TRADEMARKS OUTLINE

a.

To recover for unfair competition, must show

i. ii. b.

Secondary meaning Likelihood of confusion

FUNDAMENTALS OF TRADEMARKS TRADEMARK: any mark used to identify goods regardless of whether it is an arbitrary or descriptive term. (LA 45). Includes common law trade names (which ID a persons business or vocation).

i. ii. c. i. ii.

Meant to protect consumers from being confused as to the source of goods or services. Benefit to consumers reduces cost of searching for a good/service.

Legal sources of TM protection: Under common law, TM rights are obtained through adoption and use. LANHAM ACT federal registration statute.

(1)

LA 43(a) and Uniform Deceptive Trade Practices Act cover TMs. Does NOT displace common law. Covers unregistered marks.

a. (2) (3)

Liability under 43(a) requires proof of confusion.

i.

Likelihood of confusion is a finding of fact.

2(e): descriptive TMs cannot be registered. 2(f): merely descriptive, primarily geographically descriptive, or primarily merely a surname marks CAN be registered IF DISTINCTIVE of applicants goods in commerce. secondary meaning requirement.

(4) Service marks (3), certification marks (4), collective marks (4). d. e. f. g.
Competitors must minimize possibility of confusion when using a generic name. Court considers whether had ill-will (i.e. passed off product as own, or deceived public). Cannot TM functional features of a product. Test for likelihood of confusion : whether persons exercising reasonable intelligence and discrimination would be taken in by the similarity [between goods/services]. (Shaw v. Time-Life, N.Y. 1975) Standard test for TM cases.

i. h.

If (broader) claim of unfair competition, EITHER likelihood of confusion OR unsuccessful attempt to fool the public might be adequate.

TYPES OF TMs (Zatarins v. Oak Grove Smokehouse, 5th C. 1983):

i. ii. iii.

Generic name of the products genus/class. No TM protection. Descriptive identifies a characteristic or quality. No TM protection unless there is proof of secondary meaning. Suggestive suggests a characteristic that requires consumers to exercise their imagination to make a link w/ the product. TM protection w/o proof of secondary meaning.

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iv.

Arbitrary/fanciful bears no relationship w/ the product/service. Always have TM protection.

(1) i.

Are incontestable have conclusive presumption of distinctiveness

Mark can be generic/descriptive/suggestive/arbitrary w/rt to some products and not others. Ask if the product requires the use of the mark to convey its nature to the customer.

2.

DESCRIPTIVE MARKS (& distinctiveness)

a.

A mark is DISTINCTIVE if it is

i. ii. b. i. ii. iii. iv. c. i.

Inherently distinctive Has acquired distinctiveness through secondary meaning.

Tests for classifying mark as descriptive (Zatarins) Dictionary definition Imagination test is descriptive if it conveys characteristics of the product by itself. Necessary competitive use is it foreseeable that competitors need to use the term to describe their own products Extent of competitive use do competitors already use it in describing their products

SECONDARY MEANING (2dyM) A TM that is inherently not TM-able (b/c descriptive) can gain TM protection if it has been used so long and exclusively by a producer in reference to his good/service that the mark has come to stand for the source to the purchasing public.

(1) d.

Can be proved by direct or circumstantial evidence.

Fair use defence: if an infringing term is used in good faith, fairly and in a descriptive (rather than TM) sense. (Car-Freshener v. S.C. Johnson & Son, 2d Cir 1995)

i. ii. iii. e. i.

Intent is irrelevant. TM holder only gets enough protection to prevent consumer confusion. All remaining uses stay available for public use. (Only the penumbra or fringe of 2dyM gets legal protection) Public has a greater right to use descriptive words/phrases than TM holders

Registration of deceptively misdescriptive marks is precluded. LA 2(e)(1), Test for misdescriptive marks (In re Budget Mfg. Co.)

(1)

Misdescriptive of the character, quality, function, composition or use of the goods? describes the goods?

(2) Are prospective purchasers likely to believe that the misdescription actually (3) Is the misdescription likely to affect the decision to purchase? f.
LA 2(a): prohibits registration of scandalous matter (but applicants get benefit of the doubt in unclear cases)

3.

GENERIC MARKS

a.

A term is generic if competitors need to use it. (Genesee Brewing v. Stroh Brewing, 2d Cir 1997)

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i. ii. iii. iv.

Terms that describe an entire class of products cannot be TMed. Primary significance test: applicant must show the primary significance of the term in the minds of the consuming public is not the product but the producer. The TM must BOTH identify the product and indicate the source before it can be TMed. Generic term can be TMed w/ a finding of acquired distinctiveness. (In re Seats, Fed Cir Ct. App. 1985)

(1) b. c. d. e.

Courts will defer to Trademark Trial and Appeal Boards finding of acquired distinctiveness.

LA 14(c): TM registration is cancelled if it becomes the common descriptive name of an article or substance LA 15(4): prohibits a common descriptive name from becoming incontestable De facto secondary meaning: where some consumers recognize the term as source-identifying, but the mark cannot be protected b/c it is generic Grounds for allowing protection of generic marks

i. ii. iii. f. i.

When a generic mark loses its descriptive characteristic and acquires purely secondary meaning. Where a generic mark is extended to include products in which they do not describe. When a TM name is attached to a patented article, and the patent experies.

Grounds for denying protection of generic marks Exact copies/phonetic equivalents infringe purely suggestive names w/ trade name significance.

4.

GEOGRAPHIC MARKS

a.

Registration shall not be refused UNLESS the mark is primarily geographically deceptively misdescriptive of the goods. LA 2(e)(2).

i.

Mark cannot be registered unless there is 2dyM under LA 2(f). Also the common law rule.

(1)

Alternately, there must be reasonable basis for believing consumers are likely to be deceived re geographic mark before protection is denied. (In re Nantucket, Ct of Customs & Patent App 1982.)

a.

Will commonly find deception where an area is known for excellence in a good, but the TM is applied to a product not from that area.

(2) No need for 2dyM if the TM is misdescriptive but NOT deceptive. (3) ii. b.
LA 2(a) prohibition on deceptive marks may also apply. Should as if there is public association of goods w/ an area. Presume there is a public goods/place association.

Geographic terms can be

i. ii. iii. iv.

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Inherently distinctive (incl. arbitrary and suggestive usage) Generic Descriptive Deceptively misdescriptive

v. c.

Deceptive

Certification mark: certifies that goods produced by someone other than the marks owner meets certain standards or comes from some particular geographic region.

i. ii. iii. iv. v. vi.

LA 2(e) excludes certification marks from its restrictions. 14(5), 15 USC 1064: owners of certification marks cannot produce goods under the mark, and may not discriminately refuse to certify goods meeting the marks standards.

Do not need 2dyM even if a geographic term. Must continue to indicate the regional origin, mode of manufacture, etc. Will be subject to cancellation if the certification mark acquires principal significance as a description of the goods.

vii. Are owned by someone other than the producers of the goods. d.
Collective marks: adopted by organizations to identify members (or the goods/services of its members). 15 USC 1127.

i. 5.

Also owned by organization but used by others.

PERSONAL NAMES

a. b.

Once an individuals name has acquired 2dyM, a later competitor must take reasonable precautions to prevent the mistake if s/he wants to use the same name. Following the Federal TM Act (1905), there can be limits put on an individuals right to use his/her name if confusion is likely. (Taylor Wine Co. v. Bully Hill Vineyards, 2d Cir 1978)

i. c. d.

19th & early 20th C courts tended to protect an individuals right to use his/her own name

Goodwill (including a personal name serving as a TM) is a property right can be bought and sold w/ TM protection. (Levitt Corp. v. Levitt, 2d Cir 1979) LA 2(e): precludes registration of a mark that is primarily merely a surname unless it has become distinctive under LA 2(f).

i. e. f. g. 6.

Test: What is the primary significance to the purchasing public? (Ex Parte Rivera Watch Corp., Com of Pat 1955)

LA 2(c): no registration of a name except by the individuals written consent. LA 2(a): prohibits registration of a mark that falsely suggests a connection w/ persons living or dead Trade names not protected under LA, but LA 3 protects service marks.

TRADE DRESS / SUBJECT MATTER

a.

TM protection limited to non-functional identification. (In re Morton-Norwich Products, Com of Pat 1982)

i. ii. b.

De facto functionality: functional in the lay sense De jure functionality: functional as to bar TM protection

Trade dress protection not given where it would prevent competitors from including the functional features needed to compete.

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i. c.

Colour can be TMd (Qualitex v. Jacobson Products, 1995) but color marks cannot be inherently distinctive. Is a source indicator.

To TM trade dress, must show

i. ii.

Design is non-functional Design indicates source

(1) (2) d. e.

2dyM required if the trade dress itself is not distinctive enough to identify the producer (Two Pesos v. Taco Cabana, US 1992) Always have to have 2dyM for trade dress. (Wal-Mart Stores v. Samara Bros)

LA 43(a) suits do not require a general showing of 2dyM. Trade dress protection relies on EITHER a showing of inherent distinctiveness or 2dyM. (Two Pesos) Functionality

i.

A design feature is functional if it is dictated by the functions to be performed. (Krueger)

(1) (2) (3)

Must leave sufficient alternative arrangements to permit competition i.e. is defined in terms of competitive need. (Vornado) No trade dress protection for functional features (Traffix) Expired patents create presumption of functionality (Traffix)

a. b. c.

Product configuration w/ a significant inventive component/invention covered by a utility patent cannot get trade dress protection after the patent expires. (Vornado Air v. Duracraft, Traffix) BUT configurations can be patentably useful and non-functional trade dress (Vornado) If conflict btw patent law and Lanham Act: balance relative importance of the principles to be infringed and disregard the weaker principle (Vornado)

i. ii.

No trade dress protection to a product feature if that same feature is a significant inventive element of a patented device (Vonado, p. 255)

Functionality design/appearance of the thing, NOT the thing itself.

(1) (2)

Distinguish configuration of goods vs. configuration of container for goods (can be TMed.) (In re Morton-Norwich Products) RST of Unfair Competition, 17: eligibility for TM protection determined by the functionality of the claimed design as a whole. Competitors can still copy functional components of overall non-functional design

(3) Want to protect only enough to provide effective competition iii.

Aesthetic functionality doctrine: Cannot protect TM design elements if they are generic features of a substantial market (e.g. baroque leaves on silver) (Wallace Intl Silversmiths v. Godinger Silver Art, 2d Cir 1990) Also RST 17(c).

(1) (2) (3)

Can have trade dress protection for works of art if 2dyM is established (Romm Art Creations v. Simcha Intl, EDNY 1992) Rejected by Krueger court as illogical and unnecessary (SDNY 1996). Can have difficult cases where its not clear whether design is aesthetic or part of the product itself (e.g. dcor in Two Pesos)

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f.

Inherent distinctiveness

i.

Abercrombie test: Suggestive, arbitrary and fanciful marks/dresses always inherently distinctive (Abercrombie & Fitch v. Hunting World, 2d Cir. 1976).

(1) ii.

2d Circuit will apply these classifications to packaging, but not configurations. Other courts have questioned the classifications usefulness (see p. 248-9).

Chevron test: trade dress is inherently distinctive if the features to be protected are arbitrary and serve no function either to describe the product or assist in its effective packaging. (Chevron Chemical v. Voluntary Purchasing Gps, cited in Krueger Intl v. Nightingale) Seabrook test: whether it is a common basic shape or design; unique or unusual in the field; a mere refinement of a common/well-known form of ornamentation looking to the market context. (Krueger) Duraco test: an inherently distinctive product configuration is

iii. iv.

(1) (3) g. h.

Unusual and memorable

(2) Conceptually separable from the product

Likely to serve primarily as a designator of origin for the product. (Duraco Products v. Joy Plastic Ent., 2d Cir. 1997)

Presence of an (expired) design patent rebuts a functionality defence, but cannot prove inherent distinctiveness by itself. must still prove the design is deserving of trade dress protection (i.e. through inherent distinctiveness or 2dyM). Design often incorporates both aesthetic and source-identifying functions courts should consider the overall look. (Krueger)

i. i.

Can also consider industry labelling practice if the industry does not typically label the products prominently, might lean towards granting TM protection for an overall design.

Wal-Mart v. Samara Bros.: get protection as unregistered trade dress only if there is 2dyM (Scalia)

i.

After Wal-Mart, must prove 2dyM AND inherent distinctiveness cant have just one or the other. Overrules Kreuger Intl v. Nightingale Inc.

(1) 7.

Is also harder to apply the Abercrombie test after Wal-Mart.

ADOPTION, AFFIXATION AND USE

a. b.

Common law presumes there is use in trade prior to registering the TM Ownership of a mark accrues when goods bearing the mark are placed on the market

i. ii. c.

Use must be sufficiently public since TM is about consumer protection, consumers must have the opportunity to be confused before an infringement case can be brought. (Blue Bell v. Farah, 5th Cir 1975 ct decides ) Common law residue whoever was first to affix a mark to the marketed goods determines the rightful TM holder if there are competing claims

LA 45: use in commerce = use on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto[or] on documents associated w/ the goods or their sale

i.

Cannot have TM protection w/ only advertising must have goods that are attached

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d. e. f.

Courts sometimes hesitate to apply a strict first-in-time priority of use system if uses are close enough in time to make selection of one winner inequitable, may require all users to differentiate (Manhattan Industries v. Sweater Bee by Banff) Descriptive marks not used until 2dyM acquired have 2dyM in the making doctrine protecting first users from intentional infringement (Metro Kane v. Federated Dept. Stores) Intent-to-use provisions: can seek registration of mark not in commercial use by alleging bona fide intent to use it under LA will be retroactively applied from the date of actual registration

i.

Are generally protected from being enjoined from use between the time of ITU filing and actual registration (Warnervision Entertianment v. Empire of Carolina)

8.

GEOGRAPHIC LIMITATIONS

a.

TM protection only extends to markets where the traders goods have become known and identified through use. (Hanover Star Milling v. Metcalf)

i. b.

Regional TM holder cannot enjoin the marks use in a market where his goods have never reached.

LA 15. Incontestability of right to use mark under certain conditions. Exceptto the extentto which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registrationthe right of the registrant to use such registered mar in commerce for the goods or services on or in connection w/ which such registered mark has been in continuous use for 5 consecutive yearsshall be incontestable.

i.

Provided, That (1) no has been final decision adverse to registrants claim of ownership, (2) no proceeding involving said rights pending in PTO or court, (3) affidavit is filed w/ Director every 5 years stating TM is still in use in commerce, and (4) no incontestable right shall be acquired for generic marks.

c.

LA 33(b). Incontestability defences. See under #8, Incontestability.

i.

Federal TM registration gives federal TM holder right to use the mark everywhere in the nation except where to the extent that such use infringes what valid right Ds have acquired by continuous use of the same mark prior to Ps federal registration. (Burger King of Florida v. Hoots)

(1) (2) d. e.

The prior regional TM users must have begun use of TM w/o prior knowledge of federal TM registration No person can acquire additional rights superior to the federal registrants

(3) Mere possibility of travel consumer confusion

LA 22. Registration as constructive notice of claim of ownership. Gives nationwide protection, even where TM registrants goods never reach. LA 45. Abandonment for non-use applies only when the registrant fails to use a mark anywhere in the nation.

i. f.

Cessation of use in a regional market is NOT abandonment under LA if there is federal registration. (Dawn Donut Co. v. Harts Food Stores, Inc.)

Concurrent registration

i. ii.

Concurrent federal registrations TM ownership rights (e.g. enjoin others, etc.) Test for approving concurrent registration (Application of Beatrice Foods Co.)

(1)

Are both parties entitled to national protection (i.e. would they be able to get TM registration independently)

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(2) Can the second user prove earlier rights in good faith a. a. iii. iv.
Note that good faith is pretty ambiguous

(3) Do territorial restrictions make sense

Territories to be formed by (1) actual use, and (2) probable expansion Common law protections: prior use protected where there is significant market penetration (not de minimus transactions) (Sweetarts v. Sunline) Priority of use:

(1)

22: issuance of registration = constructive notice of registrants claim of ownership

(2) 7(c): filing of an application = constructive use of TM (3) 15: preserving common law rights as exceptions to incontestable marks (4) 33(a): registration gives prima facie evidence of ownership BUT preserves all
legal defences

(5) 33(b)(5): defence to incontestability, if D had continually used the mark from a
date prior to constructive use date in 7(c)

9.

TESTS FOR INFRINGEMENT

a.

Trademark infringement & unfair competition claim requires P to show

i. ii. iii. iv. v. b.

P possesses a mark D used the mark Ds use occurred in commerce D used the mark in connection w/ the sale, offering for sale, distribution, or advertising of goods and services D used the mark in a manner likely to confuse consumers. (GEICO v. Google, 32, 43(a))

Predominant inquiries (Lang):

i.

Marketplace factors whether sold in same store

(1)

Strength of the mark

a. b. a. b.

Distinctiveness / tendency to identify goods Depends on whether descriptive/suggestive/arbitrary

(2) Similarity of the marks

Likelihood of provoking confusion among consumers Compare appearance, sound and meaning

i. c.

Also look to the context in which consumers will encounter the marks

Anti-dissection rule: similarity of marks judged on overall appearance (not by comparing individual components)

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d.

If trade name is strong, may overcome similarity in trade dress less recognizable trade names may not be sufficient to distinguish (BristolMyers Squibb v. McNeil-PPC)

(3) Similarity of marketing & distribution a. a.

Specialty/department stores? Mail order?

(4) Care & sophistication of purchasers

Expensive/inexpensive; market context (supermarket, discount store); purchasing agents/everyday consumers

(5) Competitive proximity a. ii.

Likelihood of confusion if marks used in different markets (compare the degree of separation of the markets)

Actual confusion whether actual consumers have purchased the wrong item by mistake

(1) (2) (3)

Evidence of actual confusion is significant, but never necessary Consumer surveys often make inquiries more complicated need to figure what %age of consumers need to be confused before there is a likelihood of confusion; what an unbiased survey would look like; etc. Libman Co. v. Vining Industries: proof of adequate confusion only necessary if seeking damages (not for injunctive relief)

a. b. c.

Need to evidence that consumers were confused at point of sale or become confused later (otherwise just speculation) Reasonable person test: if record were limited to the product and their advertisement, would a reasonable person think there was a substantial danger of confusion? Dissent would use factors to determine likelihood of confusion: (1) similarity btw marks in appearance/suggestion, (2) similarity of the products, (3) area/manner of concurrent use, (4) degree of care likely to be exercised by consumers, (5) strength of complainants mark, (6) actual confusion, (7) intent of defendants to palm-off.

iii.

Defendants intent whether there was bad faith

(1)

Moves away from consumer protection (b/c if consumer never knows about bad faith, shouldnt matter) confusion

(2) Intent implies (1) Ps mark has 2dyM, and (2) Ds use creates likelihood of (3) c.
Knowledge of competitor does not prove intent to mislead consumers as to product origins (Everest Capital v. Everest Funds Mgmt.)

Polaroid test (8 factors not sure what happened to the last 2) (applied in Lang v. Retirement Living Publishing Co.)

i. ii. iii. iv. v.

Strength of the mark - distinctiveness / tendency to identify goods Similarity of the marks likelihood of provoking confusion among consumers Proximity of the products whether products compete w/ each other Bridging the gap likelihood one party will enter the others market Actual confusion is this kind of confusion LA was meant to protect (i.e. mistaken purchases, not general confusion)

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vi. d.

Good faith whether D adopted mark w/ intention of capitalizing on Ps reputation/goodwill

Standard of review:

i. ii. e. f. g.

Fact-finding for each Polaroid factor clearly erroneous standard Overall determination of likelihood of confusion de novo review (b/c is legal issue)

Reverse confusion: when a later user choose a TM likely to cause consumers to wrongly believe that goods marketed by prior user are made by later user Rarely have cases w/ hard evidence of confusion, b/c consumer dont think of their own behaviour in terms of confusion. Methodology problems:

i. ii. iii.

No clear guidelines about how many confused consumers = likelihood of confusion. No clear way of receiving consumer feedback (e.g. discover confusion when consumers send back broken items to the wrong manufacturer) Have objective test but no predictable application.

10. CONTRIBUTORY INFRINGEMENT a.

When an actor engages in activities that facilitate the TM infringement by another party

i. b. i.

Creates accountability/liability for the customers wrongful use

Contributory infringement requires a showing of Knowledge that the other (i.e. buyer) will/can be reasonably expected to commit a tort w/ the supplied product

(1)

Have a reasonable expectation if

a. b. ii. c.

D created a situation affording an opportunity for wrong D dealt w/ a customer he should know would be peculiarly likely to use the product wrongfully

Actual and direct infringement. (No attempted infringement.)

Coca-Cola Co. v. Snow Crest Beverages: Coca-Cola competitor sold Polar Cola to bars. Coke claimed Ds induced bars to use orders that did not specify a cola brand.

i.

Competitors have a duty to

(1)

Avoid intentionally inducing buyers to market their product as anothers product TM

(2) Avoid aiding buyers from marketing products such that they infringe anothers ii. d.
Reasonableness test: would a reasonable person in the industry (i.e. D) have known that their product would be used to infringe on a competitors TM

Nike v. Rubber Manufacturers Assn: Brooks alleges Nike paid athletes to wear the Nike TM, but did not require the TM to be attached to a Nike product (LA 43(a)). Nike has allowed contracted athletes to doctor non-Nike shoes w/ the Nike TM.

i.

D has contractual prohibition against doctoring, but does not rigorously enforce not a liability shield

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ii. e.

D knew of likelihood of doctoring, and created a situation where doctoring was likely by paying $ in endorsement contracts

LA 32(1). Remedies; infringement; innocent infringement by printers & publishers.

i.

Liability for any person who, w/o the registrants consent

(1) (2)

(a) Uses in commerce an imitation of a registered mark that is likely to cause confusion/mistake/deception, or (b) Intends to use an imitated mark in commerce that would be likely to cause confusion

a.

No recovery of profits or damages, unless the planned act is done with knowledge that the imitation is intended to be used to cause confusion

11.

COLLATERAL USE

a.

Refurbishers may keep TMs on items so long as inferior qualities (i.e. from use) are not identified w/ the TM registrant.

i.

Source must be made clear by the collateral user, especially on refurbished items or those that are repackaged. (Champion Spark Plug Co. v. Sanders)

(1) ii. b.

Inferiority is immaterial so long as the article is clearly and distinctively sold as repaired or reconditioned rather than as new.

Courts will enjoin use of a TM if refurbisher cannot make full disclosure that product is second-hand (Bulova Watch Co. v. Allerton Co.: Ds removed Bulova movements and put them into different watch cases)

Can use competitors TM in own comparative advertising serves public benefit for consumers (Smith v. Chanel)

i. ii.

Comparative advertising includes simultaneous displays, e.g. side-by-side popup windows w/ a competitors TM (U-Haul v. WhenU.com) LA 43 and unfair competition does not apply, so long as there are no misrepresentations or create a reasonable likelihood that purchasers will be confused as to the source, identity or sponsorship if there are no negative associations, this is competition

(1) iii. c.

** Comparative advertising must be accurate see #19, False Advertising; LA 43(a). (Smith lost on remand b/c did not exactly duplicate Chanel No. 5).**

Do NOT want to grant a practical monopoly to an unpatented product

Nominative uses do not get any TM protection (where no other word is reasonably available to describe a particular thing)

i.

Nominative fair use defence for commercial users if

(1)

Product/service is not readily identifiable w/o TM product/service (e.g. just the name, vs. logo or forged signatures)

(2) Only so much of the mark is used as is reasonably necessary to identify the (3) User must do nothing that suggests sponsorship or endorsement ii. iii. iv.
No infringement if there is no sponsorship or endorsement implied. (New Kids on the Block v. News America Publishing) Nominative fair use defence often unnecessary if there is no likelihood of confusion LA 42. Importation of goods bearing infringing marks or names forbidden.

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v.

LA 43(b). Importation. Any goods marked or labelled in contravention of the provisions of this section [see below for 43(a)] shall not be imported into the US or admitted to entry...

12. DILUTION a.
Dilution = the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition btw the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake or deception. LA 45.

i. b.

CAN ONLY DILUTE FAMOUS MARKS under LA 43(c)

Dilution of distinctive quality is actionable. Must show:

(1) (3) ii. iii. iv. v. vi.

P and Ds marks are very or substantially similar

(2) Distinctive quality capable of dilution, and

Likelihood of dilution (Mead Data Central v. Toyota Motor Sales) Do not need to show direct competition or likelihood of confusion as to the source Hard to distinguish blurring (dilution claim) and likelihood of confusion (infringement claim) [see 15.h below] Dilution claims imply some mental association btw P and Ds marks no mental association if the marks circulate in separate markets (or if one mark circulates in a limited market) What potential for a mark has to become famous is irrelevant. Non-commercial uses of TMs are not actionable. (L.L. Bean v. Drake Publishers) protection (vs. consumer protection) than false advertisement and unfair competition

vii. Dilution does not appear in common law TM law provides more pro-trademark c.
TARNISHMENT: injury to business reputation / destruction of affirmative associations

i.

Usually associated w/ seamy conduct (e.g. sexual activity, obscenity, or illegal activity) (Hormel Foods Corp. v. Jim Henson Productions)

(1)

Factors in finding tarnishment:

a. b. c. d.

Evidence that Ds use will cause negative associations D is a (direct) competitor in Ps market Likelihood of dilution

BLURRING: impairing the identification of a competitors mark. (Deere & Co. v. MTD Products, Inc.)

i.

Factors in considering likelihood of dilution caused by blurring:

(1)

similarity of the marks;

(2) similarity of the products covered by the marks; (3) sophistication of consumers; (4) predatory intent; (5) renown of the senior mark; (6)
renown of the junior mark. (Mead Data Central v. Toyota Motor Sales the Lexus/Lexis case)

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e.

Federal Trademark Dilution Act (FTDA). LA 43.

i. ii.

Does not specify if dilution is tarnishment or blurring. (a). Civil action. Any person who.uses in commerce any word, term, name, symbol, or deviceor any false designation of origin, false and misleading description of fact, or false or misleading representation of fact, which (A) is likely to cause confusionor (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his/her or another persons goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he/she is or is likely to be damaged by such act. To prove dilution under FTDA, must show

iii.

(1)

Mark is famous and distinctive (e.g. Victorias Secret)

a.

RST 3rd Unfair Competition, 25: A trademark is sufficiently distinctive to be diluted by a non-confusing use if the mark retains its source significance when encountered outside the context of the goods or services with which the mark is used by the trademark owner. i.e. does the mark retain significance when its by itself?

(2)

Challenged use is a commercial use

a.

Courts will look at a Ds substantive activities will not rely on Ds selfdescription of his work

i.

Panavision Intl v. Toeppen Ds business was to register TMs as domain names and then sell them to the rightful TM owners. Court does not care that there was no product attached to the marks it is sufficient that D tried to buy/sell the TMs themselves. Domain names are more than an address primary purpose of a domain name is to identify the entity that owns the site

ii.

1. b.

Will have dilution if the owner of a site is not easily identified

Not always clear, but often involves a product

i. ii. c. (3)

Lanham Act use in commerce = when placed on the good, surrounding displays, or other documents related to the sale of the good Have several cases where no product is involved (LL Bean parody of product not in direct competition; SPAM Muppets are not in direct competition w/ Spam)

Claim of blurring does NOT require proof of competition or likelihood of confusion. (Everest Capital Ltd. V. Everest Funds Mgmt.)

Challenged use began after the mark became famous

(4) Causes dilution a. f.

Must prove actual dilution through economic loss (Moseley v. Victorias Secret)

Remedies for dilution of famous marks. LA 43(c).

i.

Doesnt matter how TM became famous is automatically protected.

(1)

COROLLARY: a non-famous mark cannot be diluted.

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ii.

(1). The owner of a famous mark shall be entitledto an injunction against another persons commercial use in commerce of a mark or trade name, if such use being after the mark has become famous and causes dilution of the distinctive quality of the mark

(1)

8 factors for famous

a. b. c. d. e. f. g. h. iii. iv. v. g.

degree of inherent or acquired distinctiveness of mark duration/extent of use duration/extent of advertising and publicity geographic reach of a mark channels of trade in which the mark is used recognition of the mark in the areas/channels used by the mark owner and the person against whom the injunction is sought nature and extent of use of same/similar marks by 3rd parties; if mark is registered on the principal register

(2). Injunctive relief only, unless there was wilful dilution or deception. (3). Valid registration under the register is a complete defence (is a bar to action). (4). Non-actionable uses: (A) comparative commercial advertising/promotion; (B) non-commercial uses; (C) news reporting/commentary.

Good faith / bad faith

i. ii. h. i.

Easy case when bad faith use of TM Good faith use of anothers TM still dilution? See Concurrent Registration, #10(f)

Use in commerce Courts oscillate btw whether Internet advertising is or is not a use in commerce

(1)

UHaul v. WhenU.com (E.D.Va 2003): Ds website had links to companies, but would also launch a full-screen popup for another company offering the same service.

a.

Display of TM on website is not a use in commerce therefore no TM infringement

i. (2)

Domain names are like trade names in order to infringe, they must be used to identify the source of goods and services (and not just identify the business entity)

GEICO v. Google (E.D.Va, 2004): P claims D has unlawfully used Ps TMs by allowing advertisers to bid on getting linked to the TMs.

a.

Court finds use in commerce b/c Ds were selling rights to link advertising to Ps TMs

i. b. ii.
See if

Are using the TMs in commerce in a way that may imply that Ds have permission from the TM holder to do so.

Additional contributory infringement claim Ds have control of advertisement content and are liable for infringement by advertisers

(1)

Program interacts w/ TM holders site

(2) User consented to the use of the program

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(3) (4) (5) i.

Program hinders/impedes users ability to access the TM holders site Program directly advertises TM to user TM use is purely technical (e.g. a2zsolutions.com/desks/floor/laptraveler/dkfllt.htm, where LapTraveler is TMed)

Infringement (likelihood of confusion) / Dilution

i. ii. j.

U-Haul court could have decided on either TM use grounds or likelihood of confusion grounds (this ct. decided there was no TM use and does not reach second question) Other courts presume there is TM use. (Playboy Enterprises v. Netscape; ; 1-800 Contacts Inc. v. WhenU.com)

Artistic works

i. k.

Balancing test LA applies to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. (Rogers v. Grimaldi)

Trademark disparagement

i. ii.

Where there is no parody and no reference to dilution statute Must prove

(1)

False statement

(2) Malice (3) Special damages (e.g. corrective advertising) l.

Commercial misrepresentation LA 43(a)(1)(B)

i.

TM owner must prove

(1)

Ds made false statement of fact about product/service that deceived/had tendency to deceive a substantial segment of the audience

(2) Deception was likely to influence purchasing decisions (3) ii. iii.
Deception injured/is likely to injure the owner. (Everest Capital v. Everest Funds)

Inadvertent misstatements are not commercial representation (Everest Capital) Literal falsehoods made by D do not create a presumption that those falsehoods are likely to deceive (i.e. just b/c theyre wrong doesnt mean theyre convincing anyone) (Everest Capital)

13. ABANDONMENT a.
ABANDONMENT: when a mark has been discontinued with intent not to resume use. Intent not to resume may be inferred from circumstances. Non-use for 2 consecutive years shall be prima facie abandonment. 45.

i.

Tests:

(1)

Non-use w/ intent not to resume common law cease to indicate origin.

(2) If owner allows (directly or indicretly) the mark to become generic or otherwise ii.
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(1) (2) iii.

On party claiming abandonment, unless Prima face case burden shifts to mark holder to demonstrate that circumstances do not justify the inference of intent not to resume use (Exxon Corp. v. Humble Exploration Co.)

Use only counts against abandonment if it is used in its TM sense/as a source identifier in the period where abandonment was inferred

(1) (2) (3)

Cannot preserve a mark solely to prevent its use by others (Exxon v. Humble) Not enough to intend not to abandon or relinquish must intend to resume For federal registrants, must abandon on a nation-wide basis to have abandoned the mark. (Recall Dawn Donut Co., #10.e.i)

a. iv.

Common-law registrants get abandonment evaluated on a state-by-state basis (Sheilas Shine v. Sheila Shine)

Must read abandonment provisions to be consistent w/ the false designation of origin or false representation civil claims (32, 33, 43(a))

(1) b. c.

Cant have a company abandon a mark, and then sue a later party (with the right to use the mark) for misrepresentation

Abandonment is a defence to an infringement claim Sports franchises: was the basic mark abandoned?

i. ii. 14. RELIEF a.

Dodgers: failure to use mark for several years = abandonment Colts: old mark not abandoned

Recovery for violation of rights; profits, damages and costs; attorney fees; treble damages; election. LA 35 / 1117.

i.

(a) TM registrants able to prove a violation of their rights can get

(1) (3) ii. iii. b. i. ii.

defendants profits

(2) any damages sustained by the plaintiff

the costs of the action. (b) Damages are either treble profits or damages (whichever greater) (c), (d) Election for statutory damages if a counterfeit or dilution case

Damages Courts usually find liability first but can sometimes request particular remedies General factors to consider (from RST 37(2))

(1)

Degree of certainty that D benefited from unlawful conduct

(2) Availability/adequacy of other remedies (3) Role of a particular D in effectuating the infringement (4) Ps laches (5) Ps own unclean hands

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iii.

Lost profits

(1)

Need to show wilful infringement [RST Unfair Competition, 37(1)(a), LA 35(a)]

a. b.

Meant to prevent overestimation of Ps actual injury (since are finding Ds gains). Limits windfalls to P and protects innocent or good faith infringers. (George Basch v. Blue Coral) More difficult to calculate than damages damages will always be an available remedy if wilfulness cannot be shown.

i. c.

Looked at what P would have negotiated with someone else, and just doubled it

Factors considered: Ps prior licenses, Ps licensing politics, nature and scope of Ds infringing use, special value of the mark to D at the time of infringement, profitability of Ds infringement, attractiveness of Ds alternatives, expert opinions, Ds persistent infringement End up doubling royalty award for deterrence purposes Ps sought treble damages under LA

d.

(2) Attorneys fees in exceptional circumstances (in LA) (3) See 35(b): treble damages, trip profits, attorneys fees, prejudgment interest in
counterfeiting cases

(4)

36: courts have authority to destroy all labels and packages that infringe a registered mark or violate 43(a) available after P wins judgment

a.

34(d): pretrial seizure of goods and counterfeit marks for civil action for TM infringement involving a counterfeit mark

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