Professional Documents
Culture Documents
Contents
Ch. 1: Nature and Purpose of TM Protection.......................................................................................2
PART I: Historical Overview of TM Law............................................................................................2
Ch. 2: Subject Matter of TM Protection.................................................................................................3
PART I: Nature of Trademarks..........................................................................................................3
PART II: Establishing Trademark Rights..........................................................................................4
PART III: TYPES OF TRADEMARKS...............................................................................................9
PART IV: FEDERAL TRADEMARK REGISTRATION..................................................................15
PART V: State Trademark Registration..........................................................................................29
Ch. 3: Trademark Infringement and Unfair Competition...................................................................31
PART I: TRADEMARK INFRINGEMENT.......................................................................................31
PART II: REVERSE PASSING OFF...............................................................................................38
PART III: FEDERAL LAW OF FALSE ADVERTISING.................................................................39
PART IV: DILUTION..........................................................................................................................41
PARTY V: CYBERSQUATTING......................................................................................................49
PART VI: SECONDARY LIABILITY................................................................................................52
PART VII: DEFENSES......................................................................................................................54
Page 1 of 63
Understanding Trademark Law – Outline with Casebook Cases
1.01: Introduction
A: Overview
Page 2 of 63
Understanding Trademark Law – Outline with Casebook Cases
o § 43(a) → provides federal unfair competition cause of action for a party that
suffers a competitive injury as a result of false statements made by others in
connection with offering of goods/services
B: Recent Amendments
- Dilution Doctrine
o § 43(c) → creates cause of action for dilution of the selling power of famous
marks
Purely for purpose of protecting goodwill, NOT consumer confusion
- Anticybersquatting Provisions
o § 43(d) → to protect mark owners against web addresses which were
confusing/misleading to consumers and made unauthorized use of their TM
2.01: Introduction
- Federal registration
o significantly enhance the legal protections available to the TM owner
o not essential to TM protection in the US
- Functionality bar
o denies TM protection to any aspects of an article that contributes to the utility of
an article.
Page 3 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Functional if …
o Essential to the use or purpose of article or if it affects cost/quality of article
o Exclusive use of feature would put competitors at significant non-reputational
disadvantage.
C: Aesthetic Functionality
Page 4 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Common law
o rights are established by person first to make BF use of mark
May be established by pre-sales publicity or sales solicitation COMBINED
with intent to use
Blue Bell v. Farah Manufacturing Co (first to make bona fide use of
mark has priority)
P and D both engaged in shady tactics to try to get use of the
“Time Out” mark. P sold shipments of pants to store managers.
D slapped new labels on old goods. Court eventually decided D
used mark in good faith first.
Page 5 of 63
Understanding Trademark Law – Outline with Casebook Cases
B: Lanham Act
1. Use In Commerce
- Commerce is …
o All commerce which may be lawfully regulated by congress
Larry Harmon Pictures v. Williams (single restaurant location OK for
interstate commerce)
Bozo’s restaurant case. The lanham act extends to all commerce
that congress can regulate. Since customers from different states
visted William’s restaurant, it was conducting commerce under the
LA.
Page 6 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Commerce → the BF use of a mark in the ordinary course of trade, not made
merely to reserve a right in a mark.
Token/de minimis use will not qualify
Proctor and Gamble v. Johnson and Johnson (use must be
actual use in commerce)
o Assure deodorant case. PG made minor and sporadic
nominal use of their mark in the minor brands program to
keep it alive. This use was not enough to establish priority
in the mark. There must be intent to use the product again
in the future.
o Use of mark in advertising without more will not qualify as a use in commerce for
purposes of federal registration
Maryland Stadium Authority v. Becker (advertising can satisfy the use
requirement)
Camden yards case. Advertising can be sufficient use of a mark
so long as services/goods are available within a commercially
reasonable time and the totality of the acts create association of
the goods and services and the mark. [E asks:Was this just a
fuzzy attempt to favor the team? Can this geographic term even
be protected?]
- Related companies
o Substantial relationship between the parties is required
Any person whose mark is controlled by owner of the mark wrt nature and
quality of the goods or services on or in conjunction with which mark is
used.
Licensee subject to quality control → use inures the benefit of
registraint/applicant
- Tacking
Page 7 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Users may only tack TM rights if the marks are so similar that the relevant
consumers consider them to be the same mark. See Brookfield
Communications v. West Coast Entertainment
2. Foreign Use
- Territoriality Principle
o Use of a mark exclusively outside the US is not a use in commerce and will not
establish ownership rights in the US.
o Where a mark is used exclusively for services offered outside of the US, use in
commerce cannot be established solely through advertising to US consumers.
But see International Bankcorp v. Societe des Bains … (BAD LAW:
advertising OK to uphold foreign mark with no US service)
BAD LAW! Court muffs this one, says that even though casino
only has services in monte carlo, advertising in US is ok because
foreign gambling is foreign trade, which congress can regulate.
Foreign trade = WHO you trade with, not WHERE the trade
occurs.
- Use of mark exclusively overseas may give mark owner priority in US if mark is
sufficiently well known to US consumers, even if goods/services not offered in US.
o But see ITC v. Punchgini (famous marks doctrine rejected by Fed Court)
P was denied relief under FMD for the mark Bukkhara restaurant. Court
said while there is persuasive argument for P, if not in a statute, not
gonna invent a remedy.
4. ITU Applications
- Benefit
o Possible to get on the principal register before the date on which the mark is first
used in trade.
o If ITU application eventually ripens into a valid TM registration, the effective date
of that registration will take place when ITU was filed.
WarnerVision Entertainment v. Empire of Carolina (priority of an ITU
registrant)
An ITU registrant has priority over someone who actually uses the
mark in the interim between the ITU registrants filing and later
subsequent use.
o More lenient standard for registration?
Eastman Kodak v. Bell & Howell (ITU OK for product numbers)
Since the LA allows for another evaluation after the ITU period,
registering numbers, which are typically describtive, isn’t such a
Page 8 of 63
Understanding Trademark Law – Outline with Casebook Cases
big deal. It’s ok. If they are found to have no secondary meaning,
the registration will be cancelled.
5. Constructive Use
2.05: Distinctiveness
- Distinctiveness in TM context
o tendency to identify the goods sold as emanating from particular source
- Once TM rights have been established, they must be maintained or will be lost.
o Can be lost via
Non use → abandonment
Non distinctiveness →genericized. No longer is used as a source
indicator.
Assignment in gross → assignment/license to be separated from
underlying goodwill so that consumer expectations are frustrated
Naked licensing → TM owner fails to exercise QC
Losing Fed TM protection → Not filing periodic renewals/statements of
use
Page 9 of 63
Understanding Trademark Law – Outline with Casebook Cases
to identify and distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even if the
source is unknown.
A. Spectrum of Distinctiveness
- Fanciful
o Coined terms that have no commonplace or dictionary meaning – completely
fabricated by their owners (Xerox, Kodak, aunt jemima)
- Arbitrary
o Words in common usage with dictionary meanings, but that do not in any respect
describe the goods or services to which they are attached
o Only distinctive within its product market and entitled to little or no protection
outside of that area
o The distinctiveness of an arbitrary mark arises from the fact that it is mismatched
to a particular product or service.
2. Suggestive
Page 10 of 63
Understanding Trademark Law – Outline with Casebook Cases
3. Descriptive
- descriptive marks can be protected as TM under state and federal TM and unfair
competition laws once they have achieved distinctiveness (2ndary meaning) in the
minds of consumers
b. 2ndary Meaning
- sufficient if the public is aware that the product comes from a single, though anonymous
source.
Page 11 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Essential that the primary significance of the term in the minds of the consuming
public is not the product but the producer.
- Concurrent use
o same descriptive mark in the same geographic area → priority depends on which
party’s mark was first to acquire 2ndary meaning.
o Term may be generic for one class of goods, but not another. See [the hog case]
Page 12 of 63
Understanding Trademark Law – Outline with Casebook Cases
B. Personal Names
C. Trade Dress
Page 13 of 63
Understanding Trademark Law – Outline with Casebook Cases
Product configuration
There is a distinction between product PACKAGING and
CONFIGURATION.
o Wal-Mart v. Samara Bros (product configuration
protectable if secondary meaning)
Design, like color, is not inherently distinctive.
Under §43(a), product’s design is distinctive only
upon secondary meaning. Contrast Two Pesos →
TD of a restaurant is more like packaging. Equated
with source. Scalia did not want to protect any kind
of functionality.
Page 14 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Problem of TM concepts when work functions as both product and source indicator.
o Rock and Roll Hall of Fame v. Gentile Productions (unique → not necessarily
fanciful)
Even though the building of the RRHOF was unique, it was not used as a
mark in a constant and consistent way and thus it was not source-
designating.
- Can serve as TM under CL and fed law if they have inherent or acquired distinctiveness.
I. Foreign Words
- In some cases the English translation will determine whether the word or phrase
qualifies for TM protection.
o Doctrine of foreign equivalents
If a word is from a relatively common language, English translation will be
used to determine genericness, as well as similarity of connotation in
order to assess whether it is confusingly similar to English-language word
marks already in use
Page 15 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Incontestability
Once on PR for 5 years, mark can become incontestable
o § 42
Can help TM owner block importation of infringing goods
o Access to broader array of remedies under §§ 34(d), 35(b), and 35(c) than
unregistered owner has.
A. General Standard
- § 2 of LA → general substantive standards for registering a mark on the PR.
o Basically, anything can make it
Unless it falls under a statutory bar under 2(a)-(e)
o Only one mark can be registered in a single application
Page 16 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Composite marks
o Applicant may disclaim parts of marks that are unregisterable
But might seek protection at a later time once secondary meaning has
been established.
Deceptiveness
Mark must …
o Falsely describe goods or services
o OR misdiscription must be one that the prospective
purchaser is likely to believe is true AND that mistaken
belief is likely to materially affect the consumer’s
purchasing decision.
o Matter that may disparage or falsely suggest a connection with persons (living or
dead) institutions, beliefs, national symbols, or bring them into
contempt/disrepute
TTAB must find that
Applicant’s mark is the same as or closely approximate’s
another’s previously used name/identity
Mark would be recognized as such
Page 17 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Geographical indication that is not the place where the goods originated if the
use started after 1/1/1995
- § 2(b) bars the registration of a mark that comprises or simulates the flag, coat of arms,
or insignia of US, state, or foreign nation.
a. Priority of use
- applicant may be denied under § 2(d) if another party has used a confusingly similar
mark on similar goods or services anywhere in the US
o even if that was not a use in commerce because it was purely intrastate.
o Priority in §2(d) depends on which party was the first to use the mark in
connection with the goods/services in question, whether or not that use involved
interstate commerce
Page 18 of 63
Understanding Trademark Law – Outline with Casebook Cases
- A use that would not itself be a TM use may nonetheless be sufficient under § 2(d) to
establish who is the senior user of a mark
o If the use was of such nature and extent as to create an association by
purchasing public
- Third party can inure benefit to someone else (commercial saying “Mickey D’s)
- Analogous use may be tacked to actual use
o Even with reasonable delay.
- In determining whether confusion exists under § 2(d), the PTO will focus on the DuPont
factors. There are 13 of them – see § 2(d) for the deets. This test is the Polaroid
factor test!
- The weight accorded to each factor will vary, depending on the particular circumstances
of each case
o Typically the similarity of the marks and the similarity of goods/services =
important
d. Concurrent Use
- Concurrent registrations will issue only to applicants that became entitled to use the
marks as a result of their concurrent lawful use in commerce prior to the earliest of …
o Filing dates of pending applications
o Any registration actually used for the mark
a. Merely Descriptive
- §2(e)(1)
o Determination based specifically on goods or services for which registration of
the mark is sought.
o Any mark that is denied registration on (e)(1) grounds is still eligible for
registration when gets 2ndary meaning to satisfy § 2(f)
Generic marks
No amount of 2ndary meaning will make it registerable
Page 19 of 63
Understanding Trademark Law – Outline with Casebook Cases
b. Deceptively misdescriptive
- §(2)(e)(1)
o Deceptively misdescriptive → misdescribes goods/services and if public is likely
to believe the misdescription to be true
- §2(e)(2)
o The prohibition applies only when the term is “primarily” geographically
descriptive wrt the goods in question
In re Baik (no TM protection for geographically descriptive marks)
“Baik” mark was rejected under §2(e)(2) because it was primarily
geographically descriptive. It was not a remote or obscure place.
Here, the court found that the vodka buying public was the target
market to consider.
Does not apply when the geographic term is obscure, remote, or when
mark has popular significance with geographic meaning
American Waltham Watch v. US Watch (descriptive geographic
term → TM if secondary meaning)
o Since “Waltham” had acquired secondary meaning with
consumers, the Plaintiff could enjoin Defendant from using
it as a source designator on watches even though it was a
descriptive geographic term.
- §2(e)(3)
Page 20 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Marks in this category may not be registered even if they have become
distinctive
o Test for PGDM?
Identical to the test for deceptive marks under §2(a)
Mark must …
o Falsely describe goods or services
o OR misdiscription must be one that the prospective
purchaser is likely to believe is true AND that mistaken
belief is likely to materially affect the consumer’s
purchasing decision
- Such marks can still be registered if they acquire sufficient secondary meaning to satisfy
§2(f)
-
- Names with several meanings
o Test under §2(e)(4)
Is name primarily a surname, or are the other meanings significant?
See the five factors in §2(e)(4) for the deets.
f. Functional Marks
- §2(e)(5)
o Bars registration of functional mark
o Manufacturer cannot compel competitors to resort to alternative designs with
different advantages/disadvantages via TD law
o Functionality is usually the issue.
De jure functionality → BARRED (§2(f) does not apply)
Superior design essential for competition
o See TrafFix case
De facto functionality → OK
Merely performs some function or utility but is not significantly
better than other possible configurations
Page 21 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Show proof of substantially exclusive and continuous use of a mark for 5 years
immediately preceeding the date on which the claim of distinctiveness is asserted
BUT PTO director is not required to accept this
- Marks that that have been denied for the PR can still go on the SR until they meet the
§2(f) requirements.
7. Dilutive Marks
- §2 permits PTO to refuse registration of mark which would likely cause dilution by
blurring or tarnishment under §43(c).
o Such refusal can only be pursuant to an opposition under §13 – PTO cannot do it
on its own.
For opposition to succeed on dilution grounds ITU application, opposer’s
mark must have become famous before filing date of application
Considerations
See §43(c) for the six non-exclusive factors
E. Service Marks
- May be subject to all of the same rules and protections that apply to trademarks for
goods
- Mark used for goods and services → 2 different marks
- For mark to be used as SM
o Must be used in provision of services, not just advertising for services.
E. Use
Page 22 of 63
Understanding Trademark Law – Outline with Casebook Cases
F. Intent to Use
- Governed by §1(b)
- ITU applicant must state bona fide intent to use mark in commerce
- Once ITU application is filed, PTO conducts initial examination
o If acceptable, mark goes on PR and gazette. Applicant gets notice of allowance
Within 6 months, applicant must file statement of use.
Extensions are possible for up to 24 total months.
Any goods or services listed in NOA not listed in SOU are excluded from
extension and ultimately in TM registration
Date of effective registration → date of ITU application
- Entitled
o The owner of a mark is entitled to register
Joint owners OK
o Person entitled to use mark for ITU application
- NOT entitled
o Licensees (even exclusive)
H. Opposition
- Opposition period beings on the date the mark is published in official gazette
o Limited to 30 days unless otherwise extended
Page 23 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Opposition for confusingly similar mark under §2(d) may be brought by either …
o Owner
o Exclusive licensee
o Nutrasweet v. K&S Foods (likely confusion based on name)
Nutrasalt was not allowed to use the name as a TM. Too likely to be
confused with Nutrasweet. Plaintiff had already spent millions building
the brand.
o Marshall Field v. Mrs. Fields Cookies (marks not confusing)
Even though Fields was in both marks, there was no confusion. Both
were famous companies, little LOC. TD would not cause a problem.
Secondary meaning of P’s mark was limited to the store, and did not
extend to banking services.
- To maintain a federal TM registration, the owner of the registration must periodically file
…
o Affidavit of use
Between 5th and 6th years after initial registration, another between 9 and
10 years after initial registration, and another in the year preceding every
10th year thereafter
o Renewal application
Under § 9 of LA, federal TM registration may be renewed for a 10 year
period beginning 10 years after the intitial registration, and continuing at
successive 10 yeare intervals thereafter.
Failure to file = cancellation of registration
o … the renewal timeframes for both of these coincide, so they can be a single
document.
Page 24 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Under § 21 of LA, there are two routes to appeal from the decisions of the TTAB or PTO
Director.
o Federal Circuit Appeal
Questions of Law reviewed de novo
2.12: Cancellation
- If mark on PR for less than 5 years, can be cancelled for any bar in § 2
- §§2, 14, and 24 permit cancellation of a registered mark likely to cause dilution by
blurring or tarnishment under § 43(c)
B. Procedure
- Petition for cancellation may be filed by any person who believes he or she has been or
will be damaged by the registration of a mark on the PR
- TTAB conducts an inter partes proceeding subject to judicial review by fed circuit
o Federal circuit requires petitioner in cancellation proceeding to
- In court action involving registered mark, court may order full or partial cancellation of
registration if it determines registration is wholly or partly invalid
2.13: Incontestability
Page 25 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Exceptions
o Conclusive presumptions don’t apply …
for grounds of cancelling a mark under §§ 14(3) or (5)
To the extent that the use of the registered mark infringes any CL right
established by another’s continuous use of a mark from a date prior to the
registration date
- Serves as quiet title to marks which have acquired distinctiveness under §2(f)
- Park N Fly v. Dollar Park & Fly (incontestability → offense AND defensive maneuver)
o Incontestability can be used offensively to enjoin others from using the mark.
Nothing in the LA says otherwise!
- For likelihood of confusion analysis, the fact that a mark is incontestable does not
necessarily establish that it is strong.
B. Establishing Incontestability
Page 26 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Offers benefits for certain marks that lack the distinctiveness required for PR, but can
acquire distinctiveness through use.
- Useful purposes
o Searchable database to prevent registration of confusingly similar marks
A. Eligible Marks
- Marks that are ineligible for registration on PR may be registered on SR unless barred
by §§ 2(a),(b),(c),(d), or (e)(3).
- SR primarily benefits marks that lack sufficient 2ndary meaning to satisfy §2(f)
o Once mark acquires distinctiveness, owner then can pursue PR registration
- Requirements
o use
Mark must be in lawful use in commerce in connection with goods or
services for which it is registered
o ITU
Eligible for SR after amendment to allege use or statement of use has
been filed
B. Registration Procedure
- Mark may be registered on SR after examined for elibigility and upon compliance with
§1(a) and (e) of the LA.
- Marks are not subject to opposition, but are subject to cancellation
- If applicant is refused registration on SR, can use same procedures as if rejected from
PR.
Page 27 of 63
Understanding Trademark Law – Outline with Casebook Cases
D. Cancellation
- Mark on SR is not published for opposition, but will be published in official gazette upon
registration.
o Anyone who thinks they will be damaged by registration of mark on SR can
petition to cancel the mark under § 24.
o If cancellation sought on ground that the registered mark is likely to dilute a
famous mark by blurring/tarnishment, cancellation only allowed only if petitioner’s
mark became famous BEFORE the effective filing date of the registration on SR.
A. International Trademarks
B. National Treatment
- Implemented in §44(b)
o Gives nationals in treaty with the US the rights to which any owner of a mark is
entitled under the LA
.
- § 44(g) provides that trade names or commercial names of such parties are protected
even without registration
o Even if not trade names, § 44(h) entitles them to effective protection against
unfair competition.
Page 28 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Effective 11/2/2003
- A US national that applies for, or has applied for US registration may also file a single
application filing any countries that are protocol signatories
o Registration date is the date it is filed at PTO, then filed to WIPO
WIPO has 18 months to examine
- Party that obtains an international TM registration from country other than US may
request an extension for US protection
o Under § 66, also need bona fide intent to use mark in commerce
o Will be examined to see if it meets requirements in § 2
if mark meets requirements, mark will be published in official gazette and
subject to opposition
Page 29 of 63
Understanding Trademark Law – Outline with Casebook Cases
A. General
B. Federal Preemption
- Generally
o State common law and legislation wrt TM and unfair competition are not
preempted by LA
CL trademarks typically protected by § 43(a)
- If enforcement of state TM law will interfere with rights conferred under LA, federal law
will preempt
o See Sears, Compco, Bonito …
- Although LA makes clear that a federal registrant has nationwide priority, some courts
will not enjoin (or award damages for) the use of the mark by a junior user unless and
until the registrant shows likelihood of entry into the junior user’s trading territory.
o See Dawn Donut Case.
o Junior user’s right to use mark would cease when senior user expanded into the
area.
A. Assignments
- Under both CL and LA, any assignment of a mark must include a transfer of the
accompanying goodwill of the line of business in which the mark is used.
o Any attempted to transfer rights in mark without goodwill → assignment in gross
→ abandonment of mark
o Need to file ITU when switching mark to new owner. §1(b).
B. Licensing
- Naked licensing
o To avoid, TM owner must exercise adequate quality control of licensee’s use of
the mark.
o Barcamerica International v. Tyfield Importers (naked licensing kills a mark)
Because P did not monitor or supervisee its TM licensees, there was
naked licensing and the court stopped from asserting its rights in the
mark.
Page 30 of 63
Understanding Trademark Law – Outline with Casebook Cases
3.01: Introduction
- Cause of action for infringement may arise under CL, state statutes, or LA
o All 3 sources require senior user to establish that junior user’s mark create a
likelihood of confusion → likely to cause a competitive injury to the senior user
- Under the broadly interpreted unfair competition provisions of the LA, false or misleading
representations of source, affiliation of goods/services, or commercial activities are
actionalable even where no trademark misuse occurs, provided that representations are
likely to cause confusion.
- When mark is not registered but qualifies as a mark under CL, the owner of the mark
can bring a claim for unfair competition under §43(a) or state law.
o State courts usually use § 43(a) as measuring stick for infringement
- Under both federal and state law claims, TM infringement has a two step analysis
o Is mark valid/enforceable? Plaintiff owner of mark with right of priority over
defendant wrt the mark?
Depends on which law is used – state & federal laws must be considered
o Has D used the mark in a way that is likely to cause consumer confusion as to
the origin of the goods/services?
Same for both state and federal laws
o Also must prove that D’s activities took place in commerce
Federal law → usually interstate
State law → can be intrastate
o This shifts the burden to D, who must present evidence that mark is invalid
Page 31 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Tacking
o OK if marks are slightly different
But the standard is high. Degree of similarity required is greater than the
amount required for likelihood of confusion test
B. Likelihood of Confusion
1. Overview
- Careless consumers
o Some say that it favors LOC, but others disregard it.
Page 32 of 63
Understanding Trademark Law – Outline with Casebook Cases
2. Factors
- The factors used differ in various circuits, but it’s basically variations on the Polaroid
factors.
o These cases are fact specific, and virtually any facts and circumstances relevant
to potential for consumer confusion can be considered.
- Factors!
o Strength of senior mark
The stronger P’s mark, the more likely there is that there will be confusion
Strength measured by …
Degree to which it is inherently distinctive (arbitrary, fanciful,
suggestive)
o For federally registered marks, §7(b) provides rebuttable
presumption that mark is either inherently distinctive or has
acquired 2ndary meaning.
Incontestability makes this evidence conclusive
subject to the defenses in §33(b)
o Proximity of product/services
Compare content, geographic distribution, market position audience
appeal, marketing channels
When goods are in direct competition, degree of similarity necessary to
establish a LOC is lower than in case of dissimilar products
Page 33 of 63
Understanding Trademark Law – Outline with Casebook Cases
Non LOC because goods were very dissimilar (high end wine v.
box wine) and proximity of goods (marketed differently, labeled
differently)
o Sophistication of buyers
More sophisticated consumers are presumed to be less easily confused
than dumb consumers
Nature of goods relevant to question of sophistication
High end goods → probably less confusion
Cheap goods → might be more confusion bc consumers aren’t as
careful
Page 34 of 63
Understanding Trademark Law – Outline with Casebook Cases
C. Reverse Confusion
- In reverse confusion, consumers are likely to be misled into believing that the senior
user’s goods originate with junior user.
o Most commonly arises from junior user’s success with marketing
- Injury to senior user
o Erosion of senior user’s goodwill
o Loss of control over senior user’s reputation
o See Dreamwerks Prod. v. SKG Studio
- Where evidence exists to support both forward and reverse confusion, senior user may
utilize both theories
- Harm
o Even where a consumer is confused only briefly, the consumer may remain on
infringer’s site and spend money he originally would have given to another
provider of goods/services
See Brookfield Communication v. West Coast Entertainment.
Page 35 of 63
Understanding Trademark Law – Outline with Casebook Cases
found actual confusion via expert survey, and this was probably enough right
there.
- Typically, the consumer in post-sale confusion is not the same one who initially made
the purchasing decision
- Harm
o Purchaser gets benefit of wearing knock-off and fooling others
Mastercrafters v. Vacheron (BAD LAW!)
Unique appearance of P’s clock led to secondary meaning. BUT,
this is exactly like Sears/Compco! This reasoning is outdated.
Don’t use this case.
E. Trademark Use
- Advertisements or sponsored links are not authorized by the actual owner of the TM or
SM
Page 36 of 63
Understanding Trademark Law – Outline with Casebook Cases
2. Metatags
3. Domain Names
- Question → does the mere presence of a trademark in a domain name involve using the
mark to indicate a sale of goods and services?
o If website itself is considered a good/service, then yes.
o If not, question turns on whether consumers would be confused
- Other courts are reluctant to adopt that theory of TM use where website domain name
incorporates TM to site devoted to parodying or criticism.
o See Utah Lighthouse Ministries, Grosse v. Naughty Nursery
- “in commerce” requirement for establishing subject matter jurisdiction for infringement or
dilution claim under LA is different from “use in commerce” requirement for purposes of
registration
o Infringement/dilution claim for jurisdiction satisfied when …
Defendant’s activity takes place in commerce
Page 37 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Registration → has applicant made qualifying use that congress can regulate?
G. Territorial Limitations
- Well settled that federal courts may enjoin extraterritorial conduct under LA when
necessary to prevent harm to commerce in US.
- See Steele v. Bulova Watch
o Three factor test
Is D a US citizen?
Does the foreign activity having a substantial effect on US commerce?
Whether exercising jurisdiction would interfere with the sovereignty of
another nation
o Finding in this case not solely based on the fact that D bought some of its watch
components in the US, but also on the fact that the counterfeit watches were
coming into the US and damaging Bulova’s domestic goodwill.
Page 38 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Express v. implied
Express → defendant places its own origin indicator on goods produced
by someone else
Implied → where defendant omits plaintiff’s origin indicator but does not
substitute its own
o Modification/relabeling
RPO may occur when D modifies another’s product and relabels it as its
own.
Minor modifications → likely there is liability
Substantial modification → new product, liability less likely
Page 39 of 63
Understanding Trademark Law – Outline with Casebook Cases
Page 40 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Requirements
Commercial speech
Proctor and Gamble v. Amway (commercial speech = no
protection from 1st amendment)
o Satanism case. Commercial speech is not afforded the full
protection of first amendment. 3 prong “Bolger factor” test
= (1) whether communication was advertisement; (2)
whether the communication refers to a specific product or
service; (3) whether there is economic motivation for
speech
By a defendant who is in commercial competition with plaintiff
For purpose of influencing consumers to buy defendant’s goods/services
Must be disseminated sufficiently to the relevant purchasing public to
constitute advertising or promotion within that industry.
Promotions need not be in classic advertising campaigns
o See Proctor and Gamble v. Amway
- Clorox Puerto Rico v. Proctor and Gamble (difference between puffery and falsity)
o D’s product was a color enhancer, not a whitener. Literal falsity → detergent
alone does not whiten better than bleach. On TV ads, a factfinder could
reasonably conclude that P claimed its product was superior to bleach. Also,
the advertisement may have been misleading because product was color
enhancer, not whitener. Consumers might have thought they were buying
detergent with same powers as Clorox. The statements were not puffery
because they were specific and measurable (best whitening)
- Antidilution laws protect the trademark owner’s investment in the goodwill embodied in a
mark
o Dilution → the gradual undermining of a mark’s unique selling power
Courts have applied the doctrine wearily, to not swallow up TM law
Page 41 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Schecter
o Argued that unfair competition law should serve the broader goal of preserving
the uniqueness of a trademark by protecting the TM owner against the “gradual
whittling away or dispersion of the identity and hold upon the public mind of the
mark or name by its use upon non-competing goods”
- Tarnishment
o Occurs when Plaintiff’s mark is linked to products of shoddy quality, or is
portrayed in an unwholesome or unsavory context, with the end result that the
public will associate the lack of quality or lack of prestige in the defendant’s
goods with the plaintiff’s unrelated goods
Deere v. MTD (tarnishment)
P makes fun of D’s logo with a wimpy frightened deer. Sort of a
tarnishment action, but the court doesn’t call it that. P lost on
infringement because there is no LOC → nobody would believe P
authorized the use.
- Posner’s rationale for granting TM owners protection against unauthorized uses that are
both non-competing and non confusing.
o Consumer search costs will rise
o Tarnishment can become a problem
o Stop free riding
- Ty v. Perryman (no dilution when mark not used in conjunction with other products)
o Case was more about the fact that D sold non-beanie baby toys on the
“bargainbeanies” site was false advertising. WRT dilution, Posner noted that a
secondary market is just fine, and that Ty is probably attempting to fight off a
genericide of “Beanie.”
A. History
- § 43(c)
Page 42 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Liability may arise even where there is no actual or likely confusion, no competition, and
no actual injury
C. Trademark Use
- TDRA appears to permit dilution liability to be premised on use of a mark other than as
an indication of origin for the defendant’s goods or services.
o TDRA’s exemptions from dilution liability include
Fair use
Nominative or descriptive
Use that was not as a source designator
- Remember, § 43(c) only protects marks that are BOTH famous and distinctive
1. Distinctiveness
2. Fame
- Courts have held that TD and other nontraditional marks can qualify as famous and
eligible for dilution protection
- In the case of dilution claims involving unregistered TD, the TDRA added (c)(4), which
expressly requires dilution plaintiff to prove that
o TD is famous
Page 43 of 63
Understanding Trademark Law – Outline with Casebook Cases
F. Similarity
- The degree of similarity necessary to support a dilution claim is greater than that
required to establish a likelihood of confusion
o Similarity must be great enough even that a noncompeting use is harmful to the
senior user
Page 44 of 63
Understanding Trademark Law – Outline with Casebook Cases
3. Judicial Interpretations
- Factor analysis
o Degree of similarity
Page 45 of 63
Understanding Trademark Law – Outline with Casebook Cases
- The few courts that have considered post-TDRA claims have not departed significantly
from their pre TDRA approaches
o Focus entirely on nature of jr user’s goods
o Most inclined to find tarnishment where they perceive those goods to be
unwholesome, offensive, or poor in quality
See Mr. Charbucks. No indication that consumers associated Charbucks
with low quality
V Secret Catalog v. Moseley II (presumption for sexy marks)
Created a rebuttable presumption that FTDA creates a rebuttable
presumption or strong inference that a new mark used to sell sex
related products is likely o tarnish a famous mark if there is a clear
semantic association between the two.
H. Exceptions
Page 46 of 63
Understanding Trademark Law – Outline with Casebook Cases
- 2006 TDRA revised §43(c)’s fair use exception to dilution liability, while leaving
noncommercial use and news reporting exceptions intact.
1. Fair Use
2. Noncommercial Use
- This is really just a Catch-all for any speech that was protected by first amendment but
fell outside of FTDA’s excepts for comparative advertising and news reporting
o See Barbie Girl case.
3. News Reporting/Commentary
- Issues may arise regarding scope, particularly where D’s news reporting has commercial
aspects.
I. Remedies
- Remedies available to P’s under § 43(c) are more limited than those under § 32 or §
43(a).
o Unless defendant’s dilutive activity is willful, P is entitled only to injunctive relief
and importation of goods.
o Wilfull infringement → Under §43(c)(5) the owner of a famous mark may recover
damages/profits, costs and attorney fees under §35(a), and order for destroying
articles under §36.
Page 47 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Between 1995, the enactment of the FTDA and before 2006, need to have shown actual
dilution.
- After 2006 TDRA, only likelihood of dilution necessary.
- § 43(c)(6)
- Complicated stuff. Look in this part of the book if it gets on the test. Fuck this though.
Page 48 of 63
Understanding Trademark Law – Outline with Casebook Cases
PARTY V: CYBERSQUATTING
- § 43(d) Cybersquatting
o Occurs when person other than the trademark holder registers the domain name
of a well-known trademark and then attempts to profit from this by either
Ransoming the domain name back to the TM holder or
Using the domain name to divert business from the TM holder to the
domain name holder
- §43(d) gives TM owner cause of action against anyone who, with a bad faith intent to
profit from the mark, registers, traffics in, or uses a domain name that is
o Identical or confusingly similar to a mark that was distinctive at the time the
defendant’s domain name was registered
o Is identical or confusingly similar to, or dilutive of, a mark that was famous at the
time the defendant’s domain name was registered
.
- TM owner asserting claim under ACPA must establish …
o Valid TM subject to protection
o Mark is distinctive or famous
o Defendant’s domain name is identical or confusingly similar to or dilutive of
owner’s mark
Confusingly similar?
Looking at domain name only
o Defendant used, registered, or trafficked domain name
o Bad faith intent to profit
Courts consider the factors in §43(d)(1)(B)(i). Check the statute if this is
on the test!
Sporty’s Farm v. Sportsman’s Market (bad faith intent to profit)
Sporty’s “farm” acquires www.sportys.com, and the factors point
towards Cybersquatting. Sporty’s not in same line of business as
Sportsman’s.
Page 49 of 63
Understanding Trademark Law – Outline with Casebook Cases
The Orange Bowl Committee v. Front and Center Tickets (bad faith?
Really?)
This case wasn’t clear cut. Need to show bad faith, and this
wasn’t exactly evident here. Secondary markets are OK.
Seemed like a nominative use.
Courts usually don’t find gripe sites in bad faith.
Lucas Nursery and Landscaping v. Grosse (gripe site)
o SJ for Grosse → Gripe sites weren’t the behavior that
congress was worried about when it enated the ACPA.
This case has been influential among gripe-site cases.
Safe harbor provision § 43(d)(1)(B)(ii)
Bad faith may not be found where D believed and had reasonable
grounds to believe the domain name was fair use and otherwise
lawful
Offer to sell domain name, without more, is not bad faith
- Liability under §43(d) can only be imposed on the registrant or authorized licensee of the
registrant.
B. In Rem Jurisdiction
- Requirements
o Authorized only if court finds
Court cannot obtain in personam jurisdiction over the party in violation of
§ 43(d) OR
Through due diligence was unable to find the person liable
o NO requirement of bad faith for in rem jurisdiction.
Harrods Limited v. 60 Internet Domain Names (in rem actions)
UK/SA store confusion case. For an in rem action, you can bring
any claim from part 1 of the ACPA. All claims are good to go.
- §43(d)(2)(C)
o Situs of domain name. check statute if this comes up.
C. Personal Names
- §47 → any person who registers a domain name that consists of a name of another
living person, or name substantially and confusingly similar thereto, without that person’s
Page 50 of 63
Understanding Trademark Law – Outline with Casebook Cases
consent, with intent to profit by selling domain name for financial gain, shall be liable to
that party in civil action.
o Estate of Frank Gorshin v. Martin (bad faith Cybersquatting)
Riddler case. Here, there is tons of evidence of bad faith – P wanted the
site shut down during his life, although D says otherwise. E thinks Martin
might have had some laches or estoppels argument.
D. ACPA Remedies
- When §43(d) is established, court may order forfeiture or cancellation of domain name,
or transferred to owner of mark.
o These are the exclusive remedies of § 43(d)(2)
o Under § 43(d)(1), full array of remedies under LA is available.
Including statutory damages
- The main mechanism for resolving domain name disputes outside of LA is the Uniform
Domain Name Dispute Resolution Policy under ICANN, a non profit NGO that
administers the domain name registration system.
- A party dissastisfied with outcome of UDRP proceeding may pursue a separate legal
action in court.
o If UDRP panel orders cancellation or transfer of domain name, appeal must be
made within 10 days
Page 51 of 63
Understanding Trademark Law – Outline with Casebook Cases
A. Contributory Liability
- Contributory liability arises under §§32 or 43(a) when defendant either …
o Actively induces another to infringe
Franchisor’s liability for independent acts of franchisees only if
intentionally infringe or knowingly participated in infringement
- Willful blindness
o Person must suspect wrongdoing and fail to investigate
o Cannot be premised on mere failure to take reasonable precautions
o See Hard Rock → no wilfull blindness
o Tiffany v. eBay (no contributory negligence if no willful blindness)
P claimed D was contributorily liable for TM infringement because there
were counterfeit goods auctioned on D’s site. Court found for D because
when told of infringement, D took infringing vendors off the market. P had
to protect it’s own mark to some extent. D cannot be held liabile for
infringements it doesn’t know about.
Page 52 of 63
Understanding Trademark Law – Outline with Casebook Cases
No contributory liability because eBay didn’t know which items were being
infringed. Because it ceased to service customers it knew was infringing,
it satisfied its requirement under Inwood.
B. Vicarious Liability
- Courts generally apply common law principles of agency in determining whether and
under what circumstances to impose vicarious liability understate TM law and under the
LA
o Actual or apparent partnership
o Ability to bind other party
o Exercise joint ownership or control
Page 53 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Courts disagree on whether first amendment issues should be integrated with the LOC
analysis, or whether considerations of the issues should be undertaken only if a LOC is
found likely to exist.
o 8th circuit → failure to separate parody analysis from standard LOC analysis is
reversible error.
A. Commercial Parodies
- In context of infringement and unfair competition claims, parody is generally not treated
as an affirmative defense.
o Serves as additional consideration in LOC analysis
Weighs against a finding that consumers are likely to be confused
2. Dilution
- The results in dilution cases are inconsistent, and reflect courts’ widely disparate levels
of tolerance for parody
o Deere & Co. v. MTD Products → no dilution claim, tarnishment rejected, but
court said …
D diluted P’s mark because “alterations of that sort, established for the
sole purpose of promoting a competing product risk the possibility that
Page 54 of 63
Understanding Trademark Law – Outline with Casebook Cases
B. Noncommercial Expression
- Most courts have employed a balancing test that weighs the public interest in free
expression against the public interest in avoiding consumer confusion
o Courts are generally willing to tolerate some degree of confusion in order to avoid
chilling protected speech
o San Francisco Arts & Athletics v. USOC (no free speech if commercial use)
USOC has unique rights in “Olympics” mark. Only way to defend is via 1st
amendment. SCOTUS said because commercial use, no 1st amendment
protection. Have to express some other way. Eisenberg, Kozinski, and
Brennan all see a political side to this where they think the speech
deserves some kind of 1st amendment protection.
-
Rogers v. Grimaldi
The LA should be construed to apply to artistic works only where
the public interest in avoiding consumer confusion outweighs the
public interest in free expression
Two prong test
o Is artistic relevance above zero?
ESS Entertainment 2000 v. Rock Star Videos
(artistic relevance > 0)
Page 55 of 63
Understanding Trademark Law – Outline with Casebook Cases
2. Dilution
- Application of dilution laws to traditional expression has an even greater potential to chill
protected speech than their application to TM infringement
o Dilution can be established without any LOC
o See Louis Vuitton v. Haute Diggity Dog
Fourth circuit gave significant weight to parodic context in evaluating the
likelihood of dilution by blurring
C. Political Speech
Page 56 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Political speech is the one arena in which courts have consistently subordinated the
rights of TM owners in the interest of free expression, regardless whether the claim is
infringement/unfair competition or dilution
D. Expressive Merchandise
A. Abandonment
1. Cessation of Use
Page 57 of 63
Understanding Trademark Law – Outline with Casebook Cases
Party challenging mark must establish owner is not using and has
no intention to resume in reasonably foreseeable future
3 consecutive years of nonuse → PFE of abandonment
Shifts the burden of production to owner → owner needs only to
show evidence to rebut abandonment.
o Demonstrate reasonable grounds for suspending use of
mark
o Produce evidence of intent to resume within reasonably
foreseeable future
Reasonably foreseeable? → depends on industry
and circumstances of the case
2d Cir. has held that intent not to resume must exist
during the three year period of non use. See ITC v.
Punchgini.
Sporadic use not good enough
o Must produce more than conclusory testimony or affidavits
of intent.
a. Naked Licensing
- Occurs when a trademark owner fails to exercise reasonable control over use of a mark
by licensee such that the presence of the mark on licensee’s goods or services
misrepresents their connection with the trademark owner since the mark no longer
identifies goods or services that are under the control of the owner and cannot provide a
meaningful assurance of quality.
- Question for courts
o Did licensensor IN FACT exercise control?
Ability to control is not that important.
b. Assignment in Gross
Page 58 of 63
Understanding Trademark Law – Outline with Casebook Cases
- First sale doctrine permits a purchaser of lawfully TM’d goods to display, offer, and sell
those goods under their original trademark
o Exceptions
Does not apply when reseller tricks consumer into thinking it is one of
manufacturer’s franchisees
Does not apply when goods are sold that are materially different from the
trademark owner has authorized for sale
Does not apply when repackaging does not have proper notice
Champion Spark Plugs v. Sanders (TM for 2nd hand goods)
o As long as the refurbished goods are clearly marked as
such, there is no TM infringement. Inferiority is expected in
2nd hand goods. Any benefit that refurbisher gets is fine as
long as the public is not deceived.
Page 59 of 63
Understanding Trademark Law – Outline with Casebook Cases
- Applies when D has used P’s TM only to describe D’s own goods or services, not to
describe or identify P’s services.
- Requirements
o D must prove …
Its use of P’s mark was not as a TM or SM
It was using the mark fairly and in good faith
It is using the mark only to describe its goods and services
US Shoe v. Brown Group (fair use)
o “looks like a pump, feels like a sneaker.” Court found this
was just describing P’s own product, not trying to confuse
the source. P did not meet their burden for LOC.
- Fair use has been held to apply where D’s use of another’s mark in an index or catalog
to indicate the source of its items, or to describe the defendant’s relationship to the TM
owner
Page 60 of 63
Understanding Trademark Law – Outline with Casebook Cases
o Applies when D has used P’s TM to describe or identify P’s goods and services,
even though the D’s ultimate goal is to describe their own goods/services.
Typically occurs when P’s mark is the only way to describe a particular
subject matter.
H. Comparative Advertising
Page 61 of 63
Understanding Trademark Law – Outline with Casebook Cases
- The express exemptions in the federal dilution statute include an fair use in the context
of comparative advertising
I. Federal Preemption
- Cheney Bros. v. Doris Silk Corp. (no federal IP protection unless provided by statute)
o Unless an IP right is enumerated by statute via congress, there is no protection.
Court will not “invent” protection
J. 11th Amendment
- SCOTUS interprets 11th amendment to preclude federal court jurisdiction in suit brought
against a state
o Two exceptions
To enforce 14th Amendment
When State waives sovereign immunity
See College Savings Bank v. Florida Prepaid Postsecondary
Educ. Expense.
o False advertising claim under §43(a) not heard in federal
court because fed court did not have jurisdiction. State did
not disclaim immunity.
K. Statute of Limitations
- LA has no SOL
Page 62 of 63
Understanding Trademark Law – Outline with Casebook Cases
A. Injunctions
- The most predominant and most traditional remedy for violations of TM and unfair
competition law
- §34(a) → permanent and temporary injunctions available for infringements of registered
marks under §32, as well as for violations of §§43(a),(c), or (d) wrt both registered and
unregistered marks
o Affords a court great latitude in fashioning injunctive relief
See King Seely Thermos v. Aladdin Industries
Court recognized that although Thermos was still a protected
mark, it had become kind of generic, and allowed Aladdin
restricted use of the term.
- Preliminary injunction requirements?
o Likelihood P will ultimately succeed on the merits
o Whether P is likely to suffer irrepreable harm if D is allowed to continue it’s
allegedly infringing behavior
o Whether the hardship to the plaintiff in the absence of a preliminary injunction is
likely to be greater than the hardship to the defendant if injunction is granted
o Whether preliminary injunction would serve the public interest.
Page 63 of 63