T R A D E M A R K S A N D U N FA I R C O M P E T I T I O N

Professor Landau, GSU COL Spring 2004

Office: UL 412, Definite Office Hours are Wednesdays 1.30-5 and Friday 1-2.30
404.651.2084
mlandau@gsu.edu (send him email as high priority)
Exam will be take home exam, short answer questions, with 1-2 short essays; 1 day
any day during the exam period
TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION ACTION:.......................................5
WHAT IS A TM?.................................................................................................................7
WHAT IS A COPYRIGHT?....................................................................................................9
WHAT IS A PATENT (UTILITY PATENTS)?...........................................................................10
WHAT AND WHOM DO TRADEMARKS PROTECT?...............................................................10

General principles of unfair competition (Restatement 3d, Unfair Competition)............10

International News Service (INS) v. Associated Press (1918)..........................................11
Cheney Bros. V. Doris Silk Corp. (1930)..........................................................................11
DOCTRINE OF NONFUNCTIONAL FEATURES:.............................................................11
Sears, Roebuck & Co. v. Stiffel Co..................................................................................11
Feist v. World Publications: (IMPORTANT Copyright).......................................................12
Stork Restaurant v. Sahati (1948)..................................................................................12
Playboy v. Netscape:...................................................................................................... 12
U-Haul Phone Case:........................................................................................................ 13

WHAT

IS A

TRADEMARK?......................................................................................13

Kellogg Co,. v. National Biscuit Co., p. 84.......................................................................14

WORD MARKS................................................................................................................14

Coca-Cola Co. v. Koke Co. of America, p. 89...................................................................14

TRADE DRESS.................................................................................................................15

Qualitex Co. v. Jacobson Products Co., Inc. [Supreme Ct Case], p. 96............................15

FUNCTIONALITY DOCTRINE:........................................................................................15
OTHER IDENTIFYING INDICIA...........................................................................................16

DISTINCTIVENESS...............................................................................................16
ARBITRARY, FANCIFUL, SUGGESTIVE, AND DESCRIPTIVE TERMS........................................16

Abercrombie & Fitch Co. v. Hunting World, Inc., p. 108..................................................17

TECHNICAL TRADEMARKS...............................................................................................18

Application of Reynolds Metals Co., p. 112....................................................................18

In the Matter of the Application of Quick-Print Copy Shops, Inc., p 114.........................18

SECONDARY MEANING....................................................................................................18
USE IN COMMERCE REQUIREMENT...................................................................................18

Playboy Entertainment v. Netscape............................................................................18

U-Haul, Wells Fargo, 1-800-Contacts v. WhenU.com....................................................19
1-800-contacts:........................................................................................................... 19
Polaroid Corp. v. Polarad Electronics Corp., 182 F.Supp. 350.......................................19
TRADEMARK OWNERSHIP...............................................................................................20

Bell v. Streetwise Records, Ltd., p. 155..........................................................................20

PRIORITY AND CONCURRENT USE....................................................................................20

Blue Bell, Inc. v. Farah Manufacturing Co.......................................................................20

ANALOGOUS USE............................................................................................................21

Maryland Stadium Authority v. Becker...........................................................................21

Thrifty Rent-a-Car v. Thrift Cars, Inc...............................................................................21
Dawn Donut Co. v. Harts Food Stores, Inc.....................................................................21

INTENT

TO

USE..................................................................................................22

APPLICATION REQUIREMENT...........................................................................................22

Zirco Corp. v. American Telephone & Telegraph Co., p. 198...........................................23

Warner Vision Entertainment v. Empire of Carolina, p. 201............................................24
Eastman Kodak Co. v. Bell & Howell Document Management Products Co., p. 205........24
Shalom Childrens Wear Inc. v. In-Wear A/S, p. 209.......................................................25
In re Trademark Application of American Psychological Association, p. 209..................25
Racing Champions, Inc. v. Mattell, Inc., p. 210...............................................................25

BARS

TO

REGISTRATION.......................................................................................25

2A IMMORAL, DECEPTIVE, SCANDALOUS OR DISPARAGING MATTER...............................25

OFFENSIVE MARKS...................................................................................................... 26
In re Bad Frog Brewery, p. 229.......................................................................................26
Harjo v. Pro-Football, Inc., p. 231 [recently overturned].................................................26
Standing to Bring Challenge to TM on Moral Grounds.................................................27
Difference Between Deceptive Terms and Deceptively Misdescriptive Terms..........27
Confusion.................................................................................................................... 29
Nutrasweet Co. v. K&S Foods, Inc. p. 257.......................................................................29
Marshall Field & Co. v. Mrs. Fields Cookies, p. 260.........................................................29
Numerals, Letters and Initials.....................................................................................29
Functionality/Trade Dress............................................................................................ 29

REGISTRATION....................................................................................................30
DOMAIN NAMES AS TRADEMARKS...................................................................................30

In re Eilberg, p. 310........................................................................................................ 31

LOSS

OF

TRADEMARK RIGHTS...............................................................................31

GENERICISM...................................................................................................................31

Bayer Co. v. United Drug Co., p. 312..............................................................................31

America Online Inc. v. AT&T Corp., p. 336......................................................................32
ABANDONMENT 45 OF THE LANHAM ACT........................................................................32

Silverman v. CBS, Inc., p. 356........................................................................................33

Clark & Freeman Corp. v. Heartland Co. Ltd., p. 368......................................................33
University Boopkstore v. Board of Regents, p. 374........................................................33

TRADEMARK LICENSING.......................................................................................33
INFRINGEMENT...................................................................................................34
WAYS TO INFRINGE.........................................................................................................34

Polaroid Corp. v. Polarad Elects. Corp., p. 391................................................................34

Nabisco v. Warner-Lambert, p. 393................................................................................35
E.J. Gallo Winery v. Consorzio del Gallo Nero, p. 400......................................................35
Banfi Products Corp. v. Kendall-Jackson Winery, Ltd., p. 407..........................................36
Overview of Likelihood of Confusion (LOC).....................................................................37
Dilution.......................................................................................................................... 37
TYPES OF CONFUSION....................................................................................................40

Playboy v. Netscape....................................................................................................... 41
Mobil Oil v. Pegasus Petroleum 1987.............................................................................41
The Network Network v. CBS, Inc. (2000) p 431.............................................................42
Playboy enterprises, Inc. v. Netscape Comm. Corp., p. 421...........................................42
Mobil Oil Corp. v. Pegasus Petroleum Corp., p. 424........................................................43
The Network Network v. CBS, Inc., p. 431......................................................................43
RELEVANT PUBLIC / SECONDARY CONFUSION...................................................................44

Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., p.
440................................................................................................................................ 44
Foxworthy v. Custom Tees, Inc., p. 442..........................................................................44
Blockbuster Entertainment Group v. Laylco, Inc., p. 443................................................44
REVERSE CONFUSION.....................................................................................................44
CONTRIBUTORY INFRINGEMENT......................................................................................44
THE TWO 5-YEAR RULES: SECONDARY MEANING AND INCONTESTABILITY:.........................44
TRADE DRESS BARS TO REGISTRATION............................................................................45
DEFENSES TO INCONTESTABILITY REGISTERED MARKS, P. 486..........................................45

Park N Fly, Inc. v. Dollar Park and Fly, Inc., p. 475.........................................................45

Car-Freshner Corp. v. S.C. Johnson Inc., p. 493..............................................................45

SOVEREIGN IMMUNITY....................................................................................................46

College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, p. 496
...................................................................................................................................... 46
UNREGISTERED MARKS...................................................................................................46

Yarmuth-Dion, inc. v. Dion Furs, Inc., p. 504..................................................................46

FALSE DESIGNATION

OF

ORIGIN............................................................................46

TRADE DRESS AS FALSE DESIGNATION OF ORIGIN............................................................46

Two Pesos, Inc., v. Taco Cabana, Inc., p., 510.................................................................46

WHEN DESIGNS ARE INHERENTLY DISTINCTIVE................................................................48

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., p. 519...................................................48

FUNCTIONALITY REVISITED.............................................................................................48

TrafFix Devices, Inc. v. Marketing Displays, Inc., p. 525.................................................48

Best Sellers Wine........................................................................................................... 49
Conopco, Inc. v. May Dept. Stores Co., p. 555................................................................49
FALSE DESIGNATION OF ORIGIN.......................................................................................49

Lanham Act Requirements of a finding of False Designation or Origin...........................49

ADVERTISING.....................................................................................................50
COMPARATIVE ADVERTISING...........................................................................................50

Smith v. Chanel, Inc., p. 570.......................................................................................... 50

If you like _________, youll love ____________..................................................................50
August Storck v. Nabisco, Inc., p. 578 [The Werthers Candy Case]................................50
FALSE REPRESENTATION 43A1B; 15 USC 1125A1B.........................................................50
FALSE ADVERTISING - 43A.............................................................................................51

Coca Cola v. Tropicana Prods., Inc., p. 585.....................................................................51

Clorox Co., Puerto Rico v. Proctor & Gamble Commercial Co., p. 590 [bleach puffery
case].............................................................................................................................. 52
Polar Corp. v. Coca-Cola, p. 599.....................................................................................52
Proctor & Gamble v. Haugen, p. 601..............................................................................52
Coors Brewing Co. v. Anheuser-Busch Co., p. 608..........................................................53

AUTHORS

AND

PERFORMERS RIGHTS....................................................................53

AUTHORS AND PERFORMERS RIGHTS OF ATTRIBUTION..................................................53

Dastar v. 20th Century Fox (2003), Supplement.............................................................53

Gilliam v. American Broadcasting Companies, Inc., p. 618.............................................54
Choe v. Fordham Univ. Sch. Of Law, p. 623....................................................................54
Smith v. Montoro, p. 626................................................................................................ 55
Lamothe v. Atlantic Recording Corp., p. 631..................................................................55
Jones v. Jones, p. 632..................................................................................................... 55

LIMITATIONS ON LANHAM ACT ATTRIBUTION CLAIMS........................................................55

King v. Innovation Books, p. 635....................................................................................55

Miramax Films Corp. v. Columbia Pictures Ent., p. 640..................................................55
RIGHT OF PUBLICITY AND RELATED CLAIMS.....................................................................56

Allen v. National Video, Inc., p. 643................................................................................56

Midler v. Ford Motor Co., p. 651.....................................................................................56
Oliviera v. Frito Lay, p. 655............................................................................................. 56
White v. Samsung Electronics America, Inc., p. 657.......................................................56

TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION ACTION:

Claim: Use of a competitors trademark or service mark without authorization

to trade on the owners goodwill and reputation
Defenses:
o

No likelihood of confusion: use of the mark is not a logo that is likely to

cause confusion

Noncompeting uses: the competitors marks have been used in one

type of business (e.g., restaurants) and does not preclude use in
another business (e.g., lodging)

Extensive third-party uses: by allowing or acquiescing in the use by

third-parties of a proliferation of the use of words formulated to create
the mark (e.g., Mc___) said company should be denied the right to
preclude the use of the trademark word

XX mark is generic: use of Mc as a prefix has become generic and

has entered into the English language with a recognized meaning of its
own

Ninth Circuit Considerations when considering confusion: (not exhaustive or

exclusive)
o

Strength of the mark

Similarity between the two marks

Similarity between the two products

Likelihood that the prior owner will bridge the gap

Actual confusion

Good faith of the junior users product

Quality of the junior users product

Sophistication of buyers

Relative harm to the parties if an injunction is granted

(other jurisdictions) Channels of Trade

Sup Ct looks to whether an infringement is an Issue of Law or

an Issue of Fact or whether it is a mixed issue of law and fact

Course Roadmap:
How does one get TM protection?
What can be a TM?
o Are there certain categories of indicators that can never be marks or
what are the absolute bars against things being used as bars to marks?
o Category of what can be a TM has been expanded over time
As long as something indicates a geographic origin
o Attribution with respect to creative material
o Statutory bars scandalous, disparaging (Harjo case suit against
Washington Redskins because it was insulting)
And when can you cancel a mark
o Flags
o Living ppl
o 2c of the Lanham Act: Use of a dead presidents image without
consent of his surviving wife
o Cannot use a mark if too close to a mark already in use (self-policing
on this, but better to allow the TM office disallow registration)
o Acquired Distinctiveness Required for Surnames e.g., International
Business Machines because secondary meaning has occurred because
over time ppl identify this as a particular company there has to be a
single source (Seattles Best coffee company)
o Non-traditional Marks: non-slogan names or logos
Smells, sounds, etc.: courts require secondary meaning or
distinctiveness
Trade Dress: The products overall visual appearance
o Counterfeiting
o When something is being made to give the impression it is the real
thing
Including after the sale confusion, or after market confusion
Initial interest confusion confused enough to go to the
secondary business
False Advertising / Unfair Competition
o Both registered and unregistered TMs
o Lanham Act
o When do you have to prove the interpretation of an advertisement
o If it is illegal to attach another name to a companys product, or to
make a product to look like another companys, how about a book or
something similar and leave the name off?
o 43a Right of Publicity
Look-a-likes
Sound-a-likes
Dilution
o No need to show confusion
o Unless they think the same company makes the same 2 things e.g.,
Yale Locks are made by Yale University or Delta Faucets Delta Airlines

How easy would it be for someone to bridge the gap and think
X also made Y
As in Harley Davidson and Porsche (merchandising)
o If there is a strong mark, then if someone else uses it, that will diminish
the exclusivity and dilute its strength 43c states a famous mark
[43c Lanham Act dilution = 15 USC 1125c]
Federal Standard: likelihood of dilution dilution is defined as:
Real economic harm caused by a lessening of the
capacity of the mark to identify an exclusive source
o But what about reputational harm? Status harm?
Image harm?
State Standard: Caused Dilution dilution has already
happened
Intent of dilution is to prevent tarnishment of famous marks
[Buick, Kodak, Texaco]
o Tarnishment = diminish the reputation or reduce/demean the value in
any way
o Blurring = if you see the name, you may have to think about which one
is which (unsure which company makes X product when there are
companies Y and Z making products of the same name)
o Any use of a famous mark presents a situation of dilution but to
require real economic harm
Remedies
o Injunction
o Damages
o Damages for corrective advertising

TM Governed by State and Fed Law

P in State A suing Def in State B who is infringing in State A you have both
Federal and State Claims

In Copyright state law

Patent state law

Mainly Federal law in this course

15 USC 1051 - 1127 = Lanham Act

Title 17 = Copyrights

101 = 17 USC 101

Title 35 = Patents

Patent 287 = 35 USC 287

TM 43(a) = 15 USC 1125(a)

WHAT IS A TM?

Anything that identifies the source [even if source is unknown as in

Monopoly], unless prohibited by law

Even smells unless the purpose of the fragrance is to make it smell a

certain way

Essentially its purpose is to smell, so you cant TM it

REQUIREMENTS:
A symbol [anything can be a symbol],
used as a mark,
to identify and distinguish the source of [sellers] goods or services from
goods or service made or sold by others [even if the source is unknown], but
that it not be functional.

GET ONE BY:

Use you dont have to register it

o
Once you stop using it, you havent abandoned it (aka adverse
possn of the TM)
o
Continuous use protects
o
Or file a Bona Fide Intention to Use Application which is
good for 6 months and can be extended and renewed for 5 more (6 month)
periods to give you a total of 3 years of coverage

Fixes the priority date as of the DATE OF FILING

CONSTRUCTIVE NOTICE TO EVERYONE THAT YOU WILL

USE IT, which results in either:

Non-use and intent to use expires; no rights to

Federal Registration

You USE the mark in commerce and it matures into

a complete Federal Registration - the date of the TM is still the date you filed
o
BUT No Token Use
o
Another party can file an interference
o
Commerce is defined in the Lanham act as
anything congress decides is commerce

Distinctiveness which is inherent or acquired

o
E.g., Apple is arbitrary with respect to computers, yet descriptive
as to orchards so as for computers it is distinctive
o
Inherently distinctive:

Coined: Xerox, Kodak, Exxon, Jamba, Starbucks

Arbitrary: the mark bears NO relation to the Goods or

Services

Apple, for computers

Mars, for candybars

Fanciful

Suggestive
o
Acquired:

Descriptive: consumers must be able to associate it with a

source of goods or services

Roach Motel

Names

If it is a foreign name that is uncommon, it is more

likely you will think it is something specific

Secondary Meaning

But once you have it, it is hard to not associate the

descriptor with the product

o
o

If infringement gets to the point of such widespread third-party usage

(leading to genericness when a source of goods becomes a commonly used
name for an entire product category = elevator, shredded wheat, aspirin, see p.
317) then you have abandoned it
Landau Test: when a competitor has the nerve to use a product name
generically such as Minolta referring to a copier as a Xerox and that public still
knows Kleenex are tissues
Matters most if the public knows whether or not something is a brand
name or not
Not a means for creating patent-like protection
TEST FOR INFRINGEMENT
Likelihood of Confusion: every jurisdiction has a way to describe it, but
the TM act does not have its own list, only a definition of a famous mark
State Law is similar and is mainly concerned with whether a TM
infringer is misleading customers
Gain their power through use
Lose their power by non-use
Public domain material when used in a certain way
NOTICE:
TM = state
= Federally Registered under 32(i); unregistered 43(a)
File if being used in commerce
If it is distinctive or there are statutory bars
If another similar mark exists, it may get bumped back
Cant get a TM on a mark that is offensive
Foreign TM Registration / Intent Registrations:
Up to 1988 companies could not register unless they were actually
engaged in interstate commerce
The loophole for that was to file internationally an Intent
Registration which established the filing date

WHAT IS A COPYRIGHT?

Protects original expression

But ideas if not original expression are not copyrightable
Good for Life + 70 then falls into the public domain once it is fixed in a
tangible medium of expression and you dont have to register it and as of 1989
you dont have to use the symbol

Fixation requirement even applies to something put into RAM or even

on a napkin

AND FIXATION is the ONLY requirement

Advantages of registering if you do it within a specified statutory time you

can ask for different damages

Under old CP act, if you distribute without notice, it used to be

considered as part of the public domain THUS the requirement for the notice

YOU HAVE TO REGISTER before you can bring suit

NOT:

Ideas, facts, methods or systems

It is not unlawful to access the information or to access the facts of the
information

Often infringement is shown by circumstantial evidence that it is

beyond coincidence
o
TEST for CP Infringement: Access and substantial similarity

Access such as receipt of mail does not actually mean

that a Defendant who works @ X company actually received the mail; or if a
song is played on the radio access

YES:

Expression of the facts

No need for quality control in CP no issue to massively litigate

WHAT IS A PATENT (UTILITY PATENTS)?
o
o
o
o
o
o

Protects machines, compositions of matter (e.g., genetically-engineered

organisms), processes, improvements of the former
Inventions/Processes or both
New ways of making old things
o E.g., building the better mousetrap (non-obvious), new method for
making X
Good for 20 years from filing (because of the time it used to take to get the
actual patent)
Only have rights once the patent is issued to you and even then those are
only rights to preclude others from doing something with your invention
Infringement depends upon whether there is:
o Literal infringement: the claims of the patent are the same with the
infringers widget as the patents
o Doctrine of Equivalents

WHAT AND WHOM DO TRADEMARKS PROTECT?

General principles of unfair competition (Restatement 3d, Unfair
Competition)
1: One who causes harm to the commercial relations of another by engaging
in a business or trade is not subject to liability unless harm results from:
o

Deceptive marketing

Infringement of TMs and other indicia of identification

Appropriation of trade secrets and the right to publicity

Anything else that can be determined to be an unfair method of

competition

Based on nature of conduct and effect of person seeking relief

and the public

OFFICIAL COMMENT TO 1:
Freedom to compete is freedom to compete for the patronage of
prospective customers is a fundamental premise of the free enterprise
system.

Competition creates incentives to offer quality products at

reasonable prices and fosters general welfare by promoting
efficient allocation of economic resources

Contemplates potential harm to market entrants/participants

Does not include direct competition to divert business from your

competitors it regulates the manner in which you do it

International News Service (INS) v. Associated Press (1918)

INS was using the AP news reports from the east coast and transmitting them
to their west coast counterparts for dissemination, sometimes before AP even
got to send it to their west coast ppl
o

ISSUE: Whether the Supreme Court can give a quasi-property right in

something that is not trademark material?

Yes. While this is a narrow holding, AP was granted protection against

INS during the period of initial dissemination of the information to APs
members

RULE: There is a general common law property right against

misappropriation of items of commercial value

INS was enjoined for the time period when there was a time-gap
Cheney Bros. V. Doris Silk Corp. (1930)
Company made scarves which were so seasonal and timely that they could
not get patent or copyright coverage, so they sought to have a copycat
company enjoined from copying their designs during the current design
season
Ct followed the Sears decision copying is OK
DOCTRINE OF NONFUNCTIONAL FEATURES:

Holds that to imitate nonfunctional features is to attribute to the copy

the same features as the original which IS ALLOWED and anyone may
copy the original at will

Sears, Roebuck & Co. v. Stiffel Co.

Pole Lamps (lamps that were tension lamps that had 3 fixtures attached to a
single tension pole which was able to stand up on its own between the
ceiling and the floor of a room)
o

Stiffel did had design and mechanical patents on the lamp

Sears was selling them for cheaper and without labeling who made the
lamps

Stiffels patents were found invalid, so Sears was able to then copy it
then became an issue of unfair competition since the lack of labeling
could lead to confusion

State unfair competition law cannot preempt the federal patent laws when
something is protected by neither a Federal patent or Copyright
Preemption of the SAME COA:
o

No Patent Protection = state cannot say that you may not make, use,
or sell the widget [PUBLIC POLICY]

No protection for ideas

Fed TM Act and State Unfair Comp and State Unfair Business Practices
can all occur b/c of infringement

Feist v. World Publications: (IMPORTANT Copyright)

White pages case whether or not telephone white pages are protectable
since it is a collection of facts
Facts are not protectable but the arrangement of the information is
Generally, as it relates to the expense used to pull together the information
and DB of the information is unfair for one company to bear such a burden
Stork Restaurant v. Sahati (1948)
The Stork Club small bar and tavern which was operating Stork Club in SF
Ct found that it did not matter that there is only 1 Stork Club, since everyone
knows of The Stork Club because of a movie in which the club was
popularized
Holdings:
o

One cannot reap where one has not sown

A disparity in size of the respective businesses will not bar injunctive

relief

Even though the one in NY was so much larger and the SF one
could not be confused as to the scale of the operations, it was
not an adequate defense here

Mere geographical distance does not obviate danger of confusion

January 21, 2004

Lecture
Playboy v. Netscape:
o Regarding search engine and contextual pop-ups based on what the
search parameter entered by the user
o

Targeted key-strokes for specific words Playboy argued that if you

retrieve a search result based on entering the search words playboy
you are attempting to divert customers away from the rightful
potential company

aka initial interest creating confusion among potential

consumers

Then when the pop-up companies asked to be excluded because of

potential liability, the search engine is acting to divert and liable for
false impression of origin

Terry Wells Playmate of the Year this is allowed because it is

descriptive and in a nominal manner

U-Haul Phone Case:

o U-Haul decides to do a phone campaign using its name as the phone
number: 1-800-Go-U-Haul

Another trucking company was able to procure numbers for 800g0-uhall, 800-g0-uhaul, 800-go-uhall
Customers were misdialing, and the other trucking
company would provide the correct #, however also let
the consumer know they could beat u-hauls prices
Court found that it was just too bad for U-Haul

Legal Standard is Likelihood of Confusion (generally in practice this is 7 out

of 10)
CARVE-OUT ZONES:
o

I went to visit somewhere like DC and heard of a company name I liked

such as, Jamba

I decide to open my company back home in Atlanta using that name

this is OK if Jamba is not there and is not registered (state/Fed)

I decide to expand in Fla. this is OK if Jamba is not there (state/Fed)

I decide I may want to eventually go into CA so I register in CA but

dont start my business (this makes me FIRST IN TIME)

Some person then opens a Jamba in CA I registered it they can do it

but if I EVER DECIDE to go into CA, then I can force them out of
business because there could be a likelihood of confusion [that
company is opening and doing business at their own risk]

I will be able to file a Nationwide TM but there will be a CARVEOUT for

the company in DC and I will not be able to register my TM for use in
DC

********* ENDED ON STORK CASE

W H AT

IS A

TRADEMARK?

Defined: Word, name, symbol, device, or other designation or combination of

such designations, that is distinctive to a persons goods or services and that is
used in a manner that identifies those goods or services, distinguishing them
from others; service mark is a TM used in connection with services
History:
o

Initially limited to fanciful or arbitrary words and symbols

Identify Source
o

Anti-Monopoly, Inc. v. General Mills Fun Group

Found that a game Anti-monopoly did not infringe because the

Monopoly game did not indicate the source

If someone is trying to give you something from another source, as long

as you can show that it comes from another source, it is OK

Distinguish from Others

o

Inherently distinctive protection from the time it is in use

Acquired distinctiveness through secondary meaning goods or services

under the mark

Kellogg Co,. v. National Biscuit Co., p. 84

Sharing in the goodwill of an article unprotected by patent or trade-mark
is the exercise of a right possessed by all and in the free exercise of
which the consuming public is deeply interested
Facts: Nabisco (National Biscuit Company) sued Kellogg to enjoin unfair
competition on manufacture and sale of shredded wheat since they were both
making and selling the same thing, biscuit cereal shaped like a pillow
o

Nabiscos predecessor company had a utility and design patent on the

machine that made the shredded wheat (ShW) but it had expired and then
Kellogg started making it

Dist Ct said no passing off or deception, because expired patent put it in

the public domain

Argument that the term shredded wheat acquired secondary meaning

was also defeated because the term was used in the specification of the
patent as well as a descriptive device ct said shredded wheat is a
generic name for what this was

Ps argument that the shape should have been protected under exclusive
right was also defeated because the shape was how it became known to
the public

Ct then considered whether there was an issue with unfair competition

because there may be confusion between Kelloggs shredded wheat and
Nabiscos Shredded Wheat but the ct said it was unlikely due to the
packaging treatment and advertising on everything Kellogg put out since
it all was well-labeled Kelloggs and would not likely be confused with the
other brand

WORD MARKS
Coca-Cola Co. v. Koke Co. of America, p. 89
A combination of words capable of distinguishing goods or services
possesses trademark significance and is therefore registrable
Lanham Act 2: As long as a term is distinctive, it shall not be refused
registration on account of its nature
Lanham Act 23: slogans are registrable on the Supplemental Register; its
descriptive feature therefore does not automatically disqualify it from
registration
Descriptive slogans can acquire secondary meaning through extensive,
continuous, and substantially exclusive use, thus achieving secondary meaning
requisite to protectable status
Use of Ones Name
Sacred Right Doctrine: could would not prevent a party from using his
own name as his business name unless there was evidence of bad faith or a
fraudulent intent to deceive; applied a subjective test of intent of infringer
was dispositive
Balancing Interests Right to Use Ones Name Balanced with
Publics Right to be Free from Confusion:
o

L.E. Waterman Co. v. Modern Pen Co. landmark case in which the
court provided an injunction to Waterman pen company against a man
named Arthur Waterman who was first in the market for fountain pens

Second-arrival Waterman pen co. had developed secondary

meaning Ct said Arthur Waterman would be able to use his
own name in business so long as he included his first name and
a notice of disclaimer accompanying his surname

You still have to show single source and distinctiveness with names and
the more generic the name, the more you have to work to show its
distinctiveness or how it is related to the goods or services

No Total Prohibition of All Use of a Late-Arrival if it is his or her

Name: Cts will not entirely preclude a second-comers use of his name in
business

Absolute injunctions only provided where there existed 1) some

evidence of fraudulent conduct on the part of the defendant, 2) intent
to appropriate plaintiffs goodwill had been demonstrated, or 3) where
defendant had previously sold his business and his rights to the name
to the plaintiff

Protection Achieved Via these Methods

Injunction preventing use to the extent of limitations on manner of use of the
name (to prevent or correct the confusion resulting from concurrent use)
Add a prefix, initials or other identifying information to distinguish the two
entities
TRADE DRESS
Qualitex Co. v. Jacobson Products Co., Inc. [Supreme Ct Case], p. 96
You can trademark a color, so long as it meets the ordinary trademark
requirements
Special shade of green-gold color used on the pads that went on the machines
used by dry cleaners
FUNCTIONALITY DOCTRINE:

You cannot TM a function of a product, that is for patent law to take care
of; patent law is appropriate because it does not last in perpetuity as does
TMs

If a products functional features could be used as trademarks, a

monopoly over such features could be obtained without regard to whether
they qualify as patents and could be extended forever (because
trademarks may be renewed in perpetuity).

In general terms, a product feature is functional and cannot serve as a TM

if it is essential to the use or purpose of the article or if it affects the cost
or quality of the article

2B absolute bar for any mark to describe functionality of the product;

also as grounds to challenge a mark or have it cancelled burden of proof
is

Someone who had TM through use that person would have the
burden to prove that it is not functional and is worthy of protection

A color, just as do words, slogans and marks, can acquire secondary meaning
pink insulation, orange DIY store so long as it indicates source
Swedish Fish soft gummy fish-like candy and then they made their candy in the
shape of fish, they precluded the ability to make any other candies; so it was held
that the shape was aesthetically functional to draw customers to the product = no
protection (would have precluded others from competing in the gummy fish market)
Dilution Laws: state laws which were in effect before this was federally mandated;
you can have a COA based on state anti-competition laws as well as Federal TM law;
also implies right to publicity claims Lanham Act for creating a false impression of

endorsement/sponsorship and in State court for dilution law because you may be
committing a TM infringement in an area where another party may have national
rights (interstate commerce)

OTHER IDENTIFYING INDICIA

Scents or fragrances of products which are noted for those features, such a
perfumes, colognes, or scented household products
o

Color Qualitex case, prior to this circuits said that trade dress required
secondary meaning; color can be protected as long as it meets the usual
trademark requirements; over time, if color becomes associated with
product over time, it can become protected requires secondary meaning
(Supreme Court)

Sound secondary meaning

Smell secondary meaning

Packaging restaurants can be considered packaging THIS IS UP IN THE

AIR

Design product design trade dress requires secondary meaning

Trade dress

Congress will not limit the categories that will be protected

D I S T I N C T I V E N E SS
ARBITRARY, FANCIFUL, SUGGESTIVE, AND DESCRIPTIVE TERMS
Also sometimes called: Technical Trademarks
Fanciful: coined terms, less connection to anything; Kodak is coined because
there is no real life Kodak in the world; it makes it hard for a potential infringer to
come up with the same thing makes it quickly inherently distinctive
Arbitrary: Apple in connection with computers is arbitrary because it has a real
association but to apply it to computers is arbitrary
Suggestive: Roach Motel it is inherently distinctive and immediately protected
upon use; narrow protection = protection without secondary meaning; test is
do you have to use some imagination to get to the idea Coppertone
o

E.G.: Glass Wax could be suggestive, deceptive, and descriptive

Descriptive: puts the burden on the user that they have been using this TM for 5
years to acquire secondary meaning; to show it is suggestive and not descriptive
[subject to the limitations of 1052]
o

Whether there is intent to mislead

YOU MUST SHOW SECONDARY MEANING HERE TO SURVIVE SCRUTINY

Generic: Never become TMs or because of widespread third-party unauthorized

use have ceased to indicate source; Aspirin, elevator, shredded wheat,
cellophane; even though there may be multiple types of generic items, each
MUST identify SOURCE
o

Shape and Color: while there is a right to maintain the brand name of
prescription drugs, the generic drug will look very similar because people
need to be able to identify the pills for dosage functions and to aid
incorrect administration of the drugs

Generally Known to the Public: e.g., Bayer they didnt distinguish

themselves as the source of the drug and kept everyone out to the point
that the brand became generic

Where they went wrong they should have policed the mark and
tried to maintain exclusivity of the mark aspirin but when you
are the only one making something and you are very successful,
you run the risk of losing it

Also Intel 286, 386, 486 thats why they went to Pentium chips
and Intel Inside

KEEP IN MIND THE CUSTOMER TEST does the customer think this
is the class of the product or the name of the product

Abercrombie & Fitch Co. v. Hunting World, Inc., p. 108

Arbitrary and fanciful terms are immediately distinctive and receive
immediate protection
Nothing in Lanham Act talks about arbitrary, fanciful terms
o

Here, arbitrary and fanciful are immediately distinctive

See 15 USC 1052 what you CANT TM: (Geographically misdecriptive cutoff
date was January 1993)
o

A) scandalous, immoral, disparaging, deceptive; B) flags, coat of arms; C)

people, names, signature, picture of dead president during the life of his
widow; D) similar to another existing mark; E) Descriptive geographically
desc., deceptively misdescriptive, primarily a surname; F) names,
functional

Truly Geographically Misdescriptive:

Truly Geographically Descriptive Elgin Watch Company (which is

in Elgin IL)

Geographically Misdescriptive:

Test:

Is it misdescribed?

Does the consumer BELIEVE the misdescription?

Is the consumer motivated to purchase by that

misdescription?

Arbitrary: way out, not connection Mars Candy Bars

No Protection: Descriptively misdescriptive Cuban Cigars (which

were made in VA)

TECHNICAL TRADEMARKS
Application of Reynolds Metals Co., p. 112
Even if a mark may be descriptive if it is suggestive it is registrable
Registration application for BROWN-IN-BAG
In the Matter of the Application of Quick-Print Copy Shops, Inc., p 114
Registration will be denied when a mark is merely descriptive of any
goods or services for which registration is sought

SECONDARY MEANING
Section 43(a) Lanham Act Actions Against Infringers: 15 USC 1125 False
representations of origin, passing-off ones goods as anothers
USE IN COMMERCE REQUIREMENT
What constitutes a use? All commerce that may be regulated by Congress as
commerce. It is only not commerce when Sup Ct says it isnt.
Cases:
PLAYBOY ENTERTAINMENT V. NETSCAPE

Cites: 2004 Westlaw 57738 (9th Cir. 2004); 2000 Westlaw 1308815
(C.D. Cal. 2000)

Assigned meta-tag searching where searches for playboy would

return a 3rd party site via a pop-up (also banner ads) and the search
engine gets paid by the number of hits to the website

Advertisers requested Netscape to cease using Playboy as

a trigger-word to open pop-up banners

Issues come mainly from passing-off: Advertisers here wanted to be

left out from Playboy searches and 2) the advertisers were not

Test = Likelihood of confusion, and not ACTUAL confusion, which

is generally a factor considered (the more actual factors dont
necessarily mean you will win on that factor alone)

U-HAUL, WELLS FARGO, 1-800-CONTACTS V. WHENU.COM

Cites (respectively): 279 F.Supp. 2d 723 (E.D. Va. 9/03), 293 F. Supp
734 (E.D. Mich. 11/03), 2003 Westlane 22999270 (SDNY 12/22/03)

Differ from Playboy v. Netscape because they have to do with the

program called Save As and for pop-ups

This application is keyed to the URLs used and visited by the

end-user (e.g. if I am @ carmax.com it may display
www.mbusa.com) targeting people because they are
browsing at X website

Party to the lawsuit was the company that made the software
on the basis that WhenU.com had not used the mark in
commerce, it had not copied the mark, it did not sell
anything with the mark, so the court said it was NOT a use =
protection because it is used as a functional aspect and not
to promote a particular product

Both cases above did not have infringement

1-800-CONTACTS:

This was a case of domain naming and redirecting to

www.www1800contacts.com

Ct will look @: Strength of mark, products, channels of trade, use

and advertising, customers, actual confusions, good/bad faith (in
some jurisdictions)

POLAROID CORP. V. POLARAD ELECTRONICS CORP., 182 F.SUPP. 350

Mere similarity, absent a resemblance between the products

infringement or unfair competition; MUST prove that there will be
likely be confusion

As to Domains there was confusion as to whether this was a prospecting

issue

Anti-cyber Squatting Act: crime to traffic in domains, creates dilution or

acquired in bad faith

The META Tag Cases: using text and meta tags to get your rank high
on search engines

NOT INFRINGEMENT: when using a domain / trademarkedname

such as www.nataliegreen.com/mercedes

Opposition Cases: when one opposes to the issuance of a mark

The Bozos Case: whether a single-location restaurant that may serve

interstate customers constitutes commerce as defined in 15 USC 1227

But how to document that you serve/perform interstate customers?

Guest books or email

The lower court in this case relied on In re Bookbinders which

ruled that 1) single-location restaurants, that 2) were not located on
highways, cannot be considered to be engaged in commerce as
defined in 15 usc 1227

There must be more than a website

Jurisdictional issues long arm statute

Buti v. Impressa Perosa, S.A.: no intent to use filed with TM office

Pre-use advertising: If you advertise before you offer the product for sale,
you do not secure the TM for your self, but you almost preclude someone
else from using it

TRADEMARK OWNERSHIP
Bell v. Streetwise Records, Ltd., p. 155
The Ownership of a trademarked name, even when assigned, does not
automatically transfer, because the views of the public may change
Issue over ownership of a musical groups name: New Edition, whether it was
assigned, the accrued reputation
o

Here, the band had the TM since it was more associated with the band

Plaintiff signed Ks with each of the 14-year-old kids for the assignment of
the name to Streetwise

Bands often change their composition and direction it matters more

what the publics perception was

PRIORITY AND CONCURRENT USE

Blue Bell, Inc. v. Farah Manufacturing Co.
Two clothing manufacturers that ended up trying to sell similar products called
Time Out
o

Blue Bell attached the Time Out label on existing line of clothing

Farah sent out samples to their sales force as samples to get pre-sales
going

Farahs was considered inside and not a sale and Blue Bell was also not
considered a sale because the ones that had the Time Out label AND the
old Mr. Hicks label on the pants

This case came before Intent to Use was available (Intent to use NOT
AVAILABLE until 1988)

You get the mark with open use use made to relevant class of
purchasers or prospective purchasers

This is NOT a Lanham Act Case it is being tried in Fed Ct because of

diversity jurisdiction but the COA for infringement in the Lanham Act
under 32(i) is for REGISTERED MARKS and 43(a) is for UNREGISTERED
marks

Enforcement of registered/unregistered marks is the same but the

burden is on the proponent of a mark if they are seeking protection

It is better to register because it gives you the advantage of

Claiming Rights Everywhere and putting everyone on
constructive notice that you choose to do so you have
protection within your zone of customers

Certain remedies are only available to registrants

counterfeit products, etc.

ANALOGOUS USE
Not sufficient to vest rights in a TM
Use before a real use prepping the public before the product drops
If sufficient advertising before first intent to use filing this may prevent
another party from filing it can keep someone else from being able to preclude
you from getting the mark
Maryland Stadium Authority v. Becker
1

Thrifty Rent-a-Car v. Thrift Cars, Inc.

FIRST right ALWAYS has a right
Thrift had been using its name and company info in MA; sole interests were in
MA
Thrifty Rent-a-Car then registered its mark for nationwide use
Thrifty Rent-a-Car cant go into Thrifts market since Thrift had used it first (use
before a filing of any kind freezes your rights in your natural market)
In the real world, Thrifty would probably just buy out Thrift
Dawn Donut Co. v. Harts Food Stores, Inc.
Just because you register your trademark before someone else, you dont
automatically win an infringement claim without showing LIKELIHOOD OF
CONFUSION
Registration by Dawn
Harts used Dawns donut mix after the registration
Dawn may try to sue but they still have the burden of showing that there is a
Likelihood of Confusion or Hart can still use it

INTENT

TO

USE

Codified under 15 U.S.C. 1051(b) [Lanham Act (1)(b)]

APPLICATION REQUIREMENT
Must apply, in writing, stating intention to use mark in commerce

 100th Congress eliminated the requirement of actual use to get a TM and now
allows people to file an intent to use application
You get priority as of the date filed
Use as a shield instead of a sword during the time when you have a ITU pending
this gives you priority
o

Once you have filed ITU, you have priority as to the use

You do not have an enforceable right to sue someone for infringement

You have priority to prevent another party to get rights in the mark

Before the requirement of actual use was eliminated:

o

Acquired with use by applying the mark to a product and that product is
sold or shipped in commerce; service marks are acquired at time that
services are performed or advertised in commerce

Court had sanctioned token use

But it is expensive to do token use of a TM because of the costs

involved cant just make an airplane/hotel/bank to see if we can
label it a specific name

Bad because it allows ppl to acquire protection with only minimal

use and then if the company does not end up using the mark,
then the register is so full of unused marks, that no one else will be
able to get a mark of their own

NO MORE TOKEN USE ALLOWED [current day]

Registration based on intent to use may open the door for abuse ppl
applying as intending users and never actually using the mark precludes
so many people from being able to get those marks (esp when not being
used)

Example: Freshman Food Company [fictional co]

o

1/1/04:

Files an ITU App = priority, constructive notice as of 1/1/04

3/1/04: Assume a restaurant opens this date selling food around

the corner from us using the same name

Theories of explaining the intent not present =

o

GMTA [Good Minds Think Alike]

Saw the name on the PTO website, not being used, we

win

The second Freshman Food Co CANNOT claim to register or

any other rights

7/1/04:

Applies for extension

1/1/05:

Files second extension

6/15/05: GSUFood opens

7/1/05:

Files third extension

9/1/05:

Files statement of actual use

Claims that they are interstate because they serve students from
out of state

Why actual use requirement was eliminated:

o

Puts significant legal risks on the introduction of new products and

services

Gave preference and an effective date of foreign TMs set to their home
country date of filing

Company has no assurance that they may market a product under

a specific name without spending tons of $ getting the product to
market just to have it declared an infringement

Chilling effect on business

How the Lanham Act Stands today on Intent to Use:

o

Set out 1(d)(1) initial period of intent to use is applicable for 6 months

May be granted an extension for a second 6 months after that you have
to show good cause for the extension

All time periods, and including extensions shall not exceed 24 months

Must also show that the applicant has a bona fide intention to use the
mark

Zirco Corp. v. American Telephone & Telegraph Co., p. 198

Rule: Constructive use is achieved at the time of filing an intent-to-use
application and bars others from using the mark until it is abandoned or
the application fails
Two companies had a similar product Datacell (cellular adapter allowing one
to use their cellular phone with phone equipment
Opposition to the Registration of the mark
One company had filed an intent-to-use application on Jan. 11, 1990, the
other company had actual use on April 15, 1990
One company has constructive use as of the date its intent to use application
was filed the other company had actual use, but it was after the first
companys application date
o

Issue is whether or not one has constructive use of the mark by

operation of filing an intent to use application

YES there is constructive use, provided in 7(c) of the Lanham Act

and takes place at the time of tiling the application to register the
mark

Opposer said they would be able to use the mark until it was registered to the
first company because of 18 which states that no final judgment shall be

entered on the use of the mark if the applicant cannot prove constructive use
[under 7(c)
HOLDING: applicant may use the date of intent to use application as a
constructive use of the mark and the applicant may use the date in defense
of a common law claim by someone
Warner Vision Entertainment v. Empire of Carolina, p. 201
Rule: A court may not enjoin an intent to use (ITU) applicant from doing
the things it should to complete registration of the mark when another
entity used the mark 1) after the ITU applicant but 2) before actual use
3 companies 1 had a ITU application; 2 others also wanted to use the same
mark
When 1 of the outside companies Buddy L went BK Ch. 11, the other outside
company Empire bought them including its ITU application at the PTO
The two companies did a search and did not turn up TLVs application because it
had not been added to the database yet
Warner Vision started to use the mark since Empire (TLV) had not used it but
Empire had some analogous use (advertising before product available)
Warner got an injunction to enjoin Empire from filing the remaining documents to
effectuate its application to register the mark the lower court granted it
This court reversed stating that a court may not grant a preliminary injunction
that would prevent an ITU applicant from ever achieving use, registration, and
priority; injunction = termination of the applicants rights
RULE: as long as an ITU applicants privilege has not expired, a ct may not enjoin
it from making use necessary for registration on the grounds that another party
has used the mark subsequent to the filing of the ITU application
o

Exception if another party can show that it used the mark before the ITU
applicant made its application, the applicant may be enjoined also if
the application is found invalid for some reason

Eastman Kodak Co. v. Bell & Howell Document Management Products Co.,
p. 205
Rule: A phrase or word which may or may not be merely descriptive, such
as model numbers, will not per se invalidate an ITU application when
opposed, descriptiveness will be assessed when the ITU applicant files its
statement of use
B&H applied for TMs on model numbers of its reader/printer machines and Kodak
filed an opposition to the application claiming that the model numbers 8100,
6200, etc. were merely descriptive and thus not eligible for TM
o

The TM review board decided that the numbers were no per se descriptive
and reserved invalidating the ITU until they saw the Statement of Use
which shows the mark and how it has been used then it will be subject to
the normal tests of a TM

If after Statement of Use has been filed and the PTO finds that the
manner in which the mark has been used is in fact descriptive, then
it will invalidate the ITU

This case is not intended to limit a courts ability to view issued of

descriptiveness or misdescriptivenes
Shalom Childrens Wear Inc. v. In-Wear A/S, p. 209
Rule: Summary judgment will not be granted on a claim based on 2(d)
[priority, likely confusion] opposition unless it is shown that there is actual
priority and likely confusion
Both companies had clothing under the Body Gear name
One opposed the other as descriptive which was not a provision they could claim
on 2d
One side must show distinctive while the other shows descriptiveness
2d is for descriptiveness these opposers were claiming under a claim of
priority
If the opposer wins and the ct says the mark is descriptive they have precluded
themselves from being able to assert a claim of infringement when they want to
use the same mark
In re Trademark Application of American Psychological Association, p. 209
Evidence of descriptiveness is developed during the initial examination
APA wanted to TM a publication under the name Psychological Methods
Examiner rejected the application on the basis that it was merely descriptive of
the content of the magazine
APA argued that issues of descriptiveness should only come at the second
examination when an intent to use has been filed
PTO said that the new revision of TM law revision act of 1988 (TRLA) showed
legislative intent that intent to use applications should be reviewed for
descriptiveness in the initial examination/pre-use stage of the application
process
Racing Champions, Inc. v. Mattell, Inc., p. 210
Numerical marks that are not used as model numbers but to indicate scale
of the product are reviewable at the intent to use application stage
Mattel wanted to register 1/64th as a mark for it miniature replica toys, etc.
(e.g. micro machines)
Racing Champions challenged citing Eastman Kodak case (model # =
descriptive) and moved for summary judgment which was granted because a
genuine issue of material fact was present as to whether the designation of the
scale in the mark would be descriptive

BARS

TO

R E G I S T R AT I O N

2A IMMORAL, DECEPTIVE, SCANDALOUS OR DISPARAGING MATTER

Federal Circuits three-step test for determining deceptiveness:
1.

Is term misdescriptive of the character, quality, function, composition or

use of the goods?

2.

If so, are prospective purchasers likely to believe that the misdescription

actually describes the goods.
a. Deceptively misdescriptive: if enough people come to realize that
something isnt actually what it is purporting to be (i.e., Lovee Lamb
car seat covers: fake lambswool misdescriptive because it isnt real
but once ppl see the company name is descriptive of the fake
lambswool, then it achieves secondary meaning)
b. You cannot wait it out until your product acquires secondary meaning
that is not deceptive once it is deceptive it is a dead deal

3.

If so, is the misdescription likely to affect the decision to purchase?

Deceptive Marks, under 2a are NEVER allowed

WHEN DETERMINING INFRINGEMENT OR TO HAVE A MARK DECLARED
INVALID:
HERE IN THIS CLASS CONCENTRATE ON WHETHER A MARK IS
OFFENSIVE OR DECEPTIVE dont worry about subsection b and c
[flags and ppl]
Example: Roach Motel
1.

Descriptive 2d meaning

2.

Misdescriptive 2d meaning
a. Just because it is misdescriptive, it does not automatically bar it
because it may be suggestive at the same time

3.

Suggestive thru use

4.

Arbitrary thru use

OFFENSIVE MARKS

In re Bad Frog Brewery, p. 229

Frog flipping the bird not registrable because it was offensive
Court feared that ruling it registrable would lead to too many offensive marks
Harjo v. Pro-Football, Inc., p. 231 [recently overturned]
The Washington Redskins Case
Standing issue who has standing?
How many people have to be offended before it is challenged

 Test for Disparagement: viewed from the time the TM was issued (here, it was
between 1974 and 1990)
o

What is the meaning of the matter in question, as it appears in the

marks and as those marks are used in connection with the services
identified in the registrations?

Is the meaning one that may disparage a particular group [Native

Americans]?

Ct looked @ disparagement here based on the following:

o

Look to the evidence regarding the views of the relevant group

Connotations of the subject matter in question

Relationship between that matter and the other elements that make up
the marks

Manner in which the marks appear and are used in the marketplace

Determining whether something is scandalous:

o

Ct will determine the likely meaning of the matter in question, and

In view of the likely meaning, the matter is scandalous to a substantial

composite of the general public

This case failed on the scandalous issue while it was held that the
meaning of Redskins was disparaging, it was not, shocking to the sense of
truth, decency, or propriety to or give offense to the conscience or moral
feelings, excite reprobation, or call out for condemnation by a substantial
composite of the general population
o

Essentially most people saw it to be representative of the Redskins

Football team and in connection with the services provided by the
team, despite the derogatory nature of the word

STANDING TO BRING CHALLENGE TO TM ON MORAL GROUNDS

Generally, scandalous marks may get registration the PTO does not act as a
voice for the general public to determine scandalous matters
o

13 of the Lanham Act [15 U.S.C. 1063] confers standing statutorily

[not Art. III of the Const.]
Must state grounds for belief one has been damaged by the
registration of a mark

Must be a REAL INTEREST

o

Doesnt matter how many others share the

opposers view that he has been damaged
standard is reasonable belief + real interest

The class doesnt bring an action, individuals do

Must have a REASONABLE BELIEF OF DAMAGE

 Pay a fee and file the opposition in the PTO

DIFFERENCE BETWEEN DECEPTIVE TERMS AND DECEPTIVELY MISDESCRIPTIVE
TERMS

Federal Circuits Three-Step Test to Determine Deceptiveness

o

Is the term misdescriptive of the character, quality, function,

composition, or use of the goods? [if yes to only this prong = possibly
arbitrary/suggestive]

If so, are prospective purchasers likely to believe such a misdescription

actually describes the goods? [If first two = yes = deceptively
misdescriptive]

If so, is the misdescription likely to affect the decision to purchase?

Geographically Deceptively Misdescriptive = No Registration

o

There are less and less of these types of cases

Bacardi people think it came from Cuba but it didnt

Analysis:
o

When goods or services are in connection with a Place:

If the geographic representation is accurate

Geographically descriptive 2e, 2f you can get this

protected if it has secondary meaning

Same as a descriptive mark/surname

If the geographic representation in inaccurate

If primarily geographically deceptive and misdescriptive

you CANNOT get this protected per 2f

If NO Goods/Place Connection:

Test if suggestive

Probably arbitrary

Places:
o

Once a place becomes more than the identifier of the place, but of a
thing in commerce people associate (Waltham Watches, Buffalo Wings)

No Can Do: These cannot be registered statutory bar

o

No Exceptions:

2a Descriptive, immoral, scandalous

2b Flags, coats of arms, etc.

2c people, dead presidents (w/o consent of survivor)

2d Confusingly similar to other marks

After the fact, if infringement, the courts use the same

analysis

NEVER:

2e3 Primarily geographically deceptively misdescriptive

2e5 Functional

With Secondary Meaning:

2e1 Primarily descriptive, accurate geographic description

2e1 Primarily deceptively misdescriptive

2e4 Surnames

2e2 Accurate geographic

CONFUSION

2d Confusion: Mark will be refused registration if it consists or comprises a

mark which so resembles a mark registered with the Patent and TM Office, or
mark used by someone else and not abandoned and use by another party
would cause confusion when used in connection with the goods of the
applicant, to cause confusion, or to cause mistake, or to deceive
Nutrasweet Co. v. K&S Foods, Inc. p. 257
Closely related, complimentary products that the use of a same or similar
mark in connection with the products is likely to cause confusion
Applicant filed for registration of NutraSalt The Nutrasweet company filed
an interference
Prefix, when so widely used as to have high customer recognition and
awareness, may bar registration of similar marks if in the same industry
o

Here, ct noted that Nutrasweet/Equal may end up alongside NutraSalt

if both were granted registration on a table in a restaurant = confusion
(also in the grocery store)

Marshall Field & Co. v. Mrs. Fields Cookies, p. 260

When two similar marks enjoy separate notoriety that is not competitive,
the registration will likely go through
Mrs. Fields had been using the mark for a long time
Marshall Fields had been using the mark longer
MF filed an opposition to Mrs. Fields application
Primary significance is that Marshall Fields is a department store and if
mentioned to someone they would not immediately have cookies come to
mind
o

Mrs. Fields is a more narrow market

 MF and Mrs. F are similar would someone be confused and think they are
related?
o

But the court found that there would not be sufficient customer
confusion

Names work the same way as geographic locators

o

E.g., Ford has transcended to be synonymous with autos

NUMERALS, LETTERS AND INITIALS

Words, symbols, numerals, or letters used to differentiate between various

grades, styles, colors, or types of products and does not designate their
source is NOT PROTECTABLE as a TM
FUNCTIONALITY/TRADE DRESS

Product Design shape [see pp. 2887, 295, 302]

o

How much of how something looks is indicative of how it works, e.g.,

the shape of a laptop being rectangular is functional and not
ornamental

When a design element is more ornamental = protectable

Would people be able to identify it by its design

Functional design elements = not protectable as trademark [but may

be patentable]

The baby bottle on p. 295 is more functional than trade dress and cant
be protected by trade dress because they would then enjoy longer
period of protection than they would a design patent [14 years from
issuance]
If what you are trying to protect, if granted protection, and it is a
very important invention not fair to have patent-like protection
forever

To protect it, you have to show

o

The trade dress is not a functional element

Walmart v. Samara trade dress is not protected for product
design unless you show secondary meaning may have
distinctiveness in product packaging

That there is secondary meaning

Contrasted with design patents these do not have the
trademark issues of showing origin or identifying

We only have to be concerned with De Jure Functional (anything can be De

Facto functional)

R E G I S T R AT I O N
DOMAIN NAMES AS TRADEMARKS
Top Level Domain: the main part of the URL not the protocol, www or the name
of the site, but the COM, ORG, EDU, GOV
o

Identities of registrants are not confirmed except in cases of .MIL,

.GOV, .INT (international)

Second-Level Domain: the main name of the site, the nataliegreen of

www.nataliegreen.com is the second-level domain
When Registrable:
o

Registrable as a trademark when it functions as a source identifier

Must be perceived by potential purchasers as indicating source and not

as merely an informational indication of the domain name address
used to access a website

43d of Cybersquatter Laws: cannot use part of anothers trademarked name in

your domain
Dilution is the argument for keeping another from using your TMd name in their
domain name
In re Eilberg, p. 310
A domain name used to indicate an address or contact information is not
registrable as a trademark
Domain name used on letter head of an attorney was not registrable because
it served mainly as an address and displayed as a means for contacting the
[trademark applicant] attorney
But generally this should not always be the case if the attorney uses the
name as his business name, etc. in identifying the source of his services, etc.

L O SS

OF

TRADEMARK RIGHTS

GENERICISM
Development of the Standard
Generic once generic, TM is no longer a TM on its own (but paired with its
own other brand name, it is TM protectable)
o

But with medicine it is ok to say generic prozac because there is no

other way to describe the pharmaceutical benefits the drug provides;
ALSO color and shape of tablets of medicine denote a function (color =
flavor and size = dosage)

Parties must avoid unfair competition (confusion)

o

Must distinguish through 1) Packaging or 2) Prominent TM of Company,

etc.

 Trademark (Single Source) or Products General Name

o

A mark will probably be generic when a direct competitor has the

nerve to use the mark as the product name e.g., Pepsi coke,
Cannon or Minolta Xerox machines, Puffs Kleenex

Whether something is perceived by the public as a trademark or as a

products general name will depend upon the outcome of a survey
CHALLENGE the surveys:

Methodology, sample size or makeup, nature of the questions

Bayer Co. v. United Drug Co., p. 312

A trademark owner who does not police or protect a mark cannot enforce
the mark once it becomes part of the public domain
Aspirin product owned by Bayer
Aspirin became generic name for the drug amount the consuming public
Ct distinguished between two classes of buyers of the product
o

Chemists had the understanding that aspirin means Bayer

Consumers did not have the common understanding that aspirin

means Bayer, but that aspirin means a therapeutic medicine

Bayer messed up when it advertised it as Bayer Tablets of Aspirin led

public to believe that it was Bayers make of the drug called Aspirin, not that
Bayer was the maker and sole owner of the TM aspirin
Word aspirin had passed into the public domain
o

Bayer failed to use the term in trademark fashion, or to adequately

police others use of the terms, resulting in the terms loss of
trademark significance

If a manufacturer allows a distributor of its products to distribute its

products and build demand without regard to the trademark, that
manufacturer does not have rights to a monopoly on it

Ct said if Bayer would be allowed a monopoly on the word aspirin then it

would deprive the trade in general of the right to dispose of the drug by the
only description it has come to be understood by
America Online Inc. v. AT&T Corp., p. 336
Rule
You Have Mail: Functional, describes a function = no protection because it
would foreclose competition; phrase was not registered
o

The method of delivering the message You have mail. may enjoy TM
protection the voice, the window treatment, etc.

IM: The problem with this was that AOL originated the term instant
message and employees used IM as a noun and verb but ct said it was not
exactly generic but also did not provide AOL protection of IM

ABANDONMENT 45 OF THE LANHAM ACT

15 USC 1125
Occurs through:
Non-use: 3 years of non-use without intent to resume use
o

Casts a mark into the public domain

3 Years of presumptive abandonment

You have to really have the intent to resume use of the TM

USED GOODS: stuff sold in yard sales, generic marks these have to
be distinguished from the originals

Licensing Behavior/Failure to Police: mark becomes meaningless

o

People lose the ability to know what the mark means

Wild licensing without control e.g., Pied Pipers who licensed

themselves so much that each performance was so varied that no one
would be able to tell who they really were

Silverman v. CBS, Inc., p. 356

Modus for abandoning something, even if it was for a good reason, does not
keep others from being able to revive it
Clark & Freeman Corp. v. Heartland Co. Ltd., p. 368
An assignment will be considered an assignment in gross if the use of the
assignment is not to make use of the goodwill created by the TM assigned
Heartland company sold shoes, etc. and wanted to expand, they received an
assignment of the TM Heartland from Sears as a TM for selling womens
boots Heartland then wanted to expand their market into clothing, but
another company called heartland was selling clothes
o

When 1 sold clothes and 1 sold shoes a problem

When they both wanted to do it = problem

Heartland said they got priority in the Heartland name for shoes
through the assignment by standing in the shoes of sears via the
assignment, but they didnt because ct said this was an assignment in
gross and an assignment in gross tolls the goodwill that was already
built into the TM
This means you cant buy a TM that was for X product thinking you can
later use it to apply to Y if something else is using that same TM for Y
you cant apply priority over Y as if you had the same date as the
assignment

APPROPRIATE SALE OF A MARK

INCLUDE the good will associated therewith or and the associated good
will but this may be a legal myth however without it you will risk losing it
on a technicality

 But if you only sell the name, that is an ASSIGNMENT IN GROSS or a

NAKED ASSIGNMENT and that is all you get you dont get the priority of
time tying the product to the TM
University Boopkstore v. Board of Regents, p. 374
Uncontrolled use by 3rd parties may be deemed abandonment unless you
can show that you kept the quality of the goods satisfactory and no
deception of customers occurred
Often if you let others go crazy using your TM without policing it thru
licensing agreements, then you abandon it
But here, that didnt happen to the university because no confusion resulted
and quality was maintained by every third party using the insignia

TRADEMARK LICENSING
See Page 379 for a sample TM Licensing Agreement
SAMPLE PROVISIONS IN A TM LICENSE
Quality Control
o

Packaging materials

Obtaining approvals for use prior to use

Addresses and locations of facilities right to inspect where

manufactured

Warranty of use of substantially similar materials

[But upon passage of time, then such quality control items are deemed
approved or in compliance if not objected to by the licensor]

Use of TM
o

No use without prior approval as described in K

Licensor will furnish exact specs for use of the TM to the licensee

Use of the TM legend required

No use other than the names

Use of best efforts to supervise use

Advertising and Promotion

o

Protect the prestige of the mark

CONTRAST COPYRIGHT
Do not have to monitor the quality
The other person has to make their own version of it it is a compulsory
requirement

INFRINGEMENT
WAYS TO INFRINGE
Lanham Act 32 (15 USC 1114) Likelihood of Confusion
Use in commerce
Reproduction, counterfeit, copy, colorable imitation of a registered
TM in connection with the
Sale, offering for sale, distribution, or advertising of any
goods or services on or in connection with which
Such use is likely to cause confusion or to cause
mistake or to deceive
Shall be liable in a
Civil action for remedies
43c Describes Famous Marks Use this to aid in defining whether it is a
famous mark
LOOK @ THE POLAROID FACTORS [2d Cir., each Cir. has its own similar
version]
Polaroid Corp. v. Polarad Elects. Corp., p. 391
No TM when there is likelihood of confusion
Factors considered include but are not limited to:
o

Strength of the Ps mark:

Some Cts equate this with how famous it is

Arbitrary, fanciful, suggestive, descriptive, or it may be acquired

descriptiveness through secondary meaning

Degree of similarity of Ps and Ds marks

Proximity of products and services

Similarity of the actual goods or services

Geographic proximity

Likelihood that P will bridge the gap [this is a little specific to 2d Cir.]

Evidence of actual confusion

Ds good faith in adopting the mark

Note that this is only one of 8 factors but if shown, even then a
low % of such cases win it is not required in every case
X only wants the TM because it has certain good will attached and X
wants to trade on that

Quality of Ds product or service

If a vast difference in the quality may not be confusion

Reputational quality

If Ds is worse it may allay confusion, it may work to the harm of P

to confuse consumers as to the Ps reputation

Sophistication of buyers [a little specific to 2d Cir]

Products that are impulse buys, wide market, goes to everyone,

then the likelihood of infringement is high

But if products that are highly specialized, then it is less likely to

confuse them because they are more educated about those
products

But the goods in this case that were evaluated against this criteria were noncompeting
Nabisco v. Warner-Lambert, p. 393
Ice Breakers gum TM was challenged as a weak mark and found invalid
because it did not have secondary meaning
HOW LIKELY MUST THE CONFUSION BE? AND AS TO WHAT?
Source Confusion: Confusion as to the products proper source
Approval Confusion: Confusion as to the affiliation between the parties
respective services and products that actually aided in selling anothers
products
SIMILARITY OF SIGHT, SOUND AND MEANING
E.J. Gallo Winery v. Consorzio del Gallo Nero, p. 400
This comes down to the ability of the general publics ability to understand
anything about wine since they sound so similar, then poof infringement
Strength of the Mark
Similarity of:
o

Marks used

Goods sold

Marketing channels used

Degree of Care exercised by purchasers

Evidence of actual confusion
Ds intent in adopting Gallo Nero name
Banfi Products Corp. v. Kendall-Jackson Winery, Ltd., p. 407
Banfi wanted a declaratory judgt here KJ wanted to have the mark cancelled,
but the name of the wine was conceived in 1989 or 1990 and the wine went
through a number of iterations before selling it in the US
o

Trade dress stayed the same throughout

Lots of advertising and promotion to establish their specific product as in

its packaging and name in the consumers mind

Here, it was found that the buyers of this product would be older,
wealthier, better educated, and more discriminating

Strength of the mark

Degree of similarity between 2 marks
Proximity of marks
Likelihood of party alleging infringing will bridge the gap
Actual confusion
Alleged infringers good faith in adopting the mark
Quality of the alleged infringers product
Sophistication of the buyers
Balancing the Polaroid factors
INTENT TO INFRINGE
LIKELIHOOD OF CONFUSION IS IT A QUESTION OF FACT OR LAW?
If issue of fact in most jurisdiction
But in some it is treated as both look @ the Polaroid factors
o

Can only be disturbed if clearly erroneous

If more weight given to likelihood that P will bridge the gap, then the jury
could be overturned (factual issues harder to reverse)

Overview of Likelihood of Confusion (LOC)

Proving likelihood of confusion element of civil actions for Fed Reg Marks
o LOC Also applied to unregistered marks: names and trade dress
o LOC also use in
Unfair competition test, criminal actions for counterfeit marks, Basis
in PTO for refusal of registration, opposal, canceling, rejecting
imports
o Likely must be probable more than possible
o Cause: must be the legal cause and the cause in fact of confusion
o Confusion: mistaken one thing as belonging to a different source
o Mistake: only mistake caused by infringing mark
o 2(d) refusing to register a mark
o 32 (a) sets out the likelihood of confusion this is for registered mark
o 43 (a) ?? trade dress, registered or unregistered etc.
Broad, bring claims, endorsement, sponsorship catch all, unfair
competition
Federal Statutes: there are separate statutes related to Olympic marks, etc.

 Practically, state statutes, there is a Model state TM bill, applies if you have a
state registration.
o Federal registration requires use in Interstate Commerce
o State Registration gives constructive notice
It is not clear whether you have protection in the entire state or
only within the region of use
The Law of LOC promotes free and fair competition, consumer ability to
distinguish products
o Dilution is more of a property right claim, there are elements of property
rights to it, but more about protecting the consumer (broad policy)
Sales diverted, tarnishment, limitation of expansion policy behind
LOC
Must balance with free and fair competition
Protected only to the extent necessary to avoid confusion
o MUST show that there was confusion, dont have to know what the source
is, just think that 2 products came from the same person
Must be inherently or acquired distinctive
Must use the mark as a TM in order to cause confusion
Defenses:
Fair Use just because they have a registration for the TM,
doesnt mean that you can use the mark in the common
English usage, descriptively to describe their product
Carelessness, inadvertent not confusion
Must be in the same or overlapping markets to cuase
confusion. If they dont see both marks, they will not be
confused
People do not confuse TM, TM confuse people!!!!
Dilution
Confusion and Competition not req
Sometimes can argue that if they are competitive, it is not dilution it is
infringement
Courts are split on this
Jordash v. Hog wild
Court said not confusion
Parody
Dilution there is no confusion, tarnishment or lessening value
here. Because it was a parody, not dilution, but probably wont
always come out that way
Lessening ability of a mark to i.d. goods and services
Confused you believe that the infringing persons use indicates that it comes
from the same source, people look at the two goods and think that the same
person made them
Dilution, you see and realize they dont have a connection, but the TM owners
value in that mark is blurred, it doesnt have the same cache
Tarnishment clean image is not so pure anymore
Strength of the mark the stronger the more protection that they will get. The
less others need that mark (the words claimed as the mark) to compete, if

the mark is Stone Cold Creamery competitors may need to use the words
cold or cream to compete in the ice cream market
Degree of Similarity
Sight sound meaning test
Likelihood of bridging the gap
Actual Confusion is THE factor appreciable # will be confused
Good Faith, intent
Dont want a memo saying that you want to get some of their run off
customer
Quality of products
If the infringer has poor quality the court will say that is how the public
knows that they are not related
Sophistication of customers
No factor is decisive, you dont have to win the most of them, it is an equitable
balancing test
Greater weight
Actual confusion
Similarity of the mark
Internet Cases
Similarity of the mark and relatedness of the products matter
If they are marketing at the same time
Supreme Ct on the Infringement Factors
Results are fact driven, different reaction to the facts make TM litigation highly
unpredictable
Examples
Cyclone & Tornado CS
Jellybeans & Lollipops for skating rinks CS (confusingly similar)
Playdough v. fundough CS
Citygirl and Citywoman
Must be in relation to the goods and the way that people see it in the
marketplace
Not looked at in the abstract
Foreign Words
If consumers will not translate them you should not translate them
If they look and sound the same, doesnt matter if the translated meaning is
different, only matters if in the context of the market place, they have the
same sight sound and feel
Incorporating someone elses mark
Cant just ad something generic onto it. VW and VW.net NO

Paries v. Paries pizza not enough to overcome Confusing similarity (CS)

If the common portion is weak you can avoid confusion if you take the entire weak
portion of someone elses mark and ad something else on
Silk (body lotion) v. Silk & Satin doesnt infringe
Easy and Easy tint no infringement
If you combine the mark with other features
Hershey Kiss not infringed by Sealed with a Kiss
Final v Final Flip (roach sprays) not infringing
If the common portion is strong or dominant more likely to find a likelihood of
confusion
Pizzaria Uno v. Taco Uno uno is too strong Confusing Similarity found
McDonalds v McPretzels CS
Adding by someone to the TM
No, this wont work, especially if in very small print
Volkswagon by Ford
Geographic modifiers wont overcome likelihood of confusion when someone is
perceiving the mark
Applebees of Atlanta
If a lot of people are using the mark in connection with the services, it will be weak
like Horizon for hotels. People expect to see it & look for other identifiers to know
which Horizon hotel

All that matters is your area of business

How do you establish Infringement?

Direct Evidence
o Actual confusion
Indirect Evidence
o Market factors
Strength of mark, similarity, etc. Effect mental state of
consumer
o Intent
If you are alleging Likely hood of confusion (LOC) you have the burden of
proof by prep of ev.
o In some courts, if you can show intent to infringe, courts will shift the
burden
You have to make sure that you effect (confuse) people in #s that are
appreciable under the circumstances
o Size of market doesnt matter
o 1 infringement doesnt matter

An appreciable # of the consumers who were exposed to those two

products
o First Amendment considerations are important
You cannot prevent people from talking about your mark, using
it in an artform (as illustrated in the case of the Barbie Girl
song case)
Tiger woods Sued for the use of his picture, said that his picture was his TM,
court disagreed
o If there was one classic golf pose, it could be a TM, every single pose
and angle cannot be a TM
o Why not Rights of Publicity?
You always have to think about the 1st amendment when you are talking
about an artistic work, if you put it on a poster and sell the poster
traditional merchandising therefore more likely to infringe
o

Just because you have a registration, still have to establish the elements of
infringement
-

not a lot of lay or expert opinions

PTO Action
-

May show that a PTO examiner already showed that there was a likelihood of
confusion be careful what you argue in the PTO
If you say something that contradicts your later position in court it will be used
against you (like Festo in patents)
CONSENT may have signed something that, by contract, agreed that there was
no likelihood of confusion

TYPES OF CONFUSION
Source confusion
Sponsorship, association, endorsement confusion
Reverse Confusion the misimpression that the new comer is the source of the prior
persons goods
-

in this context you have to play with the Polaroid factors

Newcomers mark saturated the market and overwhelmed the old guys mark
Big O v. Good Year

Confusion can occur: Prior to or after purchase

Presale potential purchaser
Postsale - person who uses
Initial Interest Confusion initial interest in the infringers product thinking that it is
coming from someone else

& Post Sale Confusion someone seeing you on the street confuses the product
(the Levis case where the TAG on the pants when sold made it clear that they were
not Levis, however the stitching pattern confused people in the absence of the tag.)

Playboy v. Netscape

Class
o Lower court had looked at it more in the fair use form
o This court said, no, they pop up, initial interest confusion
Factors
o Actual Confusion
There was a survey that showed that more than believed
associated with playboy
o Strength
Strong 2 meaning
o Proximity of Goods
o Marks are identical
o Marketing channels
o Sophistication
People are dumb and these services are cheap
o Intent
Favors Playboy bc Netscape is profiting
Defense
o Nomitive FU
F1 dont need the words to pull up the pop up ads skipped
other factors.

Mobil Oil v. Pegasus Petroleum 1987

o This is a sight sound meaning case
o Community of who are the applicable prudent consumers doesnt have
to be everyone
o The really important part of this case is that they were riding on the
good will in an industry where having your cold call answered is really
important and the association with Mobile Oil gave them an unfair
advantage
The Network Network v. CBS, Inc. (2000) p 431
o 2 companies using TNN as legitimate abbrev. For their name, different
areas
o Struck down because they couldnt prove that the TNN was famous at
the time that the network network started using.
o * Important your mark has to be famous at the time that the other
person starts using
o The standard reasonably prudent consumer confusion
o Brookfield case cited in a lot of intial interest cases
Underwear case
-

Trade Dress infringement. Packagin case

Factors different
Mucingwear had to show that the product feature was not
functional

Defenses:
(1) Fair Use using something in its descriptive sense as a word not a TM
(2) Nominative Fair Use Defense when not using it descriptively
Three Prongs
Cannot convey your message any other way except by using the mark
Only take amnt necessary to convey message
No confusion as to association sponsorship or endorsement
INFRINGING USES
Playboy enterprises, Inc. v. Netscape Comm. Corp., p. 421
Registered TMs do not reach internet search engine keywords
Netscape keyed words such as playboy and playmate, to Playboy
Entertainment Inc. in its search engine
o

Playboy argued Netscape diverted traffic away from PEIs official site to
other adult sites but never argued infringement or dilution when the
list of results from a search for those phrases included other websites

To win, PEI must show NS used their mark in commerce

Netscape agreed that they knew PEI owned those marks but said they
do not use them as TMs and even if it is found that they were using
the trademarked terms, the use was not one which was protected

Ct agreed and said, [paraphrasing], PEI has not shown that NS

used the terms in the TM form when marketing and in its
algorithms effectuating keying ads to keywords

The fuzzy area in cases like these are use when the charging
of fees for use of a word as associative is use
450 identified words that would trigger adult sites, of
those words included playboy and playmate

JOINING HOUSE MARKS TO DISPUTED MARKS DOES IT REDUCE

LIKELIHOOD OF CONFUSION? P. 423
Similar trade dress will NOT infringe when the competing products mark and
logo are prominently used
Look-a-likes in trade dress will not infringe when labels are conspicuously
placed
Significant distinction even though the trade dress looks are quite similar s

Mobil Oil Corp. v. Pegasus Petroleum Corp., p. 424

Similarity which creates confusion as to origin of the goods infringes on
the protected, original goods
To make out a claim under 15 USC 1114(1)(a) P must show likelihood that
an appreciable number of ordinary prudent purchasers are likely to be misled,
or indeed to simply be confused, as to the source of the goods in question.
Lower Ct here said there was likelihood of confusion between Mobil Oils logo
of a flying horse and Pegasus Petrol Cos Pegasus logo affirmed here (2d Cir)
Factors to support finding for Mobil were analyzed according to the Polaroid
factors of confusion:
o

Competitive proximity between the two marks = both are petrol/oil

companies

Strength of Mobils mark grants it broad protection against infringers

The similarity between the marks make them synonymous and entitled
Mobil to protection over a broader range of related products

Pegasus Petrol did not innocently select its potentially confusing mark
INTENTIONAL COPYING GIVES RISE TO A PRESUMPTION OF A
LIKELIHOOD OF CONFUSION

Existence of evidence of actual confusion

Sophistication of consumers - even among sophisticated oil traders

INITIAL INTEREST CONFUSION ON THE INTERNET

The Network Network v. CBS, Inc., p. 431
Rule
CBS, Inc. purchased The Nashville Network while a company called The
Network Network which was an IT networking services company had been
using the mark in its email, etc. (although Nashville had the full name first,
TNN used the acronym as a domain first and had procured rights to it by
registering the domain) CBS attorneys sent a cease and desist letter to TNN
TNN brought declaratory action
Ct said The Network Network had seniority on use, but as to the initial
interest confusion claim, they said there would be no confusion because
there would be no improper benefit which is what a claim for initial interest
confusion
Here, there is no competing interest or market for services between Nashville
and TNN
RELEVANT PUBLIC / SECONDARY CONFUSION
Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre
Watches, Inc., p. 440
Rule

Foxworthy v. Custom Tees, Inc., p. 442

Rule

Blockbuster Entertainment Group v. Laylco, Inc., p. 443

Rule

REVERSE CONFUSION
Harlem
Dreamwerks
CONTRIBUTORY INFRINGEMENT
Inwood Labs
Hard Rock Caf Licensing Corp., p. 460
Polo Ralph Lauren, p. 466
THE TWO 5-YEAR RULES: SECONDARY MEANING AND INCONTESTABILITY:
Each cannot have any adverse filings pending
Secondary Meaning:
o

5 years of continuous use creates a prima facie case of secondary

meaning

Descriptive, names

Incontestability:
o

MANDATORY FILING TO RECEIVE THIS RIGHT

This is NOT automatic

5 years continuous use AFTER REGISTRATION AND TM owner files a 15

affidavit stating so the clock only applies after the TM registration has
been issues AND your affidavit has been filed [15 of Lanham Act]

You can file for this any time after the 5 year mark most ppl wait until
they are filing their statement of use and application to renew

BUT this is LIMITED INCONTESTABILITY (See p. 486 for restrictions)

Defenses to incontestability are in 15 USC 1115

Functionality - 9 whether this is a bar to incontestability

o

Often Functionality is argued as trade dress

Two things come up at this 5-year mark

o

8 Renewal for the first time happens in the 6 th year (every 10th after
that)

Affidavit or statement of use can be achieved with a combination 8 +

15 Declaration

TRADE DRESS BARS TO REGISTRATION

TD may be considered functional under 2d and thus a bar to registration
If TD is functional it can be challenged at any time
DEFENSES TO INCONTESTABILITY REGISTERED MARKS, P. 486
33 Lanham Act
o

Unclean hands; fraudulent acquisition

Abandonment

Use of the mark to misrepresent source

Use of mark in a descriptive sense other than as a TM Fair Use

Defense

Limited Territory Defense

Prior Registration

Use of Mark to Violate Anti-trust Laws

Equitable Principles estoppel, laches, acquiescence 33b9

Functionality

Incontestability only applies as to whether or not the mark exists or not

FAIR USE: use of a mark to describe a product rather than to identify it with a
particular source such use will be held not to infringe a plaintiffs TM with
which such use resembles
Park N Fly, Inc. v. Dollar Park and Fly, Inc., p. 475
Rule
Purpose of TM is to identify source if it does not then it should not receive
protection
Car-Freshner Corp. v. S.C. Johnson Inc., p. 493
Fair Use
Car-Freshner Corp (CFC) makes the tree-shaped car air fresheners [Little
Tree]
SC Johnson made the Plug-Ins and had a plug-in scent shaped like a tree and
CFC sued for infringement
Ct said the products were distinguishable because they are different markets,
so no confusion
The little tree is the air freshener that smells like pine = a descriptive mark:
this would be a way to say that the shape was used in a descriptive sense
and not as functional

 Shaped like a tree will make it like a trade dress for CFC, but SC Johnson is
using the shape as a way to describe which scent it is they used them to
designate type of smell [Holiday Pine Potpourri a Glade Plug-in] the
physical shape became descriptive
SOVEREIGN IMMUNITY
College Savings Bank v. Florida Prepaid Postsecondary Education Expense
Board, p. 496
The Trademark Remedy Clarification Act subjects States to lawsuits for
Violations of the Lanham Act 43(a) False and Misleading Advertising
Congress explicitly included States in this law
State engaged in activities regulated by the Lanham Act, so they have thus
waived their immunity from suit
No property rights provided under false advertising
There is also a patent claim in here somewhere but remember that patents
do not provide a property right, but the right to exclude
UNREGISTERED MARKS
32 same test = likelihood of confusion
Yarmuth-Dion, inc. v. Dion Furs, Inc., p. 504
No matter about reputation
Still likelihood of confusion
Doesnt matter about who sells to what type of market
The different factors (all of the interpretational things across the different
districts) are all grey and subjective and up for interpretation

F A L S E D E S I G N AT I O N

OF

ORIGIN

TRADE DRESS AS FALSE DESIGNATION OF ORIGIN

Two Pesos, Inc., v. Taco Cabana, Inc., p., 510
Rule: 43(a) of the Lanham Act/15 USC 11254 (a) = there is no distinction
between trade dress and trademarks under 43a for protection purposes
because it serves the same statutory purpose of preventing deception and
unfair competition
Essentially this case opines that trade dress is the same as a trade mark; and
as long as it is not descriptive, it is subject to the same tests of validity
43 a does not require secondary meaning for inherently distinctive trade
dress
o

Inherently distinctive trade dress under 43a is only nonfunctional,

distinctive trade dress

 The issue before the court here = inherently distinctiveness

o

2d Cir = All trade dress must have secondary meaning

5th Cir = only non-distinctive trade dress must have secondary

meaning (inherently distinctive trade dress is the same as general
marks and no need to prove secondary meaning)

Issue of law = Is there a different requirement for inherently distinctive

trade dress?

Court interprets the statute both 2 and 43a literally in that it does
not mention secondary meaning for anything other than descriptive
marks

Trade Dress Defined by Ct:

o

Total image of the business

Restaurants: Shape and general appearance of the exterior of the

restaurant, identifying sign, interior kitchen floor plan, dcor, menu,
equipment used to serve food, servers uniforms

Products: total image and overall appearance of the product; size,

shape, color or color combinations, texture, graphics, or even
particular sales techniques

Trademark defined in 15 USC 1127:

o

any word, name, symbol, or device or any combination thereof used

by any person 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 that source is unknown

Mark Categories:
o

Generic, descriptive, Suggestive, Arbitrary, Fanciful

Suggestive, Arbitrary and Fanciful these are deemed

inherently distinctive and are entitled to protection; their origin
is presumed

Protection of Unregistered Marks:

o

2e, f of the Lanham Act/15 USC 1052e, f = no protection of a

descriptive mark unless it has become distinctive of the applicants
goods in commerce[Park N Fly]

Because 2 only mentions secondary meaning as a requirement for

descriptive marks, it should follow that other marks should be
registrable without showing secondary meaning because those same
marks are capable of distinguishing the goods

Distinctiveness of a mark is achieved by inherentness or by secondary

meaning

WHEN DESIGNS ARE INHERENTLY DISTINCTIVE

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., p. 519
Rule: Unregistered trade dress under 43 actions for infringement of a
products design require a showing of secondary meaning distinguishes
between trade dress and product design
Addition to 43a sub 3 referred to civil actions for trade dress
infringement under this chapter for trade dress not registered on the principal
register
o

Must show the infringing feature is NOT functional

Must show that the infringing feature is likely to cause confusion with
the product for which protection is sought

Colors can NEVER be inherently distinctive must always show

secondary meaning with color marks [Qualitex]

HOLDING: In an action for unregistered trade dress under 43a of the Lanham
Act, a products design is distinctive and therefore protectable only upon a
showing of secondary meaning.
o

Distinguished Two Pesos: Two Pesos establishes the principle that trade
dress can be inherently distinctive

Does not establish that product-design trade dress can be

CLOSE CASES: If it is a close case between trade dress and product

design, the court should lean toward product design and require
secondary meaning

FUNCTIONALITY REVISITED
Under 43a3 of the Lanham Act: Person alleging infringement of trade dress
bears burden of showing matter sought to be protected is NOT FUNCTIONAL
Registration of a mark is prima facie evidence of validity of the mark
Non-registration creates a burden for the party asserting protection to show
that the trade dress is NOT FUNCTIONAL
A colored computer disk or the colored IMac is functional to those products to
identify source/distinguish them from others and would have to
De Facto Functional foreclosing competition
De Jure Functional actually functional
TrafFix Devices, Inc. v. Marketing Displays, Inc., p. 525
Rule:
Expired utility patent for a sign was copied party holding expired patent
brought suit against the company copying the sign design (TM infringement
for similar product name, trade dress infringement because of similar
physical design, and unfair competition) the Court granted Cert on the issue
of trade dress

 The fact that there was an expired patent bears weight because the grant of
a patent designated that the design was mainly functional and functional
aspects are not protectable as trade dress
Ct here declined to further consider the case because the granting of trade
dress protection to what had enjoyed patent protection goes against the
intent of the constitutional provisions of granting patent monopolies of
inventions
Aesthetic functionality earlier cases, etc. these cases used to argue that
certain aesthetic aspects made it more appealing and why people bought
them and thus those aspects were functional the courts would not allow this
because it foreclose competition
Best Sellers Wine
Rule:
Note that this case comes right after Wal-Mart
Establishment design, packaging design can be inherently distinctive
Conopco, Inc. v. May Dept. Stores Co., p. 555
Trade Dress is the overall appearance
When overall appearance is consisting of the TM of the company, the label,
and the name of the product, etc. that will not be considered product design
but trade dress
See pic on page 560
Side Note: Nail polish that had a specific shaped bottle; if a consumer states
that they prefer a specific brand and identify it by name, then it could be
considered trade dress
FALSE DESIGNATION OF ORIGIN
Lanham Act Requirements of a finding of False Designation or Origin
15 USC 1125a1
To show a false designation violation under the Lanham Act:
o

Defendant uses a designation

In Interstate Commerce

In Connection with Goods and Services

Which designation is likely to cause confusion, mistake, or deception as

to origin, sponsorship, or approval of defendants goods or services

Plaintiff has been or is likely to be damaged by these acts

A D V E RT I S I N G
COMPARATIVE ADVERTISING
Smith v. Chanel, Inc., p. 570
Rule: It is not a violation of comparative advertising [15 USC 1125a] or
common law unfair advertising to identify the product you are copying so
long as purchasers will not be confused as to the source, identity, or
sponsorship of the advertisers product
You may use a copy of an unpatented product sold under a trademark and
use the name of the original in advertising to identify the product copied
No protection under TM law for the scent itself (or if under patent) the key is
to ensure that the consumer is cognizant of the fact that the product is not
the TM product [thus no confusion]
Duplicate fragrances such as if you like Chanel No. 5, youll like ____; the
whole designer impostors line, etc. of fragrance
Ct said as long as the advertiser does not represent that it is their product,
and they are not deceiving or misappropriating the others exclusive property
If you like _________, youll love ____________.
As long as an advertisement dispels likelihood of consumer confusion, you
may use it
But see advertisement on page 577
o

Trade dress issues

August Storck v. Nabisco, Inc., p. 578 [The Werthers Candy Case]

Mention or comparison by name of a product on the packaging of another
is not infringement of trademark or trade dress
Here, because Werthers was mentioned in the packaging in a comparative
manner, 25 percent lower calories than Werthers Original Candy they got
an injunction against Life Savers launch of a product called Life Savers
Delites seeking declaratory judgment on the issues
Ct said that use of the Werthers on the packaging may create a possibility
of confusion, but some people are bound to misunderstand no matter how
careful a producer is
Likelihood of confusion is a question of fact, gleaned from the totality of the
circumstances
o

Packaging may be similar by use of a banner, but that is not dispositive

Here, the ct said there would be no way to confuse the Life Savers
packaging as that of Werthers and lifted the injunction

FALSE REPRESENTATION 43A1B; 15 USC 1125A1B

It is actionable to misrepresent your product, mislead with respect to your
product, or false statements of fact or disparage the product of another
Elements of False Representation 43:
o

1) That the statement is literally false

2) that the Statement is literally true but false impression may have
been made

FALSE ADVERTISING - 43A

Despite broad language in the Act, CONSUMERS DO NOT HAVE STANDING
o

Motion to dismiss would be granted, no harm; judicial efficiency (not

stated but this is generally understood)

You have to have real economic interest a competitor, not mere

inconvenience

This is an interpretation against the statute any person language

Go see FTC if you have a consumer issue

Compare to Harjo case (Redskins case) where the average person can
petition to have the mark cancelled
1988 Amendment will not be allowed to bring a false advertising claim if
your ad is false and adds standard to ask if statement is false
It is OK to use your competitors mark to compare or describe yours
o

As long as you are distinguishing it

As long as claims are true and accurate

100% perfect duplication true because nothing can be 100% the

same unless it really is the same

Ok to use superlatives [ours is the best], but not to make assertions of fact
whiter is not possible

Coca Cola v. Tropicana Prods., Inc., p. 585

Advertisements asserting statements that are literally false violate 43a
of the Lanham Act
Advertisement of Tropicana OJ was challenged as a violation by Coca Cola
o

Ct did not grant injunction to enjoin broadcast of the commercial

Tropicanas ad said it was pure, pasteurized juice as it comes from the

orange which was literally false under 43a
To bring the case,

Coke had to show that the presence of this false misrepresentation was
costing them sales = harm

As long as false statements are out there, by basic comparison,

there is harm to your product you dont have to show actual
harm

A false statement must be shown

And if facially false, you dont have to show confusion

Clorox Co., Puerto Rico v. Proctor & Gamble Commercial Co., p. 590
[bleach puffery case]
Using comparison is allowable so long as it is not making false claims [or
quantifying immeasurable aspects such as whiteness]
Clorox challenged ads in Puerto Rico of Procter and Gamble for a detergent
they claimed in the ad Whiter is not possible
o

Procter Gamble modified the ad and used comparison, compare to

your detergentwhiter is not possible Clorox still not happy

Standard for appeal in false advertising = Clearly Erroneous

Three aspects were reviewed De Novo
o

Allegations of literal falsity

Always a question of fact, determined by 1) determining what

the claim in the advertisement is, and 2) determining whether or
not that claim is false

Allegations of misleading advertising

Concept of puffery

Whiter is not possible is NOT puffery when combined with the

compare with your detergent

Puffery concerns statements that are vague or subjective and

which are exaggerated advertising, blustering, and boasting
upon which no reasonable buyer would rely

Polar Corp. v. Coca-Cola, p. 599

A party making a disparaging assertion of anothers product may be
subject to a preliminary injunction to not broadcast the ad
Polar Corp had an ad of a polar bear throwing out a coke can and then the
announcer says, Keep the Artic Pure Coke said it was disparaging to them
because it implied that Coke was not pure
Burden on Coke as plaintiff for the preliminary injunction pending litigation:
o

Likelihood of success on the merits

Potential irreparable harm if the injunction is not granted

Injury to Coke if the injunction is denied outweighs the harm the

injunction would cause Polar if imposed

That the public interest would not be adversely affected by granting an

injunction

Coke got the injunction

Proctor & Gamble v. Haugen, p. 601
Rule:
Case where P&G filed suit against those persons claiming it was an agent of
the Devil
Dismissed properly for failure to state a claim and granted summary
judgment
Coors Brewing Co. v. Anheuser-Busch Co., p. 608
False assertions of anothers product is a violation of the Lanham Act
But here, the assertions by the Busch advertisement where it tells everyone
that Coors Light is made from Virginia water was not placed under an
injunction because Coors could not show through extrinsic evidence that the
claims were false and because balance of hardship appeared balanced by the
court
Ct denied preliminary injunction

AUTHORS

AND

PERFORMERS RIGHTS

AUTHORS AND PERFORMERS RIGHTS OF ATTRIBUTION

You can copy something a piece of Monets art you have to give it credit as your
version of Monets water lilies. If something is protected by copyright and someone
makes a copy, and there is a K that says you cannot make copies of X and if it
comes into the public domain, the price in the K shows the assent that you will not
make copies. If you make a cause of action for unjust enrichment or
misappropriation those would be preempted by a cause of action by a breach of
contract claim if you can show that the person did not intend to perform under the K
but to misrepresent or commit fraud.
SEE DASTAR CASE IN THE SUPPLEMENT!!!!!!!!!!!!!!!!!!!!!!!!!!
Dastar v. 20th Century Fox (2003), Supplement
Rule
Fox film is in the public domain because the copyright has expired
o

Free to copy for copy and sale and to make changes or derivative
works

DASTAR

Copied

Edited

Repackaged

Removed Fox and Replaced with by DASTAR

When all referenced to Fox were removed and relabeled as theirs, Fox sued
under 43a false designation of origin
Sup Ct heard the case on the issue of: Does 43a prevent unaccredited
copying? [but not of public domain material]
o

Scalia: Goods in the Lanham Act means tangible physical items, not
originator of ideas or content embodied in items

If they were to hold that there is an attribution right for

mislabeling the producers of a movie under 43a, then 43a
would be in direct conflict with 106A of the Copyright Act (106
is The Visual Artists Rights Act - 101 is the Definitional section)
and only applies to Works of Visual Art

Visual Art = one of a kind work, multiples of 200 or fewer

if signed and numbered consecutively; Excludes Motion
Pictures and other audio visual works

Copyright is the body of law that applies to and covers

creative works; 1990 Visual Artists Rights Act gives artists
rights under contemplation of Congress when it wrote the
act and it expressly excluded motion pictures from
attribution

The work was in the public domain

If Congress wanted to give attribution right, then let them change 106
of the Copyright Act

Gilliam v. American Broadcasting Companies, Inc., p. 618

43(a) Broadly applied, will also apply to common-law copyrights
US Does not acknowledge Moral Right per se
o

Visual Artists Rights Act = author of a right may claim attribution to a

work of his name or disclaim his work if it has been mangled beyond
recognition [this is only for visual works]

Here there is no express COA dealing with alterations of this kind

of work

Monty python movie was edited to the point that it was unidentifiable; MP
sought an injunction to bar ABCs broadcast of the edited version
Ct had some difficulty finding this case as coming under the Lanham Act but
as it is a product, the ct applied it that way because the Copyright Act does
not recognize the moral rights of authors
Lanham Act applies because it is an inferior product and they are putting the
originals name on it

 Lanham Act applies here because it has to do with misdescription of origin

and the like and the modification of this movie created a False Designation of
Origin
o

False Impression of

Sponsorship

Endorsement

Affiliation

Choe v. Fordham Univ. Sch. Of Law, p. 623

Must show a mangling to a level in Gilliam to meet the standard necessary
to imply 43a of the Lanham Act
Law student writes a Comment to be published in his law school journal
The journal makes some mistakes and the student, then a lawyer, freaks out
claiming it presented him to the public as the creator of a work not his own
Attorney brought a federal claim for violation of his moral rights which is not
recognized in American Copyright law
Smith v. Montoro, p. 626
Reverse palming off is applicable to 43a of the Lanham Act
Smith starred in a film for the film company which changed his name when it
distributed it he brought claim under 43a but a ct granted motion to
dismiss for failure to state a claim for which relief may be granted
o

Because it was not misuse but non use or breach of K

Smith claimed that the acts were the equivalent of palming off or misuse of
a trade name
This is reverse passing off taking someones work and thus that person
loses credit
Wrong because it involves an attempt to misappropriate or profit from
anothers talents and workmanship; originator of the misidentified product is
involuntarily deprived of the advertising value of its name and of the goodwill
that otherwise would stem from public knowledge of the true source of the
satisfactory product
Lamothe v. Atlantic Recording Corp., p. 631
Even providing partial credit to a group of performers is a violation of 43a
a false designation of origin
Music group authored songs; after they broke up, some of the members
formed a new group and licensed the sheet music to a company to print
without including their old band members names in violation of 43a

Jones v. Jones, p. 632

Rule
Notes
LIMITATIONS ON LANHAM ACT ATTRIBUTION CLAIMS
No right of attribution in the copyright act

King v. Innovation Books, p. 635

Rule
Steven Kings Lawnmower Man is a possessory credit and not the same as
a credit - Based upon a story by Steven King
o

Based upon is more honest if there is no relevance to the original work

Miramax Films Corp. v. Columbia Pictures Ent., p. 640

Rule
Notes
RIGHT OF PUBLICITY AND RELATED CLAIMS
The following cases involve bringing a state COA for state right of publicity
claim and a 43a action because it causes a belief that the real celebrity is
endorsing the product
o

In an advertising context if the fake is good enough to fool people the

celebrity will win a 43a claim by claiming that it causes one to believe
that they endorse the product

Allen v. National Video, Inc., p. 643

Rule
Woody Allen look a likes doing ads for video stores
Midler v. Ford Motor Co., p. 651
Rule
Use of a Midler sound a like
Oliviera v. Frito Lay, p. 655
Rule
Use of a persons real voice
White v. Samsung Electronics America, Inc., p. 657
Rule
Vanna Whites likeness used in a video game version of Wheel of Fortune
9th Cir
Generally this allows a lot of forum shopping

 The right of publicity stays with a person for life

o

CA is unique in that there is statutory and common law protection for

right to publicity usually you would only look to statute but in CA
you can look to both

Can look to has someone misappropriated your persona?

Also on a 43a false designation of origin with a remedy of

nationwide injunction

IN NY Look a like and sound a like doesnt fly

This is an odd case based on what you do versus who you are

Misappropriation of identity

General Notes:
- you are registered
TM you can still bring a case but they arent as tough on the infringer
32.1 is for registered marks
o

Main differences between registered and non registered

Registered and used for 5 years and affidavit filed limits ways
mark can be challenged

Mark is presumed to be valid when come into court

With trade dress

Importation and counterfeiting, if registered you can have

infringing goods seized at port and impounded
Everyone is on constructive notice of your ability to
expand your market and they will have to shut down
Your remedies are the same for both

No innocent infringement in TM because in many situations you will not

know by context two things are the same

It literally true but make a false impression or if it is literally untrue seek

injunction right away
If literally true but confusing, misleading, or give a false impression
In almost all cases, if you want an injunction, if a likelihood in the merits is
found, irreparable harm is presumed
o

Have to worry about dilution, harm to your mark

Regardless of the case or the substantive area, the case will follow one
partys position
Also remember the nature of the product and the sophistication of the buyer

First Amendment and Right to Use Ones Image

Use for purely commercial purposes is a violation, but if it is reasonably related,
then it is OK
Rosa Parks v. Outcast
Test: Is the name or picture of the person reasonably related to the story
Grimaldi: Is it reasonably related to Ginger and Fred