sound, and meaning
c. Relatedness of the goods
2. Changes the Sleekcraft factors:
a. Strength of the mark conceptually and in the
marketplace
i. Marketplace strength of the JUNIOR
USER’S MARK
b. Proximity (relatedness) of the parties’ goods
or services)
c. Similarity of the parties’ marks
d. Evidence of actual confusion
i. AMONG THE SENIOR USER’S
CUSTOMERS
e. Similarity of the parties’ sales and marketing
channels
f. Types of goods; how careful are purchasers
when buying?
g. Junior user’s intent in adopting the mark
h. Likelihood of expansion of product lines

iv. Uber Promotions v. Uber Tech

1. Claimed that big guys were hurting little guys party prod. Co.
2. Changed the remedy by making Uber stop its
specific party // driving service in that area, not in
all Florida or nationwide
IX. Right of Publicity and False Endorsement §43(a)
a. Statute:
i. §43(a): False designation of origin Section
1. This covers unregistered marks, trade dress infringement,
false endorsement (and overlaps with Right of publicity)
2. Originally meant geographic origin, but now it is
interpreted much more broadly to mean source
origin, sponsorship, and approval
3. When is this useful?
a. If you don’t have a Federal Registration
b. If you can’t get a federal registration (no use in US
commerce)
c. The confusion is false endorsement
d. To complement §32 claim or right of publicity claim:
i. Registration vulnerable to attack
ii. State law has limitations:
1. Geographic extent of injunction (only
state vs .federal)
2. Or if the infringing use does not fall in
the statute
ii. §43(a) statute:
1. Any person who… in connection with any goods or services…
2. Uses in commerce any word, term, name, symbol, or device…
or
a. What does use in commerce mean?
b. Belmora v. Bayer
i. P owned FLANAX in Mexico, D used FLANAX
in US for same goods and made ads trying to
“pass off”. P got TTAB to cancel registration
and sued for false association. 4th Cir. States:
1. Does not require P to have US TM
rights or use mark in US. Only
need to show that likely to be
damaged by D’s use in US
commerce
2. Under Lexmark, you can bring:
a. Claim fails within §43(a) “zone of
interests
b. Violation was proximate cause of
plaintiff’s injury
3. Bayer met this:
a. Deceptive mark falls under
Lanham Act
b. Proximate harm because:
i. Visitors from Mexico in
the US may buy D’s
product
 ii. May not lead them to buy
Bayer’s product after
returning to Mexico
3. Any false designation or origin,
4. False or misleading description [representation] of fact,
which:
a. Is likely to cause confusion or to cause mistake
or to deceive as to
i. Affiliation connection or association of such
person with anther person
ii. Origin, sponsorship or approval of his or her
goods, services, or
iii. Commercial activities by another person or
b. In commercial advertising or promotion,
misrepresents the nature, characteristic,
qualities, or geographic origin of his or her or
another person’s goods services or
commercial activities
5. May be liable
6. NOTE: THERE IS NO REGISTRATION
REQUIREMENT IN THIS
b. Unregistered Marks:
i. Viacom v. IJR Capital (5th Cir.)
1. D uses “Krusty Krab” as store name. P had licensed it for
multiple uses, but not for restaurants. But P had licensed
“Bubba Gump” for restaurants. D filed ITU for Krusty Krab,
P sues under §43(a). 2 questions: is Krusty Krab a
source identifier (even if unregistered?); Was there
sufficient likelihood of confusion by D’s use?
a. 1) Is this a protectable source identifier?
i. The work must:
1. Create a distinct commercial
impression identifying the source
a. Ex. ROMULANS doesn’t work,
but DAILY PLANET does
2. Was Viacom’s Use Enough?
a. Yes. KK used in nearly all
episodes, key plot setting. Used
in other licensed merchandise
(shows it was already being used
as source identifier and had
commercial value)
b. 2) Did D’s use create likelihood of confusion? Yes
i. P’s mark is strong conceptually and in
marketplace
ii. Identical words
 iii. Related services because customers may think
P licensed (Bubba Gump)
iv. Unclear on parties’ purchasers
v. Unclear on marketing channels because D had
not advertised
vi. Just knowing of P’s trademark doesn’t mean
intent to infringe
vii. Survey: Lots of people (>30%) thought P
operated the restaurants
c. Therefore, confusion likely
c. Trade Dress
i. Two Pesos v. Taco Cabana (SCOTUS)
1. P was Mexican restaurant with particular look. D opened up
Mexican restaurant with similar interior. Question is if
trade dress that is inherently distinctive needs
secondary meaning to be protected under §43(a)
2. SCOTUS says NO. This would be weird. Inherently
distinctive does not require secondary meaning for
trade dress protection.
a. Won’t hurt competition because functional designs
not protected
b. Secondary meaning requirements burdens start-ups
ii. Conopco v. May Department Stores
1. P relaunched lotion. D created private store version to
compete. P sued under §43(a). Fed. Circ. found for D:
a. One customer’s actual confusion is not enough
b. Also, specifically different:
i. D had specific, broad logos on bottle
ii. Parties’ products are side-by-side which means
customers would distinguish
d. False Endorsement:
i. Teacher says that False Endorsement is Broader than Right of
Publicity
1. Allen v. National Video
a. D hired look-alike of P for print ad. NY ROP required
using the actual likeness, not a lookalike. But D
found liable under §43(a):
i. Deception analogous to TM
infringement
ii. Damages P’s personal brand of
endorsements, career
iii. Polaroid shows likelihood of confusion
2. Waits v. Frito-Lay, Inc. (9th Cir.)
a. Voice sound-alike was found to violate ROP and
§43(a)
b. 9th Cir. Agreed:
 i. Celebrities “distinctive attributes” amount to
unregister TMs protected under §43(a)
3. White v. Samsung Electronics
a. Fact question under Sleekcraft
i. Mark is celebrity’s persona
ii. Strength of mark is celebrity’s recognition
iii. Similarity of marks:
1. Seems ambiguous
iv. Marketing Channels: White in magainze
v. Purchaser Care:
1. Buyers not careful in determining
endorsers
vi. Intent to spoof does not preclude intent to
confuse
vii. Likelihood of expansion not relevant to
endorsement
ii. Grande-Butera v. Forever 21 (C.D. 2019)
1. Claiming using Ariana Grande’s likeness in promoting the
ads. Questions of when they can use celebrity in ad:
authorized use, and newsworthy. But this can be
confusing
X. Dilution
a. §43c: Trademark Dilution Revision Act of 2006
i. Protects Brand Owners, Not Consumers
ii. Does not require competition or likelihood of confusion
iii. Defined Famous
1. Widely recognized by the general consuming public
of the U.S.
a. Must be famous before defendant’s use
2. Extent of advertising, third party publicity
3. Amount, Volume, Geographic Extent of Sales
4. Extent of actual recognition
5. Whether mark is registered on Principal Register
iv. Six nonexclusive Factors for Dilution by Blurring: Hurts
Mark’s Distinctiveness
1. Degree of similarity of the marks
2. Degree of inherent of acquired distinctiveness of the famous
mark
3. Extent of plaintiffs substantially exclusive use of mark
4. Degree of recognition of famous work
5. Whether D intended to create an association with mark
6. Any actual association between the marks?
v. Defined dilution by tarnishment: Harms the Reputation of
Mark
1. No set of factors but….
a. Usually when marks associated with sex or drugs
b. Sometimes when mark itself is being disparaged (ex.
Deere)
c. Sometimes when the defendant’s goods are being
disparaged
2. Association that Harms the reputation of the famous mark
a. American Express v. Vibra (SDNY)
i. Held to tarnish when using American Express
similar looks on condom packages
b. Dallas Cowboys Cheerleaders: Using in porn
c. Hershey Co. v. Conscious Care: Using in edibles
3. Deere & Co. MTD Productions (2nd Cir.)
a. Used P’s brand in ad
b. 2nd Cir. Found tarnished:
i. It’s amusing, but crosses the line. May cause
consumers to “attribute unfavorable
characteristics” to mark
4. Nordstrom v. Nomorerack (W.D. Wash.)
a. P is Nordstrom, but D operates online retail. P sueing
for tarnishment using customer complaints of D’s
service. D responds by showing evidence of good
customer service, repeat customers, and no way to
correlate complaints with actual reputation.
 b. Court held facts insufficient to show shoddy
reputation
vi. Fair Use exclusions
1. Fair Use, Nominative, or Descriptive Fair Use, other than as
a mark
a. Comparative Advertising
b. Parody, criticism, comment on famous mark owner
i. Remember: successful parody used as a mark
may not be blurring but:
1. May reduce blurring factor of degree of
similarity
2. May enhance, not impair, famous
mark’s distinctiveness
3. May enhance its recognition too
ii. Louis Vuitton v. My Other Bag (SDNY)
1. D using P’s design as “My Other Bag”
was a fair use. It was a successful
parody and not being used as a
trademark
iii. Louis Vuitton v. Haute Diggity Dog (4th Cir.)
1. 4th Cir. Holds:
a. No likelihood of confusion
b. Dilution by blurring:
i. Fair Use Defense Did
Not Apply: the
“Parody” was a
designation of source
ii. But the imperfect
association enhanced
distinctiveness of LV’s
mark, so not blurring
2. News reporting and commentary
3. Any noncommercial use of the work
a. MasterCard v. Nader 2000 (SDNY)
i. Using P’s logo was not dilution. Why? Because
it was noncommercial, political speech
vii. Burden of Proof as to trade dress
1. Plaintiff must prove:
a. Nonfunctional and is famous
b. Fame of the trade dress is separate from that of any
mark contained in it
viii. Monetary remedies, seizure/destruction for willfulness
b. Dilution by Blurring
i. PerfumeBay.Com v. Ebay Inc. (9th Cir.)
1. D is EBay, looking at all the other Xbays sites.
2. (1) its mark is famous; (2) the defendant is making
commercial use of the mark in commerce; (3) the defendants
 use began after the plaintiff’s mark became famous and (4)
the defendant’s use presents a likelihood of dilution of the
distinctive value of the mark.”
3. Found diluted
ii. Starbucks Corp. v. Wolfe’s Borough Coffee (2nd Cir.)
1. D using Charbucks for dark roasted coffee. P suing on
multiple grounds. 2006 Act leads to appeal
2. No likelihood of dilution, but 9th Cir. Remands and D.C.
finds again no likelihood
a. Marks were minimally similar in context (D)
i. 2nd Cir. Disagrees with this: NOT A
SUBSTANTIALLY SIMILAR STANDARD, BUT
DEGREE OF SIMILARITY (under Perfumebay
v. eBay)
ii. D.C. #2: Minimally similar only (see black bear
in logo)
b. Starbucks is highly distinctive (P)
c. Starbucks making substantially exclusive use
of mark (P)
d. Starbucks highly recognized (P)
e. D intended to create association but no bad
faith (D)
i. 2nd Cir: Lack of bad faith irrelevant
ii. D.C. #2: bad faith irrelevant
f. Evidence of only 3.1% confusion means no
actual confusion (D)
i. 2nd Cir.: actually 30% and this is actual
association
ii. D.C. #2: 30% is much less than 70% in Visa v.
ESL (9th Cir.)
c. §43(c): Federal Trademark Dilution Act 1995 (OLD)
i. Owner of the mark is “famous”
ii. Can enjoin a mark first used after its mark became famous, if it:
1. Causes Dilution of the distinctive quality of the mark
iii. Nonexclusive factors for “distinctive and famous” are:
1. Degree of inherent or acquired distinctiveness
2. Duration and extent of use of mark for goods/services
3. Duration and extent of advertising and publicity
4. Geographical extent of the trading area
5. Channels of trade for the P’s goods
6. Degree of recognition in the trading area and the channels of
trade
7. Nature and extent of third party use
8. Is mark on Principal Reigster?
iv. “Niche” fame of general public fame?
v. Marks do not need to be identical -à can be “substantially
identical”
 1. Ex. Trek/Orbitrek; Herbrozac/Prozac
d. Idea is not protecting consumers perse, but protecting brands because
they are so famous that other use would hurt their brand
i. History:
1. Schecter, Harvard Law Review, 1927:
a. Idea of “whittling away” from very distinctive, well-
known TMs
2. Federal Law in 1995, revised in 2006
e. Moseley v. Secret Catalouge, Inc.
i. P sued D for having “Victor’s Secret Catalogue”
1. Saying that “likely to blur”; 6th Circ. agreed
a. No actual harm required to prove dilution
2. But SCOTUS reverses and causes issues:
a. Merely one person made association and was
offended, but showed he could differentiate. NEED
ACTUAL HARM, but could be through
circumstantial evidence
3. Leads to 2006 Dilution Act (ABOVE)
XI. Other False Claims
a. False Advertising: misrepresentation about source of product
i. Different ways to get liability:
1. Commercial Parties (not consumers)
a. §43(a) of Lanham Act
i. Southland Sod v. Stover Cod. (9th Cir.)
1. Elements of false advertising claim
under §43(a):
a. False statement of fact in
commercial ad about
one’s/another’s product
b. Statement actually deceived or
has a tendency to deceive a
substantial segment of the
audience for the ad
c. Deception is material (likely to
influence purchasing decision):
i. Does it affect address a
product feature of concern
to consumer?
ii. Are they likely to rely on
it?
iii. Does the false statement
depart from the facts to a
non-trivial degree?
d. D caused false statement to enter
ISC
e. P has been/likely to be harmed as
proximate result:
i. Direct diversion of sales
from P to D or
ii. By lessening goodwill
associated with P’s
products
b. What is standing to assert a §43(a) claim?
i. Must be:
1. Zone of interests in Lanham Act?
2. Lanham Act violation proximately
caused harm?
ii. Lexmark v. Static Control (SCOTUS)
1. P (SCC) sueing D (Lexmark) under
counterclaim stating that their prebate
program for cartridges misleads buyers
that they are legally bound by prebate
terms and it is illegal to sell refurbished
Prebate. Issues on standing of P
2. SCOTUS:
 a. P had standing because:
i. P claim had “zone of
interests” under Lanham
Act because of: 1) §45’s
broad statement of
interest; 2) Act covers
injury to commercial
interests in reputation or
sales; 3) P not an injured
consumer but injured
person engaged in
commerce
b. P alleged proximate harm
because of §43(a) violation:
i. Consumer deception that
causes plaintiff to lose
sales is proximate cause
ii. P proximately harmed by
D where: 1) D falsely
advertised P infringed its
patents; 2) D false
advertising hurt
remanufactures who were
P’s customers
c. Common law
d. State Unfair Competition Laws
2. Government Agencies
a. FTC
b. FDA
c. State Attorney Generals
d. County District Attorneys
3. Industry “self-regulation”- BBB
4. Lanham Act is brought by competitors, FDCA
brought by government which brings food safety
ii. Trademark Infringement is one type, but false advertising broader:
1. Misrepresentation about characteristics of product
2. Misrepresentation about geographic origin of
product
3. Misrepresentation about who endorses/sponsors
product
4. DOES NOT REQUIRE INTENT
a. But this can be an aggravating factor
iii. Advertisement create liability if:
1. Literally false or
a. See literal falsehood
b. Plaintiff does not have to prove the statement was
deceptive
 2. True, but misleading
a. Plaintiff must provide it deceived or tended to deceive
3. False advertising must be material to the buying decision
4. Objective claim lacking substantiation can be a false ad
5. Puffing is not false advertising:
a. So grossly exaggerated claims no reasonable buyer
would believe
b. General claims of comparative superiority over
another product, e.g.
i. Matters of opinion: “finest, improved,
America’s favorite”
ii. Not objectively measurable
iii. Provided context doesn’t give objective,
quantifiable meaning
iv. Definite and measurable claims are not
puffing

iv. MillerCoors LLC v. Anheuser-Busch (Washington)

1. P sued D for advertisement on high fructose corn syrup. P
saying only using corn syrup for fermentation not in beer.
But saying that D’s ad said it did contain corn syrup
2. Court:
a. Breaks down claims:
i. Made with/ brewed with/ uses corn syrup is
literally true
ii. But 100% less corn syrup/ no corn syrup:
misleading
1. Survey evidence showed likelihood of
confusion
iii. Remedies:
1. Can’t say 100% less corn syrup, no corn
syrup, without reference to made with,
etc.
2. Can’t say Corn syrup is in the finished
product
b. Literal Falsehood
i. Kwan Software v. Foray Tech (N.D. Cal.)
1. Only an unambiguous message can be literally false
2. If suspectable to multiple interpretations, ad can’t be literally
false
3. Statements analyzed in their full context
4. Including background and experience of
sophisticated buyers
ii. Clorox v. Proctor Gamble (1st Cir.)
1. D called product Ace with whitener, but it did not contain
chlorine bleach. Stated impossible to get it whiter. P sued
 saying detergent can’t get more white than. D changed ad to
say include “compare with detergent.”
a. Intense court history – First Circ. stated P stated a
claim:
i. P sufficiently stated ads were “literally false”
1. Jury could conclude ad claimed D
superior to detergent and bleach
2. Modified ads claimed superiority over
bleach still
3. The product name could be literally false
(detergent not a whitener)
ii. P showed that ads could be true but misleading
(this would go above)
1. Survey: 35% people thought did not
needed to use bleach
2. Misleading depends on impact on
audience, not on court
iii. D’s claims were not puffery
1. Whiter is not possible may be puffery,
but by comparing to detergent+ bleach,
it makes it measurable
iii. Coca-Cola v. Tropicana Products (2nd Cir.)
1. D claimed orange was pure pasteurized juice and only brand
not made with concentrate and water. Showed Jenner
pouring fresh-squeezed juice into carton. P said this was
false because juice pasteurized.
2. Court: 2nd Cir. Grants P’s injunction:
a. Flawed survey still showed some consumers deceived
b. Ad was facially false:
i. Pouring fresh-squeezed juice makes it seem
like juice is fresh-squeezed
ii. Pasteurized juice as it comes from the orange is
blatantly false
iii. Misrepresentation of product’s inherent
quality/characteristic
iv. Ad explicitly false so no need to prove it
tended to deceive buyers
c. Misleading Representations
i. McNeil-PPC v. Pfizer Inc. (SDNY)
1. D ran ad that:
a. Using D ad was as effective as flossing, studies
proving it, and showed D’s product winding through
teeth like floss. But D did say no substitution for floss,
but if you didn’t floss you could get benefits from D’s
product
b. P sought preliminary injunction for literally false and
misleadingly implied
 2. D stated that two studies, but only corroborated some claims
3. P showed two surveys
4. Court stated:
a. P likely to succeed on literal falsity claim:
i. Clinical studies to prove D as effective as
floss
1. P only needs to show studies not
sufficiently reliable for that conclusion
a. Studies did not show that, and
D’s claims from these studies
were overly broad and not
reliable
b. P likely to succeed on implied falsity
i. Implied falsity is D product replacement for
floss
ii. This is false because studies don’t support
claim and flossing provides extra benefits
5. Pom Wonderful v. Coke (SCOTUS)
a. P alleged D label misleading under §43(a)
b. D stated that FDCA and other regulations precluded
Lanham claim, 9th Cir. Agrees.
c. SCOTUS reverses:
i. Neither Lanham act nor FDCA precludes the
other
ii. FDCA empowers expertise of FDA on food
safety
iii. Lanham Act empowers expertise of consumers
on the market
iv. The two complement each other
ii. Coors Boors v. Anheuser Busch (SDNY)
1. P touted it had “rocky mountain spring water”, but actually
shipped concentrate added water. D’s ad pointed this out. P
sued for false advertising
2. D.C. denied P’s injunction:
a. Ad not literally false:
i. Concentrated is ambiguous, so not literally
false
ii. Diluted isn’t literally false: water is added
b. Not false by implication (not true but
misleading)
i. Proving ad false by implication required
evidence of confusion
ii. P’s survey didn’t show
1. Utilized misleading questions: “based on
this commercial” are P and D made
same way?
2. No support for claim D falsely said all P
blended
3. No support that there was difference
between Colorado P and Va P
4. No extrinsic evidence to support implied
falsehood
XII. Secondary Liability
a. Vicarious Infringement (like Joint Tortfeasors)
i. D has:
1. the ability to control the infringer’s conduct AND
2. Derives a direct financial benefit from the infringement
b. Life Alert v. LifeWatch
i. D controlled telemarketers using P’s tagline to sell D’s product and
got direct financial benefit (it was selling D’s product)
c. Contributory Infringement (like aiding and abetting)
i. D:
1. Induces the infringer to infringe OR
2. Supplies the means to infringe knowing of the infringement
ii. Inwood Lab v. Ives Labs (SCOTUS)
1. P had patent for drug, sold under mark in blue or blue/red
capsules. D used the colors and said it was equivalent to P’s
mark. Pharmacists then labelled D’s generic as P’s mark.
Complex history in court, but SCOTUS says:
a. D only liable if they:
i. Intentionally induced pharmacists to mislabel
or
ii. Continued to supply to pharmacists knowing
they were mislabeling
iii. D.C. stated P failed to prove either point (fact
question). Remanded to appeals to decide the
§43(a) claims
iii. Life Alert v. Life Watch (9th Cir.)
1. P had famous tagline registered. D hired telemarketers who
used P’s tagline when selling. Contrib. infringement
found:
a. Evidence that D induced telemarketers to
infringe and continued to supply product
knowing infringement
b. Also see vicarious liability
iv. Tiffany Inc. v. Ebay Inc. (2nd Cir.)
1. D was Ebay, P saying lots of infringers selling fake goods and
D didn’t take down. 2nd Cir. Finds no contributory liability
a. First, no direct infringement of using P’s marks
(basically nominative fair use)
b. No contributory liability
i. Generalized notice may not be enough. Need
contemporary, specified knowledge of
listings
ii. When notified, eBay had taken down
infringements promptly (did not continue
to supply/ not willfully blind)
XIII. How Do You Lose Your TM Rights?
a. Genericness
i. General Idea: The right has lost its ability to act as a single source of
goods because it has lost all specialized source identification
ii. How To Prevent:
1. Use the mark as an adjective, not a noun or verb
a. Exception is Google
2. Capitalize It
3. Display it prominently in distinctive stylization or logo
4. Use TM logo or ® if registered
5. TM notices (X product is a registered product of Y
6. Educate public and press
iii. Generic Words:
1. Bayer v. United Drug Co. (S.D.N.Y. 1921)
a. ASPIRIN was found generic among consumers. But
not found generic among physicians/pharmacists
b. To prevent genericide:
i. Enforcing the TM
ii. Putting notice (this is not generic)
iii. Never using as a VERB OR A NOUN, not
the main thing (ex. I’m going to XEROX
photocopy, I’m going to use Clorox
Bleach, etc.)
1. Exception may be really specific: for
example, Googling. Everyone knows
that this is Google

iv. How do you prove genericness?

1. Elliot v. Google (9th Cir. 2017)
a. P saying Google is generic because using as verb
b. Test is the primary significance of the
registered mark to the relevant public
i. Relevant Public: people who use search
internet engines
1. “casual non-purchasing uses are not
evidence of generic usage”
2. Determined by “use in context of
purchasing decisions”
3. Had expert opinions, linguist, surveys
4. Found just because verb does not
mean generic
2. Survey Evidence
a. King-Seeley Thermos v. Aladdin (2nd Cir.)
i. P wanted to stop D from using THERMOS
mark. D said that THERMOS generic. Both
sides used survey data:
1. D survey:
 a. Are you familiar with container
used to keep goods hot or cold?
b. What type of store you go to if
you wanted to buy one?
c. What would you ask for?
d. What other words for the
product?
e. If describes product, what words
come to mind?
f. What company makes these
containers?
g. Can you name any trademarks or
brand names for these products?
2. Court balances and said yes
thermos is generic for vacuum
bottles, but P has rights in
distinctive stylization and others
can’t call it “original” or “genuine”
b. E.I. DuPont de Nemours v. Yoshida (EDNY)
i. P saying D’s EFLON infringed its TEFLON
mark
ii. Better survey:
1. First explained what the difference
was between brand and common
names
2. Asked to identify names as brand
names/trademarks and common
names
3. Asked all adults about nonstick coatings
(not just women)
4. Then asked if they know the trademark
for these goods
b. Abandonment
i. §45:
1. A mark is abandoned if either occurs:
a. 1) When it’s use has been discontinued with
intent not to resume such use
i. Intent not to resume may be inferred
ii. Nonuse for 3 consecutive years is prima facie
evidence of abandonment
iii. “use” of mark means bona fide use of mark in
ISC, not just made merely to reserve a right in
the mark
b. 2) When the course of conduct of the owner…
causes the mark to become generic for the goods
or services on or in connection with which it is used or
otherwise to lose its significance
 i. Purchaser motivation shall not be a test for
determining abandonment under this
ii. What does abandonment look like?
1. Nonuse
a. Silverman v. CBS (2nd Cir.)
i. P had a cancelled TV show that was
problematic. Stop using in 1966. D then used
in a musical after 21 years. P sued and D stated
nonuse. 2nd Cir. Found abandonment:
1. CBS took shows off air because of
complaints
2. 21 years of nonuse; no plans to resume
use
3. Although P claimed intent to resume
use, Ct. said it was intent to resume
use in reasonably foreseeable
future
4. Limited licensing, limited
enforcement doesn’t “rekindle”
public identification
5. Balancing policy: favors use of
mark
b. Specht v. Google (7th Cir.)
i. S formed Android Data company. Stopped use
in 2002, and in 2005 Google purchased
Android, 2007 released Android. 2007, S tries
to revive Android TM, but doesn’t sell. 7th Cir.
Said S had abandoned the mark :
1. Nonuse for 3 years is prima facie
evidence of abandonment
2. Intent to resume use, must be
formed in those 3 years
3. S abandoned mark by 2007
4. Intent to resume in Dec. 2007 was
too late
2. Naked License
a. Eva’s Bridal v. Halenick (7th Cir.)
i. P licensed mark to D. Did not control
quality standards, never supervised, and
when license expired, D kept using
ii. Court held that P abandoned because naked
license
1. Reiterates that when you license,
you need to do enforcement and
quality control even if you believe
highly in D’s “high standards” etc.
XIV. Defenses to Infringement
a. See Incontestability above. Gives protections, but still many protections
upfront with distinctiveness, etc.
i. §14: Cancellation of Registration:
1. After five years, one can’t petition to cancel for:
a. §2(d): Likelihood of confusion
b. §2(e): Descriptiveness and lacking secondary meaning
c. §43(c)L Likelihood of dilution
d. Registrant’s lack of ownership of mark
ii. Does not bar defenses §33
1. Fraud
2. Abandonment
3. Registrant using to misrepresent source of the goods
4. D using it not as a mark and descriptively or own name
5. Innocent use in own territory
6. D has prior registration for its mark
7. P using mark to violate antitrust laws
8. P’s mar is functional
9. Equitable principles
iii. Can also be used to defend an attack by defendant
iv. See above for more
v. Park n Fly, Inc.v. Dollar Park and Fly
1. P sued D for infringement of incontestable mark. D tried to
say that P’s mark was descriptiveness. Issue arises if
incontestability bars the defense of descriptiveness, or if that
only applies to registration descriptiveness
2. SCOTUS:
a. Incontestable mark may not be challenged on
the grounds it is descriptive. And P can use
incontestability to enjoin infringement.
b. §14 protects against cancellation, §15 protects against
offensive use
i. And incontestable mark can be cancelled if it
becomes generic , but not descriptive
c. Third parties can make Non-TM descriptive
use of the mark
i. Here, “Park and Fly” was descriptive for D.
vi. Can you attack an incontestable mark as void ab initio?
1. No: Voidness for use at filing is not an enumerated defense
2. But this could be fraud
vii. Does incontestability mean the mark is strong?
1. Most courts (including 9th Cir.) say no.
2. But 6th and 11th Cir. Say yes.

b. Statutory Defenses:
i. Fraud on the PTO: §33(b)(1)
1. In re Bose Corp (Fed. Cir. 2009)
 a. P registered WAVE for audio goods. Opposed D’s
application for “HEXAWAVE”. D petitioned to cancel
P’s renewal because said fraud given P not using mark
on tape records.
b. Fed Cir says:
i. Mere negligence is not enough to infer fraud or
dishonesty
ii. No fraud if false statement from honest
mistake
iii. But, did say that tape recorders must be
deleted from registration
iv. Fraud must be proven “to the hilt”
2. Nationstar Mortgage v. Ahmad
a. D applied to register NATIONSTAR for mortgage
services. Claimed use under §1(a), but obviously
wasn’t (not licensed nor did he ever use the mark). D
opposed and alleged fraud.
b. TTAB agrees:
i. Application void
ii. D can’t later amend by filing ITU under §1(b)
iii. Filing without counsel is irrelevant, still fraud
ii. Classic Fair Use: §33(b)(2)
1. United States Shoe v. Brown Group (2nd Cir. 1990)
a. P registered “LOOKS LIKE A PUMP, FEELS LIKE A
SNEAKER.” D said “shoe feels like a sneaker.” Court
holds this was classic fair use:
i. D wasn’t using as a TM
ii. Only being used to describe its own
product fairly
iii. Court balancing:
1. Goodwill in descriptive marks with
secondary meaning and
2. Preventing competition/restraining
trade
iii. Functionality: §33(b)(8)
1. Traffix:
a. If design is functional under Inwood you stop.
b. If it aesthetic functionally, you need to consider 3
more steps:
i. 1) is it essential to use or purpose of product?
ii. 2) Does it affect cost or quality of product?
iii. 3) If answer above is no, would exclusivity put
competitors at a significant non-reputation
related disadvantage
2. Jay Franco & Sons v. Franek
 a. F had incontestable registration for round towels. F
sued JF for infringement, and JF sued F to say
functional registration.
b. D.C. gave JF summary Judgement and 7th Cir.
Affirmed using Traffix test:
i. Is the mark essential to the use or
purpose of product?
ii. Does it affect cost or quality of the
product?
c. Noted the expired utility patent: shows benefit and
“aesthetic functionality” because it was a fashion
statement
3. Christian Louboutin v. Yves Saint Laurent (2nd Cir.)
a. D.C. said that single-mark faction was inherently
functional so CL could not get an injunction prevent
all-red shoe
b. 2nd Cir disagreed: BUT WHEN QUALITX and
aesthetic functionality, consider more
i. Color can be protected if secondary meaning
ii. But found secondary meaning only in the
contrast, not the red sole in itself
iii. Mark not infringed by a red-only shoe
iv. Did not reach functionality (instead just
clarified what mark P had)
4. Automotive Gold v. Volkswagon (9th Cir.)
a. 9th Circuit: A product feature that contributes
consumer appeal isn’t, as a matter of law,
functional
b. Granting exclusivity to Volkswagon would not
hinder non-reputation competition because:
i. Volkswagon logo inherently tied to
Volkswagon
ii. Any disadvantage is because you are
appropriating Volkswagon goodwill, so
shouldn’t be able to
iv. Laches: §33(b)(9)
1. You waited too long
2. Pro-Football v. Harjo
a. Tried to cancel Redskins, but youngest plaintiff had
waited 8 years after turning 18 to sue
b. Fixed by adding a group of younger plaintiffs

c. Judge Made- Defenses

i. Nominative Fair Use
1. New Kids on the Block v. News America (9th Cir.)
 a. D ran ad with P’s name and used for poll. P stated
under §43(a) and ROP. 9th Cir. Granted SJ to D on
nominative fair use:
i. This kind of use doesn’t imply
sponsorship or endorsement
ii. Nominative Fair Use if:
1. The thing isn’t readily identifiable
without using the mark
2. Only so much of the mark is used
as necessary to make the
identification
3. User doesn’t do anything that
suggests sponsorship or
endorsement
iii. Concerns with censorship; P can’t control how
fans spend $$
ii. Comparative Advertising
1. Smith v Chanel, Inc. (9th Cir.)
a. D offers copycat of P’s fragrance. 9th Cir. Said could
use P’s marks:
i. TM foster competition. D could copy P’s
fragrances. P can’t “monopolize the
public’s desire” for unpatented product.
D’S USE DOES NOT MAKE P’s MARK
NONDISTINCTIVE OR GENERIC
iii. Expressive Use of Trademarks
1. Rogers v. Grimaldi (2nd Cir.)
a. P are famous actors / dancers. D made movie about
Italian performers who imitated them. P sues under
§43(a) and ROP.
b. Second Circuit:
i. Titles are hybrids of artistic expression and
commercial promotion
ii. Rejects no alternative avenues test
iii. ESTABLISHED TEST. Using celeb’s
name, no claim unless:
1. If title (or use or mark) has no
artistic relevance to the underlying
work whatsoever, OR
2. If title (use of mark) has some
relevance, it explicitly misleads as
to the work’s source or content
2. Louis Vuitton v. Warner Brothers (SDNY)
a. D.C. dismisses LV’s claim that WB appropriated and
diluted mark using Rogers v. Grimaldi test:
i. Use of bag had artistic relevance to the work
because it established comedic character and
 ii. Didn’t explicitly mislead as to source of content
b. Always concern of restricting expression
3. ESS Entertainment v. Rock Star Videos (9th Cir.)
a. Adopts Grimaldi test
b. P had Play Pen strip club. D used similar logo (Pig
Pen) in video game in fictional LA setting.
c. 9th Cir. Affirms D SJ:
i. Pig Pen had “some artistic relevance” to the
game
ii. Use of “Pig Pen” didn’t explicitly mislead as to
source of content
iv. Parody (Nominative Use that Pokes Fun and Criticizes)
1. Dr. Seuss Enterprises v. Penguin Books USA (9th Cir.)
a. Questions of parody vs. satire
i. This was not a parody: this was being used as a
gimmick, not as a way to point fun at Seuss’s
work
2. Mattel v. Universal Music International (9th Cir.)
a. Barbie Girl is a clear parody à it poked fun at Barbie
b. Under Rogers v. Grimaldi, also not infringement
i. Barbie’s name relevant to underlying work
ii. Title does not explicitly mislead to source of the
work
3. Mattel v. Walking Mountain Productions (9th Cir.)
a. Artist using Barbie dolls in photos was nominative fair
use and parody
i. Commenting on Barbie in the photo. This was
nominative, because you can’t make the parody
without using Barbie’s name and likeness
ii. Used only as much necessary to make
the parody identifiable
iii. Reasonable consumers would not
believe Mattel endorsed this