TRADEMARKS OUTLINE

  1. INTRO
  2. McSleep—holding in favor of McDonald’s
  3. likelihood of confusion—yes, survey evidence
  4. actual appearance in marketplace (comparison in marketplace)—appearance not similar but suggests ownership, sponsorship or association
  5. used in different but related markets—dining and lodging
  6. intent of infringer—intentional attempt to benefit from good will but not bad faith (no atty fees)
  7. Origins and Sources of Trademark Protection
  8. Consumer-oriented TM: protect them from being deceived, helping them identify
  9. Prestonettes: TM only gives the right to prohibit the use of it so far as to protect the owner’s good will against the sale of another’s product as his; cannot prevent use of words, only if it is deceiving
  10. Stahly, Inc. v. M.H. Jacobs Co., 7th Cir. 1950—razor case pro consumer
  11. Razors were collateral for loan; lender given razors when manufacturer defaulted on loan
  12. Manufacturer signed consent letter for razors, waiving corporate interest in its trademark rights
  13. Ct holding: manufacturer cannot waive public’s right to be protected from defective goods
  14. Focus of TM and UC law is protecting the public
  15. Who should bear burden of labeling razors as defective?

(A)Stahly (acquirer) should bear the burden since the razors were give as collateral with the understanding that they had value/were sellable; therefore, they are responsible for making them ready to sell

  1. Ralph Brown—persuasive advertising should not be protected, only informative
  2. Landes & Posner—TM lower consumer costs b/c reduces time searching for what they want
  1. Business-oriented TM: protect producers, good will
  2. INS v. AP—misappropriation of commercial value
  3. Granted AP protection against competitor during period of initial dissemination of the information to AP’s members
  4. Competitor can’t reap what it has not sown; AP invested labor
  5. Hanover Star Milling: TM merely protect source/goodwill, not the product itself except in connection with an existing business—indicates ownership/source
  6. Mishwaka Rubber: TMs are symbols and when they convey desirability, owners have something of value
  7. Yale Elec. Corp.: one merchant shall not divert customers from another by representing what he sells as emanating from the other
  8. Alfred Dunhill Ltd. v. Interstate Cigar, Co., Inc., 2d. Cir. 1874—water damaged tobacco pro producer
  9. Insurance company seized water-damaged tobacco and permitted to sell tobacco as part of terms of insurance contract
  10. Ct: Acquirer doesn’t have to label; Dunhill should bear the burden of labeling goods because they could’ve prevented goods from being sold on salvage market
  11. Unfair for Dunhill to impose obligation to label on others and decrease value of goods
  12. distinguish Stahly and Dunhill:
  13. razors v. tobacco
  14. actual potential harm of razors to public is greater than consumer dissatisfaction with tobacco
  15. Stahly—completely focused on consumers
  16. Poor goods/defective
  17. Stop deception
  18. Dunhill—completely focused on ™ Holders/producers
  19. Champion Spark Plug Co. v. Sanders (SC 1947)—remedy for consumer and producer
  20. Plaintiffs manufactured spark plugs
  21. Defendants sold reconditioned plugs without notice of reconditioning
  22. Whether or not they can use manufacturer’s ™? Yes. They’re second-hand but they’re still Champion spark plugs
  23. Must label “Repaired” or “Used”
  24. Full disclosure gives the manufacturer all the protection to which he is entitled

(A)Demonstrating ™ holder/producer interests re: passing off and deception

  1. consumer confusion/deception and value in used market wrt reconditioned spark plugs

(A)Demonstrating consumer interests

  1. Reasons against protecting TMs
  2. Trade-Mark Cases
  3. Not within constitutional protection for PT and ©
  4. Often result of accident rather than design
  5. No novelty, imagination, or labor necessary—simply priority
  6. Jessica Litman—persuasive TMs discourage competition, takes away consumer choice; anti persuasive protection
  1. What is a TM?
  2. Lanham Act § 45
  3. Mark
  4. Trademark
  5. Word, name, symbol, comb
  6. Use in commerce
  7. Distinguish or identify goods
  8. Indicate source
  9. Service mark—replace “goods” with “service”
  10. Sen. Report No. 1333
  11. Identifies goals: protecting consumer and producers
  12. “The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for those of another.” (passing off)
  13. concerned with leaving room for competitors
  14. Kellog v. National Biscuit Co.—shredded wheat case
  15. “shredded wheat” is a generic term which describes the product/indicates source
  16. upon expiration, product and name went into public domain
  17. “shredded wheat” did not acquire secondary meaning—has to show that the primary significance of the term in the minds of the consuming public is not the product but the producer
  18. Kellogg markets product in distinguishable manner—number of biscuits per carton, distinctive carton, size of Kellogg identification
  19. “Sharing in the goodwill of an article unprotected by patent or trademark is the exercise of a right possessed by all”
  20. according to Rothman: holding in contemporary law is limited b/c it rests so heavily on expiration of the patent
  1. TYPES OF MARKS
  2. Word Marks
  3. Coca-Cola Co. Koke Co. of America
  4. Coca-cola’s change in formulation did not constitute fraudulent representation of the mark
  5. Acquired secondary meaning, product more emphasized than producer
  6. Donald Trump’s “You’re Fired”
  7. Slogan
  8. as long as it is distinctive, can be a TM
  9. if merely descriptive, must acquire secondary meaning (Clairol case: billions on advertising)
  10. Trade Dress
  11. General
  12. the appearance of a container or package on a good
  13. expanded to décor and shape and design of product
  14. needs to indicate source and have secondary meaning; cannot simply be attractive product feature
  15. cannot be functional (ie bright color of safety ear plugs)
  16. can be registered like ™ on federal registry
  17. unregistered trade dress are protected like unregistered ™ (§ 43)
  18. distinction originates in common law: originally, trade dress breaches could only be brought under unfair competition; distinction no longer exists
  19. Qualitex Co. v. Jacobson Products Co., Inc.—color
  20. SC reversed saying that color can be registered if it has secondary meaning but is not functional
  21. In this case, however, color is not special and is functional because else, there would be a stain on the clothes
  22. cannot ™ the functional features of a color: ex orange marmalade, mint toothpaste
  23. if element is essential
  24. if element affects the cost of produce or purchase
  25. Other Identifying Indicia
  26. Scent
  27. Scented thread is protectable
  28. Not inherent attribute or natural characteristic of good
  29. Feature supplied by applicant
  30. Emphasized in advertising  established source of good
  31. cannot protect scents or fragrances of products which are noted for those features—perfumes, colognes, scented household products
  32. Sounds
  33. TM only after showing ppl recognize and associate the sound w services offered and/or rendered exclusively with single, albeit anonymous, source
  34. Merely arbitrary, unique, or distinctive not enough
  35. Ex: Intel musical notes, AT&T spoken words
  36. ACQUISITION OF TRADEMARK RIGHTS
  37. Distinctiveness
  38. Abercrombie—arbitrary, fanciful, suggestive, & descriptive terms
  39. Generic  automatic no protection
  40. Arbitrary, fanciful  automatic protection
  41. Descriptive  must have secondary meaning for protection
  42. Suggestive
  43. Neither fanciful nor descriptive
  44. Requires imagination
  45. Entitled to registration without proof of secondary meaning
  46. Inherently Distinctive Marks
  47. Application of Reynolds Metals Co.—BROWN-IN-BAG™
  48. Mark is not merely descriptive
  49. Words themselves are not TM, but hyphenated combination is
  50. In the Matter of the Application of Quik-Print Copy Shops, Inc.
  51. “QUIK-PRINT” is merely descriptive b/c the quality or essential characteristic of service immediately comes to mind: quick
  52. “Labrador Software”
  53. LS sued Lycos for using their black lab for rival search engine
  54. Proliferation of labs in search engine industry  descriptive rather than suggestive
  55. In re Oppendahl—Patents.com: .com is merely descriptiveb/c it’s not source-identifying
  56. Technical TM
  57. Arbitrary, fanciful, or suggestive
  58. Policy rationale:

(A)Inevitably recognized as TM

(B)Doesn’t prevent competition from describing goods

(C)Producers/competitors require certainty regarding TM status of term so that they know what to avoid, etc.

  1. Acquisition of Secondary Meaning
  2. Intnatl Kennel Club of Chicago v. Mighty Star, Inc.
  3. D marketed tog toys under Internatl Kennel Club
  4. IKC of Chicago coordinates dog shows  no direct competition
  5. Name is descriptive  must have secondary meaning IKC of Chi does

(A)Amount invested in advertising, volume of sales, etc.

(B)Actual confusion

(C)History of use

  1. Donchez v. Coors Brewing Company
  2. “Bob the Beerman” of Colorado Rockies v. Coors’ “beerman”
  3. Ct: no secondary meaningb/c not enough evidence of actual confusion
  1. Trade Dress
  2. Two Peso Inc v. Taco Cabana—product packaging does not need secondary meaning
  3. Mexican restaurant interior
  4. Trade dress must be

(A)Non functional AND

(B)Descriptive with secondary meaning OR

(C)Inherently descriptive

  1. Inherently distinctive trade dress does not require secondary meaning
  2. Owners have propriety interest in unique design—opinion does not consider consumers’ interest/confusion
  1. Wal Mart v. Samara Brothers—product design requires secondary meaning
  2. Children’s clothing design
  3. Product design requires secondary meaning
  4. Consumer-oriented policy: benefits of competition
  1. Adoption and Use
  2. P&G v. Johnson & Johnson—“minor brand program” not “in commerce”
  3. Need more than sporadic and causal use to be “in commerce”
  4. P&G did not demonstrate intent to bring product to market
  5. Larry Harmon Pictures Corp. v. Williams Restaurant Corp.—one restaurant is “in commerce”
  6. Bozo the Clown v. BOZO’s restaurant
  7. One location that serves interstate customers is enough to est “in commerce”
  8. DaimlerChrysler AG v. Bloom (1800 Mercedes)—licensing use of a number is not “in commerce”
  9. Mere licensing of phone number without active promotion or advertising of the mark is not “use” of the mark
  10. Licenser did not register, advertise, or incorporate mark into a web page
  11. Initial confusion and diversion from actual Mercedes number doesn’t matter
  12. Pop Up Ads, Keying, Triggering Techniques
  13. Mixed rules
  14. 1800 Contacts v. WhenU.com
  15. use of 1800 Contacts’ address in unpublished triggering directory does not “use” TM
  16. WhenU’s pop up ads don’t display 1800 Contacts’ TM and do not interfere with 1800’s site
  17. Categorical associations rather than selling of keywords or TMs
  18. Playboy v. Netscape
  19. Playboy succeeded on dilution claim b/c ct assumed TM used in their advertisements
  20. Keywords produced banner ads top or side of search page
  21. Google v. American Blind & Wallpaper Factory
  22. Google’s AdWords allow advertisers to purchase or bid on certain keywords
  23. Upholds Playboy
  24. Denies motion to dismiss
  25. U-Haul Int’l v. WhenU.com—not use
  26. Ads appear in separate window
  27. “use” not est just b/c simultaneously visible
  28. does not sell TM/keyword to advertisers—does not advertise or promote TM (1800 Mercedes)
  29. does not interfere with/hinder/impede use of website
  30. Wells Fargo & Co. v. WhenU.com (meta tags—consumers don’t see use of TM)
  31. Use of TM in scrambled directory is not “use”
  32. Doesn’t use TM to indicate the source of anything it advertises
  33. Extraterritorial Use
  34. Buti—Italian café owner advertising Italian café in U.S.
  35. Mere advertising or promotion without actual rendering of services or goods is insufficient to establish protection.
  36. Exceptions (where protection will be granted to foreign users):

(A)Famous mark exception

(B)Bad faith exception: if the US user expressly adopted the foreign users name to get their publicity or good will.

(C)Test-marketing. Impressa tried to use this, but was unsuccessful

  1. Internatl Bancorp v. SBM
  2. Monte Carlo casino v. online gambling company using MC name
  3. MC casino advertises in U.S. protectable
  1. Domain Name
  2. use of a mark on a domain name and whether or not it is a use ties back to source identifying
  3. If the mark only serves as an address, or a contact, then it is not a use
  4. not considered to be distinctive, so wouldn’t be protected in that sense either.
  1. Ownership
  2. Bell v. Streetwise Records (“New Edition”)
  3. Record producer v. performer
  4. Priority
  5. Priority determined by who controls nature and quality of the goods
  6. New Edition had first use (doesn’t have to be interstate)  they have priority
  7. Group members not replaceable & producers only did normal functions (according to industry standards)  performers have control
  8. Robi v. Reed (“The Platters”)
  9. Widow of member v. founder
  10. Member did not have right to confer to wife
  11. Founder was only consistent member of group  retained control over quality of services
  12. Priority
  13. Lanham Act
  14. §1(b): Intent to use
  15. §7(c): Constructive use
  16. Priority via Sales
  17. Blue Bell, Inc. v. Farah Manufacturing Co. (“Time Out”)
  18. Use of identical TM for men’s clothing
  19. Priority based on first sale to PUBLIC, not sample sale
  20. Lucent Info. v. Lucent Tech—priority in geographic area
  21. Factors for priority use

(A)Volume of sales

(B)Growth trends

(C)Number of persons purchasing product in relation to potential number of customers

(D)Amount of product advertising

  1. “de minimis” sales (less than $5000 and less than 50 customers for any specific region) are not enough
  1. Herbko Int’l v. Kappa Books, Inc. (“Crossword Companion”)
  2. Use of single book does not create an association between book’s title and the source of the book
  3. Book titles of single works are not inherently distinctive b/c they ID book, not source
  4. Title of series can est priority with timeliness (between books) AND public association
  1. Priority via Analogous Use
  2. Shalom Children’s Wear v. In-Wear A/S (“BODY GEAR”)—analogous use v. intent to use
  3. analogous trademark use priority has priority over intent to useapplication priority
  4. analogous use: non technical use of TM in connection with sale or promotion of a product under circumstances which does not provide a basis for application to register, usually b/c statutory requirement for use on or in connection with sale of goods in commerce has not been met
  5. Maryland Stadium Authority v. Becker (“Camden Yards”)
  6. As long as analogous use occurs within timely manner of actual use, use totality of circumstances test

(A)Business plan

(B)Publicity

(C)Promotional events

(D)Public interest

  1. Stadium developer v. t shirt seller
  2. Camden Yards  means baseball (secondary meaning)
  3. MSA only has rights when used in connection with baseball
  1. Priority for foreign marks
  2. Group Gigante SA v. Dallo & Co. (“Gigante”)—Mexican grocery store
  3. Normally, territoriality rule applies
  4. Exception for famous foreign marks

(A)Est secondary meaning in U.S.

(B)Substantial percentage of consumers in U.S. market is familiar with foreign mark

  1. Concurrent Use
  2. United Drug Co. v. Theodore Rectanus Co. (“Rex”)
  3. First user can have priority in geographic area first registered has not reached/developed (if used in good faith)
  4. Codified in Lanham Act § 33—limited area exception
  5. Thrifty Rent-A-Car v. Thrift Cars
  6. Thrift Cars limited had limited geographic scope in Mass.
  7. Limited area exception for junior user only if
  8. Likelihood of confusion
  9. Adopted mark prior to registered user without prior knowledge of registered’s prior use
  10. Mark used continuously in that location

(A)Limited advertising not enough

  1. Initially in good faith without notice of an infringing mark
  1. rights frozen to area where use est prior to registration
  1. Dawn Donut Co. v. Hart’s Food Stores (“Dawn Donuts”)
  2. § 33(b)(5) does not apply when use occurred after registration an have knowledge of prior use
  3. after registration, there is no good-faith adoption (§22)
  4. no injunction b/c no likelihood of confusion
  5. V&V Food v. Cacique Cheese (“Rancherito”)
  6. Senior user requested amendment to injunction that barred it from advertising in limited area b/c it couldn’t advertise on national Spanish channels that were broadcast in limited area
  7. Lost competitive edge in non-limited area  ct modified injunction
  8. Rejected request for national Spanish radio and national English media
  9. Radio ads are local and can easily avoid limited area
  10. Regional campaigns are feasible with national English media
  11. Pure Imagination Inc. v. Pure Imagination Studios, Inc.—internet
  12. Both website design services
  13. Junior user’s first use was still after senior user’s first use
  14. Dicta on limiting area on internet:
  15. Must prove use in specific markets
  16. Evidence of type and amount of activity
  17. Continuously offer services since first sale
  1. Intent to Use
  2. Lanham Act § 1(b)
  3. Requirements:
  4. Bona fide intention under circumstances of good faith to use the mark in commerce.
  5. Application needs to set forth the goods, the person who is filing, and a drawing of the mark.
  6. Statement that there is no one else, to your knowledge, using the mark, and there would be no likeliness of confusion.
  7. 6 month period to file showing of actual use. At end of that, you can get another 6 months extension. Can get more, but no more than 24 months, if you can show good cause. Can get 6 months, plus 24 months. Not 24 months total.
  8. Policy rationale
  9. Disadvantage to foreign applicants who TM in other countries that allow intent to use
  10. Legal uncertainty & large financial investment for business in developmental stages
  11. Minimizes need for “token use”
  12. Lots of unused TM (P&G)
  13. Expensive for large items (airplanes)
  14. Zirco Corp v. American Telephone & Telegraph Co. (“DATACELL”)
  15. to establish date of priority, look to the date that ITU was filed, not when actually registered
  16. ITU established constructive use
  17. If you allowed another person to take a mark that was registered but hadn’t but used and applied it to their good that had already been used, it would defeat the purpose of the ITU system.
  18. But, if the ITU user didn’t use their mark within requisite time, then other party could use it.
  19. WarnerVision Entertainment Inc. v. Empire of Carolina, Inc. (“REAL WHEELS”)
  20. Can’t enjoin mark that has ITU pending
  21. But ITU applicant can’t prevent others from using it either, in case the ITU applicant fails to follow through
  22. Eastman Kodak Co. v. Bell & Howell Document Management Products Co.
  23. B&H filed ITU for “6200,” “6800,” and “8100” for microform readers/printers
  24. Kodak opposes b/c merely descriptive of model numbers
  25. Numerical model numbers may require secondary meaning OR they may be inherently distinctive
  26. Cannot decide until use, thus grant ITU
  27. In re TM App of American Psychological Assoc. (“PSYCHOLOGICAL METHODS”)
  28. Kodak limited to when it is the manner in which designation is used that renders it descriptive
  29. Congress intended Board to review descriptiveness at first review of ITU
  30. Title of journal is merely descriptive of the subject matter of the publication
  31. Racing Champions, Inc. v. Mattel, Inc. (“1/64th”)
  32. 1/64th is mere descriptive as an indicator of scale not model designation (Kodak)
  33. has preexisting meaning that goes towards its descriptiveness/non-descriptiveness
  1. REGISTRATION
  2. Procedure for Registration
  3. Trademark search: hire outside search agency to search USPTO, trade listings, Chambers of Commerce lists, The Official Gazette (USPTO publication)
  4. Trademark report: see what conflicts there are and decide whether or not you may still prevail if there is a conflict
  5. File application: most done electronically
  6. Follow guidelines set by USPTO
  7. Follow guidelines in § 1 for regular registration under Lanham Act
  8. Examined by TM attorney @ USPTO to see if TM is registerable
  9. Meet procedural requirements
  10. Consider there are other bars to registration (see § 2)
  11. To appeal denial: Trademark Appeal Board (TAB)  District Ct OR Cir Appl
  12. Published for opposition in “The Official Gazette” (§ 12)
  13. Opportunity for ppl to oppose the TM before it’s approved officially (§ 13?)
  14. 30 days to oppose TM
  15. Notice of registration in “The Official Gazette”
  16. If under §1(b)  notice of allowance
  17. After 5 years of continuous use  uncontestable
  18. Registration advantages
  19. nationwide protection from date of application
  20. unregistered  common law protection limited in areas where mark had actually become known or used
  21. priority over good faith user whose first use is after senior user’s first but before registration
  22. incontestability if used continuously for 5 years
  23. warning to others—easily found in TM searches
  24. barring imports—goods produced abroad bearing registered mark may be blocked @ Customs
  25. protection against counterfeiting—more remedies available against counterfeiters of registered TM
  26. evidentiary advantage—registered mark has presumption of right (challenger must overcome presumption); prima facie valid
  27. use of ®
  28. confirms ownership and validity
  29. gives constructive notice (§ 22)
  30. Supplemental registry (§ 27)
  31. Mark is capable of distinguishing goods
  32. Not constructive notice
  33. Not admission that it’s not secondary meaning
  34. Discourage others from adopting your mark by being on a registry
  35. Bars to Registration
  36. Lanham Act § 2(a)-(e)
  37. Immoral/deceptive/scandalous/disparaging—absolute bars to registration (§2(a))
  38. immoral
  39. deceptive
  40. scandalous
  41. disparages
  42. falsely suggests connection
  43. brings into contempt or disrepute
  44. Standing
  45. Real Interest Test

(A)opposer has to show “real interest” in the outcome of the proceeding